1210.04    Goods/Place or Services/Place Association

Refusal of registration under §2(e)(2), §2(e)(3), or §2(a) requires that there be a goods/place or services/place association such that the public is likely to believe that the goods or services originate in the place identified in the mark.

To show that there is a goods/place or services/place association, the examining attorney may provide such evidence as excerpts from telephone directories, gazetteers, encyclopedias, geographic dictionaries, the LexisNexis® database, or the results of an Internet search.

The examining attorney should also examine the specimen(s) and any other evidence in the record that shows the context in which the applicant’s mark is used. See In re Broyhill Furniture Indus., Inc., 60 USPQ2d 1511, 1517 (TTAB 2001) (finding that applicant’s point of purchase display catalogs "foster a goods/place association between its furniture and Tuscany by referring to ‘Europe’s Mediterranean coast’ and ‘European sensibility’"); and In re Nantucket Allserve Inc., 28 USPQ2d 1144, 1146 (TTAB 1993) (finding that applicant’s product labels bore a picture of Nantucket, stated that the goods were "born" or "created" on Nantucket and "[embody] the wholesome quality of the Island whose name they bear," and mentioned no other geographic location). Note, however, that evidence other than the mark found on a specimen, which provides further information as to source, does not negate the geographic deceptive misdescriptiveness that may be conveyed by the mark itself. In re Premiere Distillery, LLC, 103 USPQ2d 1483, 1486-87 (TTAB 2012) ; In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1848-49 (TTAB 2012) (finding the statements "brand," "Cuban Style Rum," and "Product of the USA" on applicant’s label do not negate the primary geographically deceptive misdescriptiveness of the OLD HAVANA mark).

When the geographic significance of a term is its primary significance and the geographic place is neither obscure nor remote, for purposes of §2(e)(2), the goods/place or services/place association may ordinarily be presumed from the fact that the applicant’s goods or services originate (see TMEP §1210.03) in or near the place named in the mark. In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007) (YOSEMITE BEER held geographically descriptive of beer produced and sold in a brewpub in Merced, California, the Board stating that "[s]ince the goods originate at or near [Yosemite National Park], we can presume an association of applicant’s beer with the park."); In re Joint-Stock Co. "Baik," 80 USPQ2d 1305 (TTAB 2006) (BAIKALSKAYA – the Russian equivalent of from Baikal" or "Baikal’s" – held primarily geographically descriptive of vodka made from water piped from Lake Baikal, the Board presuming a goods/place association "because applicant is located near Lake Baikal, in the city of Irkutsk."); In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001) (MINNESOTA CIGAR COMPANY held primarily geographically descriptive of cigars); In re U.S. Cargo, Inc., 49 USPQ2d 1702 (TTAB 1998) (U.S. CARGO primarily geographically descriptive of towable trailers carrying cargo and vehicles); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) (CAROLINA APPAREL primarily geographically descriptive of retail clothing store services); In re Chalk’s Int’l Airlines Inc., 21 USPQ2d 1637 (TTAB 1991) (PARADISE ISLAND AIRLINES held primarily geographically descriptive of the transportation of passengers and goods by air, because the applicant’s services included flights to and from Paradise Island, Bahamas, even though the flights were not based there); In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988) (CALIFORNIA PIZZA KITCHEN held primarily geographically descriptive of restaurant services that originate in California); In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982) (DENVER WESTERNS held primarily geographically descriptive of western-style shirts originating in Denver).

This presumption is rebuttable. See TMEP §1210.04(c) regarding obscure or remote places, and TMEP §§1210.02–1210.02(c)(iii) regarding the primary significance of a geographic term.

It is more difficult to establish a services/place association than a goods/place association when making a refusal under §§2(e)(3) and 2(a). In re Les Halles De Paris J.V., 334 F.3d 1371, 1374, 67 USPQ2d 1539, 1542 (Fed. Cir. 2003). See TMEP §1210.04(a) regarding establishment of a goods/place association, and TMEP §1210.04(b) regarding establishment of a services/place association.

1210.04(a)    Establishing Goods/Place Association

To establish a goods/place association, it is not necessary to show that the place identified in the mark is well known or noted for the goods. In re Les Halles De Paris J.V., 334 F.3d 1371, 1374, 67 USPQ2d 1539, 1541 (Fed. Cir. 2003) ("[T]he goods-place association often requires little more than a showing that the consumer identifies the place as a known source of the product."). See In re Miracle Tuesday, LLC, 695 F.3d 1339, 1344, 104 USPQ2d 1330, 1333 (Fed. Cir. 2012) (JPK PARIS 75 and design held primarily geographically deceptively misdescriptive of fashion accessories that do not originate in Paris where it is undisputed that Paris is famous for such products); In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001) (THE VENICE COLLECTION and SAVE VENICE INC. composite marks featuring an image of the winged Lion of St. Mark held primarily geographically deceptively misdescriptive of products that do not originate in Venice, Italy, where an encyclopedia and a gazetteer showed that Venice was a large metropolitan area where fine art objects, glassware, and decorative items had been made and sold for centuries, and a popular tourist destination); In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999) (NEW YORK WAYS GALLERY held primarily geographically deceptively misdescriptive where manufacturing listings and Nexis® excerpts showed that handbags and luggage are designed and manufactured in New York); In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) (finding evidence from a gazeteer and dictionary showing that tobacco is a crop produced and marketed in Durango, Mexico sufficient to establish a prima facie goods/place association); In re Joint-Stock Co. "Baik," 80 USPQ2d 1305 (TTAB 2006) (BAIKALSKAYA held primarily geographically descriptive of vodka where record the showed that applicant is located in Irkutsk, Russia, a city near Lake Baikal and one of the main export regions of Russian vodka, applicant’s vodka is made from water piped directly from Lake Baikal, Lake Baikal is the world’s largest fresh water lake, and there are numerous references to "Baikal" in publications from various cities throughout the United States and in national publications); In re Broyhill Furniture Indus., Inc., 60 USPQ2d 1511, 1516-17 (TTAB 2001) (finding evidence that Tuscany, Italy is an important industrial center that produces a variety of products including furniture, and that several businesses advertise the sale of furniture from Tuscany on the Internet, was sufficient to establish a goods/place association between Tuscany and furniture, even though Tuscany is not famous for its furniture); In re Boyd Gaming Corp., 57 USPQ2d 1944 (TTAB 2000) (HAVANA RESORT & CASINO and ROYAL HAVANA RESORT & CASINO held primarily geographically deceptively misdescriptive of wearing apparel, beauty products and perfume that do not come from Havana, Cuba, where the record showed that Havana produces a variety of goods, including clothing and cosmetic items); In re Bacardi & Co. Ltd., 48 USPQ2d 1031 (TTAB 1997) (HAVANA SELECT, HABANA CLASICO, OLD HAVANA, HAVANA PRIMO, and HAVANA CLIPPER all held primarily geographically deceptively misdescriptive of rum that does not originate in Havana, Cuba, where the evidence showed that Havana is a major city and rum is a significant product).

In Save Venice, the court noted that in the modern marketing context, geographic regions that are noted for certain products or services are likely to expand from their traditional goods or services into related goods or services, and that this would be expected by consumers. Accordingly, the court held that "the registrability of a geographic mark may be measured against the public’s association of that region with both its traditional goods and any related goods or services that the public is likely to believe originate there." 259 F.3d at 1355, 59 USPQ2d at 1784.

However, a showing that the geographic place is known to the public and could be the source of the goods or services may not be enough in itself to establish a goods/place or services/place association in all cases. See In re Mankovitz, 90 USPQ2d 1246 (TTAB 2009) (THE MONTECITO DIET held not primarily geographically descriptive and the evidence of a goods/place or services/place association, consisting only of the fact that the applicant lived in Montecito, found insufficient, the Board stating that "it would be speculation on our part to reach the conclusion that the goods or services originate there or that the public would understand that there is a goods/place relationship"); In re John Harvey & Sons Ltd., 32 USPQ2d 1451 (TTAB 1994) (HARVEYS BRISTOL CREAM not primarily geographically descriptive of cakes flavored with sherry wine, the Board finding evidence that applicant’s headquarters are located in Bristol, England and that applicant’s sherry wine was once bottled there insufficient to show that American consumers are likely to think that "Bristol" refers to a place from which the goods originate); In re Gale Hayman Inc., 15 USPQ2d 1478 (TTAB 1990) (SUNSET BOULEVARD held not primarily geographically descriptive of perfume and cologne, the Board holding that 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, determining that the public would not make a goods/place association, and noting that there was no evidence that any perfume or cologne is manufactured or produced on Sunset Boulevard or that applicant’s goods are sold there); Philip Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487 (TTAB 1990) (PARK AVENUE held neither deceptive nor geographically deceptively misdescriptive as applied to cigarettes and smoking tobacco, the Board finding no goods/place association between tobacco products and Park Avenue in New York City, on which opposer’s world headquarters was located); In re Venice Maid Co., Inc., 222 USPQ 618, 619 (TTAB 1984) (VENICE MAID held not primarily geographically deceptively misdescriptive of canned foods, including, inter alia, lasagna and spaghetti, where the evidence of a goods/place association was found insufficient, the Board stating that "we are unwilling to sustain the refusal to register in this case simply on the basis that Venice is a large Italian city that could, conceivably, be the source of a wide range of goods, including canned foods").

The question of whether there is a goods/place association is determined on a case-by-case basis, based on the evidence in the record. Compare Fred Hayman Beverly Hills Inc. v. Jacques Bernier Inc., 38 USPQ2d 1691 (TTAB 1996) (RODEO DRIVE held primarily geographically deceptively misdescriptive of perfume, where opposer’s evidence showed that a significant number of Rodeo Drive retailers sell "prestige" fragrances, and that the public would be likely to make the requisite goods/place association between perfume and Rodeo Drive) with In re Jacques Bernier Inc., 894 F.2d 389, 13 USPQ2d 1725 (Fed. Cir. 1990) (RODEO DRIVE held not primarily geographically deceptively misdescriptive of perfume because of the lack of persuasive evidence of a goods/place association in the ex parte record).

1210.04(b)    Establishing Services/Place Association

It is more difficult, with respect to refusals under §§2(a) and 2(e)(3), to establish a services/place association than a goods/place association. The Court of Appeals for the Federal Circuit has provided the following guidance for refusals under §2(e)(3):

Application of the second prong of this test – the services-place association – requires some consideration. A customer typically receives services, particularly in the restaurant business, at the location of the business. Having chosen to come to that place for the services, the customer is well aware of the geographic location of the service. This choice necessarily implies that the customer is less likely to associate the services with the geographic location invoked by the mark rather than the geographic location of the service, such as a restaurant. In this case, the customer is less likely to identify the services with a region of Paris when sitting in a restaurant in New York.

[T]he services-place association operates somewhat differently than a goods-place association…. In a case involving goods, the goods-place association often requires little more than a showing that the consumer identifies the place as a known source of the product [citations omitted]. Thus, to make a goods-place association, the case law permits an inference that the consumer associates the product with the geographic location in the mark because that place is known for producing the product. [citation omitted] In the case of a services-place association, however, a mere showing that the geographic location in the mark is known for performing the service is not sufficient. Rather the second prong of the test requires some additional reason for the consumer to associate the services with the geographic location invoked by the mark. See In re Mun. Capital Mkts., Corp., 51 USPQ2d 1369, 1370–71 (TTAB 1999) ("Examining Attorney must present evidence that does something more than merely establish that services as ubiquitous as restaurant services are offered in the pertinent geographic location."). Thus, a services-place association in a case dealing with restaurant services … requires a showing that the patrons of the restaurant are likely to believe the restaurant services have their origin in the location indicated by the mark. In other words, to refuse registration under section 2(e)(3), the PTO must show that patrons will likely be misled to make some meaningful connection between the restaurant (the service) and the relevant place.

For example, the PTO might find a services-place association if the record shows that patrons, though sitting in New York, would believe the food served by the restaurant was imported from Paris, or that the chefs in New York received specialized training in the region in Paris, or that the New York menu is identical to a known Parisian menu, or some other heightened association between the services and the relevant place….

In re Les Halles De Paris J.V., 334 F.3d 1371, 1373–74, 67 USPQ2d 1539, 1541–42 (Fed. Cir. 2003) (LE MARAIS held not primarily geographically deceptively misdescriptive of restaurant services. Evidence that "Le Marais" was a fashionable Jewish area in Paris was insufficient to establish that the public would believe that "Le Marais" was the source of New York restaurant services featuring a kosher cuisine).

What constitutes a "heightened association" between the services and the place will vary depending on the nature of the services. There may be situations where the fact that the geographic location is known or famous for performing the service would be sufficient to establish a services/place association (e.g. , "Texas" for cattle breeding services).

The burden is greater for restaurant services, due to their ubiquitous nature. In re Consol. Specialty Rests., Inc., 71 USPQ2d 1921 (TTAB 2004) (COLORADO STEAKHOUSE and design held primarily geographically deceptively misdescriptive of restaurant services). In Consol. Specialty Rests., the Board found that the examining attorney had established an "additional reason" why purchasers would mistakenly believe that the food served in the restaurant was from Colorado, where the record contained the following evidence: gazetteer and dictionary definitions of "Colorado" and "steakhouse;" a United States Department of Agriculture report on cattle inventory; stories excerpted from the LexisNexis® database; and Internet excerpts showing that Colorado was one of the 11 top cattle states in the United States, that Colorado was known for its steaks, that "Colorado steaks" are featured food items in restaurants outside the state, and that politicians from Colorado use "Colorado steaks" as the basis for wagers on sporting events. Id. at 1927-28.

1210.04(c)    Obscure or Remote Geographic Marks

Geographic matter may be so obscure or remote that it would not be recognized as an indication of the geographic source of the goods or services. In such a case, the mark is treated as an arbitrary designation because its geographic meaning is likely to be lost on consumers. Thus, consumers will not perceive the geographic significance of the term as its primary significance and will not make a goods/place or services/place association. See In re Brouwerij Nacional Balashi NV, 80 USPQ2d 1820, 1827 (TTAB 2006) (finding Balashi, Aruba so obscure or remote that purchasers in the United States would not recognize it as indicating the geographical source of applicant’s beer); ConAgra Inc. v. Saavedra, 4 USPQ2d 1245 (TTAB 1987) (TAPATIO held not primarily geographically deceptively misdescriptive of meatless hot sauce, despite the fact that the mark is a Spanish term meaning "of or pertaining to Guadalajara, Mexico" and the goods did not originate from Guadalajara, the Board finding that the significance of the term is lost on the public because of its obscurity); In re Bavaria St. Pauli Brauerei AG, 222 USPQ 926 (TTAB 1984) (reversing examining attorney’s requirement for disclaimer of "JEVER" in application to register JEVER and design for beer originating in Jever, West Germany, where the sole evidence of a goods/place association was an entry from a 32-year-old geographic index); In re Brauerei Aying Franz Inselkammer KG, 217 USPQ 73 (TTAB 1983) (AYINGER BIER ("BIER" disclaimed) held not primarily geographically descriptive of beer emanating from Aying, West Germany, a hamlet of 500 inhabitants, where the examining attorney’s only evidence of a goods/place association was the specimen label identifying Aying as the place of origin).

Remoteness or obscurity is determined from the perspective of the average American consumer. See In re Societe Generale des Eaux Minerales de Vittel, S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987) (VITTEL and design held not primarily geographically descriptive of cosmetic products because of lack of goods/place association between the goods and the applicant’s place of business in Vittel, France). However, the examining attorney does not necessarily have to show that the nationwide general public would associate the mark with the place. The significance of the term is determined not in the abstract, but from the point of view of the consumers of the particular goods or services identified in the application. In re MCO Properties Inc., 38 USPQ2d 1154 (TTAB 1995) (FOUNTAIN HILLS held primarily geographically descriptive of real estate development services rendered in Fountain Hills, Arizona, where the record showed that Fountain Hills was the name of the town where the applicant was located and rendered its services, and that the purchasers who came in contact with the mark would associate that place with the services).

1210.04(d)    Arbitrary Use of Geographic Terms

The name of a geographic location that has no significant relation to commercial activities or the production of the relevant goods or services, such as ALASKA for bananas, is treated as an arbitrary mark because it is unlikely that consumers would believe that the mark identifies the place from which the goods originate.

Often, names of mountains or rivers are arbitrary for goods because no commercial activity is performed there. For example, "Colorado River" for candy bars or "Mount Rushmore" for automobiles would be arbitrary. See In re Nantucket, Inc., 677 F.2d 95, 105, 213 USPQ 889, 897 (C.C.P.A. 1982) (Nies, J., concurring) ("Thus, the names of places devoid of commercial activity are arbitrary usage. In this category are names of places such as ANTARCTICA, MOUNT EVEREST, or GALAPAGOS, at least when used for ordinary commercial products, such as beer and shoes. Names such as SUN, WORLD, GLOBE, MARS, or MILKY WAY are also arbitrary, not informational; competitors do not need to use the terms to compete effectively.").