South Park Cigar, Inc.

Trademark Trial and Appeal Board

Feb 1, 2007

No. 78486382 (T.T.A.B. Feb. 1, 2007)

Mailed:
Feb. 1, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re South Park Cigar, Inc.
________

Serial No. 78486382
_______

Charles W. Grimes of Grimes & Battersby LLP for South Park
Cigar, Inc.

Daniel Brody, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney)
_______

Before Grendel, Rogers and Cataldo, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

INTRODUCTION
Applicant seeks registration on the Principal Register
of the mark YBOR GOLD (in standard character form) for
THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser. No. 78486382
2
goods identified in the application as “cigars, pipe
tobacco and roll-your-own tobacco,” in Class 34.1
At issue in this appeal are the Trademark Examining
Attorney’s final refusals to register applicant’s mark on
two grounds, first, that the mark is deceptive and thus
unregistrable under Trademark Act Section 2(a), 15 U.S.C.
§1052(a), and second, that the mark is primarily
geographically deceptively misdescriptive and thus
unregistrable under Trademark Act Section 2(e)(3), 15
U.S.C. §1052(e)(3).2 The appeal is fully briefed.

REFUSALS AT ISSUE ON APPEAL
Initially, we must clarify what we deem to be the
proper statutory basis for refusal in this case. To
maintain a Section 2(a) deceptiveness refusal, the Office
must establish that (1) the mark misrepresents or
misdescribes the goods, (2) the public would likely believe

1 Serial No. 78486382, filed on September 20, 2004. The
application is based on applicant’s allegation of a bona fide
intent to use the mark in commerce, under Trademark Act Section
1(b), 15 U.S.C. §1051(b).

2 Trademark Act Sections 2(a) and 2(e)(3) provide in pertinent
part as follows: “No trademark by which the goods of the
applicant may be distinguished from the goods of others shall be
refused on the principal register on account of its nature unless
it— (a) Consists of or comprises immoral, deceptive, or
scandalous matter; ... (e) Consists of a mark which ... (3) when
used on or in connection with the goods of the applicant is
primarily geographically deceptively misdescriptive of them....”
Ser. No. 78486382
3
the misrepresentation, and (3) the misrepresentation would
materially affect the public’s decision to purchase the
goods. In re California Innovations Inc., 329 F.3d 1334,
1336-37, 66 USPQ2d 1853, 1854 (Fed. Cir. 2003), citing In
re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260
(Fed. Cir. 1988). To maintain a refusal under Section
2(e)(3), the Office must establish that (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, 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.
The addition of a materiality element to the Section
2(e)(3) test is “due to the NAFTA changes in the Lanham
Act.” Id. The materiality showing now required in both
the Section 2(a) and Section 2(e)(3) refusals “equates this
test [under Section 2(e)(3)] with the elevated standard
applied under §1052(a).” Id., 329 F.3d at 1340, 66 USPQ2d
at 1857. However, the court went on to state that

geographic deception is specifically dealt with
in subsection (e)(3), while deception in general
Ser. No. 78486382
4
continues to be addressed under subsection (a).
Consequently, this court anticipates that the PTO
will usually address geographically deceptive
marks under subsection (e)(3) of the amended
Lanham Act rather than subsection (a). While
there are identical legal standards for deception
in each section, subsection (e)(3) specifically
involves deception involving geographic marks.

Id., 329 F.3d at 1341-42, 66 USPQ2d at 1858.
Thus, in keeping with the Court’s instructions and its
construction of the statute, we deem the appropriate
refusal in this case involving an allegedly geographically
deceptive mark to be only the Section 2(e)(3) “primarily
geographically deceptively misdescriptive” refusal, and not
the Section 2(a) deceptiveness refusal.3 See United States

3 In TMEP section 1210.05(a), it is stated that:

...because the statute expressly prohibits registration of
deceptive marks on the Supplemental Register or on the
Principal Register under §2(f), the examining attorney will
initially refuse registration of geographically deceptive
marks under both §§2(a) and 2(e)(3). If the applicant
alleges use in commerce prior to December 8, 1993 and
amends to the Supplemental Register, or establishes that
the proposed mark acquired distinctiveness under §2(f)
before December 8, 1993, the examining attorney will
withdraw the §2(e)(3) refusal, but will not withdraw the
§2(a) refusal.

It would appear to us that the converse is also true in a case
like the case at bar involving a geographic mark: unless the
applicant is seeking registration on the Supplemental Register
with a claim of first use in commerce predating the NAFTA
implementation date of December 8, 1993, or is seeking
registration on the Principal Register under Section 2(f) based
on a claim that the mark had acquired distinctiveness prior to
December 8, 1993, the proper refusal is under Section 2(e)(3),
not Section 2(a), and the Section 2(a) refusal, if made, should
be withdrawn.
Ser. No. 78486382
5
Playing Card Company v. Harbro, LLC, ___ USPQ2d ___,
Opposition No. 91162078 (TTAB, December 14, 2006).
An additional issue is presented by the record in this
case. As noted above, one element of the Section 2(e)(3)
refusal includes a showing that the applicant’s goods in
fact do not come from the place named in the mark. If the
goods in fact come from the place named in the mark, then
the proper refusal is that the mark is primarily
geographically descriptive, under Section 2(e)(2). Such a
refusal, in appropriate cases, may be obviated by
applicant’s submission of a disclaimer of the geographic
term. In the present case, applicant has maintained
throughout prosecution and on appeal that its goods in fact
may or will come from the geographic place named in the
mark, that the second element of the Section 2(e)(3)
refusal therefore has not been and cannot be established by
the Trademark Examining Attorney, and that applicant is
willing to submit a disclaimer of YBOR if such disclaimer
will put the application in condition for publication.
However, as discussed more fully below in connection with
the second element of the Section 2(e)(3) refusal, we agree
with the Trademark Examining Attorney’s contention that
applicant has not established that its goods in fact come
or will come from the place named in the mark. In view of
Ser. No. 78486382
6
this finding, we conclude that Section 2(e)(2) is not a
proper basis for refusal and that applicant’s proffered
disclaimer of YBOR does not suffice to overcome a Section
2(e)(3) refusal. See In re Wada, 194 F.3d 1297, 52 USPQ2d
1539 (Fed. Cir. 1999).
In short, we find that the proper refusal at issue in
this appeal is the Section 2(e)(3) “primarily
geographically deceptively misdescriptive” refusal. We
turn now to consideration of that refusal.

SECTION 2(e)(3) REFUSAL
As noted above, 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.
Stated briefly, it is the Trademark Examining
Attorney’s position that the primary significance of
applicant’s mark YBOR GOLD is that of a generally known
Ser. No. 78486382
7
geographic place, i.e., the “Ybor City” area of Tampa,
Florida, also known as “Ybor” for short; that a goods/place
association exists between that geographic place and
applicant’s goods; that applicant’s goods in fact do not
come from the place named; and that this misrepresentation
would be material to the consumer’s decision to purchase
the goods.
For its part, applicant argues that “Ybor City” is not
a generally known geographic location; that in any event
the primary significance of applicant’s mark is not that of
this geographic location; that there is no goods/place
association between the place named in the mark and
applicant’s goods; that applicant’s goods in fact come from
or will come from the place named in the mark; and that any
geographical misrepresentation resulting from applicant’s
use of the mark on its goods is not or would not be
material to the consumer’s decision to purchase the goods.

THE EVIDENCE
The Internet evidence of record (submitted by both
applicant and the Trademark Examining Attorney)
Ser. No. 78486382
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reveals the following.4
The website www.placesnamed.com has an entry for “Ybor
City,” identifying it as a location in Hillsborough County,
Florida.
The website www.maps.yahoo.com includes an entry for
“Ybor City, FL,” showing it to be a location within Tampa,
Florida.
The website www.tampa.gov.net includes a “Neighborhood
Information Page” which itself includes the following
listing for “Ybor City”: “The Ybor City Area is located in
the east-central part of Tampa, bounded on the north by 26th
Avenue, the east by 37th Street, the south by Adamo Drive
and Cass Street, and the west by Nebraska Avenue and I-
275.”
The website of Frommer’s travel guide, at
www.frommers.com, lists “Ybor City” as an attraction
located in Tampa, Florida, and includes the following
information:

Ybor City
Northeast of downtown, the city’s historic
Latin district takes its name from Don Vicente
Martinez Ybor (Eeee-bore), a Spanish cigar maker
who arrived here in 1886 via Cuba and Key West.

4 As discussed more fully below, we have given no consideration
to the alleged Internet evidence cited by applicant for the first
time in its reply brief.
Ser. No. 78486382
9
Soon his and other Tampa factories were producing
more than 300,000 hand-rolled stogies a day.
It may not be the cigar capital of the world
anymore, but Ybor is still smokin’ as the
happening part of Tampa, and it’s one of the best
places in Florida to buy hand-rolled cigars. ...
...
Even if you’re not a cigar smoker, you’ll
enjoy a stroll through the Ybor City State
Museum, ... housed in the former Ferlita
Bakery.... You can take a self-guided tour to see
the collection of cigar labels, cigar
memorabilia, and works by local artisans.
...admission includes a 15-minute guided tour of
La Casita, a renovated cigar worker’s cottage
adjacent to the museum; it’s furnished as it was
at the turn of the last century. ... Better
yet, plan to catch a cigar-rolling demonstration
(ongoing; no specific schedule), held Friday
through Sunday from 10am to 3pm.

On the website of Fodor’s, another travel guide, at
www.fodors.com, the entry for “Ybor City” includes the
following information:

Ybor City
One of only three National Historic Landmark
districts in Florida, lively Ybor City, Tampa’s
Latin quarter, has antique-brick streets and
wrought-iron balconies. Cubans brought their
cigar-making industry to Ybor (pronounced ee-
bore) City in 1886, and the smell of cigars –
hand-rolled by Cuban immigrants – still wafts
through the heart of this east Tampa area, along
with the strong aroma of roasting coffee. These
days the neighborhood is emerging as Tampa’s hot
spot as empty cigar factories and historic social
clubs are transformed into trendy boutiques, art
galleries, restaurants and nightclubs that rival
those on Miami’s sizzling South Beach. ...
Guided walking tours of the area ($5) enable you
to see artisans handroll cigars following time-
honored methods. ... The Ybor City Museum State
Ser. No. 78486382
10
Park provides a look at the history of the cigar
industry. ...

The website of the Ybor Times (www.ybortimes.com)
includes the following information under the heading
“Cigars in Ybor”:

Do you know how Ybor City came to be known as
Cigar City, USA? In 1886 cigarmakers Vicente
Martinez-Ybor and Ignacio Haya moved their cigar
factories from Key West to Tampa. Tampa had
everything the cigarmakers needed: a railroad, a
port and a warm climate that provided a natural
humidor for the tobacco leaf. Once the
cigarmaking was under way, Ybor City became home
to Cuban, Spanish and Italian immigrants who
worked in more than 140 cigar factories in and
around the area, producing 250 million cigars a
year. For more than half a century, Ybor City
was the “Cigar Capital of the World.” Though the
cigar business faded during the last few decades,
the 1990’s have seen a dramatic renewal in the
cigar culture. Today, the streets of Ybor City
are again home to a slew of cigar stores and
carts. And visitors to historic Ybor Square can
still watch artisans roll a fresh cigar by hand.
Vicente and Ignacio would be proud.

The website then goes on, under the heading “Ybor’s cigar
industry,” to give the names, addresses and phone numbers
of ten cigar retail stores, twelve mail order cigar
retailers, and four cigar manufacturers, all located in
Ybor City.
The website of the Ybor City Chamber of Commerce, at
ybor.org/infocenter, includes the following information:
Ser. No. 78486382
11

Whether you are a history buff, cigar aficionado
or simply looking for “Florida’s Latin Quarter
Experience” the visitor information center at
Centro Ybor is just for you! Housed inside the
Cigar Museum and designed as an opened cigar box,
this charming facility serves as a one-stop
visitor center providing information about
accommodations, events, attractions, shopping,
dining and entertainment. Surrounded by cigar
art, a historical film theater, souvenir shop and
brochures that offer endless resources and ideas
for you to plan your “Latin Quarter Experience.”

The website infoplease.com (submitted by applicant)
includes the following entry for Vicente Martinez Ybor, who
founded Ybor City:

Ybor grew up in Spain and at age 14 immigrated to
Cuba, which was then a Spanish colony. There he
worked in Cuba’s most famous industry, the making
of cigars. In 1868, the Cuban revolution for
independence from Spain broke out. To avoid war,
Ybor moved to Key West, Florida. He opened a
cigar making business there, but after a number
of labor disputes, moved to Tampa. In 1885, he
bought large tracts of land at the outskirts of
Tampa and built a factory. He later bought even
more land and called the area Ybor City. Within
a few years, the city grew to 3,000 residents,
and the area became a famous center for making
fine cigars. It also became a center for Cuban
culture in Florida, since so many of the cigar
workers were from Cuba or of Cuban descent.
Jewish, German, and Italian immigrants also
flocked to Ybor City. By 1900, the city was
known as “the cigar capital of the world.” The
industry began to decline, however, and in the
1920s and 1930s many of Ybor City’s employees
lost their jobs in the cigar factories. Today,
parts of Ybor City have been restored as a
historic landmark district.

Ser. No. 78486382
12

The Trademark Examining Attorney also has submitted
excerpts from numerous news articles obtained from the
NEXIS database. These excerpts all refer to “Ybor City” as
a neighborhood or area located in Tampa, Florida. Several
of the excerpts also refer to the area simply as “Ybor.”

Element 1: Is the primary significance of the mark a
generally known geographic location?

We turn to the first element of the Section 2(e)(3)
refusal, i.e., whether the primary significance of
applicant’s mark YBOR GOLD is that of a generally known
geographic location.
Based on the evidence of record, we find, first, that
“Ybor City” is the name of a generally known geographic
place, i.e., a specific neighborhood or area located in
Tampa, Florida. As noted above, “Ybor City” is listed and
has an entry on the “placesnamed” website, and on the Yahoo
maps website. It is listed on the website of the city of
Tampa as one of the recognized neighborhoods in the city.
It has its own listings or entries in the travel guides
Frommer’s and Fodor’s. Information about Ybor City is
included on the website of the Ybor Times, as well as on
the website of the Ybor City Chamber of Commerce. Numerous
references to Ybor City are found in the NEXIS evidence
Ser. No. 78486382
13
submitted by the Trademark Examining Attorney. This type
of evidence is highly relevant to the issue of whether Ybor
City is a generally known geographic location. See, e.g.,
In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d
1539 (Fed. Cir. 2003)(noting that examiner’s evidence
included “articles and travel brochures about the Jewish
quarter or neighborhood in Paris known as Le Marais”).
Taken together, we find that all of this evidence
establishes that “Ybor City” is a generally known
geographic location. On this record, Ybor City is neither
obscure nor remote, especially to the relevant purchasing
public, i.e., cigar aficionados specifically and, more
generally, people who are or may be traveling to Tampa,
Florida. See In re MCO Properties Inc., 38 USPQ2d 1154
(TTAB 1995)(whether place is generally known is determined
not in the abstract or with reference to the nationwide
purchasing public, but rather with reference to the
relevant purchasing public for the goods or services in
question).
Applicant argues that Ybor City is not a generally
known geographic location because its boundaries are ill-
defined. In support of this contention, applicant relies
on several Internet websites, from which applicant has
quoted in its reply brief. However, copies of the
Ser. No. 78486382
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printouts of the websites were not made of record prior to
appeal or submitted with the reply brief. We give this
unsubmitted Internet evidence no consideration. See
Trademark Rule 2.142(d).5 We find instead that Ybor City is
a well-defined and known neighborhood in Tampa, Florida.
See the “Neighborhood Information Page” of the tampa.gov
website referred to earlier, which sets out the specific
boundaries of the neighborhood known as Ybor City.
Applicant also argues that Ybor City is not a
generally known geographic location because the evidence
shows that it is not a “single” place. Applicant contends
that there are numerous locations within Tampa, the names
of which include the term “Ybor.” These include “Ybor,”
“Ybor City,” “Ybor Square,” and “Centro Ybor.” We are not
persuaded by this argument. It is clear from the evidence
cited by applicant that all of these places are within Ybor
City, and derive their “Ybor” names from that fact.
Moreover, even if applicant were correct in asserting that
“Ybor” identifies more than one location, it is settled
that the existence of more than one location bearing the
name in question does not detract from the geographical

5 We add that even if we had considered applicant’s mere
quotations as actual Internet evidence which was properly made of
record, it would not change our determination of this issue.

Ser. No. 78486382
15
significance of the term for purposes of Sections 2(e)(2)
or 2(e)(3). See, e.g., In re Loew’s Theatres, Inc., 749
F.2d 764, 226 USPQ 865 (Fed. Cir. 1985)(DURANGO); In re
Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB
1986)(CAMBRIDGE).
For these reasons, we find that “Ybor City” is a
generally known geographic location.
We find, next, that the primary significance of
applicant’s mark YBOR GOLD is that of this generally known
geographic location, Ybor City.
Applicant argues, to the contrary, that even if Ybor
City is a generally known geographic location, applicant’s
mark includes only the word YBOR, not the words YBOR CITY.
We are not persuaded. It is settled that terms commonly
used as shorthand or truncated references or nicknames for
a place are as primarily geographically descriptive (or
misdescriptive) of a place as are the full place names.
See United States Playing Card Company v. Harbro, LLC,
supra (VEGAS recognized as shorthand reference to Las
Vegas, Nevada, and thus is a primarily geographic term); In
re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998)(CAROLINA
recognized as shorthand reference to either North or South
Carolina, and thus is a primarily geographic term).
Ser. No. 78486382
16
The evidence of record contains numerous examples of
the designation “Ybor” alone being used as a shorthand
reference or a nickname for Ybor City. See, e.g., the
Frommer’s travel guide listing for “Ybor City” quoted
above, which includes the following: “It may not be the
cigar capital of the world anymore, but Ybor is still
smokin’ as the happening part of Tampa...” We note as well
that the local newspaper for Ybor City is called the Ybor
Times, not the “Ybor City Times.” The website of this
newspaper, excerpts of which are quoted above, includes
information under the heading “Ybor’s cigar industry.”
Many of the NEXIS excerpts made of record by the Trademark
Examining Attorney refer to Ybor City simply as “Ybor.”
Next, as noted above, applicant has contended that the
evidence establishes that there are numerous locations
within Tampa, the names of which include the term “Ybor,”
including “Ybor Square,” and “Centro Ybor.” Also as noted
above, it is clear that these places are within Ybor City,
and derive their “Ybor” names from that fact. Supporting
our finding that “Ybor” is used as shorthand for “Ybor
City” is the fact that these places are called “Ybor
Ser. No. 78486382
17
Square” and “Centro Ybor,” and not “Ybor City Square” and
“Centro Ybor City.”6
In short, we reject applicant’s argument that YBOR,
when standing alone (and as opposed to “Ybor City”), is not
a primarily geographic term.
In its response to the first Office action, applicant
asserted that “Applicant chose ‘YBOR’ as part of its mark
because of the man, Vicente Martinez Ybor, for whom the
‘Ybor City’ section of Tampa, Florida, was named.” This
assertion or argument has not been mentioned in either
applicant’s main appeal brief or its reply brief. In the
interest of completeness, however, we shall discuss the
issue. First, applicant’s “intent” in adopting its mark is
not relevant or probative of the issue at hand, i.e.,
whether consumers will regard YBOR as a primarily
geographic term. See, e.g., In re House of Windsor, Inc.,
221 USPQ 53, 56 (TTAB 1983). Next, to the extent that
applicant is arguing that the primary significance of YBOR
is that of a surname, rather than that of a geographic
location, we find that the record simply does not support

6 We also note, for whatever probative value it may have, that
applicant itself concludes its reply brief by stating: “In the
present application, the evidence of record shows that the goods
will originate in the place identified in the mark, namely the
Ybor section of Tampa, to the extent that such a place can be
identified.” (Reply brief at 6.)

Ser. No. 78486382
18
such a contention. The record shows only one person named
“Ybor,” i.e., the nineteenth-century cigar maker Vicente
Martinez Ybor, the founder of Ybor City.
Finally, there is another issue pertaining to the
first element of the Section 2(e)(3) refusal that was never
raised or argued by applicant but which we find necessary
to determine, again in the interest of completeness. It is
settled that

[u]nder the first prong of the test – whether the
mark’s primary significance is a generally known
geographic location – a composite mark such as
the applicant’s proposed mark must be evaluated
as a whole. ... It is not erroneous, however,
for the examiner to consider the significance of
each element within the composite mark in the
course of evaluation the mark as a whole.

California Innovations, supra, 329 F.3d at 1342, 66 USPQ2d
at 1858, quoting from In re Save Venice New York, Inc., 259
F.3d 1346, 1352, 59 USPQ2d 1778, 1782 (Fed. Cir. 2001).
See also In re Les Halles De Paris J.V., supra.
The issue to be discussed, therefore, is whether the
presence of the word GOLD in applicant’s mark YBOR GOLD
precludes a finding that the primary significance of the
mark, when viewed as a whole, is that of a well-known
geographic place. We find that it does not. Rather, we
find that GOLD is highly suggestive and laudatory, simply
Ser. No. 78486382
19
connoting the high quality of the goods, and that it thus
does not detract from the geographic significance of YBOR
or negate the primarily geographic significance of the mark
as a whole. See, e.g., In re Chatam International Inc.,
380 F.3d 1340, 1343, 71 USPQ2d 1944, 1946 (Fed. Cir.
2004)(the word GOLD in mark JOSE GASPAR’S GOLD for tequila
“describes...a quality of the good commensurate with great
value or merit”); In re Bacardi & Co. Ltd., 48 USPQ2d 1031
(TTAB 1997)(in the marks HAVANA SELECT, HABANA CLASICO, OLD
HAVANA, HAVANA PRIMO and HAVANA CLIPPER, all for alcoholic
beverages, the terms SELECT, CLASICO, OLD, PRIMO and
CLIPPER, respectively, do not detract from the primarily
geographic significance of HAVANA in each mark, nor do they
negate the primarily geographic significance of the marks
in their entireties). We cannot conclude that applicant’s
mere addition of the word GOLD to the geographic
designation YBOR results in an arbitrary, fanciful or
suggestive composite. Distinguish In re Sharky’s Dry Goods
Co., 23 USPQ2d 1061 (TTAB 1992)(PARIS BEACH CLUB for t-
shirts and sweatshirts held not deceptive under Section
2(a), due to incongruity of elements of mark).
For the reasons discussed above, we find that the
primary significance of applicant’s mark YBOR GOLD is that
of a generally known geographic location. The first
Ser. No. 78486382
20
element of the Section 2(e)(3) refusal therefore has been
met.

Element 2: Is the consuming public likely to believe the
place identified by the mark indicates the origin of the
goods bearing the mark, when in fact the goods do not come
from that place?

We turn next to the second element of the Section
2(e)(3) refusal, i.e., whether “the consuming public is
likely to believe the place identified by the mark
indicates the origin of the goods bearing the mark, when in
fact the goods do not come from that place.” California
Innovations, supra, 329 F.3d at 1341, 66 USPQ2d at 1858.
This element involves two issues. The first is whether
there is a goods/place association, and second, whether or
not applicant’s goods in fact come from the place named.
We shall begin with the second of these issues.
By way of background, we note that applicant’s address
of record, as stated in the original application and as
currently reflected in the record of the application, is
441 Vine Street, Suite 3900, Cincinnati, Ohio 45202.
Applicant has never filed an amendment changing this
address of record. However, in its request for
reconsideration of the final refusal, applicant stated that
it “is relocating its office to Tampa where Applicant’s
Ser. No. 78486382
21
goods will originate from.” The emphasis on “will” is
applicant’s; it exists presumably because the Trademark
Examining Attorney had rejected as insufficient applicant’s
earlier statement (in its response to the first Office
action) that applicant “is planning on opening an office in
Tampa” and that its goods therefore “may very well come
from the ‘Ybor City’ area of Tampa.” The Trademark
Examining Attorney was not persuaded by this statement and
denied applicant’s request for reconsideration.
In its main appeal brief, applicant did not raise the
issue of its location. However, the Trademark Examining
Attorney raised the issue in his appeal brief, noting that
“[a]pplicant has not indicated in any of its correspondence
the location of its offices in Tampa,” and arguing
essentially that applicant’s statement that it is
relocating to Tampa does not necessarily mean that
applicant is relocating to the Ybor City area of Tampa, as
opposed to another neighborhood in Tampa.
At page 3 of its reply brief, applicant responded by
stating expressly that it “has relocated its offices to
Tampa, and the goods affixed with the YBOR GOLD mark will
originate from Tampa.” Applicant argues that “[r]equiring
applicant to name its exact location within the city of
Tampa exalts form over substance. This is particularly
Ser. No. 78486382
22
true where the Examining Attorney has failed to set out the
geographical boundaries of either Ybor or Ybor City.”
(Reply brief at 5.) In support of this latter “indefinite
boundaries” argument, applicant again relies on the alleged
Internet references it cites and quotes for the first time
in its reply brief, but which (as noted above) were never
properly and timely made of record. Applicant’s argument
therefore is unsupported by the record. To the contrary,
as noted above, the evidence of record (the
www.tampa.gov.net excerpt) clearly delineates the
geographical boundaries of Ybor City. But even if
applicant had made its Internet evidence of record and thus
had supported its argument that the boundaries of Ybor City
are fluid and not easily determined, applicant’s argument
still would fail because applicant has not shown that its
location is within any of the alternative boundaries or
limits of Ybor City that are suggested by applicant’s
Internet evidence.
With respect to applicant’s argument that “[r]equiring
applicant to name its exact location within the city of
Tampa exalts form over substance,” we are not persuaded.7

7 Of course, this whole issue could have been resolved if the
Trademark Examining Attorney, in response to applicant’s
statement that it “has relocated” to Tampa, had specifically
required applicant, pursuant to Trademark Rule 2.61(b), 37 C.F.R.
§ 2.61(b), to provide its street address or other proof that it
Ser. No. 78486382
23
Rather, we agree with the Trademark Examining Attorney’s
quite logical contention that just because applicant is
located in Tampa does not mean that applicant necessarily
is located within the Ybor City section of Tampa, as
opposed to some other section of Tampa.8
In its reply brief, applicant has referred to an
alleged third-party registration of the mark THE LIGHT OF
YBOR, in which “the registrant’s address is merely listed
as a post office box in Tampa, Florida.” Applicant argues
that “just as the owner of THE LIGHT OF YBOR mark is not
required to specify where it is located within the city of
Tampa, so too should Applicant be permitted to produce and
market its product under the YBOR GOLD mark without the
Examining Attorney questioning its street address within

was within some recognized boundary of Ybor City. Such a
requirement was never made. See, e.g., In re DTI Partnership
LLP, 67 USPQ2d 1699 (TTAB 2003); In re SPX Corp. 63 USPQ2d 1592
(TTAB 2002); In re Page, 51 USPQ2d 1660 (TTAB 1999); TMEP §814.
However, because this information regarding applicant’s location
is solely within applicant’s control, and is so obviously vital
to any attempt by applicant to rebut the Trademark Examining
Attorney’s prima facie (and logically accurate) showing that
applicant, merely by being in Tampa, is not necessarily in Ybor
City, we find applicant’s failure to produce such information, if
available, to be telling.

8 Applicant argues that, by analogy, even though the team plays
its games in New Jersey, the New York Giants professional
football team is still allowed to call itself the New York
Giants. This contention is not supported by any evidence in the
record, but even if it were, we would find it to be unpersuasive.

Ser. No. 78486382
24
the city limits.” (Reply brief at 5.) We are not
persuaded.
First, the registration applicant refers to is not of
record; applicant has not even provided the registration
number. We therefore can give the registration no
consideration. Second, even if the registration were of
record, it would not prove what applicant says it proves.
The fact that the third-party registrant’s address of
record for purposes of correspondence with the Office is
listed merely as a post office box in Tampa does not
necessarily mean that the registrant is not located in the
Ybor City section of Tampa. For all we know, the examiner
may have determined that the registrant in fact was located
in Ybor City, either by requiring the applicant to supply
such information or as a result of applicant’s voluntary
disclosure of or reliance on such fact. Such a disclosure
by applicant in the present case, which so obviously would
overcome the Trademark Examining Attorney’s prima facie
case in support of the Section 2(e)(3) refusal, is
conspicuously absent from the record.
For these reasons, we conclude that the record does
not support a finding that applicant’s goods will come from
Ybor City, the place named in the mark. Therefore, this
Ser. No. 78486382
25
prong of the second element of the Section 2(e)(3) refusal
therefore is satisfied.
We turn next to the first prong of the second element,
i.e., whether there is a goods/place association between
the “cigars” identified in applicant’s application and the
place named in the mark, Ybor City.
On this issue, the Federal Circuit has stated:

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. ... Thus, to make
a goods-place association, the case law permits
an inference that the consumer associates the
product with the geographic location in the mark
because that place is known for producing the
product.

In re Les Halles De Paris, supra, 334 F.3d at 1373-74, 67
USPQ2d at 1541 (internal citations omitted). In the case
of In re Loew’s Theatres, Inc., supra, 769 F.2d at 768, 226
USPQ at 868 (a pre-NAFTA case which the court subsequently
has stated (in California Innovations, supra) is still good
law with respect to the “goods/place association”
requirement of a Section 2(e)(3) refusal), the court noted
that to establish a goods/place association, the PTO need
not show that the place is well-known or noted for the
goods; rather, “...the PTO must show only a reasonable
basis for concluding that the public is likely to believe
Ser. No. 78486382
26
the mark identifies the place from which the goods
originate...” The Loew’s Theatres court, in a further
statement of the rule which was quoted by the court in the
California Innovations case, held that

[t]he PTO’s burden is simply to establish that
there is a reasonable predicate for its
conclusion that the public would be likely to
make the particular goods/place association on
which it relies... The issue is not the fame or
exclusivity of the place name, but the likelihood
that a particular place will be associated with
particular goods.

California Innovations, supra, 329 F.3d at 1338, 67 USPQ2d
at 1855, quoting from In re Loew’s Theatres, supra, 769
F.2d at 767-69, 226 USPQ at 868.
In the present case, the evidence of record shows that
the relevant purchasing public, i.e., cigar aficionados who
visit or read about Ybor City, as well as other visitors or
potential visitors to Tampa and to the Ybor City area of
Tampa, are likely to make a goods/place association between
Ybor City and cigars. The Ybor Times website informs
visitors and potential visitors that “[t]oday, the streets
of Ybor City are again home to a slew of cigar stores and
carts.” The website goes on to list the names, addresses
and phone numbers of ten retail cigar stores, twelve mail
order cigar retailers, and four cigar manufacturers, all
Ser. No. 78486382
27
located in Ybor City. Frommer’s travel guide informs
visitors and potential visitors that Ybor is “one of the
best places in Florida to buy hand-rolled cigars.” Fodor’s
travel guide informs visitors and potential visitors to
Ybor City that “[g]uided walking tours of the area ($5)
enable you to see artisans handroll cigars following time-
honored methods.”
This evidence suffices to establish the requisite
“reasonable predicate” for concluding that the relevant
purchasing public is likely to make an association between
cigars and Ybor City, i.e., that they are likely to regard
Ybor City as a “known source” for cigars.
For the reasons discussed above, we find that the
evidence of record establishes that there is a goods/place
association between Ybor City and cigars, and we cannot
conclude on this record that applicant’s YBOR GOLD cigars
in fact will come from Ybor City. We conclude, therefore,
that the second element of the Section 2(e)(3) refusal has
been met.

Element 3: Would the mark’s misrepresentation materially
affect the public’s decision to purchase the goods?

The third and final element of the Section 2(e)(3)
refusal requires us to determine whether the association
Ser. No. 78486382
28
between Ybor City and applicant’s cigars which is evoked
(falsely) by applicant’s YBOR GOLD mark would materially
affect the relevant public’s decision to purchase
applicant’s goods. The materiality element may be
established by evidence showing that the place named in the
mark 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 1542, citing California Innovations, supra, which
itself cites House of Windsor, supra. In California
Innovations, the court, citing its prior case law, likewise
stated that the materiality element may be established by a
showing that the goods in question are “a principal
product” of the place named in the mark, that the place is
“noted for” or “renowned for” such goods, or that the goods
are, or are related to, the “traditional” products of the
place named in the mark. California Innovations, supra,
329 F.3d at 1341, 66 USPQ2d at 1857, citing, variously, In
re Save Venice New York, supra; In re Wada, supra, In re
Loew’s Theaters, supra, and In re House of Windsor, supra.
We find, under any and all of these formulations of
the materiality test, that the goods/place association
(falsely) evoked by applicant’s mark would be material to
the relevant public’s decision to purchase applicant’s
cigars. Although applicant is correct in noting that Ybor
Ser. No. 78486382
29
City currently is prominently known as a destination for
both tourists and locals featuring nightlife, restaurants,
art galleries and shopping, the evidence of record clearly
shows that cigars are “a principal product” of Ybor City.
Within the confines of Ybor City, there are no fewer than
ten cigar stores, twelve mail order cigar retailers, four
cigar manufacturers, and an indeterminate number of
sidewalk cigar “carts.” This concentration of cigar
manufacturers and sellers suffices to establish that cigars
are “a principal product” of Ybor City. Indeed, Frommer’s
travel guide informs visitors and potential visitors that
Ybor City is “one of the best places in Florida to buy
hand-rolled cigars.”
Moreover, the evidence of record establishes that Ybor
City is noted for, renowned for, and indeed famous for its
cigars and its cigar history, and that cigars are known as
a “traditional” Ybor City product. It was once “the cigar
capital of the world” and “Cigar City USA,” where 140 cigar
factories produced 250 million cigars each year. Even if
it no longer can boast such numbers, it is clear that Ybor
City actively relies on its cigar-dominated history and
present as a crucial element of its tourism marketing. The
Fodor’s and Frommer’s travel guides, as well as local
information sources such as the Ybor Times and the Ybor
Ser. No. 78486382
30
City Chamber of Commerce, inform the public that “...the
smell of cigars – hand-rolled by Cuban immigrants – still
wafts through the heart of this east Tampa area...,” and
that “[g]uided walking tours of the area ($5) enable you to
see artisans handroll cigars following time-honored
methods.” Ybor City’s visitor center, housed inside “the
Cigar Museum,” is “designed as an opened cigar box” and
includes “cigar art” and “a historical film theater” which
presumably presents films pertaining to the area’s cigar
history. The museum itself “provides a look at the history
of the cigar industry,” and features a “collection of cigar
labels,” “cigar memorabilia” and “a renovated cigar
worker’s cottage...furnished as it was at the turn of the
last century.”
Applicant argues that “[t]he Examining Attorney
incorrectly considers an antiquated version of Ybor City,
rather than its present-day incarnation” as Tampa’s “Latin
Quarter” tourist destination. (Applicant’s brief at 6.)
“While applicant concedes that Ybor City was at one time in
the past famous as a source for cigars, its current fame is
only as a former source for such goods.” (Id.) Indeed,
applicant argues, “...Ybor City’s central attraction is a
Cigar Museum, dedicated to reminding visitors of the area’s
former industry. No such reminder would be required, if
Ser. No. 78486382
31
the industry were still vital.” (Id.) We are not
persuaded by these arguments.
As noted above, cigars clearly are and remain “a
prominent product” of Ybor City, in view of the dense
concentration of cigar retailers and manufacturers located
within its confines. Moreover, cigars clearly have been
shown to be a “traditional” Ybor City product, a fact which
in itself may suffice to support a finding of materiality.
In re Save Venice New York, supra. Even if Ybor City is no
longer producing cigars at the level it did in its heyday
as the “cigar capital of the world,” its emphasis on and
celebration of its cigar culture, both present and
historical, remains a significant and indeed prominent
feature of the area’s appeal. Given the prominence of Ybor
City as both a current and an historical source of cigars,
we find that purchasers are likely to mistakenly assume
that applicant’s cigars sold under the mark YBOR GOLD are
associated with or have some connection to Ybor City, and
we further find that such assumption would be material to
the decision to purchase the goods. Persons encountering
Ybor City, for example a cigar aficionado who visits Ybor
City or who perhaps reads about Ybor City in a cigar
magazine like Cigar Aficionado, will readily learn and
understand that Ybor City is famous as a source for cigars.
Ser. No. 78486382
32
When he or she returns home from a trip to Tampa and to
Ybor City, and encounters applicant’s YBOR GOLD cigars at
his or her local tobacconist, he or she undoubtedly will
assume that the cigars come from or have some connection to
Ybor City. Given the prominence of Ybor City as both a
current and an historical source of cigars, his or her
decision to purchase the cigars undoubtedly will be
materially and favorably affected by that (mistaken)
assumption.
For these reasons, we conclude that the evidence of
record supports the materiality element of the Section
2(e)(3) refusal.

Conclusion and Decision.
Based on the evidence of record and for the reasons
discussed above, we find that all three of the elements of
the Section 2(e)(3) refusal have been met. The primary
significance of applicant’s mark is that of a generally
known geographic place; there is a goods/place association,
and applicant’s goods will not come from the place named;
and such goods/place association arising from use of
applicant’s mark would be material to the decision to
purchase applicant’s goods. We have considered all of
applicant’s arguments and evidence to the contrary, but are
Ser. No. 78486382
33
not persuaded that our conclusion is erroneous.

Decision: The Section 2(e)(3) refusal is affirmed.9

9 As discussed above toward the beginning of this decision, we
deem the Section 2(a) deceptiveness refusal to be unnecessary and
moot in this case involving a geographically deceptively
misdescriptive mark. We also find that applicant’s proffered
disclaimer of YBOR does not overcome the Section 2(e)(3) refusal.