Spirits of New Merced, LLC

Trademark Trial and Appeal Board

Dec 12, 2007

No. 78710805 (T.T.A.B. Dec. 12, 2007)

Mailed: December 12, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Spirits of New Merced, LLC
________

Serial No. 78710805
_______

Kenneth A. Vogel of Bar-Adon & Vogel, PLLC for Spirits of New
Merced, LLC.

Lydia M. Belzer, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Hohein, Holtzman and Bergsman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Spirits of New Merced, LLC (applicant) has filed an
application to register the mark YOSEMITE BEER (in standard
character form) for goods ultimately identified as "alcoholic
beer" in Class 32.1 The word BEER is disclaimed.

1 Serial No. 78710805, filed September 12, 2005, based on an allegation
of a bona fide intention to use the mark in commerce. Applicant filed
an amendment to allege use on November 22, 2005, ultimately asserting
that the mark was first used on November 11, 2005 and first used in
commerce on November 22, 2005. The application was amended, at
applicant's request, to state that: "The foreign wording in the mark
THIS OPINION IS
A PRECEDENT OF
THE TTAB
Serial No. 78710805

2
The trademark examining attorney has refused registration
under Section 2(e)(2) of the Trademark Act on the ground that
applicant's mark YOSEMITE BEER, as applied to beer, is primarily
geographically descriptive of the goods.
When the refusal was made final, applicant appealed. Briefs
have been filed.
In order for a mark to be considered primarily
geographically descriptive under Section 2(e)(2), it must be
shown that (1) the mark's primary significance is a generally
known geographic location; and (2) that the relevant public would
be likely to make a goods/place association, that is, would be
likely to believe that the goods originate in the place named in
the mark. See In re Save Venice New York, Inc., 259 F.3d 1346,
59 USPQ2d 1778 (Fed. Cir. 2001); In re Nantucket, 677 F.2d 95,
213 USPQ 889 (CCPA 1982); In re Brouwerij Nacional Balashi NV, 80
USPQ2d 1820 (TTAB 2006); In re JT Tobacconists, 59 USPQ2d 1080
(TTAB 2001); and In re California Pizza Kitchen, Inc., 10 USPQ2d
1704 (TTAB 1988). Provided that these conditions are met and the
goods come from the place named by or in the mark, the mark is
primarily geographically descriptive.
The record shows that applicant's beer is produced and sold
in applicant's brewpub, a restaurant that brews and serves its

translates into English as 'Those Who Kill' in the Miwok Indian tribe
language."
Serial No. 78710805

3
own beer, and that the brewpub is located in the city of Merced,
California, which is approximately 80 miles from Yosemite
National Park. The examining attorney argues that "Yosemite" is
a generally known place. She further argues, based on
applicant's statements and evidence in support of registration,
that applicant's beer originates "in the Yosemite region," and
that there is a goods/place association between applicant's beer
and Yosemite in view of the connection between Yosemite and the
city of Merced.
Applicant essentially argues that YOSEMITE BEER is not
primarily geographically descriptive of applicant's beer,
contending that there is no such place as "Yosemite"; that its
beer does not originate in Yosemite National Park; and that there
is no connection between beer and Yosemite National Park.
We affirm the refusal for the reasons discussed below.
Primary Significance
As to the first part of the test, a mark is not "primarily"
geographic where the geographic meaning is minor, obscure,
remote, or unconnected with the goods. In re Wada, 194 F.3d 1297,
52 USPQ2d 1539, 1540 (Fed. Cir. 1999); In re Loew's Theatres,
Inc., 769 F.2d 764, 226 USPQ 865, 867 (Fed. Cir. 1985) (use of a
geographic term in a fictitious, arbitrary or fanciful manner, is
not "primarily" as a geographic designation); and In re Brouwerij
Nacional Balashi NV, supra at 1824.
Serial No. 78710805

4
Thus, registration should not be refused where, for example,
the place named in the mark is so obscure or remote that
purchasers would fail to recognize the term as indicating the
geographical source of the goods to which the mark is applied; or
an admittedly well-recognized term has other meanings, such that
the term's geographical significance may not be the primary
significance to prospective purchasers. See In re Cambridge
Digital Systems, 1 USPQ2d 1659 (TTAB 1986).
The examining attorney argues that the record as a whole,
including applicant's evidence, indicates that Yosemite National
Park is a well known region; that "Yosemite" is a commonly used
nickname or shorthand for Yosemite National Park; and that the
primary significance of the term "Yosemite" is geographic because
of the size and popularity of Yosemite National Park.
While not disputing that Yosemite National Park is a well-
known geographic region, applicant argues that "there is no place
on earth named Yosemite or Yosemite, California" (Brief, p. 6),
noting that the U.S. Postal Service does not recognize "Yosemite,
CA" as an acceptable mailing address. Applicant maintains that
such word "standing alone does not hold any independent
significance, geographic or otherwise." (Brief, p. 5.)
There is no real dispute, and the evidence submitted by
applicant and the examining attorney shows, that Yosemite
National Park is the name of a well-known, if not famous,
Serial No. 78710805

5
geographic region that is clearly not obscure or remote. The
park is located in the Sierra Nevada mountain range in central
California (yosemitepark.com and nps.gov); and it was designated
a national park in 1890 and a World Heritage Site in 1984.
(nps.org and wikipedia.org.2) Because of the park's "spectacular
and awe-inspiring" setting, it is referred to as "The Crown
Jewel" of the National Park system. (Yosemitepark.org.) As
noted on the wikipedia.org website, "Yosemite is internationally
recognized for its spectacular granite cliffs, waterfalls, clear
streams, Giant Sequoia groves, and biological diversity" and that
"Yosemite is famous for its high concentration of waterfalls in
such a limited area." The evidence shows that the "famed
Yosemite Valley" is enclosed within the park, as are the "world's
three largest monoliths of exposed granite" and the highest
waterfall in North America. The Columbia Gazetteer of North
America (2000). The park covers 1,189 square miles, about the
size of Rhode Island, (id.) and it receives over 3 million
visitors each year. (wikipedia.org.)
It can also be seen from some of the references
above, and the evidence as follows, that the term "Yosemite" is a
well recognized and frequently used shorthand reference to

2 There is no issue as to the accuracy of the Wikipedia information
relied on by the examining attorney, and so we have considered this
evidence. See In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032
(TTAB 2007).
Serial No. 78710805

6
Yosemite National Park and the Yosemite region in general. For
example, The Hutchinson Unabridged Encyclopedia (2005) contains
an entry for "Yosemite" describing it as a "Region in the Sierra
Nevada, eastern California."3 On the "National Park Service"
website (nps.org) "Yosemite" is displayed in large lettering at
the top of the page while "National Park" is in very small
letters at the bottom; and the site also includes a link for
"Yosemite In Depth." Additional references to "Yosemite" are
shown below:
... This site is managed by Yosemite's primary
concessionaire, Delaware North Companies Parks &
Resorts at Yosemite, Inc. ...
[The site also contains a quote from Ralph Waldo
Emerson]: "In Yosemite, the grandeur of these
mountains is perhaps unmatched in the globe ..."
(yosemitepark.com)

Yosemite Online
The website of the Yosemite Association
...
Six Ways to Help Us Help Yosemite
...
Yosemite Web Cam
(yosemite.org)

MERCED, CA: Ride YARTS and See Yosemite Differently
Welcome to the YOSEMITE AREA REGIONAL TRANSPORTATION
SYSTEM web page!
This site features information on all aspects of
riding on YARTS ...seeing more of Yosemite than one
can see from behind the wheel.
(yarts.com)

3 From the website credoreference.com. The Board may take judicial
notice of reference works, including online reference works, which
exist in printed format. See In re CyberFinancial.Net Inc., 65 USPQ2d
1789, 1791 n.3 (TTAB 2002).

Serial No. 78710805

7
The Greater Merced Chamber of Commerce
GATEWAY TO YOSEMITE
Yosemite National Park attracted almost four million
visitors into their gate last year.
(Brochure of The Greater Merced Chamber of Commerce)4

It is well settled that a recognized nickname or other
informal name for a geographic location is considered the
equivalent of the official or formal name for purposes of
determining registrability of the geographic term. See In re
Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) (the term CAROLINA,
used to indicate either North Carolina or South Carolina, is
geographically descriptive); and In re Charles S. Loeb Pipes,
Inc., 190 USPQ 238, 246 (TTAB 1975) (OLD DOMINION is an accepted
nickname for the State of Virginia; "nicknames and even
abbreviations and maps of geographical areas and the names of the
geographical area that they identify are, for purposes of
registration, identical, and ... the same criteria for
registration must necessarily apply thereto").5
In addition, the examining attorney has made of record ten
third-party registrations consisting of or including the term
YOSEMITE, each of which issued either on the Supplemental
Register, or on the Principal Register under Section 2(f) or with

4 See the discussion regarding the Merced Chamber of Commerce brochure
infra.

5 We note that although the Court in In re Nantucket, supra, was
critical of the Board in the Loeb case for not considering whether
there was a goods/place association, there was no criticism of the
Board's analysis of whether a nickname could be a geographic term.
Serial No. 78710805

8
a disclaimer of YOSEMITE, indicating that YOSEMITE has been
regarded by the Office as a geographic term. In fact, several of
these registrations (for example, Registration Nos. 1882576 and
2741174) are issued to entities having an address of "Yosemite,
California." This tends to undercut applicant's claim that there
"is no place on earth" named "Yosemite, California."
We find that the term "Yosemite," alone, conveys a readily
recognizable geographic significance. We further find no genuine
issue that the primary significance of "Yosemite" is a geographic
place which is not obscure or remote but rather is generally
known to the public. Applicant's evidence and arguments fail to
raise any genuine issue regarding the primary significance of the
term.
Applicant argues that the primary significance of "Yosemite"
is not geographic because, when used by itself, the term has
another meaning. Pointing to the website, yosemite.ca.us, which
explains the origin of the term "Yosemite," applicant states that
the word means "those who kill," or "the killers" in the Native
American Miwok tribal language and, as noted earlier, applicant
has amended the application to include a translation of this
"foreign wording" in the mark.
We are not persuaded by this argument. There is no evidence
that the general public would be familiar with the derivation of
"Yosemite" or that this meaning would be anything but obscure to
Serial No. 78710805

9
them. Even if consumers were aware of this meaning, it would not
detract from the primary meaning of "Yosemite" as denoting a
well-known geographic region. See, e.g., In re Juleigh Jeans
Sportswear Inc., 24 USPQ2d 1694, 1697 (TTAB 1992) (while "London"
also has surname significance, the primary connotation of the
term is geographical); and In re The Cookie Kitchen, Inc., 228
USPQ 873, 874 (TTAB 1986) (the fact that "Manhattan" is also the
name of a cocktail does not rebut the prima facie showing that
the primary meaning is geographic).
Applicant also argues that its mark YOSEMITE BEER relates to
the decorative "cowboy-western" theme of its restaurant and menu
items, and that it "does not purport any relationship to Yosemite
National Park." (Brief, p. 4.) There is no evidence properly of
record to support this contention,6 but more important, any such
theme of applicant's restaurant, to the extent one exists, is
irrelevant because applicant is seeking registration for beer,
not for restaurant services or for beer brewed on the premises of
a restaurant. Also, cf., as to themes of services, In re
Consolidated Specialty Restaurants Inc., 71 USPQ2d 1921, 1929
(TTAB 2004) (COLORADO STEAKHOUSE and design for restaurant
services held primarily geographically deceptively misdescriptive

6 The examining attorney has objected to the menu and photographs from
applicant's brewpub which were submitted by applicant for the first
time with its appeal brief. The objection is well taken. This
evidence is untimely and it has not been considered. See Trademark
Rule 2.142(d).
Serial No. 78710805

10
of restaurant services; "To the extent the copies of menus and
wall art from applicant's steakhouses relate specifically to
Colorado, they serve to strengthen the association of applicant's
restaurants/steakhouses with Colorado"); and In re Ruffin Gaming,
LLC, 66 USPQ2d 1924 (TTAB 2002) [FISHERMAN'S WHARF held merely
descriptive of the theme of applicant's entertainment services
which include hotel services, restaurant services, nightclub
services, café services and providing convention facilities).
In addition, applicant argues that the term "Yosemite" is
registered on the Principal Register by other entities without
resort to Section 2(f). In support of this, applicant has
submitted printouts of 23 third-party registrations and a number
of third-party applications for a variety of goods and services,
including outdoor activities and goods used in connection with
such activities. Based on this evidence, applicant concludes
that "Yosemite" "now connotes all manner of nature, sports and
outdoor activities" (Brief, p. 10.) and that its mark YOSEMITE
BEER is used in the same non-geographically descriptive or non-
geographically deceptively misdescriptive manner as the marks in
these third-party registrations and applications.
Applicant points, in particular, to two now-cancelled
registrations for YOSEMITE BEER and YOSEMITE BREWING COMPANY,
Serial No. 78710805

11
both for beer, which were issued to another entity.7 Noting that
this entity was located in Mariposa, California which, as shown
by the map and the Gazetteer entry submitted by applicant, is
about 40 miles from the park, applicant argues that these marks
were allowed to register notwithstanding that this location "is
even closer to the Park than Applicant's brewpub" in Merced.
(Brief, pp. 8, 9.)
None of this evidence serves to establish that the primary
meaning of YOSEMITE is not geographical. To begin with, the
third-party applications and cancelled registrations, which
together constitute a significant portion of the records
submitted by applicant, have no probative value on the issue of
registrability. They are evidence only of the fact that the
application or registration was filed on a certain date. In
addition, we are not bound by a previous examining attorney's
determination that the same mark was entitled to register, and to
the extent that registration was issued in error, we would not
repeat the error by permitting the mark to register again.8 See

7 The registrations were issued to Yosemite Beverage Co. Registration
No. 2131642 (YOSEMITE BEER) was cancelled on July 10, 2004 and
Registration No. 2234545 (YOSEMITE BREWING COMPANY) was cancelled on
October 30, 2004. Both registrations were cancelled for failure to
file a Section 8 affidavit.

8 To the extent that applicant is arguing that the examining attorney
is estopped from denying registration to applicant in view of this
prior registration for the same mark, we point out that applicant was
not the owner of that registration, and moreover, a cancelled
registration is not entitled to any of the statutory presumptions of
Serial No. 78710805

12
In re Cooper, 254 F.2d 611, 117 USPQ 396, 401 (CCPA 1958)
("...the decision of this case in accordance with sound law is
not governed by possibly erroneous past decisions by the Patent
Office"). See also In re Stenographic Machines, Inc., 199 USPQ
313, 317 (Comm'r Pats. 1978) ("Consistency of Office practice
must be secondary to correctness of Office practice.").
Nor do the remaining 15 active third-party registrations
compel a finding that the present mark is registrable. At the
outset, we note that of the group of active registrations, one is
registered on the Supplemental Register (Registration No.
2652898) and in another (Registration No. 2370876) the term
YOSEMITE is disclaimed. In addition, some of the registrations
are for marks that create different commercial impressions (e.g.,
Registration No. 2944781 for the mark YOSEMITE GOLD for "fresh
citrus fruit and living citrus trees"); or for goods or services
that are far removed from beer (e.g., Registration No. 2979459
for the mark YOSEMITE for "cigarettes"; and Registration No.
2721476 for the mark YOSEMITE TECHNOLOGIES for "computer software
for archiving and restoring computer files"). The test for
geographic descriptiveness is not just whether the geographic
term is the name of a known place, but includes whether

Section 7(b) of the Trademark Act. See, e.g., In re Hunter Publishing
Company, 204 USPQ 957, 963 (TTAB 1979) (cancellation "destroys the
Section [7(b)] presumptions and makes the question of registrability 'a
new ball game' which must be predicated on current thought.").
Serial No. 78710805

13
purchasers will make a goods/place association. See In re
Nantucket, supra. Because the records of those third-party
registrations are not before us, we cannot determine the basis on
which those marks were registered. Also, several of the
registrations were not issued to California entities (for
example, Registration No. 2649887 for the mark YOSEMITE ANIMAL
COOKIES for "cookies," issued to a company located in Illinois),
suggesting that the goods did not originate in California and
that a refusal on the basis of geographical descriptiveness may
not have been warranted.9
In any event, regardless of what these third-party
registrations, or the records in the registrations, may show, and
even to the extent the marks in these third-party registrations
"have some characteristics similar to [applicant’s application],
the PTO's allowance of such prior registrations does not bind the
Board or this court." In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001). It is well settled that each
case must be decided on its own facts, based on the particular
mark, the particular goods or services, and the particular record
in each application. See Nett Designs Inc., supra; and In re

9 Applicant's arguments regarding "discriminatory and arbitrary
application of 2(e)(2) and 2(e)(3)" (Brief, p. 15) are not understood.
The purpose of each section is different and the corresponding tests
for registrability are different. In particular, a higher standard is
required to show that a term is geographically deceptively
misdescriptive. See In re California Innovations, 329 F.3d 1334, 66
USPQ2d 1853 (Fed. Cir. 2003); and In re Beaverton Foods Inc., 84 USPQ2d
1253 (TTAB 2007).
Serial No. 78710805

14
Scholastic Testing Services, Inc., 196 USPQ 517 (TTAB 1977). See
also In re First Draft, Inc., 76 USPQ2d 1183, 1188 (TTAB 2005)
("even proof that various examining attorneys have registered a
particular type of mark in the past does not establish that there
is an Office practice holding such marks are generally
registrable.").
We find that the primary significance of the term "Yosemite"
is geographic, and also that the primary significance of YOSEMITE
BEER, in its entirety, is geographic. The addition of a generic
word to a geographical term does not overcome the primary
geographic significance of the mark as a whole. See In re
Brouwerij Nacional Balashi NV, supra at 1821; In re JT
Tobacconists, supra at 1082; and In re Cambridge Digital Systems,
supra. The word BEER is generic for goods identified as
"alcoholic beer" and the combination of that word with YOSEMITE
does nothing to alter the geographic significance of YOSEMITE
alone.
Goods/Place Association and Origin of the Goods
Where the geographical significance of a term is its primary
significance and where the geographical place is neither obscure
nor remote, a public association of the goods with the place may
ordinarily be presumed from the fact that the applicant's own
goods come from the geographical place named in the mark. See In
Serial No. 78710805

15
re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); and In re
California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988).
Early in the prosecution of its application, applicant took
the position that Merced, "where the beer is brewed, is
physically and historically linked to and associated with the
nearby Yosemite National Park." (Response, April 3, 2006.) In
addition, applicant submitted geographical information about
Merced along with various promotional materials of the city to
support this association, that is, "to confirm [Merced's]
relationship and proximity to Yosemite National Park."
(Response, March 10, 2006). Applicant's evidence and arguments
in this regard are quite persuasive. The city's promotional
materials include a Greater Merced Chamber of Commerce brochure,
a city map and letterhead, and a Lodging Guide and Destination
Guide from the Merced Conference & Visitors Bureau, all of which
tout the city of Merced as the "Gateway to Yosemite" and the
close proximity of Merced to Yosemite. The Chamber of Commerce
brochure, in particular, states that Merced "has claimed the
title 'Gateway to Yosemite' for more than a century." Under the
heading GATEWAY TO YOSEMITE, the brochure goes on to state:
Yosemite National Park attracted almost four million
visitors into their gate last year. Since Highway
140 is the only highway not closed by most winter
snowstorms, the most scenic route is also the most
reliable. ... Merced has been Central California's
favorite way station since the first stage coaches
Serial No. 78710805

16
and railroad trains wound their way from downtown
Merced to Yosemite Valley. ...

The proximity of Merced to the park is also acknowledged in
The Columbia Encyclopedia (2004), indicating in the description
of "Merced" that "Yosemite National Park is nearby."10 Merced is
further described in this entry as "a center for tourism," and it
is clear that the primary tourist attraction is the park. It
appears from the maps and other information of record that the
area surrounding Merced and the park is largely rural, and that
Highway 140, which leads out of Merced, is one of the few
roadways providing direct access to the park, and possibly the
only access at certain times of the year. As stated in Merced's
Chamber of Commerce brochure, it is "the only highway not closed
by most winter snowstorms."
Applicant pointed to additional evidence reflecting Merced's
connection to Yosemite, noting that the Merced River originates
in Yosemite National Park and flows into the city of Merced; that
Lake Yosemite is located in Merced; that the Merced Conference
and Visitor Bureau has a website address of yosemite-gateway.org;
and that "Yosemite" appears in street names in the city such as
the "Yosemite Parkway." In addition, a transit system known as
the Yosemite Area Regional Transportation System (YARTS) "begins

10 From the website credoreference.com. We take judicial notice of this
reference.
Serial No. 78710805

17
in Merced" and provides a shuttle service between Merced and
Yosemite National Park. (Response, March 10, 2006.)
In its subsequent responses and in its brief, applicant does
not again mention the relationship between Merced and Yosemite.
At the same time, however, applicant does not deny that the
relationship exists, and indeed, in view of the evidence,
applicant would be hard pressed to do so. Yet applicant now
takes the position that its mark YOSEMITE BEER is arbitrary as
used in connection with beer. Applicant argues that its beer
does not originate in Yosemite National Park, but instead is
brewed on-site at applicant's brewpub which is located in Merced,
California, approximately 80 miles away from Yosemite National
Park. Applicant has submitted Columbia Gazetteer entries for
"Merced" and "Yosemite National Park"; and maps and other
printouts from the website, mapquest.com, showing the relative
locations of these areas and the driving distances between them.
Applicant further argues that there is no connection between beer
and Yosemite National Park, stating, in particular, that the city
of Merced does not bring in or use water that comes from the park
but instead uses water from its own underground wells.
It is clear that the city of Merced, where applicant's beer
is produced, is not literally within the boundaries of Yosemite
National Park. Nevertheless, Yosemite has a significant
relationship to the source of applicant's goods. Applicant's
Serial No. 78710805

18
business is located in a city whose economy, and largely its
identity, center around its association with Yosemite National
Park, an association that the city has fostered and promoted for
more than a century. Applicant is obviously using the term
YOSEMITE in its mark, not in any arbitrary sense as applicant
claims, but rather to reflect its association with the geographic
place.
Thus, we find that the goods come from Yosemite, the place
named in the mark, or at a minimum, that the goods originate in
an area which applicant admits and the evidence shows is located
near Yosemite. Since the goods originate at or near the place
named in the mark, we can presume an association of applicant's
beer with the park. See, e.g., In re Joint-Stock Company "Baik"
80 USPQ2d 1305, 1310 (TTAB 2006) ("we presume a goods/place
association [of vodka with BAIKALSKAYA meaning "from Baikal"]
because applicant is located near Lake Baikal, in the city of
Irkutsk"). See also, e.g., Warwood v. Hubbard, 228 USPQ 702, 702
(Mont. 1985) (YELLOWSTONE OUTFITTERS primarily geographically
descriptive of outfitting services offered "near Yellowstone
Park").
The consumers for applicant's beer, including the residents
of and visitors to Merced, would reasonably believe that the beer
came from or near Yosemite and that there was some association or
connection of the beer with Yosemite. Applicant argues that "it
Serial No. 78710805

19
should not be penalized for its relative proximity to the
Yosemite National Park." (Brief, p. 9.) However, the purpose of
Section 2(e)(2) of the Act is not to punish a particular business
for using a geographic name, but rather to leave geographic names
free for all businesses operating in the same area to inform
customers where their goods or services originate. See In re MCO
Properties Inc., 38 USPQ2d 1154, 1156 (TTAB 1995). There is no
question that "Yosemite" is a term that applicant's competitors
in Merced are entitled to use to describe the geographic origin
of their beer.
Under the circumstances, nothing more need be shown by the
examining attorney in order to establish a goods/place
association. See In re Opryland USA Inc., supra at 1413 (TTAB
1986) ("[I]n that the evidence shows a substantial part of
appellant's commercial activities emanate from or are related to
Nashville, Tennessee, and that city is not obscure or remote, it
is unnecessary for the Examining Attorney to establish by other
evidence that a services/place relationship exists between
appellant's services and the city of that name."). Even if, as
applicant claims, the label on applicant's beer were to state
that YOSEMITE BEER is produced in "Merced," the relationship of
that city with Yosemite will cause the public to make a
goods/place association of the beer with Yosemite. It would not
Serial No. 78710805

20
be unreasonable for consumers to even assume, correctly or
incorrectly, that applicant's beer is made from water drawn from
the "clear streams"11 in the park, or perhaps from the river that
flows from Yosemite into Merced.
In further connection with its assertion that YOSEMITE BEER
is an arbitrary term, applicant argues that no commercial
activity is performed in Yosemite National Park and thus,
according to applicant, there can be no reasonable or likely
goods/place association on the part of consumers. Applicant
contends (without support) that Yosemite National Park does not
produce any commercial goods or services of any kind, and further
that "National Parks in general do not produce beer, nor are
national parks known for beer or brewpubs." (Brief, p. 9.)
Applicant maintains that "The sole commercial enterprises are
licensed vendors who provide services to Park visitors (such as
lodging and souvenirs)." (Id., at 13.)
In an attempt to support this argument, applicant has
submitted nearly two hundred third-party registrations for marks
that include the names of other National Parks (e.g.,
"Yellowstone" and "Rocky Mountain"), the names of rivers (e.g.,
"Snake River"), and the names of mountain ranges (e.g.,
"Adirondack" and "Sierra Nevada"), along with Columbia Gazetteer
entries and/or website printouts with information about all or

11 wikipedia.org, supra.
Serial No. 78710805

21
most of these other geographic areas. Applicant concludes, based
on these registrations, that it is common for the United States
Patent & Trademark Office ("USPTO") to permit the registration of
goods and services which use the names of National Parks and
other "rural areas" which applicant claims are "devoid of
commercial activity" and that the USPTO has "consistently found
in permitting such marks to register that the public is not
confused or deceived." (Request for Reconsideration, June 16,
2006.)
We point out that the issue under Section 2(e)(2) is not
whether consumers will be "confused or deceived," but rather, as
noted earlier, whether applicant has a right to exclude others
from using the term to describe the geographic origin of their
goods or services. Moreover, apart from the fact that
applicant's generalizations about National Parks and the other
types of places named in the third-party registrations are
entirely unfounded,12 these registrations are irrelevant to the
question of whether commercial activity takes place in Yosemite,

12 It is well settled that a geographic term "can indicate any
geographic location on earth" (McCarthy on Trademarks and Unfair
Competition § 14:3 (4th ed. 2007)) including rivers, mountain ranges
and National Parks. Indeed, at least one court has held that
"Yellowstone," the place named in one of the registrations relied on by
applicant, is geographically descriptive. See Warwood v. Hubbard,
supra (YELLOWSTONE OUTFITTERS primarily geographically descriptive of
outfitting services offered in the region around Yellowstone National
Park).
Serial No. 78710805

22
or, for that matter, to any question concerning the
registrability of applicant's mark.
In addition, the evidence submitted by the examining
attorney shows that the park is clearly not devoid of commercial
activity, and applicant itself admits that there are licensed
vendors in the park. As stated on the website, yosemitepark.com,
the Yosemite area offers not only "expansive wilderness" but also
the guest services and amenities you would find at a
year-round resort. ... including lodging, food and
beverage, retail operations, transportation, tours
and recreation services. ...

It would certainly not be unreasonable for consumers to
expect that the restaurants in the park, just as any "resort"
facility, would also sell beer. This is not a situation where it
is so unlikely that certain goods could come from a particular
geographic place, for example, NORTH POLE for bananas, that no
goods/place association could be drawn. Here, the evidence shows
that both goods are offered and services are rendered in Yosemite
National Park, and that the city where applicant is located
actively fosters a connection between the city and Yosemite, such
that for purposes of our analysis consumers would regard them as
part of the same geographic area. In establishing a goods/place
association between beer and Yosemite, the examining attorney
need not show that the public would actually make the asserted
association, i.e., that the public actually believes the beer is
Serial No. 78710805

23
made in Yosemite National Park. See In re Nantucket Allserve
Inc., 28 USPQ2d 1144, 1146 (TTAB 1993) ("even assuming for the
sake of argument that the public does not believe that NANTUCKET
NECTARS soft drinks are actually manufactured on Nantucket (and
of course they are not), nevertheless, these goods originate from
a company" that has a significant connection to Nantucket).
Rather the examining attorney need only show, as she has done
here, a "reasonable basis" for concluding that the public would
make the goods/place association. In re Loew's Theatres, Inc.,
supra at 868. The facts that there are restaurants serving
beverages in Yosemite and that applicant is located in or nearby
the Yosemite region and promotes an association with Yosemite,
establish a goods/place association of beer with Yosemite.
Consumers would likely believe that applicant's beer had its
origin in or was in some way connected to Yosemite.
Decision: The refusal to register under Section 2(e)(2) is
affirmed.