Virginia Baseball Club LC

Trademark Trial and Appeal Board

Dec 21, 1998

No. 75002545 (T.T.A.B. Dec. 21, 1998)

Paper No. 11
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 21, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Virginia Baseball Club LC
________
Serial No. 75/002,545
_______
Rober A. Vanderhye of Nixon & Vanderhye for applicant.
Cindy B. Greenbaum, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
_______
Before Cissel, Quinn and Bucher, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Virginia Baseball
Club LC, a limited liability company of the state of
Virginia, to register the mark VIRGINIA BASEBALL CLUB for
“entertainment services in the nature of baseball
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2
exhibitions” and for a wide range of collateral products
falling in several different international classes.1
The Trademark Examining Attorney has refused
registration under Section 2(e)(2) of the Trademark Act on
the ground that applicant’s mark, if applied to applicant’s
goods and/or services, would be primarily geographically
descriptive of them. The Examining Attorney also made
final, pursuant to Section 6(a) of the Act, a requirement
that applicant disclaim the words “Baseball Club” apart
from the mark because, in the Examining Attorney’s view,
the words are merely descriptive or generic. The Examining
Attorney further refused registration based on an improper
classification of two of the items listed in the
identification of goods. Lastly, the Examining Attorney
made final a requirement that applicant affirmatively state
whether the goods and/or services will have any connection
with the state of Virginia.
When the refusals were made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs.
As an initial matter, we note that applicant
responded, in the context of its remarks made in a portion
of its brief directed to the Section 2(e)(2) refusal, to

1 Application Serial No. 75/002,545, filed October 6, 1995,
alleging a bona fide intention to use the mark in commerce. The
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3
the Examining Attorney’s requirement that applicant state
whether the goods and/or services will have a connection
with the state of Virginia. The Examining Attorney appears
to have implicitly accepted applicant’s statements as
satisfying the requirement inasmuch as the Examining
Attorney did not list in her brief this final requirement
as an issue on appeal. Moreover, the Examining Attorney
has referred to applicant’s statements in arguing the
merits of the Section 2(e)(2) refusal. Accordingly, we
assume that the Examining Attorney’s requirement has been
satisfied, and that this issue is moot. No further
attention need be given to the matter.
Geographic Descriptiveness
The Examining Attorney, in urging that the Section
2(e)(2) refusal to register be affirmed, contends that the
primary significance of the term “Virginia” is geographic
and that a goods/place and/or a services/place association
is presumed from the fact that applicant’s goods and/or
services will be produced/rendered in the state of
Virginia. The Examining Attorney maintains that the words
“Baseball Club” are generic or merely descriptive as
applied to the goods and/or services, and that the addition
of these words to the geographic term does not diminish the

identification of goods is over four typed pages long.
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4
primarily geographic significance of the mark as a whole.
In support of the refusal, the Examining Attorney relied
upon dictionary listings for the terms “Virginia,”
“Baseball” and “Club.”
Applicant maintains that its mark is not primarily
geographically descriptive since the mark is a unitary mark
comprising, in part, non-geographic terms, that the word
“Virginia” has non-geographic meanings, and that there is
no evidence that consumers associate baseball with the
state of Virginia. More specifically, applicant argues
that the mark as a whole is “Virginia Baseball Club,” not
“Virginia” per se; that there has never been a Major League
baseball team located in the state of Virginia, so that an
association of baseball with Virginia is highly unlikely;
and that “Virginia” is commonly used as a given name for
women. In connection with its arguments, applicant relied
upon dictionary listings of the word “Virginia,” as well as
several combination of terms which begin with “virginia”
(small letter “v”), the definitions of which are silent as
to any connection with the state of Virginia. Applicant
also submitted copies of third-party registrations and
applications wherein the words “Baseball Club” have not
been disclaimed, with applicant’s contending that the words
have not been viewed universally as merely descriptive when
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5
applied to goods and/or services of the type listed in
applicant’s application.
In order for registration to be properly refused under
Section 2(e)(2), it is necessary to show that (i) the mark
sought to be registered is the name of a place known
generally to the public, and that (ii) the public would
make a goods(services)/place association, that is, believe
that the goods and/or services for which the mark is sought
to be registered originate in that place. In re California
Pizza Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988), citing In
re Societe Generale des Eaux Minerals de Vittel S.A., 824
F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987). Where there is
no genuine issue that 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 and/or services with the place may ordinarily
be presumed from the fact that the applicant's own goods
and/or services come from the geographical place named in
the mark. In re Handler Fenton Westerns, Inc., 214 USPQ
848 (TTAB 1982).
The term “Virginia,” as defined by the dictionary
evidence of record, means “a state in the eastern United
States, on the Atlantic coast;” “of or from the state of
Virginia;” and “a female given name from a Roman family
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name.” The term “baseball” is defined as “a game of
ball....” The term “club” means “a group of persons
organized for a social, literary, athletic, political, or
other purpose.”
Based on the record before us, we find that the
primary significance of the term “Virginia” in applicant’s
mark is geographical. We further find that the state of
Virginia is neither an obscure nor a remote geographical
place, but rather is the name of a place known generally to
the public. In saying this, we recognize that the term
“Virginia” is a given name for women and that there are
dictionary listings for combinations of terms comprising,
in part, the word “virginia” (as, for example, “virginia
opossum” and “virginia reel”) wherein no reference is made
to the state of Virginia. However, in the context of the
mark as a whole, we cannot help but conclude that the
significance of the term “Virginia” in applicant’s mark is
primarily geographical. That is, it is common knowledge
that sports team names are usually preceded by place names.
With respect to whether the public would make a
goods/place and/or a services/place association, applicant
described its connection with the state of Virginia as
follows (brief, pp. 2-3):
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[A]pplicant’s present intent is to
conduct [M]ajor [L]eague baseball
exhibitions and games in the State of
Virginia. However certainly at least
as a preliminary matter, games may be
conducted in the District of Columbia
or Maryland, and in any event there
will be exhibition games and services
provided at a spring training location
or locations; probably in Florida or
Arizona. The goods that will be sold
with the mark will not necessarily be
manufactured in Virginia, but may be
manufactured anywhere in the world, but
likely will be sold wherever the
baseball team is conducting games or
exhibitions, e.g. Florida, Arizona, the
District of Columbia, Virginia, or
Maryland, or from corporate
headquarters, presently in the State of
Virginia, or from Major League baseball
outlets anywhere.
We note that applicant is a limited liability company
under the laws of the state of Virginia and that applicant
is located in Alexandria, Virginia. Further, as applicant
itself has acknowledged, its intent is to conduct baseball
games and exhibitions in the state of Virginia. Inasmuch
as applicant is headquartered in Virginia, and the team
would be located in Virginia and playing at least some of
their games there, a public association of the goods and/or
services with Virginia may be presumed. In re Handler
Fenton Westerns, Inc., supra. See also: In re Nantucket
Allserve Inc., 28 USPQ2d 1144 (TTAB 1993). Indeed, given
the specific nature of applicant’s services and goods, it
is likely that the public would view the services, and any
collateral products bearing the mark, as having their
Ser No. 75/002,545
8
origin in Virginia, where the baseball team is located.
Such is the case with any professional sports team relative
to its location. Moreover, applicant here has left open
the possibility that its goods will, in fact, be
manufactured in Virginia.
Applicant’s evidence and arguments simply do not rebut
the prima facie case established by the Examining Attorney.
That is to say, consumers would reasonably expect, upon
encountering the mark VIRGINIA BASEBALL CLUB for
applicant’s goods and/or services, that the goods and/or
services originate in Virginia, and applicant has not
submitted sufficient evidence to show that the primary
significance of VIRGINIA BASEBALL CLUB is not geographical
or that there would be no association between Virginia and
applicant’s goods and/or services. The facts that Virginia
is not “noted for” baseball or that a Major League baseball
team has never been located in Virginia are of little
moment. In re Loew’s Theatres, Inc., 769 F.2d 764, 226
USPQ 865, 867-868 (Fed. Cir. 1985); and In re Pan-O-Gold
Baking Co., 20 USPQ 1761 (TTAB 1991) [the
goods(services)/place association does not require proof
that the place named in the mark is well-known or noted for
the goods(services)]. Likewise, the fact that there are
dictionary definitions of “virginia--” word combinations
that do not indicate origin in that state is of minor
relevance given applicant’s specific mark (VIRGINIA
BASEBALL CLUB) and the specific services and collateral
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9
products (baseball-related services and goods) involved
here. Also, the fact that “Virginia” is a woman’s name
does not diminish our view that the word “Virginia,” as it
appears in applicant’s mark, would have a primary
geographical significance.
The mere addition of the highly descriptive words (see
discussion, infra) “Baseball Club” does not detract from
the primary significance of VIRGINIA BASEBALL CLUB when the
mark is considered as a whole. In re Chalk’s International
Airlines Inc., 21 USPQ2d 1637, 1639 (TTAB 1991). Further,
as the Board has stated in the past, the determination of
registrability under Section 2(e)(2) should not depend on
whether the mark is unitary or composite. In re Cambridge
Digital Systems, 1 USPQ2d 1659, 1662 (TTAB 1986).
We finally note that applicant, in its application
Serial No. 75/013,460 to register the mark VIRGINIA
BASEBALL CLUB L.C. and design, disclaimed the words
“Virginia Baseball Club.” Although the Examining Attorney
points to this disclaimer as an admission of geographic
descriptiveness, applicant disagrees (brief, p. 8): “the
disclaimer in the co-pending application is of the
corporate entity name, which includes the ‘LC’ at the end
thereof, and which has an entirely different unitary
impression and significance than ‘Virginia Baseball Club’
per se does here.”
We are not persuaded by the distinctions drawn by
applicant. However, although we have considered the prior
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disclaimer, we also do not view the disclaimer to be
dispositive of the Section 2(e)(2) issue here.
In view of the above, we affirm the refusal to
register.
Disclaimer
The Examining Attorney required a disclaimer of the
words “Baseball Club” apart from the mark. The Examining
Attorney maintains that the words, if used in connection
with applicant’s goods and/or services, would be generic or
merely descriptive thereof. In support of this position,
the Examining Attorney submitted copies of third-party
registrations of marks including the words “Baseball Club,”
or slight variations thereof, covering baseball exhibition
services and collateral products. The registrations
include disclaimers of the words “Baseball Club” apart from
the mark. Also, the Examining Attorney once again refers
to applicant’s previously issued registration wherein the
words were disclaimed.
Applicant contends that the words “Baseball Club” are
not universally considered to be descriptive, pointing to a
registration owned by The San Diego Padres Baseball
Partnership wherein the words “Baseball Club” are not
disclaimed. Applicant states that “although it [“Baseball
Club”] is considered descriptive for entertainment services
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11
in the nature of baseball exhibitions, it is not considered
descriptive for goods in general.” (brief, p. 9)
Applicant also contends that the disclaimer in its earlier
registration is not an admission of genericness/mere
descriptiveness inasmuch as the words “Baseball Club” per
se were not disclaimed, but rather the words “Virginia
Baseball Club L.C.” were disclaimed.
It is well settled that a term is considered to
be merely descriptive of goods/services, within the meaning
of Section 2(e)(1) of the Trademark Act, if it immediately
describes an ingredient, quality, characteristic or feature
thereof or if it directly conveys information regarding the
nature, function, purpose or use of the goods/services. In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). It is not necessary that a term
describe all of the properties or functions of the
goods/services in order for it to be considered to be
merely descriptive thereof; rather, it is sufficient if the
term describes a significant attribute about them.
Moreover, whether a term is merely descriptive is
determined not in the abstract, but in relation to the
goods/services for which registration is sought. In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). In this
connection, registration must be refused if the term is
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descriptive of any of the goods/services for which
registration is sought. In re Quik-Print Copy Shop, Inc.,
616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980); and In re
Richardson Ink Co., 511 F.2d 559, 185 USPQ 46, 47 (CCPA
1975).
In this case, the words “Baseball Club” clearly are
highly descriptive when applied to services and goods
related to baseball and, even more specifically, to the
activities of a baseball club (team). The third-party
registration evidence submitted by applicant and the
Examining Attorney shows that the words have been
disclaimed in all but one case. We would point out that,
in any event, we are not bound by the actions of Examining
Attorneys in prior cases.
The requirement of a disclaimer of the words “Baseball
Club” is affirmed.
Identification of Goods
There were two issues which were the subjects of the
final refusal, one of which has been resolved. The one no
longer on appeal involved the classification of “temporary
tattoos.” Applicant, in its brief, noted that “[i]t is
clear that the ‘temporary tattoos’ goods listing amendment
in the January 24, 1997 paper was merely an error, and this
will be corrected upon remand to the examining attorney by
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removal of ‘temporary tattoos’ from the Class 28
description, and insertion into the Class 16 description.”
(brief, p. 10) The Examining Attorney, in her brief, notes
applicant’s statement, and indicates that “there is no need
to further address this issue herein.” (brief, p. 3, n. 1)
Inasmuch as applicant and the Examining Attorney are in
agreement on this point, and in order to avoid the inherent
delay in any remand situation, the identification of goods
is deemed to be amended to reflect the transfer of the item
“temporary tattoos” from Class 28 to its proper place in
Class 16.
The other issue involves the classification of
applicant’s “batting helmets” and “catcher’s helmets.” The
essence of applicant’s argument is that these goods are
sporting goods and belong in Class 28. Although the
Examining Attorney insists that the items belong in Class
9, applicant maintains that the fact that the helmets may
have some protective function does not mean that they are
classified in Class 9 (a class not included in this
combined application). In making this argument, applicant
contends that the Office “ID Manual” does not have the
force and effect of law. Applicant also points out that
golf gloves, baseball gloves and football equipment all
have protective functions, yet these goods are classified
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in Class 28. Applicant also highlights two previously
issued third-party registrations wherein “batting helmets”
appear in Class 28.
The Examining Attorney maintains that all helmets,
including batting helmets and catchers’ helmets, are
properly classified, according to the “Office’s Acceptable
ID Manual,” in Class 9. Thus, the Examining Attorney
asserts that the items must be deleted from the
identification of goods inasmuch as applicant did not add
Class 9 to the listing of goods. A copy of the pertinent
page from the manual has been made of record.
We would point out that the matter of proper
classification is not a substantive one and, thus,
generally not a matter for appeal. In re Tee-Pak, Inc.,
164 USPQ 88, 89 (TTAB 1969). Nonetheless, neither
applicant nor the Examining Attorney have made mention of
this view, but rather have briefed the issue. In the
interest of judicial economy, we have elected to consider
the issue.
However arbitrary the classification system may seem
at times, the U. S. Patent and Trademark Office Acceptable
Identification of Goods and Services Manual controls in
these types of situations. The classification system is
set up for the convenience of the Office. In the present
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case, we readily appreciate the fact that batting helmets
and catchers’ helmets serve two purposes, that is, as
sports equipment and as safety equipment. For whatever
reasons, the items are classified in Class 9, and
applicant’s position cannot be adopted. The two third-
party registrations relied upon by applicant would appear
to contain classification errors, a situation that need not
be repeated here. TMEP §§ 1401.02 and 1401.10.
Decision: The refusals to register are affirmed.
R. F. Cissel
T. J. Quinn
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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