Regency Inns Manage-ment, Int.

Trademark Trial and Appeal Board

Jul 25, 2006

No. 76591237 (T.T.A.B. Jul. 25, 2006)

Mailed:
July 25, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Regency Inns Management, Inc.
________

Serial Nos. 76591235 and 76591237
_______

G. Brian Pingel, Camille L. Urban, and Adam W. Jones of
Brown, Winick, Graves, Gross, Baskerville and Schoenebaum
P.L.C. for Regency Inns Management, Inc.

Ty Murray, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Seeherman, Hairston and Zervas, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Regency Inns Management, Inc. has appealed from the
final refusal of the Trademark Examining Attorney to
register, in standard character form, the marks DEADWOOD
RESORT, with RESORT disclaimed,1 and DEADWOOD RESORT AND
CONFERENCE CENTER, with RESORT AND CONFERENCE CENTER

1 Application Serial No. 76591235, filed May 10, 2004, based on
Section 1(b) of the Trademark Act (intent-to-use).
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser Nos. 76591235 and 76591237
2
disclaimed,2 both for hotel and motel services.
Registration has been refused as to both marks pursuant to
Section 2(e)(2) of the Trademark Act, 15 U.S.C.
§1052(e)(2), on the ground that applicant’s marks are
primarily geographically descriptive.
Applicant and the Examining Attorney filed appeal
briefs in both appeals.3 Applicant did not request an oral
hearing. Because the appeals involve common questions of
law and fact, we are deciding both in a single opinion.
Section 2(e)(2) of the Trademark Act prohibits the
registration of a mark which, when used on or in connection
with the goods or services of an applicant, is primarily
geographically descriptive of them. In order to establish
that a mark is primarily geographically descriptive, the
Examining Attorney must show that (1) the term in the mark
sought to be registered is the name of a place known
generally to the public, and (2) the public would make a
goods/place association, that is, believe that the goods or
services for which the mark is sought to be registered

2 Application Serial No. 76591237, filed May 10, 2004, based on
Section 1(b) of the Trademark Act (intent-to-use).
3 With his brief, the Examining Attorney has requested that the
Board take judicial notice of definitions of the words “resort”
and “convention center” taken from, respectively, One Look and
Wikipedia. Because the entries are from on-line references, we
decline to take judicial notice of them. See TBMP §1208.04 (The
Board will not take judicial notice of definitions found only in
on-line dictionaries and not available in a printed format).
Ser Nos. 76591235 and 76591237
3
originate in that place. See In re Societe Generale des
Eaux Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450
(Fed. Cir. 1987); In re JT Tobacconists, 59 USPQ2d 1080
(TTAB 2001); University Book Store v. University of
Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994); and
In re California Pizza Kitchen, Inc., 10 USPQ2d 1704 (TTAB
1988). If the goods or services do in fact emanate from
the place named in the mark, the goods/place association
can be presumed. In re Carolina Apparel, 48 USPQ2d 1542
(TTAB 1998).
With respect to the first part of the test, the
Examining Attorney has submitted excerpts taken from
various websites that feature the city of Deadwood, South
Dakota, and describe it as a historic site. The website
for City of Deadwood, www.cityofdeadwood.com, touts the
city’s place on the National Historic Register, states that
it is an historically significant city that attracted such
characters as Wild Bill Hickok and Calamity Jane, and
claims that it is “the largest historic restoration project
in the United States.” It also says that contemporary
Deadwood has 80-plus gaming halls that have revitalized
Deadwood’s tourism industry. The website at
www.deadwood.net, under the title “Deadwood Information and
History,” states that tourism is important to the city’s
Ser Nos. 76591235 and 76591237
4
economy. The website at www.deadwood.org states that
Deadwood has over 50 places for accommodations, including
hotels, motels, bed & breakfasts and cabins, condos and
lodges, while the website for Deadwood Gulch Resort &
Gaming, www.deadwoodgulch.com, advertises Deadwood Gulch
Resort, which includes rooms, a restaurant and a convention
center in Deadwood, South Dakota.
The evidence submitted by the Examining Attorney is
sufficient to establish that Deadwood is the name of a
place generally known to the public. Moreover, evidence
that Deadwood is a center of tourism, and that many lodging
facilities are located there, is sufficient to establish a
goods/place association, that is, that consumers will
believe that hotel and motel services emanate from that
city.
Applicant does not dispute that Deadwood is a place
known to the public, or that consumers will make a
goods/place association between hotel and motel services
and the city of Deadwood. In fact, applicant has
acknowledged the geographic significance of Deadwood: “it
is recognized that the mark clearly has a geographic
connotation to it.” Brief, p. 3.
Applicant’s sole argument against a finding that its
marks are primarily geographically descriptive is that,
Ser Nos. 76591235 and 76591237
5
because of the presence of the additional wording in the
marks, RESORT in DEADWOOD RESORT, and RESORT AND CONVENTION
CENTER in DEADWOOD RESORT AND CONVENTION CENTER, the marks
as a whole are not primarily geographically descriptive.
We are not persuaded by this argument. Although the
marks do contain the additional wording, these words,
RESORT and RESORT AND CONVENTION CENTER, do not in any way
affect the geographic significance of DEADWOOD. RESORT and
RESORT AND CONVENTION CENTER are descriptive and/or generic
terms (and have been disclaimed by applicant); they do not
have any source-indicating value. The presence of generic
or highly descriptive terms in a mark which also contains a
primarily geographically descriptive term does not serve to
detract from the primary geographical significance of the
mark as a whole. In re JT Tobacconists, supra at 1982. In
particular, the words RESORT and RESORT AND CONVENTION
CENTER, used in combination with DEADWOOD, do not cause
DEADWOOD to have another or additional meaning, such that
DEADWOOD or the marks as a whole would have a double
entendre.
Decision: The refusals of registration on the ground
that DEADWOOD RESORT (Serial No. 76591235) and DEADWOOD
RESORT AND CONFERENCE CENTER (Serial No. 76591237) are
primarily geographically descriptive are affirmed.