Pemobi Comercial Expor-tardora Ltda.

Trademark Trial and Appeal Board

Sep 25, 2001

No. 75749063 (T.T.A.B. Sep. 25, 2001)

9/25/01
GDH/gdh
Paper No.
12

UNITED STATES PATENT AND TRADEMARK OFFICE
______

Trademark Trial and Appeal Board
______

In re Pemobi Comercial Exportadora Ltda.
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Serial No. 75/749,063
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Edward A. Sokolski, Esq. for Pemobi Comercial Exportadora Ltda.

Raul Cordova, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
______

Before Hohein, Hairston and Drost, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judges:

Pemobi Comercial Exportadora Ltda., a Brazilian
corporation located in São Paulo, Brazil, has filed an
application to register the term "GIALLO CALIFORNIA" as a
trademark for goods identified as "granite stones".1

1 Ser. No. 75/749,063, filed on July 13, 1999, which alleges a date of
first use anywhere and in commerce of January 23, 1999. The word
"GIALLO," which translated from Italian means "YELLOW," is disclaimed.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/749,063

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Registration has been finally refused under Section
2(e)(3) of the Trademark Act, 15 U.S.C. §1052(e)(3), on the
ground that applicant's mark is primarily geographically
deceptively misdescriptive of its goods.
Applicant has appealed. Briefs have been filed but an
oral hearing was not requested. We affirm the refusal to
register.
In order to establish a prima facie case for refusal
on the ground that a mark is primarily geographically
deceptively misdescriptive of an applicant's goods within the
meaning of Section 2(e)(3) of the statute, the Examining
Attorney must show that: (1) the primary significance of the
mark is a generally known geographic place; and (2) purchasers
would be likely to think or reasonably believe that the
applicant's goods originate in or are connected with the
geographic place identified by the mark, that is, they would
make a goods/place association, when in fact the goods do not
originate in or are not connected with the place identified by
the mark. See, e.g., In re Save Venice New York, Inc., No. 00-
1458, slip op. at 3 (Fed. Cir. July 27, 2001); In re Wada, 194
F.3d 1297, 52 USPQ 1539, 1540 (Fed. Cir. 1999); In re Societe
Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3
USPQ2d 1450, 1452 (Fed. Cir. 1987); In re Loew's Theatres, Inc.,

Ser. No. 75/749,063

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769 F.2d 764, 226 USPQ 865, 867 (Fed. Cir. 1985); and In re
Nantucket, Inc., 677 F.2d 95, 213 USPQ 889, 892-93 (CCPA 1982).
However, "[a] mark is not primarily geographic where the
geographic meaning is obscure, minor, remote, or not likely to
be connected with the goods." In re Wada, supra, citing In re
Nantucket, Inc., supra at 892.
Applicant submits that "the combination of GIALLO with
CALIFORNIA makes for a composite mark which is no longer merely
geographic or descriptive." In particular, applicant argues
that because "California is known for high quality products and
[is] a prestigious term which carries an aura of status," the
primary significance of the composite term "GIALLO CALIFORNIA"
is not geographical "but rather suggests or hints at some
desirable aura" of applicant's granite stones.
Applicant, citing an excerpt which is of record from
an article on California "which is taken from the online edition
of the Encyclopedia Britannica," also maintains that "[i]t is
well established and known by potential customers that
California is not a source of granite." Such excerpt, in
relevant part, states that "[i]n economic terms California is
more aptly compared with nations than with states"; that
"California supplanted New York in 1965 as the leading state in
the export of manufactured goods; and that "[t]he state is
dominant in aerospace (although the industry was declining in
Ser. No. 75/749,063

4
the 1990s), agriculture, wine making, and the film and
television industries." The excerpt further notes, with respect
to mining, that "[g]old mining is now insignificant" and that
"[o]ther production includes natural gas, cement, sand and
gravel, borate, soda, and salt." In consequence of the omission
therein of any reference to granite, and while admitting in its
response to the initial Office Action that its goods "originate
in Brazil" instead of California, applicant contends that
"[t]here is no 'goods-place' association between granite and
California to make the mark [primarily] geographically
deceptively misdescriptive."
We agree with the Examining Attorney, however, that
under the first prong of the test for whether a term is
primarily geographically deceptively misdescriptive, the primary
significance of the term "GIALLO CALIFORNIA," when considered as
a whole, is a generally known geographic place, namely, the
state of California. The sole meaning of the word "California,"
as shown by the dictionary definition of record from Webster's
New Geographical Dictionary, is "[a] western state of U.S.A.,
bounded on N by Oregon, on E by Nevada and Arizona, on S by
Mexican state of Baja California, and on W by Pacific Ocean; 3d
state in area, 158,693 sq. m. ...; 1st state in population,
(1980c) 23,667,902; * [capital] Sacramento; 31st state admitted
to the Union (1850)." Applicant does not contend to the
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contrary and, as previously mentioned, has indicated in the
application that the Italian word "giallo," which is disclaimed
as merely descriptive of its goods, translates to "yellow."2 We
concur with the Examining Attorney that, when used in connection
with granite stones, the term "GIALLO CALIFORNIA" "identifies
the color and origin of a quarried stone." As the Examining
Attorney persuasively asserts in his brief:
In trademarks, every word affects the
commercial impression of the mark. The
color addition of "giallo (yellow)' conveys
the idea that the goods not only originate
from California but that they represent a
particular type of granite from the state.
The color designation addition to the mark
(which has been disclaimed) enhances the
misconception of the [actual] origin of the
goods by increasing the consumer perception
of the geographic source of the goods.
Customers will believe not only that the
goods come from California but that the mark
identifies one of several kinds of granite
that come from the state. Mining products
represent a type of good that when it is

2 We take judicial notice, in this regard, that granite comes in a
variety of colors. For instance, A Field Guide to Rocks & Minerals
(1996) at 23, under the topic of "Granite," states that:

Granites are usually light in color, with readily visible
individual mineral grains. They may be gray, white, pink,
black and yellow-brown.

It is settled that the Board may properly take judicial notice of
entries in standard reference works, including encyclopedias,
dictionaries and the like. See, e.g., In re Hartop & Brandes, 311
F.2d 249, 135 USPQ 419, 423 at n. 6 (CCPA 1962); Hancock v. American
Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA
1953); and University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).

Ser. No. 75/749,063

6
identified with a particular locale, the
overall geographic significance of the
source of the goods dominates since the
consumer's expectation as to the provenance
of the granite reflects a real plausibility.
....

We find, therefore, that rather than hinting at or
suggesting an aura of desirability, as urged by applicant, the
primary significance of the term "GIALLO CALIFORNIA" is that of
the state of California, which unquestionably is a generally
known geographic place. The geographic significance of the word
"CALIFORNIA" is not obscured or eliminated by the addition
thereto of the descriptive Italian word "GIALLO," which means
"yellow" and which meaning would not be lost or obscured as part
of the term "GIALLO CALIFORNIA" when used in association with
such goods as granite stones. See, e.g., In re Wada, supra at
1540-41 [primary significance of mark "NEW YORK WAYS GALLERY"
for various kinds of leather bags, luggage, back packs, wallets,
tote bags, and the like is that of generally known geographic
place because term "NEW YORK" is not an obscure geographical
term and such geographical significance is not lost by the
addition thereto of the words "WAYS GALLERY"].
Inasmuch as the first prong of the test for whether a
mark is primarily geographically deceptively misdescriptive has
been satisfied, and since applicant, as to the second prong of
such test, has admitted that, as indicated previously, its goods
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emanate from Brazil instead of California," the sole issue
remaining is whether, under the second prong of such test,
customers for applicant's granite stones would make a
goods/place association upon encountering the term "GIALLO
CALIFORNIA" used in connection with those goods. While the
Examining Attorney, in light of the absence of any mention of
granite in the single encyclopedia excerpt submitted by
applicant, has "stipulated for the record that California does
not mine or quarry granite," the Examining Attorney nonetheless
observes that "the record establishes that there is a mining
industry in the state for oil, sand and gravel, lead, magnesium
and gypsum."
Specifically, the Examining Attorney relies upon the
above-noted definition of "California" from Webster's New
Geographical Dictionary, which among other things sets forth as
"[c]hief products: Vegetables, fruit, cotton, rice; oil,
natural gas, lead, magnesium, gypsum; manufacturing;
transportation equipment (esp. aircraft and parts), electrical
machinery; lumber; food processing; film industry; [and]
tourism," and upon the Encyclopedia Britannica excerpt furnished
by applicant, which as previously indicated lists under the
topic of "Mining" such "[o]ther production" as "natural gas,
cement, sand and gravel, borate, soda, and salt." In view
thereof, the Examining Attorney maintains that, "[g]iven that
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8
California is world renowned for having a large diversified
economy[,] including mining, it is reasonable to assume that
buyers of applicant's slab stones are wont to believe that they
originate from the place named in the mark," particularly since,
as mentioned earlier, the encyclopedia excerpt furnished by
applicant states that "[i]n economic terms California is more
aptly compared with nations than with states."
The Examining Attorney, citing In re Loews Theatres,
Inc., supra at 868, further contends in this regard that, in
order to establish a goods/place association, he must show only
a reasonable basis for concluding that the public is likely to
believe that the mark identifies the place from which the goods
originate. Moreover, it should be pointed out that the
Examining Attorney need not show the fame of the place for the
goods at issue, but rather just the likelihood that the
particular place will be associated with the specific goods.
Id. See also In re Jack's Hi-Grade Foods, Inc., 226 USPQ 1028,
1030 (TTAB 1985). Here, the Examining Attorney insists that
"goods that are dug from ... granite mountains or quarries and
are identified by a geographic term ... will inevitably lead
customers think that there is a connection between the
geographic place named in the mark and the goods, especially
when the geographic location is as prominent as California.
According to the Examining Attorney:
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Mining products are different than
manufactured products because they require
an actual penetration of the ground which is
necessarily located in a fixed geographic
area. Naming a mined product after a
geographic location creates an immediate
association in the marketplace absent a
counterweight due to the inherent nature of
the goods.

The Examining Attorney therefore reiterates that "there is a
reasonable basis to conclude that the public will believe that
the [applicant's] goods originate from California based on the
size and varied economy of the state and the fact that granite,
being a common stone sold in mass, would be viewed as
originating from a large geographic area that is identified on
the product."3
As applicant accurately observes, the Loews Theatres
case "involved the mark DURANGO for chewing tobacco and it was
shown that the city of Durango was in fact a place where tobacco
is grown and produced." However, in this case, we nonetheless
agree with the Examining Attorney that, even if California is
not famous or known for granite stones, such a product is a
closely related common building material to cement, sand and
gravel, which the record reveals the state's mining industries
do in fact produce. Such evidence, along with the demonstrated

3 We judicially notice, as implicitly requested by the Examining
Attorney in his brief, that the electronic version of The American
Heritage Dictionary of the English Language (3rd ed. 1992) defines
"granite" as "[a] common, coarse-grained, light colored, hard igneous
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fact that California has a large diversified economy, is
sufficient to establish a prima facie showing that purchasers
for applicant's goods, who according to applicant "are not
casual customers but rather professional discriminating
purchasers such as companies in the construction or building
industries," would reasonably believe that granite stones
bearing the term "GIALLO CALIFORNIA" are a natural expansion of
the state's mining industries and hence originate in California.
See, e.g., In re Save Venice New York, Inc., supra at 5 ["from
the consumer's perspective, we ... find no reason to believe
that the public strictly limits its association of a place to
the geographic region's traditional products or services";
instead, "[b]ecause ... consumers may assume that geographic
regions, like other commercial actors, are likely to expand from
their traditional goods or services into related goods or
services, we hold that the registrability of a geographic mark
may be measured against the public's association of that region
with both its traditional goods and any related goods or
services that the public is likely to believe originate there"]
and In re Broyhill Furniture Industries, Inc., ___ USPQ2d ___,
___ (TTAB 2001) [mark "TOSCANA," which is Italian term for

rock consisting chiefly of quartz, orthoclase or microcline, and mica,
used in monuments and for building."
Ser. No. 75/749,063

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Tuscany, held primarily deceptively misdescriptive of furniture
which does not originate in Tuscany region of Italy].
Moreover, and in any event, we take judicial notice
that, contrary to the negative inference from the evidence
offered by applicant, California does indeed produce granite.
For example, as set forth in the article on "Granite" in 13 The
Encyclopedia Americana (int'l ed. 1998) at 172:4
Various countries such as Sweden, Finland
and Canada have been leading producers of
granite. In the United States, large
quarries exist in Georgia, North Carolina,

4 In fact, California has been a significant producer of granite for
many years. For instance, 7 World Book Encyclopedia (1960) at 303
states, under the subject of "GRANITE," that California ranks tenth
among the "TEN LEADING GRANITE STATES" in terms of "tons of granite
for building purposes" and indicates, under the heading "Where It Is
Found," that:

Granite for building stone is quarried in 10 states.
Granite used for monuments is quarried in Vermont,
Minnesota, Wisconsin, Massachusetts, California, Georgia,
Rhode Island, North Carolina, New Hampshire, and Maine.
Many of the western states produce granite, but it is used
only locally because its heavy weight makes transportation
costs high. ....

That California has a significant granite industry is also confirmed
by the article on such state in 3 World Book Encyclopedia (1960) at
35, which in the subheading of "Minerals" under the topic of "Natural
Resources," reports that:

The chief gold deposits lie along the western side of
the Sierra Nevada. Silver, copper, granite, marble, and
roofing slate are also taken from the Sierra Nevada. ....

Similarly, in the subheading of "Other Minerals" under the topic of
"Mining," the same article indicates that "California also produces
clays, diatomite, granite, gypsum, lead, magnesium, marble,
molybdenum, perlite, pumice, pyrites, silver, strontium minerals,
sulfur and talc." Id. at 43.
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the northern New England states, Minnesota,
and California.

In fact, we judicially notice that according to an article
entitled "Stone, Dimension" from the U.S. Geological Survey
Minerals Yearbook--1999 at 73.1, "[d]iminision stone" is
"defined as natural rock material quarried for the purpose of
obtaining blocks or slabs that meet specifications as to size
(width, length, and thickness) and shape," of which "the
principal rock types are granite, limestone, marble, sandstone,
and slate." Such article, under the heading of "Production,"
indicates in relevant part that:
Granite.--Dimension granite was
produced by 41 companies operating 75
quarries in 19 states. Production was
437,000 t valued at $115 million. .... The
top five producing States, in descending
order by tonnage, were Georgia,
Massachusetts, North Carolina, California,
and South Carolina. ....

Id. at 73.2. There is simply no doubt, in view thereof, that a
prima facie case exists that the purchasing public for
applicant's goods, which are a type of dimension stone, would
make a goods/place association in that they would reasonably
think or believe that granite stones bearing the mark "GIALLO
CALIFORNIA" originate in California when in fact such goods do
not.
Decision: The refusal under Section 2(e)(3) is
affirmed.