Paris Croissant Co., Ltd.

Trademark Trial and Appeal Board

Sep 10, 2007

No. 78598734 (T.T.A.B. Sep. 10, 2007)

Mailed:
Sept. 10, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Paris Croissant Co., Ltd.
________

Serial No. 78598734
_______

James H. Walters for Paris Croissant Co., Ltd.

Henry S. Zak, Trademark Examining Attorney, Law Office 117
(Loretta C. Beck, Managing Attorney).
_______

Before Grendel, Cataldo and Mermelstein, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant Paris Croissant Co., Ltd, a corporation of
the Republic of Korea, seeks registration on the Principal
Register of the mark depicted below

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78598734
2
for goods identified in the application as “sandwiches;
toast; biscuits; ice cream; cakes; bean jam buns; bread;
green tea; coffee; coffee-based beverages,” in Class 30.1
Applicant has disclaimed the exclusive right to use
BAGUETTE apart from the mark as shown. The application
includes the following “Description of Mark” statement: The
mark consists of the words PARIS BAGUETTE on a blue
rectangular background with a red tower and red arc.” The
application also includes a “Colors Claimed” statement
reading: The colors red and blue are claimed as a feature
of the mark.”
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that it is deceptive under Trademark Act Section
2(a), 15 U.S.C. §1052(a), and on the ground that it is
primarily geographically deceptively misdescriptive under
Trademark Act Section 2(e)(3), 15 U.S.C. §1052(e)(3).
Applicant and the Trademark Examining Attorney have
filed main appeal briefs. After careful consideration of
the evidence of record and the arguments of counsel, we
affirm the Section 2(e)(3) refusal to register.

1 Serial No. 78598734, filed on March 30, 2005. The application
is based on applicant’s claim of ownership of Korean Registration
No. 40-0619878, under Trademark Act Section 44(e), 15 U.S.C.
§1126(e).
Ser. No. 78598734
3
Initially, because applicant’s mark involves an
allegedly deceptive geographic designation, we deem the
pertinent ground for refusal in this case to be that the
mark is primarily geographically deceptively misdescriptive
under Section 2(e)(3), and not that the mark is deceptive
under Section 2(a). See In re California Innovations Inc.,
329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003); In re South
Park Cigar, Inc., 82 USPQ2d 1507 (TTAB 2007).
The elements of a Section 2(e)(3) refusal are as
follows: (1) the primary significance of the mark is a
generally known geographic location; (2) the consuming
public is likely to believe the place identified by the
mark indicates the origin of the goods bearing the mark
(i.e., that a goods-place association exists), when in fact
the goods do not come from that place; and (3) the
misrepresentation would be a material factor in the
consumer’s decision to purchase the goods. California
Innovations, supra, 329 F.3d at 1341, 66 USPQ2d at 1858.
Under the first element of the Section 2(e)(3)
refusal, we find that the primary significance of
applicant’s mark is that of a generally known geographic
location, i.e., Paris, France. First, we find that Paris,
the capital of France, is a famous city, neither obscure
nor remote, and that it is generally known to purchasers in
Ser. No. 78598734
4
the United States. Applicant does not contend otherwise.
Second, we find that the word PARIS in applicant’s mark
would be directly and immediately perceived by purchasers
in its geographic sense, as the name of the city of Paris,
France. We are not persuaded by applicant’s unsupported
argument that the word PARIS in applicant’s mark would be
perceived as connoting merely the “ambiance” or “feel” of
Paris. See In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed.
Cir. 1999)(NEW YORK in NEW YORK WAYS GALLERY mark denotes
geographic location, not a hypothetical “New York Style” of
the goods at issue); In re Bacardi & Co. Ltd., 48 USPQ2d
1031 (TTAB 1997)(HAVANA in various marks denotes geographic
location, not hypothetical “free-wheeling lifestyle” of
pre-Castro Cuba).
Third, we note that our analysis under the first
element of the Section 2(e)(3) refusal must be based on an
evaluation of the mark as a whole, but there is nothing
improper in considering the significance and relative
contribution of each element of the composite mark in
making that evaluation. See In re Save Venice New York
Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001). We
find that other elements in applicant’s mark, i.e., the
word BAGUETTE and the Eiffel Tower design, do not detract
from or negate the primary geographic significance of the
Ser. No. 78598734
5
mark as a whole which results from the presence of the word
PARIS in the mark. We find that PARIS, and its geographic
connotation, dominates the commercial impression of the
mark. The word BAGUETTE is generic and disclaimed, and it
does not detract from the mark’s primary geographic
significance. See In re Consolidated Specialty Restaurants
Inc., 71 USPQ2d 1921 (TTAB 2004)(generic word STEAKHOUSE in
COLORADO STEAKHOUSE (and design) mark does not detract from
primary geographic significance of mark). The Eiffel Tower
is an iconic symbol of Paris, and its depiction in
applicant’s mark clearly refers back to and reinforces the
dominant geographic significance of the word PARIS in the
mark. See In re Save Venice New York Inc., supra (Lion of
St. Mark symbolizes Venice, Italy, and its presence as a
design element in the mark reinforces dominant geographic
significance of VENICE in the mark); In re Consolidated
Specialty Restaurants Inc., supra (image of mountain in
mark reinforces dominant geographic significance of
COLORADO in mark).
Viewing applicant’s mark as a whole, we find that the
primary significance of the mark is that of a generally
known geographic location, i.e., the city of Paris, France.
The first element of the Section 2(e)(3) refusal therefore
is established.
Ser. No. 78598734
6
The second element of the Section 2(e)(3) refusal
requires a showing that the consuming public is likely to
believe that the place identified by the mark indicates the
origin of the goods bearing the mark (i.e., that a goods-
place association exists), when in fact the goods do not
come from that place.
Applicant admits that its goods “do not come from
Paris.” (Applicant’s brief at 13.) Therefore, the
question for determination under the second element of the
Section 2(e)(3) refusal in this case is whether consumers
are likely to believe that Paris is the origin of
applicant’s goods. We find that the requisite goods-place
association has been established by the evidence of record.
“In a case involving goods, the goods-place
association often requires little more than a showing that
the consumer identifies the place as a known source of the
product.” In re Les Halles De Paris J.V., 334 F.3d 1371,
1373-74, 67 USPQ2d 1539, 1541 (Fed. Cir. 2003). The
evidence of record in this case clearly establishes that
consumers would identify Paris as a known source for the
goods identified in applicant’s application as “bread,” a
term which encompasses baguettes.
Of record are several Internet travel guides which
inform purchasers who are traveling to Paris that the city
Ser. No. 78598734
7
is home to and known for its many bakeries. See
www.discoverfrance.net, which advertises a travel guide
called “Boulangerie: A Pocket Guide to Paris’ Famous
Bakeries,” a guide which “features 223 bakeries
representing all 20 arrondissements of Paris, with
directions on how to reach them on the Metro.” The same
website advertises another travel guide which offers
travelers “a gastronomic tour of some of Paris’ finest
pastry shops and bakeries.” The websites at
www.radissondestinationguide.com and at
www.parishotelreservations.com both include listings of
what they deem to be the ten best bakeries in Paris.
Likewise, an article at the website www.sallys-place.com
subtitled “Where to find the best bread in Paris” lists
seven bakeries.
Other websites of record likewise show that Paris is
known for its bread products, including baguettes. For
example:
(1) www.sallys-place.com - Article entitled “As Parisian as
French Baguette”:
The slim, two-foot long baguette and its heftier
cousin, pain parisian, are as much a part of
Parisian identity as the Arc de Triomphe or the
Eiffel Tower. ... But luckily for lovers of
real old-fashioned French bread, the pendulum
seems to be swinging back toward traditional
methods. ... Lionel Poilane is known by bread
Ser. No. 78598734
8
lovers not only in Paris, but throughout the
world. His round, hefty country-style bread –
also dubbed a “miche” or “la boule” – is air-
freighted daily to Tokyo, New York and other
world capital cities.”

(2) www.discoverfrance.net - Article entitled “Beware of
the French Baguette!”:
A baguette is a thin and crusty long loaf, so
named from the word that means ‘wand.’ ...
Though originating from Paris, baguettes can be
found everywhere in France, and now
(theoretically) anywhere in the world, as the
demand has grown to a fever pitch. ... The
image of the baguette as a symbol of Paris has
even been popularized in the movies: in Everybody
Says I Love You, we watched Woody Allen, this
pure product of American culture so enamored with
that of the Old World, walking - just like a
“real Parisian” – on a bridge, his baguette
unsanitarily held under his arm. ... To that I
would counter that even a piece of stale bread
tastes great at Kayser! As a reply, Damien
merely smiles and says nothing: the line of 10 to
15 people waiting patiently is a better answer,
as well as the other shops which have propagated
from this place, selling his baguettes as far
away as Miami (FL), Japan, and Israel.

(3) www.en-wikipedia.org - Entry for “baguette”:2
... Baguettes are seen as closely connected to
France and especially to Paris, even though they
are by far not the only kind of French bread.

2 We have considered this Wikipedia evidence because it
essentially is cumulative of and is corroborated by the other
evidence of record, and because it was made of record early
enough to give applicant the opportunity to challenge or rebut
it. See In re IP Carrier Consulting Group, ___ USPQ2d ___, 2007
Westlaw 1751192 (TTAB) (Serial Nos. 78542726 and 78542734, June
18, 2007). We also note that applicant itself has relied on this
evidence in support of its contention that baguettes are
available worldwide and thus are not exclusively associated with
Paris. See discussion infra.

Ser. No. 78598734
9
They are, however, available around the world.
... The French government recently codified into
law a specific type of baguette, the “baguette de
tradition,” which can only be made using the
original, pre-modern methods ... The key,
Kaplan’s research suggested, is the 18th century
practice of allowing the yeast to develop
overnight, which results in a baguette with a
cream-colored interior (rather than the familiar
white) and a much more pronounced flavor and
smell which puts the modern baguette to shame.

(4) www.asymptomatic.net - Posting entitled “America Has No
Bread”:
I’ve gone to Wegman’s twice since I’ve been back
from France, looking for pastries and bread.
After watching many Parisians walking through
their city munching on just a loaf of bread, I
wondered what the deal was. So on my final day
in Paris, on my way to the airport, I stopped in
a shop and fumbled through the French that would
get me some kind of baguette. Boy, was that
tasty. I carried half the large loaf all the way
back to the States with me. Berta tried some,
Abby tried some, and even Riley tried some. I
think it was probably a little stale by the time
they got to it, but it was still pretty tasty.
And so I thought I would go to the only place
that I know to create pastries anything like what
I had seen in France to pick up something in the
morning. But unfortunately, America has no
bread. ... I remember standing at the airport
in Philly waiting for Berta to pick me up and
looking at everyone on the platform thinking,
“I’ve got bread that was baked fresh this morning
– in Paris.” And I smiled like an idiot.

(5) www.metropolitanbakery.com:
Bread & Ingredient List ... Organic Country
Miche – Inspired by the world famous bread of the
Poilane bakery in Paris, this organic crusty loaf
has a full sourdough flavor and a chewy, hearty
texture. Weighing in at a delicious four pounds,
this bread is France by way of Philadelphia.
Ser. No. 78598734
10
We find that this evidence establishes that Paris is
known for its bread products, and that the requisite goods-
place association therefore exists. Applicant makes two
arguments to the contrary, neither of which is persuasive.
First, citing the Internet excerpts numbered above as
(2) and (3), applicant argues that French bread, including
the baguette, is made and sold worldwide, and it therefore
is not exclusive to Paris. However, the issue under the
second element of the Section 2(e)(3) refusal in this case
is simply whether Paris is known for or known as a source
of bread products. In re Les Halles De Paris J.V., supra.
Applicant cites no authority, and we are aware of none, for
the proposition that the place named in the mark must be
shown to be the only or exclusive source of the goods at
issue.
Next, applicant argues that there is no goods-place
association because United States purchasers of applicant’s
bread would not be deceived into thinking that the bread
originates in Paris. This is because purchasers normally
would understand and assume that bread, by its very nature,
is produced and sold locally to ensure its freshness.
Therefore, applicant argues, purchasers in the United
States are not likely to believe or assume that applicant’s
Ser. No. 78598734
11
bread, purchased locally in the United States, was produced
elsewhere, especially a place as distant as Paris, France.
The evidence of record does not support applicant’s
argument. Even if bread products typically are produced
locally for the sake of freshness, we cannot conclude that
purchasers would believe or assume that such products would
never originate from and be imported from elsewhere,
including Paris. Indeed, the Internet sources of record
include articles which inform purchasers, if they did not
already know, that bread freshly made in Paris by Lionel
Poilane, assertedly Paris’ most famous baker, in fact is
regularly shipped to and available in the United States.
See, e.g.:
(1) www.fastcompany.com - Article entitled “Give Us This
Day Our Global Bread”:
Think of a product that is so local, it could
never go global. So basic, it could never be
branded. So fundamental, it could never be
reinvented. Now think about bread – Lionel
Poilane’s bread, that is. ... Lionel Poilane
sells the most famous bread in Paris. In fact he
sells 15,000 loaves of bread each day – 2.5% of
all bread sold in Paris, by weight. ... The
bread itself is decidedly old school; Thick,
chewy, and rich with a dark fire-tinged flavor,
Poilane’s bread traces its heritage back to the
original French bread. But his business is
remarkably modern. Today, Poilane has a new shop
in London and two older ones in Paris. And on
the outskirts of the City of Light, he has his
own global baking facility, where 40 bakers work
at 16th-century ovens in teams of 2. Each day,
Ser. No. 78598734
12
Poilane-branded bread travels by company-owned
trucks to more than 2,500 shops and restaurants
throughout Paris, and by FedEx delivery to
Poilane aficionados in roughly 20 countries
around the world. ... Poilane’s global bread
business developed as a natural response to
customer demand; Stores and individuals started
calling from abroad to ask Poilane to ship them
bread, so he started to take advantage of the
large FedEx hub at nearby Roissy-Charles-de-
Gaulle airport. FedEx allows Poilane’s bread to
leave the bakery in the early morning and be on
dinner tables in the United States the next
night. All it takes is a quick warm-up in the
oven to make the bread taste as good as it does
in Paris. And the size of the basic Poilane loaf
– about 4 pounds – helps the bread travel well
and last longer. Global bread sales are growing:
last year, exports were up 30%. Poilane has also
long sold his loaves over the Internet.

(2) www.paris-anglo.com - Article entitled “Joanne Dandres
Talks to France’s Most Famous Baker, Lionel Poilane.”
... Every week Poilane supplies the bread for 3
percent of the population in Paris and ships his
crusty 1.9 kilo boules to over 5000 people
worldwide. ... Poilane developed a special way
of packaging his bread so that it stays fresh,
and he ships it daily by Federal Express.

(3) www.sallys-place.com - Article entitled “As Parisian as
French Baguette”:
Lionel Poilane is known by bread lovers not only
in Paris, but throughout the world. His round,
hefty country-style bread – also dubbed a “miche”
or “la boule” – is air-freighted daily to Tokyo,
New York and other world capital cities.

Our finding that a goods-place association exists is
further supported by evidence in the record which shows
that purchasers reasonably might assume that bread baked
Ser. No. 78598734
13
locally in the United States, including (presumably)
applicant’s bread, is baked according to the same or
similar recipes as those used by Parisian bakers to make
their breads. The website of Metropolitan Bakery
(www.metropolitanbakery.com) advertises its
Organic Country Miche – Inspired by the world
famous bread of the Poilane bakery in Paris, this
organic crusty loaf has a full sourdough flavor
and a chewy, hearty texture. Weighing in at a
delicious four pounds, this bread is France by
way of Philadelphia.

Based on the evidence of record, and for the reasons
discussed above, we find that Paris, France is known for
and is a known source of bread products, and that a goods-
place association therefore exists as between Paris and
applicant’s goods identified as “bread.” Because
applicant’s bread does not originate from Paris, the second
element of the Section 2(e)(3) refusal is established.
The third and final element of the Section 2(e)(3)
refusal requires a showing that the misrepresentation as to
the geographic origin of applicant’s goods which is created
by applicant’s mark (i.e., that the goods would be believed
to come from Paris, when they do not) would be material to
the consumer’s decision to purchase the goods. We find
that the evidence of record in this case establishes the
materiality element of the refusal.
Ser. No. 78598734
14
“For goods, the PTO may raise an inference in favor of
materiality with evidence that the place is famous as a
source of the goods at issue.” In re Les Halles De Paris
J.V., supra, 334 F.3d at 1374, 67 USPQ2d at 1542. The
evidence of record in this case establishes that Paris is
famous for its bread. Indeed, bread, especially the
baguette, has been regarded as a symbol of Paris. For
example:
(1) www.sallys-place.com - Article entitled “As Parisian as
French Baguette”:
The slim, two-foot long baguette and its heftier
cousin, pain parisian, are as much a part of
Parisian identity as the Arc de Triomphe or the
Eiffel Tower.

(2) www.discoverfrance.net - Article entitled “Beware of
the French Baguette!”:
The image of the baguette as a symbol of Paris
has even been popularized in the movies: in
Everybody Says I Love You, we watched Woody
Allen, this pure product of American culture so
enamored with that of the Old World, walking -
just like a “real Parisian” – on a bridge, his
baguette unsanitarily held under his arm.

The materiality to the purchasing decision which is
established by Paris’ fame as a source of bread is
further established by evidence showing that bread from
Paris is known to be of high and even superior quality,
and is highly desirable for that reason. For example:
Ser. No. 78598734
15
(1) www.en-wikipedia.org - entry for “baguette”:

... Baguettes are seen as closely connected to
France and especially to Paris... The French
government recently codified into law a specific
type of baguette, the “baguette de tradition,”
which can only be made using the original, pre-
modern methods ... The key, Kaplan’s research
suggested, is the 18th century practice of
allowing the yeast to develop overnight, which
results in a baguette with a cream-colored
interior (rather than the familiar white) and a
much more pronounced flavor and smell which puts
the modern baguette to shame.

(2) www.asymptomatic.net - Posting entitled “America Has No
Bread”:
And so I thought I would go to the only place
that I know to create pastries anything like what
I had seen in France to pick up something in the
morning. But unfortunately, America has no
bread. ... I remember standing at the airport
in Philly waiting for Berta to pick me up and
looking at everyone on the platform thinking,
“I’ve got bread that was baked fresh this morning
– in Paris.” And I smiled like an idiot.

Moreover, the very fact that consumers in the United States
are willing to pay a premium to have bread shipped directly
from Paris establishes that the bread is highly desirable,
and that such bread’s origin in Paris is a material factor
in the consumer’s purchasing decision.
For these reasons, we find that the third element of
the Section 2(e)(3) refusal, materiality, is established in
this case.
Ser. No. 78598734
16
Based on all of the evidence of record3 and for the
reasons discussed above, we find that applicant’s mark is
primarily geographically deceptively misdescriptive as
applied to the “bread” identified in applicant’s
application and that the Section 2(e)(3) refusal therefore
is proper.4

Decision: The Section 2(e)(3) refusal to register is
affirmed.

3 Though we have not specifically discussed the evidence
submitted by applicant, we have carefully considered it and find
it to be outweighed by the evidence discussed above which
suffices to establish that applicant’s mark is primarily
geographically deceptively misdescriptive.

4 Because the refusal of registration under Section 2(e)(3) is
proper as to at least one of the products listed in applicant’s
Class 30 identification of goods, we need not decide whether the
mark is also unregistrable as to the other Class 30 goods
identified in the application. Cf. In re Richardson Ink Co., 511
F.2d 559, 185 USPQ 46 (CCPA 1975)(if mark is merely descriptive
of any of the goods in a particular class, refusal as to all of
the identified goods in that class is proper). Accord, In re
Quik-Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505 (CCPA
1980); In re Harry N. Abrams, Inc., 223 USPQ 832 (TTAB 1984).