Atelier Profumo Artistico Firenze S.r.L.

Trademark Trial and Appeal Board

Aug 26, 2009

No. 77212553 (T.T.A.B. Aug. 26, 2009)

Mailed: August 26, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Atelier Profumo Artistico Firenze S.r.L.
________

Serial No. 77212553
_______

John S. Egbert of Egbert Law Offices for Atelier Profumo
Artistico Firenze S.r.L.

Seth A. Rappaport, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Seeherman, Bergsman and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Atelier Profumo Artistico Firenze S.r.L. (applicant) has
filed an application to register the mark:

for goods ultimately identified as "perfumes, eau de cologne,
scented body sprays, toilette water, oils for toiletry purposes,
deodorants for personal use, perfumed creams, essential oils for
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Serial No. 77212553

2
personal use, cosmetic pencils, make-up removing lotions, toilet
soaps, bar soaps, deodorant soaps, hair shampoos, hair lotions,
bath salts, bath gels, beauty lotions, beauty masks, shaving
preparations, after-sun lotions, cosmetic preparations for body
care, cosmetic milks, cosmetic creams, talcum powder for toilet
use" in Class 3.1 Applicant ultimately provided the following
translation statement: The foreign wording in the mark
translates into English as "SCENT OR PERFUME OF FLORENCE."
The trademark examining attorney has refused registration
under Section 2(e)(2) of the Trademark Act on the ground that
applicant's mark, as applied to the identified goods, is
primarily geographically descriptive of the goods.
When the refusal was made final, applicant concurrently
filed a request for reconsideration and an appeal. The request
for reconsideration was denied by the examining attorney and
briefs were filed.
A mark is deemed to be primarily geographically descriptive,
and thus unregistrable under Trademark Act Section 2(e)(2), if
(i) the primary significance of the mark is the name of a place
known generally to the public, and (ii) the public would make a
goods/place association, that is, believe that the goods or
services for which the mark is sought to be registered originate

1 Serial No. 77212553, filed June 21, 2007, based on Section 1(b) (bona
fide intention to use the mark in commerce) and Section 44(e)
(ownership of a foreign registration).
Serial No. 77212553

3
in that place. If those two elements are met, and if the
applicant’s goods and/or services in fact originate in or from
the place named, then the mark is primarily geographically
descriptive, and registration must be refused under Section
2(e)(2). See In re Joint-Stock Co. “Baik”, 80 USPQ2d 1305 (TTAB
2006); In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB
1988).
Primary Significance
First we consider whether the primary significance of the
mark is the name of a place generally known to the public. In
making this determination, it has long been held that words from
modern foreign languages, such as in this case Italian, are
translated into English to determine their descriptiveness. In
re Northern Paper Mills, 64 F.2d 998, 17 USPQ 492 (CCPA 1933); In
re Spirits Int'l N.V., 86 USPQ2d 1078 (TTAB 2008). We follow
this principle in determining whether the significance of PROFUMO
DI FIRENZE would be regarded primarily as the name of a place.
At the outset, we note that applicant’s primary argument as
to why its mark is not primarily geographically descriptive rests
on what it believes should be the appropriate translation of its
mark. The application, as filed, contained a statement that the
mark may be translated from Italian into English as “scent of
Florence.” In the first Office action, the (previously assigned)
examining attorney not only refused registration based on the
Serial No. 77212553

4
mark being primarily geographically descriptive of the identified
goods, but, inter alia, required applicant to state that the mark
translates as “scent or perfume of Florence.” In its response to
that Office action, applicant stated that it “has since
determined the translation of the mark into English [in the
original application] was incorrect” and that the translation
should be “sweet smell of Florence.” The (current) examining
attorney then issued a “final refusal” requiring applicant to
amend its translation statement to “perfume of Florence.”
Ultimately, in its request for reconsideration, applicant amended
its translation statement to “scent or perfume of Florence” which
the examining attorney accepted and withdrew the requirement.
In its brief, applicant argues that the amended translation
“does not imply that applicant agrees with the Examiner’s
conclusion that the term ‘profumo’ is an additional ‘generic
term’ which translates into the English wording ‘perfume.’”
Brief, p. 4. Rather, applicant contends that “the term
“profumo,’ when combined with ‘di Firenze,’ takes on a meaning
that is better translated into English as ‘scent of Florence.’”
Id. at 5. In particular, applicant relies on a website
(www.wordreference.com) that, according to applicant, “shows that
when the term ‘profumo’ is followed by ‘di’ and a noun such as a
‘rose’ (or in this particular case, the city of Florence), that
the term ‘profumo’ will take on the more ‘sensory-related’
Serial No. 77212553

5
translation of the word as opposed to the ‘product-related’
translation of the word that the Examiner would like to use.”
Id. Based on this asserted connotation of the mark, applicant
asserts that consumers will perceive the mark “in a manner that
is consistent with the ‘scent of Florence’ as opposed to ‘bottles
of perfume originating from Florence.’” Id. And, applicant
concludes, [i]n this context, due to the composite nature of the
mark, Firenze is simply used to invoke a historic place, where a
sweet scent is in the air, not a geographical description related
to perfume.” Id. at 10.
The examining attorney, on the other hand, contends that
“while an Italian language speaker may translate the mark into
English as SCENT OF FLORENCE, most will translate the term
PROFUMO in the mark into English as PERFUME and thus see the mark
in English as PERFUME OF FLORENCE.” Brief, (unnumbered) p. 6
(emphasis in original). And, he argues that “even if the wording
PROFUMO is translated into English as SCENT, the applicant’s mark
is still primarily geographically descriptive because the
addition of generic or highly descriptive wording to a geographic
word does not diminish that geographic word or term’s primary
geographic significance.” Id. at (unnumbered) p. 7.
The record includes definition entries for the term
“profumo” submitted by both applicant and the examining attorney.
Essentially, they are the same in substance. For example,
Serial No. 77212553

6
Profumo, n.m. Perfume, scent, sweet smell, fragrance.
[Cassell’s Italian Dictionary (Macmillan Publishing Company,
1967]

Profumo, noun, masculine. Perfume, scent
[Pocket Oxford Italian Dictionary (Oxford University Press,
2006), obtained via website www.wordreference.com]

In addition, the examining attorney submitted the following
third-party registrations for marks containing the term PROFUMO
and translation statements indicating said term is translated
into English as “perfume.”2
AMORVERO PROFUMO (Reg. No. 2596930)
The English translation of AMORVERO PROFUMO is “true love of
perfume.”

PROFUMO DI VINO (Reg. No. 3009019)
The English translation of the foreign word(s) in the mark
is: PERFUME OF WINE.

As to the geographic portion of applicant’s mark, DI
FIRENZE, there is no dispute and the evidence demonstrates that
this wording translates into English as “of Florence.”
Furthermore, the evidence of record shows that Florence is a
well-known city (and province). It is “the capital city of the
Italian region of Tuscany, and of the province of Florence.”3 It

2 In his brief (at unnumbered p. 6), the examining attorney states that
attached to the first Office action were “numerous third party
registrations, which include the term PROFUMO, which show that the
Office has consistently translated this wording into English as
PERFUME.” There are several third-party registrations attached to the
first Office action; however, only two of these registrations
(identified in this decision) contain the term PROFUMO in the mark.
3 Wikipedia online encyclopedia, en.wikipedia.org., attached to
applicant’s Request for Reconsideration filed on January 22, 2009. See
also printouts from www.bartleby.com website, citing to The Columbia
Encyclopedia (6th Ed., 2001-07).
Serial No. 77212553

7
is “known for its history” and has been described as “the
birthplace of the Italian renaissance; in fact, it has been
called the Athens of the Middle Ages.”4 “It is a commercial,
industrial, and tourist center and a rail junction. Tourism is
the main industry….”5 “It continues to attract millions of
tourists each year and was declared a World Heritage Site by
UNESCO in 1982.”6
As the Board stated in In re Jim Crockett Promotions Inc., 5
USPQ2d 1455, 1456 (TTAB 1987), which involved the issue of
whether THE GREAT AMERICAN BASH was primarily geographically
descriptive, “the mere fact that a mark contains a geographical
term, even one which is well known and which names the
geographical area from which the goods or services originate,
does not automatically render the mark unregistrable under
Section 2(e)(2). As always, a mark must be considered in the
context of its use and the meaning it would have for the relevant
public when so used.”
Based on the evidence of record, we cannot conclusively
determine whether the mark, considered as a whole, will be
perceived by those able to translate the wording as “perfume (the
goods) of Florence” or as “the scent (or sweet smell) of
Florence.” The former connotation is clearly geographically

4 Id.
5 Id.
6 Id.
Serial No. 77212553

8
descriptive of the identified goods and if that were the only
possible translation of the mark, our decision would be clear.
However, as evidenced by the dictionary translations of the term
“profumo,” the term is not only the generic word for the goods,
but can also have a sensory connotation. Further, the evidence
shows that, as used in the mark, PROFUMO can continue to convey
this connotation, such that one meaning of the mark as a whole is
the sensory connotation. This sensory connotation is nebulous
inasmuch as it remains unclear whether the “scent” or “sweet
smell” of Florence is to be taken literally, i.e., the goods may
actually attempt to replicate odors of the city, in the manner of
“the scent of the sea,” or to be interpreted as giving a “flavor”
of the city, i.e., suggesting the goods will conjure images or
“the aura” of the historic city of Florence. In either instance,
we find this connotation takes the mark out of the geographically
descriptive realm. Specifically, because this meaning of PROFUMO
is not the generic term for the goods, this connotation of the
mark does not describe where applicant’s goods are made, but
suggests that the goods contain or project the “scent” or “sweet
smell” of the city. The evidence of record, at the very least,
supports the existence of this alternative meaning. In addition
to the dictionary definitions providing the alternative meanings,
we note that the website www.wordreference.com (relied on by both
applicant and the examining attorney) shows “al profumo di rosa”
Serial No. 77212553

9
is translated as “rose-scented” and there is an excerpt from an
encyclopedia indicating that an Italian film from 1975 titled
“Profumo di Donna” was remade into the American movie production
titled “Scent of a Woman.”7
We recognize that there is also evidence to support the
examining attorney’s position that the word “profumo,” as used in
the context of the mark and in relation to the goods, may be
understood as identifying the actual goods, so that the mark
could also be viewed as describing that applicant’s goods, i.e.,
perfume, are made in the city of Florence. However, because of
the additional, non-geographically descriptive connotation of the
mark, as discussed above, at the very least the mark must be
viewed as having a double entendre, and is therefore registrable.
See Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694,
131 USPQ 55 (2d Cir. 1961) (POLYPITCHER not merely descriptive of
polyethylene pitchers inasmuch as it is an incongruous expression
suggestive of MOLLY PITCHER) and In re Colonial Stores Inc., 394
F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE not merely
descriptive of bakery products inasmuch as it is suggestive of a
nursery rhyme).
To the extent that there is any doubt as to the primary
significance of the mark “PROFUMO DI FIRENZE,” we resolve that

7 Submitted with applicant’s Request for Reconsideration filed on
January 22, 2009.
Serial No. 77212553

10
doubt in favor of the applicant. See In re John Harvey & Sons
Ltd., 32 USPQ2d 1451, 1455 (TTAB 1994). Accordingly, we cannot
conclude that the primary significance of the mark PROFUMO DI
FIRENZE is geographic and that the public would believe, based on
the mark, that applicant’s goods are from Florence.8
Decision: The refusal to register under Section 2(e)(2) is
reversed. The application will be forwarded to publication.

8 Because we find that applicant’s mark is not primarily geographic, we
need not consider the second element, i.e., whether the public would
make a goods/place association between applicant's identified goods and
its mark.