Zeller

Trademark Trial and Appeal Board

Sep 30, 2009

No. 77544307 (T.T.A.B. Sep. 30, 2009)

Mailed: September 30, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Zeller
________

Serial No. 77544307
_______

Dana B. Robinson of TechLaw LLP for Kathleen Hill Zeller.

Tasneem Hussain, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Quinn, Bucher and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Kathleen Hill Zeller has filed an application to
register on the Principal Register the mark shown below,

for “granola” in International Class 30.1 In response to a
request by the examining attorney, applicant disclaimed the
exclusive right to use the word “Granola.”

1 Serial No. 77544307, filed August 11, 2008, and alleging a
bona fide intention to use the mark in commerce. The application
THIS DISPOSITION
IS NOT A PRECEDENT
OF THE TTAB
Ser No. 77544307
2
The trademark examining attorney finally refused
registration under Trademark Act Section 2(e)(2), 15 U.S.C.
§1052(e)(2), on the ground that applicant’s mark is
primarily geographically descriptive of the origin of
applicant’s goods.
Applicant appealed and requested reconsideration of
the final refusal. The request for reconsideration was
denied on April 1, 2009 and this appeal resumed on April
20, 2009. Both applicant and the examining attorney filed
briefs and applicant filed a reply brief.
We reverse the refusal to register.
Preliminarily, we note that applicant states in her
brief that the “Examiner has denied [the] request for
reconsideration, but raised additional arguments and cited
new cases not mentioned before.” (Br. p. 8). We note,
however, that an examining attorney is not precluded from
raising, even during appeal, new arguments and/or
additional case citations in support of a ground for
refusal which was timely raised and is the subject of the
appeal. See TMBP § 1217 (2d ed. rev. 2004). Accordingly,
applicant’s objection is overruled.

includes the statement: “The mark consists of the words
‘CATALINA ISLAND GRANOLA’ stylized with a frame.”

Ser No. 77544307
3
Turning then to the merits, the examining attorney
maintains that the mark is primarily geographically
descriptive of the origin of applicant’s goods because the
primary significance of the wording “Catalina Island” is a
generally known geographic place, applicant is located
there and the goods will be sold there, and purchasers
would be likely to believe that the goods originate in the
geographic place identified in the mark.
The examining attorney has supported the refusal with
the following:
a. The definitions of “Catalina Island” and
“granola,” both taken from the American Heritage® Dictionary
of the English Language (4th ed. 2000), which defines the
terms respectively as:
An island off southern Santa Barbara Islands.
Discovered in 1542, it has been a noted resort
center since the 1920’s.

Rolled oats mixed with various ingredients, such
as dried fruit, brown sugar, and nuts, and used
especially as a breakfast cereal.2

b. Third-party registrations for marks including the
words “Catalina” or “granola” in which those words were
disclaimed or the mark was registered pursuant to Section
2(f) of the Trademark Act.

2 Retrieved on November 19, 2008 from https://www.bartleby.com.
Ser No. 77544307
4
c. Information from wikipedia.org for Santa Catalina
Island, in part, as follows (emphasis supplied):
Santa Catalina Island, often called Catalina
Island, or just Catalina, is a rocky island off
the coast of the U.S. state of California. The
island is 22 miles (35 km) long and eight miles
(13 km) across at its greatest width. The
island is located about 22 miles (35 km) south-
southwest of Los Angeles, California. The
highest point on the island is Mt. Orizaba
(648 m), at 33º22’29.7”N 118º25’11.6”W.

Part of the Channels Islands of California
archipelago, Catalina falls under the
jurisdiction of Los Angeles County. Most of the
island is owned by the Catalina Island
Conservancy.

The total population as of the 2000 census was
3,696 persons, with almost 85 percent living in
its only city of Avalon (pop. 3,127, with
another 195 south of the city outside of the
city limits). The second center of population
is the unincorporated town of Two Harbors, in
the north, with a population of 298.
Development occurs also at the smaller
settlements Ranch Escondido and Middle Ranch.
The remaining population is scattered over the
island between the two population centers. The
island has an overall population density of
49.29/mi2 (19.03/km2).
…
Tourism and attractions

About a million tourists visit the island every
year.
…
Most of the island is controlled by the Catalina
Island Conservancy, a private nonprofit
organization. The mission of the Catalina
Island Conservancy is to be a responsible
steward of its lands through a balance of
conservation, education and recreation. Through
its ongoing efforts, the Conservancy protects
the magnificent natural and cultural heritage of
Ser No. 77544307
5
Santa Catalina Island, stewarding approximately
42,000 acres (170 km2) of land (88 percent of the
island), 50 miles (80km) of rugged shoreline, an
airport, and more than 200 miles (300km) of
roads.
…
Under an agreement with Los Angeles County, the
Conservancy has granted an easement to allow day
hiking and mountain biking, but visitors must
first obtain a permit at the Conservancy’s
office (on which they declare the parts of the
island they intend to visit).
…
The use of motor vehicles on the island is
restricted; there is a limit on the number of
registered cars, which translates to a 10-year-
long wait list to bring a car to the island.
Most residents move around via golf cart.
Tourists can hire a taxi from Catalina
Transportation Services. Bicycles are also a
popular mode of transportation. There are a
number of bicycle and golf cart rental agencies
on the island. Only the city of Avalon is open
to the public without restrictions.

d. An excerpt from the website
www.catalinachamber.com that states in part: “Catalina
Island is the place where the gentle rhythm of the waves
makes time slow down.”
e. Excerpts from various websites purportedly to show
that “consumers would understand the connection between
CATALINA ISLAND and granola” (Final Office Action p. 4), as
follows:
Each morning the smell of fresh Granola cooking
on the stove fills the air and wakes you from a
peaceful slumber. It makes it feel like you are
staying in a house with friends and family.
Catalina is a great place to visit, and the Old
Turner Inn’s atmosphere makes it much better
Ser No. 77544307
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(http://www.tripadvisor.in/ShowUserReviews-
g29121-d113202-r1787459-The_Old_Turner_Inn-
Avalon-_Catalina-_Island-California.html);

The Avalon Hotel is one of Catalina Island’s
premier lodging sources … the breakfast features
fresh fruit, bagels, granola and muffins as well
as fresh orange juice, organic coffee and a full
selection of teas.
(http://www.bbonline.com/ca/avalonhotel/);

A reference to granola as a breakfast item at the
Banning House Lodge on Catalina Island.
(www.ecatalina.com/journal detail.cfm/id/763/img);

An excerpt from a newsletter published by the Home
Improvement Ministries containing a recipe for granola
served at Campus by the Sea on Catalina Island.
(www.homeimprovementministries.org); and

A small island paradise 26 miles off the coast
of Los Angeles, Catalina has two towns (the
touristy but fun Avalon and the rustic, granola-
haven Two Harbors).
(http://everything2.com/title/Santa+Catalina+
Island.

Applicant, in urging reversal of the refusal to
register, maintains that her CATALINA ISLAND GRANOLA mark
is not primarily geographically descriptive “because the
main effect of the mark is to suggest a certain lifestyle
and relaxation associated with Catalina Inland”; because
applicant’s goods do not originate from Catalina Island;
and because “consumers would not be likely to make a
good/place association between applicant’s granola and
Catalina Island.”
Ser No. 77544307
7
As evidentiary support for her position, applicant has
submitted the following:
a. An article from the County of Los Angeles Public
Library titled “Catalina Island Frequently Asked
Questions.” The article includes much of the same
information included in the Wikipedia article submitted by
the examining attorney. The article also includes the
following information on the island’s main industries.
3. What are the Island’s main industries?
Tourism and quarrying are the Island’s main
industries….

b. An article from the Catalina Island Chamber of
Commerce & Visitors Bureau discussing the history of
Catalina Island.
c. The declaration of applicant, stating, in part:
While the application is an Intent-to-use,
I do not plan to manufacture granola or any
of the components on Catalina Island.
…
Catalina is a tiny resort destination, once
famous for its casino. It is now popular
with southern Californians for short
vacations. As such, the concept of the
“CATALINA ISLAND GRANOLA” brand is
suggestive of a quaint little town with bed
and breakfast hotels where one might relax
and enjoy a bowl of granola.

d. A copy of the Catalina Island Chamber of Commerce
& Visitors Bureau business directory category list.
Ser No. 77544307
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e. Copies of four third-party registrations for marks
including the term “Catalina” or “Catalina Island,” which
contain no disclaimers of those terms.3
f. Internet evidence of the use of the terms “Hyde
Park” and “Rodeo Drive.”
“In order for a mark to be considered primarily merely
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.” In re Spirits of New Merced LLC,
85 USPQ2d 1614, 1616 (TTAB 2007). See also In re Brouwerij
Nacional Balashi NV, 80 USPQ2d 1820, 1821 (TTAB 2006); In
re Handler Fenton Western, Inc., 214 USPQ 848, 849-50 (TTAB
1982); and TMEP § 1210.01(a) (5th ed. Sept. 2007) (Test for
geographically descriptive marks: (1) the primary
significance of the mark is a generally known geographic
location; (2) the goods or services originate in the place
identified in the mark; and (3) purchasers would be likely

3 We note that the sole third-party registration for a mark
containing the term “CATALINA ISLAND,” Registration No. 3301873
for the mark CATALINA ISLAND YACHT CLUB, is registered pursuant
to Section 2(f) of the Trademark Act.

Ser No. 77544307
9
to believe that the goods or services originate in the
geographic place identified in the mark).
Further, the Federal Circuit has quoted the Board as
correctly saying:
[H]ere a refusal of registration is based on the
finding that a mark if primarily geographically
descriptive of the goods, that is, the goods
actually come from the geographical place
designated in the mark, the Examining Attorney
must submit evidence to establish a public
association of the goods with the place, if, for
example, there exists a genuine issue raised
that 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.

In re Societe Generale Des Eaux Minerales de Vittel S.A.,
824 F.2d 957, 3 USPQ2d 1450, 1451 (Fed. Cir. 1987).
(Emphasis omitted).
We note first that applicant’s mark is not CATALINA
ISLAND but rather CATALINA ISLAND GRANOLA with a
rectangular frame design. We do not believe that the
addition of the generic word “granola” and the design is
sufficient to establish a non-geographically descriptive
meaning for the mark. Highly descriptive or generic
wording does not convert a geographically descriptive term
into a non-geographic term. In re Compagnie Generale
Maritime, 993 F.2d 841, 26 USPQ2d 1652 (Fed. Cir. 1993)
(FRENCH LINE (stylized) primarily geographically
Ser No. 77544307
10
descriptive of goods and services from France); and In re
Cambridge Digital Systems, 1 USPQ 1659, 1662 (TTAB 1986)
( primarily geographically descriptive when
applicant’s place of business is Cambridge, Massachusetts).
We then consider whether the primary significance of
the term “Catalina Island” is as a generally known
geographic location. The evidence shows that Santa
Catalina Island, also commonly known as “Catalina Island,”4
is a rocky island off the coast of the state of California,
with approximately 3,700 inhabitants, and it is a popular
tourist destination hosting about a million visitors every
year. Indeed, applicant states in her brief that
“Applicant does not dispute that Catalina Island is not
remote or obscure.” (Br. p. 2). Instead, applicant argues
that the geographic meaning of CATALINA ISLAND GRANOLA is
minor and unconnected to the goods. Applicant particularly

4 Although the issue was not raised by either applicant or the
examining attorney, it is 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 1452 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 they identify are, for purposes of
registration, identical, and … the same criteria for registration
necessarily apply thereto.”).

Ser No. 77544307
11
contends that “[t]he primary significance is the
connotation attached with Catalina Island: that of
leisure, luxury, and a Southern Californian lifestyle.
Catalina Island is the epitome of island living, and
attracts visitors who wish to unwind and enjoy themselves.”
However, applicant has not submitted any evidence
whatsoever in support of her contention that the public
would associate “Catalina Island” with a leisurely
lifestyle – the fact that “hordes” of tourists flock to
Catalina Island every year is not evidence of how they
perceive the term “Catalina Island.”
We are also not persuaded by applicant’s contention
that the CATALINA ISLAND GRANOLA mark is an “arbitrary,
fanciful or suggestive” composite. There simply is nothing
incongruous in the combination of the terms “Catalina
Island” and “granola.” We accordingly conclude that, on
this record, the primary significance of “Catalina Island”
is geographic.
We next consider whether the goods come from the area
and whether the public would make a goods/place
association; that is, would the public be likely to believe
that the goods originate in the place named in the mark.
When “there is no genuine issue that the geographical
significance of a term is its primary significance and
Ser No. 77544307
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where the geographical place is neither obscure or 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.” Handler Fenton, 214 USPQ at 850 (emphasis added).
Therefore, when goods come from a specific geographic
location, that is normally enough to find a goods/place
relationship. Compagnie Gererale Maritime, 26 USOQ2d at
1655 (“We likewise hold that the Board did not clearly err
in finding that ‘France, a major manufacturing and
commercial nation, would be perceived as the source of the
numerous good and services listed in the applications if
the mark is primarily geographical’”) and In re JT
Tobacconists, 59 USPQ2d 1080, 1084 (TTAB 2001) (“[W]e find
that a goods/place association exists in that customers for
applicant’s goods would believe that its cigars, cigar
cases and humidors are manufactured in the state of
Minnesota and that, because applicant’s goods do indeed
come from such state, its mark is primarily geographically
descriptive of its goods”).
While the evidence shows that Catalina Island is a
popular tourist destination, the record is devoid of any
evidence that Catalina Island is a well-known geographic
location, from which we could assume that a wide variety of
Ser No. 77544307
13
goods and services originate. Indeed, the record reflects
that it has no agricultural concerns and little to no
manufacturing or other industrial industries. In this
case, the examining attorney argues that:
(1) “applicant is located in Avalon which is a city on
Catalina Island and therefore there is a presumed
goods/place association” (Br. p. 5);
(2) “although applicant states that the granola will not be
manufactured on Catalina Island, applicant has not excluded
selling the goods on Catalina Island and has stated that
the goods will be sold nationwide which, naturally,
includes Catalina Island” (id.); and
(3) the evidence of record demonstrates goods such as
granola often originate from and are sold in popular
tourist destinations, and therefore, there is a reasonable
basis for a consumer to believe that granola bearing the
name CATALINA ISLAND GRANOLA would have originated for that
same location (id. at p. 6).
Applicant, on the other hand, argues the fact that
“Applicant’s address is in Avalon, located on Catalina
Island is of no moment. There is no indication that
granola is manufactured on Catalina Island, and no
indication that people believe this to be the case.” (Br.
p. 5). She further argues that “the location of
Ser No. 77544307
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Applicant’s office will not cause people to assume a
good/place [sic] association … [and t]he mere fact that
people eat granola on the island does not establish a
place/goods association.” (Id.).
We agree with applicant that merely living on Catalina
Island is not necessarily enough to establish a goods/place
relationship. Indeed, even the location of a corporate
headquarters in not necessarily sufficient to show a
goods/place relationship. In re John Harvey & Sons Ltd.,
32 USPQ2d 1451, 1454 (TTAB 1994) (“[T]he mere fact that
applicant’s headquarters are in Bristol, England does not
mandate a finding here that a goods/place association
should be presumed.”). In another case, an applicant
applied to register the mark LAUDERDALE FARM for meats and
poultry. The fact that the applicant was located in
Lauderdale, Alabama, did not establish a goods/place
relationship.
That reference indicates only that it
[Lauderdale County, Alabama] is a cotton-growing
area and makes no reference to any of the
products [meats and poultry] for which applicant
now seeks to register the mark LAUDERDALE FARM.
Even assuming the facts set forth in the
Gazetteer are common knowledge, an assumption we
find difficult to accept, the evidence is
insufficient to support any public association
on the part of the public of the term
“Lauderdale” with fresh processed meat and
poultry products.

Ser No. 77544307
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In re Consolidated Foods Corp., 218 USPQ 184, 186 (TTAB
1983). Accord In re Gale Hayman Inc., 15 USPQ2d 1478, 1479
(TTAB 1990) (footnotes omitted):
The mere fact that applicant’s principal offices
are in Century City, close to Sunset Boulevard,
does not mandate a finding that a goods/place
association should be presumed. Sunset
Boulevard itself would have to be associated
with the products in such a way that the
consuming public would be likely to assume that
Sunset Boulevard was the place in which the
perfume and cologne originated. Nothing in the
record, however, indicates or even suggests that
purchasers would believe that Sunset Boulevard
was the place of manufacture or production of
the perfume and cologne. Indeed, there is no
indication that any perfume or cologne is
manufactured or produced on Sunset Boulevard.

Although the Board found in the NANTUCKET NECTARS case
that the products did not have to be made on the island of
Nantucket in order to establish a goods/place relationship,
the applicant had a substantial presence in that place (and
the specimens - consisting of the product labels –
reinforced the goods/place association). In re Nantucket
Allserve Inc., 28 USPQ2d 1144, 1145 (TTAB 1993). (“While
it is true that applicant’s NANTUCKET NECTARS soft drinks
are manufactured in Worcester, Massachusetts, applicant’s
corporate headquarters and, perhaps more importantly,
applicant’s center for research and development are located
on Nantucket. Thus, a principal origin, if not the
principal origin, of applicant’s products is Nantucket.”).
Ser No. 77544307
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In this case, we have no evidence regarding
applicant’s presence on Catalina Island, save applicant’s
acknowledgment that her address is in Avalon, a city on
Catalina Island. This falls short of establishing that the
origin of applicant’s goods is Catalina Island such that
there is a presumption of a goods/place association between
CATALINA ISLAND and granola. Therefore, it is incumbent
upon the examining attorney to introduce evidence
sufficient to establish such a goods/place association. As
previously indicated, the examining attorney made of record
five excerpts from articles retrieved from the Internet
that she argues demonstrate that goods such as granola
often originate from and are sold in popular tourist
destinations, and therefore, there is a reasonable basis
for a consumer to believe that granola bearing the name
CATALINA ISLAND GRANOLA would have originated from that
same location. First, three of the excerpts reference the
term “granola,” commonly used as a breakfast cereal, merely
as a menu selection offered by three lodging establishments
located on Catalina Island, and one other provides a recipe
for “granola” that again is offered as a menu item at
“Campus by the Sea” on Catalina Island. There is nothing
in these four excerpts that leads us to believe that
purchasers of such granola will associate their choice of
Ser No. 77544307
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breakfast with the geographic designation CATALINA ISLAND,
much less with the origin of applicant’s granola. They are
more likely to associate the granola they consumed as a
meal with the establishment that served it, and not the
island on which the establishment is located. We are also
not persuaded that the requisite goods/place relationship
is established by the fifth, and last, excerpted article
discussing Catalina Island. The article states that
Catalina has two towns (the touristy but fun Avalon and the
rustic granola-haven Two Harbors). Given the juxtaposition
of the phrases “touristy but fun Avalon” and “rustic
granola-haven” in the sentence, someone reading this
article will likely perceive the term “granola” not as a
breakfast cereal associated with Catalina Island, but as
describing one town as being laid back and the other one as
being fun. The perception is reinforced by the lack of any
food processing, or manufacturing, facilities in Two
Harbors or anywhere else on the island. This perception
does not change because, as the examining attorney argues,
“there is no intricate technology or highly specialized
methods required to make granola.” (Br. p.6).
A place does not have to be noted for a product to
establish that a term is geographically descriptive. JT
Tobacconist, 59 USPQ2d at 1084 (“There is no requirement…
Ser No. 77544307
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that the state of Minnesota be noted for cigars and cigar
products in order for a mark such as ‘MINNESOTA CIGAR
COMPANY’ to be held primarily merely geographically
descriptive.”). However, in this case, not only do we not
have any competent evidence that granola originates on
CATALINA ISLAND, but we have specific evidence, in the form
of applicant’s declaration, that applicant’s goods will not
originate on CATALINA ISLAND. The notion that granola
could be manufactured on CATALINA ISLAND is too
speculative.
Last, to the extent that the examining attorney is
arguing that a goods/place association exists in this case
solely because applicant’s goods will be sold on Catalina
Island, we find such argument unpersuasive. CATALINA
ISLAND itself would have to be associated with granola in
such a way that the consuming public would be likely to
assume that CATALINA ISLAND was the place in which the
granola originates or is somehow connected. See Gale
Hayman, 15 USPQ2d at 1478. We do not think potential sales
alone create such an association. The situation at hand is
different from that in Fred Hayman Beverly Hills Inc. v.
Jacques Bernier Inc., 38 USPQ2d 1691 (TTAB 1996) relied
upon by the examining attorney. In that case, the Board
found that the public would likely make a goods/place
Ser No. 77544307
19
association between perfume and RODEO DRIVE, since the
public, having been exposed to articles reporting on
“prestige” fragrances launched on Rodeo Drive and having
frequented stores carrying fragrances of Rodeo Drive
retailers, was likely to believe that perfumes bearing the
name “Rodeo Drive” originated there, especially when Rodeo
Drive retailers, in the promotion and marketing of their
perfume, emphasized their association with Rodeo Drive.
Herein, there is no evidence that there has been any
promotion and/or marketing of the geographic designation
“Catalina Island” in connection with granola such that
consumers would readily associate granola sold under the
mark CATALINA ISLAND GRANOLA with that geographic
designation. Stated simply, the evidence of record does
not show a reasonable basis for concluding that the public
is likely to believe that CATALINA ISLAND identifies the
place from which granola originates.5
In conclusion, because this record fails to establish
that purchasers would make a goods/place association with
respect to applicant’s mark CATALINA ISLAND GRANOLA and

5 We add that the application is based on an intent to use. It
is of course possible that applicant’s specimens for the goods
may demonstrate a connection with Catalina Island that is not
apparent now.

Ser No. 77544307
20
granola, we find that a prima facie case under Section
2(e)(2) has not been made.
Decision: The refusal to register is reversed.