THE MONTECITO DIET is not primarily geographically descriptive, says TTAB
United States of America
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In In re Roy J Mankovitz (Case 77000589, March 25 2009), in a precedential decision, the Trademark Trial and Appeal Board (TTAB) has re-examined the criteria required to determine whether a mark is primarily geographically descriptive.
Section 2(e)(2) of the Lanham Act excludes the registration of marks containing a geographic term that indicates the origin of the goods or services. Its purpose is to leave the names of places available for all businesses to inform customers as to where their goods or services originate.
To establish a prima facie case for refusal to register a mark on the grounds that it is primarily geographically descriptive, the examining attorney must show that:
Section 2(e)(2) of the Lanham Act excludes the registration of marks containing a geographic term that indicates the origin of the goods or services. Its purpose is to leave the names of places available for all businesses to inform customers as to where their goods or services originate.
To establish a prima facie case for refusal to register a mark on the grounds that it is primarily geographically descriptive, the examining attorney must show that:
- the primary significance of the mark is a generally known geographic location;
- the goods or services originate from the place identified in the mark; and
- there is a 'goods/place association' such that purchasers are likely to believe that the goods or services originate from the place identified in the mark (see Section 1210.01(a) of the Trademark Manual of Examining Procedure).
In the present case, Roy J Mankovitz applied to register the mark THE MONTECITO DIET for the following goods and services:
- “printed publications, namely, books, magazines, newsletters, brochures and pamphlets concerning health, nutrition, illness prevention, detoxification, diet and lifestyle choices” in Class 16 of the Nice Classification;
- “online journals, namely, blogs featuring information in the field of health, nutrition, illness prevention, detoxification, and diet and lifestyle choices” in Class 41; and
- “providing health information; providing information in the field of nutritional counselling; providing information in the field of illness prevention, diet, detoxification and lifestyle wellness choices; providing global computer websites featuring information in the field of health, nutrition, illness prevention, detoxification, and diet and lifestyle wellness choices” in Class 44.
The examining attorney refused to register the mark on the grounds that it was primarily geographically descriptive, arguing, among other things, that:
- Mankovitz's location and residence in Montecito was sufficient to establish that his goods and services would originate from Montecito; and
- consumers were likely to believe that the goods and services originated from Montecito.
The TTAB disagreed on the presence of a goods/place association. It distinguished the case from In re Nantucket Allserve Inc (28 USPQ2d 1144, 1145 (1993)), in which the mark NANTUCKET NECTARS was found to be primarily geographically descriptive based on the location of the applicant’s headquarters and research centre in Nantucket. In the present case, the TTAB held that the mere residence of Mankovitz in Montecito did not constitute a substantial presence because there was no indication that Mankovitz’s journals or other goods bearing the mark would be produced in or originated from Montecito.
The TTAB found support in In re Gale Hayman Inc (15 USPQ2d 1478 (1990)), which involved the mark SUNSET BOULEVARD. In that case, the fact that the applicant’s principal office was located near Sunset Boulevard was held to be insufficient to establish a goods/place association. The absence of evidence that the goods were manufactured on Sunset Boulevard precluded a presumption that consumers would associate the two.
The TTAB also distinguished the present case from In re MCO Properties Inc (38 USPQ2D 1154, 1156 (1995)), in which the mark FOUNTAIN HILLS was refused registration. In that case, the mark referred to an Arizona city where the applicant’s real estate agency was located and a services/place association was thus presumed, especially because real estate services are tied to the geographic location. In the present case, the absence of evidence of a more substantial connection than Mankovitz's address was held to be insufficient to find a goods/place association because the term 'Montecito' in the mark was not used to identify the geographic source of the publications.
Matthew D Asbell, Ladas & Parry LLP, New York, with the assistance of Marie Flandin
The TTAB found support in In re Gale Hayman Inc (15 USPQ2d 1478 (1990)), which involved the mark SUNSET BOULEVARD. In that case, the fact that the applicant’s principal office was located near Sunset Boulevard was held to be insufficient to establish a goods/place association. The absence of evidence that the goods were manufactured on Sunset Boulevard precluded a presumption that consumers would associate the two.
The TTAB also distinguished the present case from In re MCO Properties Inc (38 USPQ2D 1154, 1156 (1995)), in which the mark FOUNTAIN HILLS was refused registration. In that case, the mark referred to an Arizona city where the applicant’s real estate agency was located and a services/place association was thus presumed, especially because real estate services are tied to the geographic location. In the present case, the absence of evidence of a more substantial connection than Mankovitz's address was held to be insufficient to find a goods/place association because the term 'Montecito' in the mark was not used to identify the geographic source of the publications.
Matthew D Asbell, Ladas & Parry LLP, New York, with the assistance of Marie Flandin
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