Speedway Motorsports, Inc.

Trademark Trial and Appeal Board

Jan 30, 2003

No. 75160194 (T.T.A.B. Jan. 30, 2003)

Hearing: Paper No. 26
March 20, 2002 RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Speedway Motorsports, Inc.
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Serial No. 75/160,194
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Warren E. Olson of Fitzpatrick, Cella, Harper & Scinto for
Speedway Motorsports, Inc.
Cathleen Pace Cain, Trademark Examining Attorney, Law
Office 104, (Sidney Moscowitz, Managing Attorney).
_______
Before Cissel, Chapman and Drost1, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On September 4, 1998, applicant, a Delaware
corporation with its business address in North Carolina,
filed the above-referenced application to register the mark
“TEXAS INTERNATIONAL RACEWAY” on the Principal Register for
goods and services in ten International Classes. Included
were “clothing, namely, sweatshirts, warm-up sets, shorts,
1 Administrative Trademark Judge Drost has been substituted for
Administrative Trademark Judge Wendel, who has retired from
Federal service.
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shirts, sport shirts, golf shirts, t-shirts, suspenders,
sweaters, jackets, headbands, caps, visors, straw hats,
socks and infant sets,” in Class 25, and “entertainment
services in the nature of conducting and sponsoring
automobile races and in the nature of participating in
professional automobile races and related exhibits,” in
Class 41. The application was based on applicant’s
assertion that it possessed a bona fide intention to use
the mark in commerce in connection with the goods and
services set forth in the application.
In addition to raising a number of informalities, the
Examining Attorney refused registration under Section
2(e)(3) of the Lanham Act on the ground that the mark
applicant seeks to register is primarily geographically
deceptively misdescriptive. The Examining Attorney
reasoned that the primary significance of the word “TEXAS”
is geographic, and that in view of the fact that applicant
is a Delaware corporation doing business in North Carolina,
it does not appear that the goods and services will come
from Texas. Alternatively, the Examining Attorney refused
registration under Section 2(e)(2) of the Act on the ground
that the mark is primarily geographically descriptive of
the goods and services specified in the application. This
refusal was made to cover the situation if applicant’s
Ser No. 75/160,194
3
goods and services will come from Texas, the geographical
place named in the mark.
The Examining Attorney also required applicant to
submit a disclaimer of the descriptive term “INTERNATIONAL
RACEWAY.”
Applicant amended the identification-of-goods clause
and the recitation of services and disclaimed the exclusive
right to use the word “TEXAS” apart from the mark as shown.
In the text of its response to the first Office Action,
applicant also offered to disclaim the term “RACEWAY,” but
did not actually amend the application to include a
disclaimer of this term.
Additionally, applicant argued against the two
alternative refusals to register. Applicant submitted that
its mark is used in connection with a facility conducting
business in the state of Texas and that the proposed goods
and services will be merchandised from or associated with a
Texas entity, so that the refusal based on geographic
deceptive misdescriptiveness under Section 2(e)(3) of the
Act is not appropriate and should be withdrawn. With
regard to the refusal under Section 2(e)(2), applicant
argued that its disclaimer of the geographic term “TEXAS”
required withdrawal of the refusal to register. Applicant
also argued that the term “INTERNATIONAL” is not merely
Ser No. 75/160,194
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descriptive of its goods or services, and therefore does
not need to be disclaimed.
The Examining Attorney maintained the refusal to
register under Section 2(e)(2), refused to accept
applicant’s disclaimer of the word “TEXAS” and withdrew the
requirement to disclaim the term “INTERNATIONAL,” but
maintained the requirement to disclaim the term “RACEWAY.”
Attached in support of the contention that this word is
merely descriptive of the services were copies of three
third-party registrations wherein the services are similar
to the ones set forth in this application and either the
word was disclaimed or the registration issued under the
provisions of Section 2(f) of the Act or on the
Supplemental Register.
In connection with the services in Class 41, applicant
disclaimed “RACEWAY” apart from the mark as shown, and
presented arguments against the refusal to register.
Applicant again offered to disclaim “TEXAS” if that would
allow the Examining Attorney to withdraw the refusal to
register.
The application was assigned to a new Examining
Attorney, who maintained and made final the refusal to
register under Section 2(e)(2) of the Act.
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Applicant’s response was to propose amendment to the
Supplemental Register, but the next Examining Attorney who
was assigned this application properly refused to enter the
amendment because applicant had not yet amended the
application to state that applicant had actually used the
mark in commerce in connection with the goods and services
set forth therein. He maintained the final refusal to
register.
Applicant then filed a lengthy response to the final
refusal to register under Section 2(e)(2), requesting
reconsideration and withdrawal of the refusal. Applicant
argued that the term “TEXAS” is not primarily
geographically descriptive of applicant’s entertainment
services and related products because Texas is not an area
which is known for or associated with organizing and
conducting motor vehicle races and exhibitions. Applicant
argued that such races are conducted in most states, and
that the goods set forth in the amended application “are
merchandised universally and are not unique to Texas or
indicative of Texas culture.” Additionally, applicant
argued that it is not the uniform practice of the Office to
require a disclaimer of the term “TEXAS,” listing thirty-
three third-party registrations and one third-party
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application wherein the marks incorporate the term without
disclaimers.
The Examining Attorney was not persuaded by
applicant’s arguments. The final refusal was maintained.
Attached to the refusal were additional third-party
registrations wherein the term “TEXAS” is disclaimed in
connection with various kinds of entertainment services.
Applicant timely filed a Notice of Appeal concurrently
with an amendment to delete the existing identification-of-
goods clause and recitation of services and to substitute
therefor the following: “clothing, namely, sweatshirts,
warm-up sets, shorts, shirts, sport shirts, golf shirts, t-
shirts, suspenders, sweaters, jackets, headbands, caps,
visors, straw hats, socks and infant sets,” in Class 25,
and “entertainment services in the nature of conducting
motor vehicle races and exhibition[s],”2 in Class 41.
Applicant argued that prospective purchasers of these goods
and services, upon encountering the mark applicant seeks to
2 Although this recitation appears to constitute an impermissible
broadening of the original recitation of services, which was
limited to “automobile races,” the Examining Attorney did not
object to applicant’s amendment. See Trademark Rule 2.7`1(a); In
re Swen Sonic Corp., 21 USPQ2d 1994 (TTAB 1991); In re M.V. Et
Associes, 21 USPQ2d 1628 (Comm’r 1991).Because our resolution of
this appeal would be the same whether or not the amendment is
proper, we have not remanded the application for resolution of
this issue. If, however, on appeal, applicant were to prevail,
the application would have to be remanded to the Examining
Attorney in order to correct this apparent mistake.
Ser No. 75/160,194
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register, “TEXAS INTERNATIONAL RACEWAY,” would not make a
goods/place or services/place association. Applicant
contended that the Examining Attorney was ignoring the word
“INTERNATIONAL” in his analysis, but that when the mark is
considered in its entirety, its primary significance is not
geographic.
The Board instituted the appeal, but suspended and
remanded and the application to the Examining Attorney for
consideration of applicant’s amendment and request for
reconsideration. The Examining Attorney maintained the
final refusal to register, and attached to this action
excerpts from twenty-two published articles in which
“Texas,” “car racing,” or “Texas raceways” appeared. The
Examining Attorney contended that these materials establish
that a relationship exists between Texas and motor vehicle
racing services. The articles refer to several different
tracks and racing series which operate in Texas. The
Examining Attorney addressed applicant’s argument with
respect to the significance of the term “INTERNATIONAL” in
applicant’s mark with the submission of fifteen additional
excerpts from articles in which “international” and
“racing,” or “international raceways” appeared. He argued
that these articles demonstrate the descriptiveness of the
word “INTERNATIONAL” in applicant’s mark in connection with
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services relating to racing. Additionally, he attached
five third-party registrations wherein the terms
“international raceway,” “raceway” and “speedway” have been
disclaimed, contending that these registrations are
evidence of the descriptive nature those terms have in
relation to the identified services. He noted that where
the marks in these registrations combine these descriptive
terms with place names, the registrations are either on the
Supplemental Register or on the Principal Register with
claims of distinctiveness under the provisions of Section
2(f).
The Board resumed action on the appeal, and applicant
filed its appeal brief and requested an oral hearing before
the Board. Attached to applicant’s brief were copies of
records obtained from the Office’s electronic search system
showing that Richmond International Raceway, Inc. had
applied to register a mark consisting of the words
“Richmond International Raceway” superimposed on a stylized
oval-shaped letter “R” for clothing, with one application,
and for games and toys, with another application, and that
both applications had recently been passed to publication.3
3 Serial No. 76/170,356 and Serial No. 76/170370, both filed
based on the applicant’s assertion that it possessed a bona fide
intention to use the mark in commerce in connection with the
specified goods.
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The word “RACEWAY” was disclaimed in the application
covering games and toys.
Applicant argued that its amendment to the
identification of goods and recitation of services after
final rejection was only a “proposal,” an “offer” to amend,
and that because the Examining Attorney did not “approve”
the amendment, the goods in the other eight classes in
addition to the classes for clothing and entertainment
services were not deleted. Also, applicant charged that
the Examining Attorney had made the refusal final on new
grounds. Applicant withdrew the “offer” to amend the
application to delete reference to all but two classes of
goods and services and argued as if the goods and services
in all ten classes were still in the application.
Applicant moved to strike the evidence submitted by the
Examining Attorney in response to applicant’s request for
reconsideration, contending that this evidence was beyond
the scope of what the Board remanded the application to the
Examining Attorney to consider.
In addition to these arguments, applicant reiterated
its previously stated argument with respect to the refusal
to register under Section 2(e)(2) the Act. The key element
of this argument is that the word “INTERNATIONAL” is not
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generic for the goods or services, so the primary
significance of the mark in its entirety is not geographic.
The Examining Attorney then filed his appeal brief,
responding to each contention raised in the brief of
applicant. Attached to the Examining Attorney’s appeal
brief was an excerpt from to the 1997 edition of Meriam-
Webster’s Geographical Dictionary, Third Edition, wherein
“Texas” is identified has “a southwestern state of U.S.A….”
Applicant then filed a reply brief, again arguing that
this appeal extends to the goods and services in the ten
classes listed in the application as filed, continued its
motion to strike the evidence submitted by the Examining
Attorney in response to applicant’s request for
reconsideration, and added a motion to strike the
dictionary definition submitted with the Examining
Attorney’s brief as well. Applicant’s reply brief repeated
the argument that no evidence of record in this appeal
establishes that the primary significance of the composite
term sought to be registered is geographic.
The oral hearing requested by applicant was held
before the Board on March 20, 2002. At that hearing, it
became apparent that confusion existed as to which goods
and services in which classes remained in issue in the
appeal. Following the hearing, the application was
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therefore remanded to the Examining Attorney for
clarification of this issue. The application was assigned
to yet another new Examining Attorney, who reviewed the
file and issued a brief Office Action concluding that
pursuant to applicant’s amendment after final rejection and
request for consideration, filed November 16, 2000, the
goods and services remaining in the application were only
the Class 25 goods and the services in Class 41. The
application file was returned to the Board for a
determination of the appeal on its merits.
After carefully reviewing the extended prosecution
history in this application, we agree with the Examining
Attorney that the sole issue in this appeal is whether
Section 2(e)(2) of the Lanham Act precludes registration of
the mark in connection with the clothing products listed in
Class 25 and the entertainment services in Class 41 as they
are specified in applicant’s November 16, 2000 amendment.
This amendment was simply not an “offer” which would take
effect only upon acceptance by the Examining Attorney, but
even if that were the case, the Examining Attorney’s
arguments from that point forward make it clear that the
Examining Attorney thenceforth considered the application
to have been amended in accordance with applicant’s
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instructions, so it is clear that the amendment was
accepted.
Applicant’s motions to strike are similarly not well
taken. The materials submitted responsive to the request
for reconsideration and the subsequent remand to the
Examining Attorney are properly considered of record in
this appeal. The first group of materials is clearly
within the scope of a proper response to the
reconsideration request, and the dictionary definition
submitted with the Examining Attorney’s brief is admissible
by judicial notice (even after the briefs had been filed
and the oral hearing had been conducted).
Contrary to applicant’s assertion, the Examining
Attorney has not introduced new grounds for refusing
registration. Two alternative grounds were raised in the
first Office Action, and the refusal based on Section
2(e)(2) has been consistently maintained since then.
Turning, then, to the issue before us in this appeal,
we note that the test for registrability under Section
2(e)(2) of the Lanham Act is well settled. This section of
the statute bars registration of a mark which is primarily
geographically descriptive in connection with the goods or
services with which the applicant uses, or intends to use,
the mark. The addition of generic or highly descriptive
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terms to a geographic term does not obviate a determination
of geographical descriptiveness. In re Cambridge Digital
Systems, 1 USPQ2d 1659 (TTAB 1986); In re BankAmerica
Corp., 231 USPQ 873 (TTAB 1986). In order to show that a
mark is unregistrable under this section of the Act, the
Examining Attorney must demonstrate that the mark sought to
be registered is the name of a place known to the public
and that the public would associate the goods and services
with the place named in the mark, i.e., that the public
would believe that the goods or services for which the mark
is sought to be registered originate in that place. When
there is no genuine issue that the geographical
significance of the term is its primary significance and
where the geographical place is neither obscure nor remote,
a public association between the goods and services and
place may ordinarily be presumed from the fact that
applicant’s goods and services will or do come from the
place named in the mark. In re California Pizza Kitchen,
10 USPQ2d 1704 (TTAB 1989); In re Handler Fenton Westerns,
Inc., 214 USPQ 848 (TTAB 1982).
In the instant case, the primary significance of the
term “TEXAS” is without question geographic. The
geographic dictionary listing submitted by the Examining
Attorney plainly establishes this fact. Moreover, Texas is
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neither obscure nor remote, so the first part of the test
for refusing registration under Section 2(e)(2) of the Act
is satisfied.
The question thus becomes whether the primary
significance of the mark in its entirety is geographic. As
noted above, combining a place name with generic or
descriptive words has been held not to alter the primary
geographic significance of the combination of such terms.
This is the situation with which we are presented in the
instant case. The primary significance of “TEXAS” is
geographic, and that significance is not changed by the
addition of the term “INTERNATIONAL RACEWAY,” which this
record demonstrates is descriptive in connection with the
goods and services applicant intends to offer under the
mark.
Applicant contends that the significance of the word
“INTERNATIONAL” in the mark applicant seeks to register is
not merely descriptive in relation to the specified
services, but the ordinary meanings of the words
“international” and “raceway,” as well as the excerpted
articles made of record by the Examining Attorney, make it
clear that these words are understood by prospective
customers of the products and services listed in the
amended application as an indication that the facility in
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connection with which they are provided is a track that
seeks to attract racers and spectators from outside the
United States. Just as an international airport offers
flights to and from other countries, an international
raceway attracts competitors and spectators from other
countries.
That third parties may have been able to register or
have published marks combining other place names with
arguably similar descriptive terminology is not
determinative of this appeal. Two of the third-party
registrations of record actually provide support for the
Examining Attorney’s position. Reg. Nos. 1,879,804 and
1,534,870 are either on the Supplemental Register or
contain a disclaimer of “INTERNATIONAL RACEWAY.” This is
evidence of the descriptiveness of the term in connection
with the Class 25 goods and Class 41 services listed
therein. See Interstate Brands Corp. v. Celestial
Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 153 (CCPA
1978).
Moreover, even if this were not the case, it is well
settled that each case must be decided on its own merits,
and that neither an Examining Attorney nor the Board is
bound by prior decisions of other Examining Attorneys to
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register other marks. In re Nett Designs, Inc., 236 F.3d
1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
In summary, the refusal to register under Section
2(e)(2) of the Act is well taken. The primary significance
of “TEXAS INTERNATIONAL RACEWAY” is geographic and the
goods and services in connection with which applicant
intends to use the mark will emanate from Texas, so the
people who will purchase these goods and services will make
an association between the goods and services and Texas.
This record establishes that entertainment services in the
nature of races and exhibitions do, in fact, emanate from
that state, so prospective purchasers would have ample
basis upon which to make an association between the
services and the place named in the mark. Simply put, the
public would understand, from consideration of the mark in
connection with the goods and services set forth in the
application, that the races and exhibitions applicant will
render under the mark will take place in Texas, and that
the clothing items listed in the application, all of which
are collateral goods of the type which are sold at such
racing events, will also come from Texas.
DECISION: The refusal to register under Section
2(e)(2) is affirmed.