Office National des Forets

Trademark Trial and Appeal Board

Oct 31, 2008

No. 79015738 (T.T.A.B. Oct. 31, 2008)

Mailed:
10/31/2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Office National des Forets
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Serial No. 79015738

_______

Michael A. Cornman, of Schweitzer Cornman Gross & Bondell
LLP, for Office National des Forets.

Sharon A. Meier, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney).
_______

Before Bergsman, Wellington, and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Ritchie de Larena, Administrative Trademark
Judge:
Office National des Forets (“applicant”) filed an
application to register the mark CHÊNE DES DOMAINES DE
FRANCE, shown below, for “semi-worked wood for making
household utensils; building timber; sawn timber;
manufactured timber, namely worked lumber; semi-worked
timber; moldable semi-worked wood; wood paneling; wood
veneer,” in International Class 19, “wood shavings” in
International Class 22, and “forestry products, namely
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 79015738

2
unsawn timber, undressed timber,” in International Class
221.

The trademark examining attorney refused registration
of the mark under Section 2(e)(2) of the Trademark Act of
1946, 15 U.S.C. §1052(e)(2), on the ground that applicant’s
mark is primarily geographically descriptive of the goods
identified in the application. Upon final refusal of
registration, applicant filed a timely appeal. Both
applicant and the examining attorney filed briefs. For the
reasons discussed herein, the Board affirms the final
refusal to register.
The Board utilizes a three-part test to determine
whether a mark is primarily geographically descriptive of
goods under Section 2(e)(2):
1. The primary significance of the mark is the
name of a place generally known to the public;
2. The public would make a goods/place or
services/place association; and
3. The goods or services do in fact come from the
place named in the mark.
In re JT Tobacconists, 59 USPQ2d 1080, 1081-1082 (TTAB
2001) (MINNESOTA CIGAR COMPANY held primarily

1 Application Serial No. 79015738, filed August 16, 2005,
pursuant to Section 66(a) of the Trademark Act, 15 USC §1141f(a).
The mark contains an English translation of CHÊNE DES DOMAINES DE
FRANCE as “Oak of the National Forests in France.”
Serial No. 79015738

3
geographically descriptive of cigar products). See also In
re Societe Generale des Eaux Minerales de Vittel S.A., 824
F.2d 957, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987) (VITTEL held
lacking on second element since few American consumers
would identify it as a source for the cosmetics for which
applicant sought to register it).
Primary Significance to Public
First we consider whether the primary significance of
the mark is the name of a place generally known to the
public. Words from modern foreign languages such as French
are translated into English to determine their
descriptiveness. In re Northern Paper Mills, 64 F.2d 998,
17 USPQ 492 (CCPA 1933); In re Spirits Int’l N.V., 86
USPQ2d 1078 (TTAB 2008). Applicant has provided an English
translation of its mark as “Oak of the National Forests in
France.” Accordingly, applicant’s mark contains the
geographically descriptive terms “France,” and more
specifically, “the National Forests in France.” France,
unlike the single town of Vittel, can hardly be considered
obscure or remote. The examining attorney produced
evidence that France is “the largest country in Western
Europe.” See Encarta World English Dictionary (North
American Ed. 2000).
Even if we were to consider the entire phrase
“National Forests in France” as the relevant geographical
location, it is clear that a 2(e)(2) rejection may be
applicable to a geographical location as small as a street
Serial No. 79015738

4
(see In re Pebble Beach, 19 USPQ2s 1687 (TTAB 1991) (17
MILE DRIVE held not primarily geographically descriptive of
applicant’s own goods and services since applicant coined
term and controlled it exclusively)), or as large as a
region (see In re Pan-O-Gold Baking Co., 20 USPQ2d 1761
(TTAB 1991) (NEW ENGLAND held primarily geographically
descriptive for “freshly baked bread and bread rolls”)), or
a state (see In re California Pizza Kitchen Inc., 10 USPQ2d
1704, 1707 (TTAB 1988) (CALIFORNIA PIZZA KITCHEN held
primarily geographically descriptive of restaurant
services)). Applicant has asserted that it is “responsible
for the management and well-being of French forests
including the oak trees which grow therein.” See April 13,
2007 Response to Office Action at 3. Indeed, the examining
attorney submitted a dictionary definition of “national
forest” as “a usually forested area of considerable extent
that is preserved by government decree from private
exploitation and is harvested only under supervision.” See
Merriam-Webster Online Dictionary (2008). Applicant’s
responsibility for the national forest does not preclude us
from finding the mark to be primarily geographically
descriptive.
Furthermore, the addition of a descriptive or generic
word to describe the goods, such as “oak,” does not avoid
the refusal, since it merely indicates to consumers that
the type of goods named in the mark originate from, or are
otherwise associated with, the stated geographical
Serial No. 79015738

5
location. See In re Carolina Apparel, 48 USPQ2d 1542, 1543
(TTAB 1998) (CAROLINA APPAREL geographically descriptive of
retail clothing store services although clothing may derive
from a variety of places). Therefore, we determine that
the primary significance of applicant’s mark is the name of
a place generally known to the public.
Goods/Place Association by the Public
Next, we consider whether the public would make a
goods/place association between applicant’s identified
goods and its mark. As the Board has stated, “where the
goods or services actually originate from the geographical
place designated in the mark, a public association of the
goods or services with the place may ordinarily be
presumed.” In re Carolina Apparel, supra, 48 USPQ2d at
1543 (TTAB 1998). The place need not be known for that
type of good generally. In re California Pizza Kitchen
Inc., supra, 10 USPQ2d at 1707. Therefore, we determine
that the public would indeed make a goods/place association
here because consumers would naturally assume that wood and
wood products identified by the mark at issue originate in
France, in general, and in the National Forests in France,
specifically.
Origin of the Goods
Finally, we consider whether the goods do in fact come
from the place named in applicant’s mark. Applicant has
admitted that it uses its mark to sell oak and other wood
from the national forests in France, as indicated by the
Serial No. 79015738

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mark and the identified goods. See April 13, 2007 Response
to Office Action at 2-3. In such case, we are not
persuaded by applicant’s argument that the geographical
term in the mark is merely “suggestive” to consumers of a
quality or style of product. See In re California Pizza
Kitchen Inc., 10 USPQ2d at 1705. Rather, the mark
immediately conveys to consumers both the goods and the
geographical location from which they derive. See In re JT
Tobacconists, supra 59 USPQ2d at 1082. Therefore, we
determine that the goods do in fact come from the place
named in the mark.
Conclusion
Accordingly, we find that applicant’s mark is
primarily geographically descriptive under the applicable
test since (1) France, and its national forests, are
primarily known to the public as a geographical location;
(2) the public would make an association between the goods
identified in the application and the geographical location
set forth in the mark; and (3) applicant’s goods do in fact
come from the national forests in France.
Decision: The refusal to register is affirmed.