Loew's Theatres, Inc., In re

• Citation: 226 USPQ 865,769 F.2d 764
• Decision Date: 09 August 1985
• Docket Number: No. 85-888,85-888
• Parties: In re LOEW'S THEATRES, INC. Appeal
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 764

769 F.2d 764

226 U.S.P.Q. 865

In re LOEW'S THEATRES, INC.

Appeal No. 85-888.

United States Court of Appeals Federal Circuit.

Aug. 9, 1985.

Robert W. Fiddler, Fiddler & Levine, New York City, argued for appellant.

Henry W. Tarring, II, Associate Sol., U.S. Patent & Trademark Office, Arlington, Va., argued for appellee. With him on the brief were Joseph F. Nakamura, Sol., and Fred D. McKelvey, Deputy Sol., Washington, D.C.

Before BALDWIN, KASHIWA and NIES, Circuit Judges.

NIES, Circuit Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board sustaining a refusal to register the mark DURANGO for chewing tobacco. The board held that the subject mark was unregistrable under Sec. 2(e)(2) of the Lanham Act (15 U.S.C. Sec. 1052(e)(2) ), which bars registration of a mark which is "primarily geographically deceptively misdescriptive" of the goods to which it is applied. We affirm.

I. Background

The subject of this appeal is Application Serial No. 341,663, filed on December 14, 1981, in the U.S. Patent and Trademark Office (PTO) by Loew's Theatres, Inc., doing business through its Lorillard Division (hereinafter LTI) for the mark DURANGO for chewing tobacco, claiming use since on or before September 9, 1981. Registration was initially refused on the Principal Register on the grounds that the mark appeared to be either primarily geographically descriptive or deceptively misdescriptive of the goods and was, thus, barred from registration on the Principal Register pursuant to Sec. 2(e) of the Lanham Act. ¹ In support of this rejection, the examiner relied on information in the Columbia Lippincott Gazetteer of the World, Columbia University Press (1952). The examiner concluded that because the reference disclosed that tobacco was a crop of the Durango, Mexico area, ² it would be reasonable for the purchasing public to expect chewing tobacco bearing the name DURANGO to have its origin in that area. He advised that additional evidence of registrability could be filed.

LTI sought to overcome this rejection by argument that: (1) LTI's existing Registration No. 923,094 for the mark DURANGOS for cigars on the Principal Register entitled it to registration of the subject mark, and (2) the evidence on which the examiner relied was insufficient to indicate that the purchasing public would make a goods/place association between tobacco and the Durango, Mexico area.

The examining attorney adhered to his rejection and buttressed the record with respect to the geographic significance of the name Durango by reference to the geographical names section of Webster's New Collegiate Dictionary, G. & C. Merriam Company, Springfield, Massachusetts (1979). ³ In view of the substantial population of the state and city of Durango in Mexico, he concluded that Durango could not be deemed a "minor, obscure, or remote" geographic place name. Further, the examining attorney believed that the evidence of tobacco production in Durango established a prima facie case that there would be a goods/place association by the public, as required for a rejection under Sec. 2(e), citing In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982). While acknowledging LTI's ownership of the registration for DURANGOS cigars, the examining attorney deemed such evidence insufficient to establish distinctiveness of the mark sought to be registered. He noted the continued absence of any evidence concerning the length and manner of LTI's use of the mark, the nature and extent of advertising, or any other efforts by LTI which would tend to establish that the mark had acquired distinctiveness and thereby entitle LTI to a registration in accordance with Sec. 2(f) (15 U.S.C. Sec. 1052(f) ). ⁴ Finally, he stated that, since LTI's goods did not come from the place named, the mark was being refused registration as primarily geographically deceptively misdescriptive.

Appellant did not controvert the statement concerning origin of the goods nor submit any additional evidence tending to establish secondary meaning in the mark sought to be registered. Instead, appeal was taken to the Trademark Trial and Appeal Board (board). In a thorough opinion reported at 223 USPQ 513 (1984), adhered to on reconsideration, the board upheld the examining attorney's refusal of registration. This appeal, pursuant to 15 U.S.C. Sec. 1071, followed.

II. Issues

1. Did the PTO establish a prima facie case that the mark DURANGO is primarily geographically deceptively misdescriptive for chewing tobacco within the meaning of Sec. 2(e)?

Since we conclude that a prima facie case was proved, the following issue must also be addressed.

2. Is registration, nevertheless, mandated by LTI's ownership of Registration No. 923,094 for the mark DURANGOS for cigars?

III. Analysis

A.

Under Sec. 2(e)(2) of the Lanham Act, a mark may not be registered on the Principal Register if the mark "when applied to the goods of the applicant is ... primarily geographically deceptively misdescriptive." This provision of the statute was extensively analyzed in the precedential decision In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982). ⁵ That case concerned the registrability on the Principal Register of the mark NANTUCKET for shirts not originating in Nantucket, Massachusetts. The PTO had argued to the court in the Nantucket case that a prima facie case of unregistrability was shown simply by proof that the mark was the name of a geographic place known generally to the public. The court rejected this argument, holding that in order to make a valid rejection under Sec. 2(e), the PTO not only had to establish that the mark was the name of a generally known geographic place, but also that the public would be likely to believe that the goods for which the mark is sought to be registered originate in that place. The latter requirement was held to follow from the statutory language that the descriptiveness or deceptive misdescriptiveness of the mark must be determined as "applied to the goods of the applicant." In this respect the statute reflects the common law principle that a geographic term, used in a fictitious, arbitrary, or fanciful manner, is protectable like any other non-descriptive term. Usage in such manner is not "primarily" as a geographic designation. See, e.g., National Lead Co. v. Wolfe, 223 F.2d 195, 105 USPQ 462 (9th Cir.), cert. denied, 350 U.S. 883, 76 S.Ct. 135, 100 L.Ed. 778, 107 USPQ 362 (1955) (DUTCH and DUTCH BOY for paint); Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc., 93 USPQ 250 (S.D.N.Y.1951), aff'd, 204 F.2d 223, 97 USPQ 246 (2d Cir.), cert. denied, 346 U.S. 827, 74 S.Ct. 46, 98 L.Ed. 351, 99 USPQ 491 (1953) (HYDE PARK for men's suits); La Touraine Coffee Co. v. Lorraine Coffee Co., 157 F.2d 115, 70 USPQ 429 (2d Cir.), cert. denied, 329 U.S. 771, 67 S.Ct. 189, 91 L.Ed. 663, 71 USPQ 328 (1946) (LA TOURAINE for coffee); Schoenfeld Industries, Inc. v. Foster Industries, Inc., No. 79 Civ. 4917 (S.D.N.Y. Sept. 28, 1979) (BRITTANIA for jeans).

While the above cited precedent requires a goods/place association to support a refusal to register under Sec. 2(e)(2), it does not follow that such association embraces only instances where the place is well-known or noted for the goods, a position which the Nantucket applicant, as well as LTI, have urged. The court, in Nantucket, did not adopt that position. Rather, our precedent continues to hold that to establish a "primarily geographically deceptively misdescriptive" bar, the PTO must show only a reasonable basis for concluding that the public is likely to believe the mark identifies the place from which the goods originate and that the goods do not come from there. ⁶ Singer Manufacturing Co. v. Birginal-Bigsby Corp., 319 F.2d 273, 275, 138 USPQ 63, 65 (CCPA 1963) (AMERICAN BEAUTY for sewing machines of Japanese manufacturer properly refused registration under Sec. 2(e)(2) ).

B.

In support of its finding that more than a de minimus segment of the public would reasonably associate chewing tobacco with the city and/or state of Durango, Mexico, the PTO relies on the evidence of record which shows that tobacco is a crop produced and marketed in that area. This finding may only be overturned if clearly erroneous. Stock Pot Restaurant, Inc. v. Stockpot, Inc., 737 F.2d 1576, 1578, 222 USPQ 665, 666 (Fed.Cir.1984).

LTI attacks the sufficiency of the evidence of record on several grounds:

1. The Gazetteer relied upon by the PTO shows that Durango is also the name of towns in Colorado and in Spain. Therefore, per appellant, Durango would not be associated with Mexico's tobacco region of that name.

2. The PTO produced no evidence that the public would actually make the asserted association.

Contrary to LTI's position, we conclude that the PTO made a prima facie showing of a goods/place association between tobacco and the geographic name Durango. Durango (Mexico) is not an obscure place name to the Mexican population of this country nor to reasonably informed non-Mexicans. The cited Gazetteer shows tobacco to be one in a short list of principal crops of the region. ⁷ No more can be expected from the PTO in the way of proof. The PTO does not have means to conduct a marketing survey as LTI would require. The practicalities of the limited resources available to the PTO are routinely taken into account in reviewing its administrative action. Norton v. Curtiss, 433 F.2d 779, 794, 167 USPQ 532, 544 (CCPA 1970). Accordingly, it was suggested in the Nantucket decision that precisely the type of evidence utilized here would establish a prima facie case by the PTO. 677 F.2d at 106, 213 USPQ at 898 (Nies, J., concurring). The trademark examining attorney, in prosecuting the subject application, followed those suggestions which have been specifically endorsed by the board in this and other cases. We affirm that a prima facie case can be established by the type of evidence of record here where the question concerns...