In re Save Venice New York Inc.

• Decision Date: 27 July 2001
• Docket Number: No. 00-1450,75,00-1450
• Citation: 259 F.3d 1346,59 USPQ2d 1778
• Parties: (Fed. Cir. 2001) IN RE SAVE VENICE NEW YORK, INC. /222,218
• Court: U.S. Court of Appeals — Federal Circuit

Page 1346

259 F.3d 1346 (Fed. Cir. 2001)

IN RE SAVE VENICE NEW YORK, INC.

No. 00-1450, 75/222,218.

United States Court of Appeals for the Federal Circuit

July 27, 2001

Appealed from: United States Patent and Trademark Office Trademark Trial and Appeal Board.

(Serial no. 75/222,218)

[Copyrighted Material Omitted]

[Copyrighted Material Omitted]

Kimberly J. McGraw, Baker Botts, L.L.P., of New York, NY, argued for appellant. With her on the brief was Bradley B. Geist.

Stephen Walsh, Associate Solicitor, Office of the Solicitor, Patent and Trademark Office, of Arlington, Virginia, argued for appellee. With him on the brief were Nancy C. Slutter, Acting Deputy Solicitor; and Mark Nagumo, Associate Solicitor. Of counsel on the brief was Catherine K. Krebs, Attorney.

Before Michel, Gajarsa, and Dyk, Circuit Judges.

Gajarsa, Circuit Judge.

This case involves an appeal from the United States Patent and Trademark Office Trademark Trial and Appeal Board ("Board"). Save Venice New York, Inc. ("Save Venice") appeals the decision of the Board affirming the final rejection of Application Serial No. 75/222,218 for a composite mark consisting of the phrases "THE VENICE COLLECTION" and "SAVE VENICE INC." and an image of the winged Lion of St. Mark. Because we find the Board's refusal to register the mark was based on substantial evidence, we affirm.

BACKGROUND

Save Venice is a not-for-profit New York corporation devoted to preserving and restoring some of the cultural treasures of Venice, Italy. Since 1970, Save Venice has used the service mark SAVE VENICE for fund-raising and newsletters in conjunction with its preservation efforts. The SAVE VENICE service mark has been registered on the principal register since 1991 (Reg. No. 1,639,071). In addition, since 1971 Save Venice has used the currently unregistered Lion of St. Mark design for its newsletters and fund-raising activities. On January 7, 1997, Save Venice filed an intent-to-use application with the United States Patent and Trademark Office ("PTO") for a "composite mark" which amalgamates the phrases "THE VENICE COLLECTION" and "SAVE VENICE, INC." with a drawing of the Lion of St. Mark ¹ as shown below [Tabular or Graphical Material Omitted]

The applicant sought registration on the principal register of this mark to cover a variety of goods in nine different international designated classes, including potpourri, tableware made of precious and nonprecious metals, lamps, clocks, art prints, paper products, residential furniture, dinnerware, glassware, bedding and carpets. ² With the exception of some glass products, none of the applicant's designated goods originated in Venice. ³

The PTO examiner refused registration of those goods not originating in Venice under 15 U.S.C. §§ 1052(e)(3) because she considered that the mark was primarily geographically deceptively misdescriptive. According to the examiner, the "primary significance" of the composite mark is geographic. That is, the examiner determined that the mark primarily signifies the geographic location, Venice, Italy. Relying on an encyclopedia and a gazetteer, the examiner found that Venice, Italy is a location known for paper, publishing, printing, textiles, jewelry, art objects, glass making, housewares and lace. Finding that all of the applicant's claimed goods are associated with traditional Venetian products, the examiner rejected the application on the grounds that the public would mistakenly believe that Venice, Italy was the source of applicant's goods sold under the proposed mark.

Save Venice requested reconsideration, arguing that the primary significance of the mark is not geographic but rather a qualitative evocation of "the history, art, culture and beauty of Venice." In addition, Save Venice submitted a declaration by its executive director who asserted that she knew from personal experience that no Venetian industry produces or sells any of the applicant's goods. The PTO granted reconsideration. However, using information from web sites and published books on flags of the world and on Venice, Italy, the examiner established that the lion design in the proposed mark is a substantially identical reproduction of the Lion of St. Mark from the Venetian flag and the regional flag of Veneto. Further, the examiner determined that the public clearly identifies the Lion of St. Mark as symbolizing the city of Venice. The examiner concluded that, when viewed as a whole, the composite mark is primarily geographic due to this unique symbolic design and the prominent wording THE VENICE COLLECTION. Finally, the examiner found that although some of the goods claimed by the applicant are "not goods for which Venice is best known," consumers could reasonably believe they originated in Venice as "ancillary products related to the traditional crafts and industries of Venice . . . as part of a natural expansion" of Venetian industries. Given the geographic significance of the applicant's mark and the association between the applicant's claimed goods and traditional Venetian products, registration was refused because the mark was found primarily geographically deceptively misdescriptive.

Save Venice appealed to the Board, which affirmed the examiner's refusal to register the mark. In re Save Venice N.Y., Inc., No. 75/222,218, (TTAB Feb. 22, 2000). Noting the prominence of THE VENICE COLLECTION lettering within the mark and the symbolic importance of the Lion of St. Mark to Venetian culture, the Board upheld the examiner's finding that the primary significance of the mark is the geographic location Venice, Italy. In considering whether consumers would associate applicant's goods with Venice, Italy, the Board divided the goods into two groups: (1) goods identical to traditional Venetian products, and (2) goods related to such products. In considering the first group - goods identical to traditional Venetian products - the Board found a clear "goods/place association" between those goods and Venice, Italy. ⁴ The Board determined that the second group - goods for which there was no direct evidence indicating they were the type produced in Venice - "reflect[ed] product types, decorative themes and material composition" that consumers "would associate with the city of Venice." Accordingly, the Board upheld the examiner's refusal to register the mark. Save Venice appealed to this court. We have jurisdiction pursuant to 28 U.S.C. §§ 1295(a)(4)(B) (1994).

DISCUSSION

I. Standard of Review

Whether a mark is primarily geographically deceptively misdescriptive is a question of fact. In re Compagnie Generale Maritime, 993 F.2d 841, 845, 26 USPQ2d 1652, 1655 (Fed. Cir. 1993). Likewise, whether a geographic location is known for particular goods is a question of fact. In re Loew's Theatres, Inc., 769 F.2d 764, 768, 226 USPQ 865, 868 (Fed. Cir. 1985). In reviewing appeals from the Board, this court has been instructed by the Supreme Court to uphold the Board's factual determinations unless they are arbitrary, capricious, an abuse of discretion, or unsupported by substantial evidence. Dickinson v. Zurko, 527 U.S. 150, 152 (1999). 5 U.S.C.§§ 706 (1996) We have subsequently determined that factual determinations made by the Board are reviewed under a substantial evidence standard. On-Line Careline v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000). However, the Board's legal conclusions, including its interpretations of the Lanham Act and the legal tests it applies in measuring registrability, are reviewed de novo, Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1327, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). In re Int'l Flavors & Fragrances, Inc., 183 F.3d 1361, 1365, 51 USPQ2d 1513, 1515 (Fed. Cir. 1999).

II. Analysis

Section 2(e)(3) of the Lanham Act provides in relevant part:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it -

(e) Consists of a mark which . . .

(3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them. . . .

Lanham Act §§ 2, 15 U.S.C. §§ 1052(e)(3) (1994 & Supp. V 1999).Whether a mark is primarily geographically deceptively misdescriptive is determined according to a two-part test where the examiner has the initial burden of proving that: (1) the mark's primary significance is a generally known geographic location; and (2) consumers would reasonably believe the applicant's goods are connected with the geographic location in the mark, when in fact they are not. In re Wada, 194 F.3d 1297, 1300, 52 USPQ2d 1539, 1540 (Fed. Cir. 1999); Institut National des Appelations d'Origine v. Vintners Int'l Co., 958 F.2d 1574, 1580, 22 USPQ2d 1190, 1195 (Fed. Cir. 1992).

A.

Under the first prong of the test - whether the mark's primary significance is a generally known geographic location - a composite mark such as the applicant's proposed mark must be evaluated as a whole. Estate of P.D. Beckwith, Inc. v. Comm'r of Patents, 252 U.S. 538, 545-46 (1920); In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1345-46, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001). It is not erroneous, however, for the examiner to consider the significance of each element within the composite mark in the course of evaluating the mark as a whole. In re National Data Corp., 753 F.23d 1056,1058, 224 USPQ 749, 751 (Fed. Cir. 1985); Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes, 871 F.2d 590, 594, 10 USPQ2d 1443, 1445 (6th Cir. 1989); In re Hester Indus., 230 USPQ 797, 798 n.5 (TTAB 1986).

The Board found that the most prominent part of the proposed mark is the phrase "THE VENICE COLLECTION" in large lettering at the top of the mark, a term that creates an unmistakable reference to Venice, Italy. The words at the bottom of the mark, "SAVE VENICE, INC.," also reference Venice. Linguistically, therefore, the mark...