Bristol-Myers Squibb Company

Trademark Trial and Appeal Board

Jul 15, 2005

No. 78222332 (T.T.A.B. Jul. 15, 2005)

Mailed: July 15, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bristol-Myers Squibb Company
________

Serial No. 78222332
_______

Ruth E. Lazar of Fross Zelnick Lehrman & Zissu, P.C. for Bristol-
Myers Squibb Company.

Heather D. Thompson, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Chapman, Bucher and Holtzman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Bristol-Myers Squibb Company is seeking to register the mark
PRINCETON PHARMACEUTICAL PRODUCTS for a "house mark for a line of
pharmaceutical preparations," in International Class 5.1 The
application is based upon an allegation of a bona fide intention
to use the mark in commerce.

1 Application Serial No. 78222332, filed March 6, 2003.

THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 78222332
2
The trademark examining attorney has refused registration
under Section 2(e)(2) of the Trademark Act on the ground that
applicant's mark is primarily geographically descriptive of its
goods.
When the refusal was made final,2 applicant appealed.
Briefs have been filed. An oral hearing was not requested.
It is the examining attorney's burden to establish the prima
facie case in support of the refusal of registration. A prima
facie case for refusal under Section 2(e)(2) that the mark is
primarily geographically descriptive of the goods requires a
showing that (1) the mark's primary significance is a generally
known geographic location; and (2) that the relevant public would
be likely to make a goods/place association, i.e., would be
likely to think that the goods originate (or will originate) in
the place named in the mark. See In re Save Venice New York,
Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001); In re
Nantucket, 677 F.2d 95, 213 USPQ 889 (CCPA 1982); and In re
California Pizza Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988).
A mark is not "primarily" geographic where the geographic
meaning is minor, obscure, remote, or unconnected with the goods.
In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999); and

2 The examining attorney also issued and subsequently made final a
requirement under Trademark Rule 2.61(b) that applicant specifically
state whether or not its goods are manufactured in Princeton, New
Jersey. We have deemed this requirement waived as discussed later in
this decision.

Serial No. 78222332
3
In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 867
(Fed. Cir. 1985) (use of a geographic term in a fictitious,
arbitrary or fanciful manner, is not "primarily" as a geographic
designation.)
Thus, registration should not be refused where, for example,
there is a genuine issue that the place named in the mark is so
obscure or remote that purchasers would fail to recognize the
term as indicating the geographical source of the goods to which
the mark is applied; or (2) an admittedly well-recognized term
has other meanings, such that the term's geographical
significance may not be the primary significance to prospective
purchasers. See In re Cambridge Digital Systems, 1 USPQ2d 1659
(TTAB 1986).
Where, on the other hand, there is no genuine issue that the
geographical significance of a term is its primary significance
and where the geographical place is neither obscure nor remote, a
public association of the goods with the place may ordinarily be
presumed from the fact that the applicant's own goods come from
the geographical place named in the mark. See In re Societe
General des Eaux Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d
1450 (Fed. Cir. 1987); and In re Cambridge Digital Systems,
supra.
Turning to the first part of the test, the examining
attorney has submitted a listing from The American Heritage
Serial No. 78222332
4
Dictionary of the English Language, Fourth Edition (2000) that
identifies "Princeton" as "[a] borough of central New Jersey
north-northeast of Trenton. Founded by Quakers in 1696." This
entry goes on to describe Princeton as "the seat of Princeton
University (established in 1746...)."3 The examining attorney
also refers to a listing from the same dictionary that defines
"pharmaceutical" as "a pharmaceutical product or preparation."
Applicant does not contend that "Princeton" is obscure or
remote or that it is not a generally known geographic place.
Rather it is applicant's contention that the primary significance
of Princeton is not geographic because it has another meaning
which is not geographic. Applicant notes that "Princeton is the
home to Princeton University, a prestigious, world-renowned
university founded centuries ago" as well as other esteemed
educational institutions. (Response dated February 25, 2004, p.
2.) Applicant has submitted a page from the website of Princeton
University (www.princeton.edu) containing a brief background and
description of the University; and an entry for "Princeton
University" from the website of http://en.wikipedia.org ("the
free encyclopedia") stating that the University is "located in
Princeton, New Jersey," that it is "one of the eight Ivy League
universities," and that it is "widely regarded as one of the most

3 We take judicial notice of an entry in Microsoft Encarta College
Dictionary (2001) that identifies "Princeton" as a "town" in New
Jersey.
Serial No. 78222332
5
prestigious universities in the world." Applicant has also
submitted the following entry from The Columbia Gazetteer of
North America (2000) identifying "Princeton" as follows
(abbreviations in original):
"borough (1990 pop. 12,016), Mercer co., W central N.J.;
...A leading education center, it is the seat of
Princeton Univ., the Inst. for Advanced Study, Princeton
Theological Seminary, Westminster Choir Co., St.
Joseph's Col., and other institutions. Home to numerous
natl. and internatl. corporate research centers and hq.

Further, applicant states, "there are two federal trademark
registrations for PRINCETON and PRINCETON UNIVERISTY [sic], which
are based on the acquired distinctiveness of the term PRINCETON
under Section 2(f) of the Trademark Act." (Response dated
February 25, 2004, p. 2.) Applicant has submitted copies of
these registrations from the USPTO's TARR database.4
Based on the above evidence, applicant concludes that the
association of the term "Princeton" with prestigious academics
"is of equal if not greater significance than its association
with a geographic locale." (Brief, p. 3.)

4 Registration No. 1498976 of PRINCETON UNIVERSITY for "providing
educational services at the college and university level"; issued
August 2, 1988 to The Trustees of Princeton University; Sections 8 and
15 affidavits accepted and acknowledged, respectively. "University" is
disclaimed.
Registration No. 2219263 of PRINCETON for a variety of goods and
services including pre-recorded audio and video tapes, computer
programs, jewelry, publications, and variety store services; issued
January 1, 1999 to The Trustees of Princeton University; Sections 8 and
15 affidavits accepted and acknowledged, respectively.

Serial No. 78222332
6
We find that the evidence sufficiently demonstrates that
"Princeton" is the name of a generally known geographic location
that is not obscure or remote to the public. The term is defined
first as a geographic location in the dictionary reference
submitted by the examining attorney as well as the Gazetteer
reference supplied by applicant. The description of Princeton,
New Jersey in these references in such terms as the "location
of," "home of," or "seat of" the renown Princeton University as
well as other leading research and educational facilities clearly
enhances the term's geographic significance.
The evidence also shows that the geographic significance is
the primary significance of the mark. We are unpersuaded by
applicant's argument that the primary significance of "Princeton"
is not geographic because the term has other meanings, and in
particular, its association "with prestigious academics." As the
examining attorney states in her brief, and the evidence shows,
Princeton is "first and foremost" a geographic location.5 To the
extent that "Princeton" does evoke an association with
educational centers and institutions, that meaning is geographic
as well. That is, the "educational" connotation is so closely
connected to the town of Princeton that it does not overcome that

5 Applicant's reliance on In re Cotter & Company, 228 USPQ 202 (TTAB
1985) is misplaced here. The evidence in that case identified "West
Point" as a military post or installation rather than a geographic
place.

Serial No. 78222332
7
term's primary meaning as a geographic term. See, e.g., In re
Opryland USA Inc., 1 USPQ2d 1409, 1413 (TTAB 1986) (finding THE
NASHVILLE NETWORK primarily geographical notwithstanding that
Nashville "has other imagery than the city of Nashville, e.g.,
education, i.e. the 'Athens of the South'; country music;
Printer's Alley; a particular musical sound, i.e., 'The Nashville
Sound', etc."). See also In re Cambridge Digital Systems, supra
(finding CAMBRIDGE DIGITAL for computer systems primarily
geographically descriptive notwithstanding that Cambridge is the
name of a noted university in England and that Cambridge,
Massachusetts is renowned for the educational institutions
located there).
Applicant's reliance on the PRINCETON and PRINCETON
UNIVERSITY registrations to support its position that the mark is
not primarily geographic is curious. The registrations actually
support the examining attorney's position, not the applicant's.
They provide further evidence of the primary meaning of
"Princeton" as a geographic term. The owner of these
registrations presumably acknowledged the primary significance of
Princeton as a geographic term as it sought registration based on
a claim of acquired distinctiveness of its marks under Section
2(f) of the Trademark Act.

Serial No. 78222332
8
To the extent applicant is arguing that the geographic
meaning of Princeton is no longer the primary meaning, or that
the primary meaning has been overtaken by its acquired meaning as
an "educational center" in view of the renown of the University,
similar arguments have been addressed by the Board in the context
of surnames. In particular, in In re McDonald's Corporation,
230 USPQ 304, 307 (TTAB 1986), the Board held:
...[F]or purposes of Section 2(e)(3) of the Act, the
word "primarily" refers to the primary significance of
the term, that is, the ordinary meaning of the word,
and not to the term's strength as a trademark due to
widespread advertising and promotion of the term as a
mark to identify goods and/or services. [Citations
omitted.]

In the present situation, the term "McDonald's" has no
ordinary meaning other than as the possessive form of a
relatively common surname in the United States. The
Board readily concedes that the association of
"MCDONALD'S" as a source indicating trademark and
service mark has probably overtaken the original
meaning of the word as a surname. However, this is due
to the distinctiveness that has been acquired by the
term over the years. ...

The primary significance of term "Princeton" is geographic,
and the primary significance of PRINCETON PHARMACEUTICAL PRODUCTS
as a whole is geographic. The addition of generic and/or merely
descriptive words to a geographical term does not overcome the
primary geographic significance of the mark as a whole. See In
re U.S. Cargo Inc., 49 USPQ2d 1702 (TTAB 1998); and In re
Cambridge Digital Systems, supra. Unlike the composite marks in
Serial No. 78222332
9
the cases relied on by applicant such as In re Urbano, 51 USPQ2d
1776 (TTAB 1999) (SYDNEY 2000 for advertising and business
services) and In re Jim Crockett Promotions, Inc., 5 USPQ2d 1455
(TTAB 1987) (THE GREAT AMERICAN BASH for wrestling matches),
there is nothing added to PRINCETON, a geographic term, to render
the mark in its entirety registrable. The wording PHARMACEUTICAL
PRODUCTS is generic for pharmaceutical preparations, and the
combination does nothing to alter the geographic significance of
PRINCETON alone.
We find no genuine issue that the primary significance of
PRINCETON PHARMACEUTICAL PRODUCTS is a geographic place which is
not obscure or remote but rather is generally known to the
public.
With respect to the second part of the test, the examining
attorney argues that purchasers are likely to believe that
applicant's goods will originate in Princeton because (1) at the
least, applicant's goods are researched and developed in
Princeton and (2) Princeton is known for pharmaceutical products
and pharmaceutical companies. In support of her position, the
examining attorney has submitted pages from applicant's website
(www.bms.com); pages of an Internet search summary; and excerpts
of articles obtained from the NEXIS database. This evidence
shows, according to the examining attorney, that pharmaceutical
Serial No. 78222332
10
products in general and applicant's pharmaceutical products in
particular are connected to Princeton, New Jersey.
Applicant, on the other hand, argues that the evidence is
insufficient to establish the requisite goods/place association.
Specifically, applicant contends that the examining attorney has
not established that Princeton "is known for or associated with
pharmaceutical products" (Response dated February 25, 2004, p.
4); that while applicant does maintain a research facility in
Princeton, this fact is not widely known to purchasers such that
there would be any association with applicant and Princeton on
the part of consumers at large; that applicant is a global
pharmaceutical company and maintains other major research
facilities in the United States and throughout the world; and
that there is no evidence that consumers "make any association at
all between Princeton and pharmaceutical products." (Reply
Brief, p. 3.)
In establishing a prima facie case that there is a
goods/place association between pharmaceutical products and
Princeton, the examining attorney need not show that the public
would actually make the asserted association, i.e., that the
public actually believes the goods originate in Princeton.
Rather the examining attorney need only show a "reasonable basis"
for concluding that the public would make the goods/place
association. In re Loew's Theatres, Inc., supra at 868.
Serial No. 78222332
11
Thus, contrary to applicant's contention, the examining
attorney need not show that Princeton, New Jersey is "known for
pharmaceutical products" or that applicant's research facility is
"widely known" to purchasers, or that "consumers at large" would
actually make the association. In fact, where, as here, it has
been shown that the primary significance of the mark is
geographic and the place is not obscure or remote, it is
sufficient to show that applicant's goods originate or will
originate in the area named in the mark.6 In re Carolina
Apparel, 48 USPQ2d 1542, 1543 (TTAB 1998) (if a geographic term
in a mark is neither remote nor obscure and the geographic
significance is the primary connotation of the term, and where
the goods or services actually originate from the geographic
place designated in the mark, a public association of the goods
or services with the place may ordinarily be presumed); and In re
Handler Fenton Westerns, 214 USPQ 848 (TTAB 1992). Thus, we turn
to the question of whether applicant's goods originate or will
originate from Princeton, New Jersey.
We note in this regard that the examining attorney required,
in her initial Office action, that applicant indicate
specifically whether the goods will be manufactured or produced

6 Unlike the obscure and remote French town of Vittel in In re Societe
General des Eaux Minerals de Vittel S.A., supra, the evidence in the
present case shows that the town of Princeton is generally known to the
American public.

Serial No. 78222332
12
in, or will have any other connection with, Princeton, New
Jersey. Applicant's response was evasive, stating only that its
corporate offices are located in New York, that it does have a
research facility located in Princeton, New Jersey, and that its
research center is not a manufacturing facility. (Response dated
February 25, 2004, p. 4.) The examining attorney, noting that
applicant failed to address the requirement, made the requirement
final. In response, applicant stated: "Applicant wishes to
clarify that although it has a research facility in Princeton,
the pharmaceuticals that are the subject of research are neither
manufactured nor otherwise produced at this facility." (Req. for
Recon., unnumb. p. 4, emphasis added.)
It seems to us that applicant has carefully avoided directly
answering the examining attorney's inquiry about whether
applicant's pharmaceuticals will be produced in Princeton.
However, because the examining attorney did not further pursue
the requirement or even mention it in either her denial of
applicant's request for reconsideration or her appeal brief, we
deem the requirement waived.
Nevertheless, we find that despite applicant's failure to
answer the question asked, the record as a whole, including the
uncontroverted evidence submitted by the examining attorney shows
that the goods do or will in fact come from Princeton. The NEXIS
evidence submitted by the examining attorney shows, and applicant
Serial No. 78222332
13
does not dispute, that applicant, Bristol-Myers Squibb Company,
not only researches, but manufactures pharmaceuticals in
Princeton, New Jersey. For example:
Chewable Ovcon-35 will be manufactured by Bristol-Myers
Squibb Co. in Princeton, N.J. .... Pittsburgh Post-
Gazette (Pennsylvania) (December 23, 2003); and also in
Albuquerque Journal (New Mexico) (December 22, 2003).

Reyataz is manufactured by Bristol-Myers Squibb Co. of
Princeton, N.J. FDA Consumer, September 9, 2003.

Peninsula Research Associates .... recently completed an
open-label Phase 2 trial of Tequin gatifloxacin,
manufactured by Bristol-Myers Squibb Princeton, N.J.
.... Applied Clinical Trials (March 1, 2002).

The bridegroom, 26, was until last week a summer intern
in the marketing strategy department of Bristol-Myers
Squibb, the pharmaceuticals manufacturer, in Princeton,
N. J. The New York Times (August 19, 2001).

Bristol-Myers Squibb Co., based in Princeton, N.J.,
manufactures Glucophage .... Crain's Detroit Business
(June 25, 2001).

Applicant's broadly worded identification for a "line of
pharmaceutical preparations" encompasses all pharmaceuticals,
including those pharmaceuticals referenced above. Even if
applicant's "PRINCETON" line of pharmaceuticals is not or will
not be actually manufactured in Princeton, at a minimum, the
NEXIS and other evidence of record shows that significant
activities relating to applicant's pharmaceutical products
emanate from Princeton, New Jersey. Applicant admittedly has a
pharmaceutical research facility in Princeton. Moreover,
Serial No. 78222332
14
applicant has received media recognition relating to the town of
Princeton. The "Newsroom" page of applicant's website contains
an article dated June 24, 2003 from Time Inc.'s health magazine
with the following headline:7
Princeton, New Jersey-Based Bristol-Myers Squibb Named
Among 10 Healthiest Companies For Women In U.S.:
Health Report

In addition, applicant's pharmaceutical research
headquarters are in Princeton. The following statement appears
on the "About Us - Our Company – Our History" page of applicant's
website:
In 1990 the Bristol-Myers Squibb Pharmaceutical
Research Institute was established with headquarters
in Princeton, New Jersey...

Clearly, the record shows that a public association is
likely between applicant's goods and Princeton, New Jersey in
view of the fact that, at a minimum, applicant has a
pharmaceutical research facility and moreover its pharmaceutical
research headquarters there. See, e.g., In re Nantucket
Allserve, Inc., 28 USPQ2d 1144, 1146 (TTAB 1993) (NANTUCKET
NECTARS is primarily geographically descriptive of soft drinks,

7 Applicant, in its reply brief (p. 4), argues that because this
statement "was not created by Applicant but rather by a third-party" it
is of no probative value. We find the statement probative, not for the
truth of the matter asserted, but as evidence that applicant has a
substantial presence in Princeton. We also note that the statement
appears on applicant's own website and applicant has not disputed its
accuracy.
Serial No. 78222332
15
where company has its research and development center, but not
its manufacturing facilities, on Nantucket).
Under the circumstances, nothing more need be shown by the
examining attorney in order to establish a goods/place
association. See In re Opryland USA Inc., supra at 1413 (TTAB
1986) ("[I]n that the evidence shows a substantial part of
appellant's commercial activities emanate from or are related to
Nashville, Tennessee, and that city is not obscure or remote, it
is unnecessary for the Examining Attorney to establish by other
evidence that a services/place relationship exists between
appellant's services and the city of that name.").
However, there is additional support in the record for a
goods/place association. Not only are applicant's own
pharmaceutical research center and headquarters located in
Princeton, but the Gazetteer entry submitted by applicant states
that Princeton is "[h]ome to numerous nat[ional], and
internat[ional], corporate research centers and [headquarters]."
The NEXIS evidence and Internet search summary made of record by
the examining attorney similarly indicate that other
pharmaceutical companies (e.g., Convance, Inc., Novo Nordisk
Pharmaceuticals, Ranbaxy Pharmaceuticals Inc., Lexicon
Pharmaceuticals) are located in or near Princeton, New Jersey.
Serial No. 78222332
16
We find that the record establishes prima facie that the
public is likely to believe that applicant's pharmaceutical
products emanate from Princeton, New Jersey.8
The fact that applicant's corporate headquarters are not in
Princeton or that applicant has research facilities in geographic
locations other than Princeton does not detract from the prima
facie case made by the examining attorney or the perception of
Princeton as at least one of the geographic sources of
applicant's pharmaceuticals. See, e.g., In re California Pizza
Kitchen, Inc., 10 USPQ2d 1704, 1706 (TTAB 1988) (whether an
applicant manufactures some of the goods outside of the
geographical area named in the mark is not controlling).
In further support of its position that the mark is
registrable, applicant states that it is the owner of an
incontestable registration (Registration No. 1432671) for the
same mark, PRINCETON PHARMACEUTICAL PRODUCTS, for "analgesics and
anti-inflammatory pharmaceutical preparations." Applicant argues
that "the nature of the goods in both the prior registration and
the present application is identical, i.e., pharmaceuticals."
(Brief, p. 9., emphasis in original.) Applicant also states that

8 Thus, this case is distinguishable from the cases relied on by
applicant such as Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc.,
93 USPQ 250 (SDNY 1951), aff'd, 204 F.2d 223, 97 USPQ 246 (2d Cir.
1953), cert. denied, 346 U.S. 827, 99 USPQ 491 (1953) and In re Jacques
Bernier, Inc., 894 F.2d 389, 13 USPQ2d 1725 (Fed. Cir. 1990). The
evidence in those cases, unlike the present one, did not establish a
goods/place association.

Serial No. 78222332
17
it was the owner of now cancelled Registration No. 1488069
(cancelled in 1994) "of the same mark for the identical goods."
(Brief, p. 2.) It is applicant's contention that the issuance of
these registrations "is prima facie evidence that the [USPTO] did
not consider this mark to be geographically descriptive, which
should govern the current registrability analysis under
principles of res judicata and collateral estoppel." (Id.)
Applicant did not furnish copies of these registrations or
the contents of the registration files and the Board does not
take judicial notice of such records. However, because the
examining attorney did not object on this basis, we will consider
applicant's arguments related thereto. For purposes of this
decision, we will assume that both registrations are what
applicant represents them to be including that they both issued
on the Principal Register.
We disagree that the refusal to register constitutes a
collateral attack on applicant's existing Registration No.
1432671. While the goods in that registration are identified as
"analgesic and anti-inflammatory pharmaceutical preparations,"
the goods in the present application are identified broadly as a
"house mark for a line of pharmaceutical preparations," which
would logically include additional and different pharmaceutical
products. Ownership of an incontestable registration does not
give applicant a right to register the same mark for different
Serial No. 78222332
18
goods. See In re Loew's Theatres Inc., supra at 869 ("Nothing in
the statute provides a right ipso facto to register a mark for
additional goods when items are added to a company's line or
substituted for other goods covered by a registration."); and In
re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141 (Fed. Cir. 1987) (incontestable registration for
specific services involving credit cards does not automatically
entitle applicant to a registration for broader financial
services). Each application for registration of a mark for
particular goods must be separately evaluated. In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001); and In re McDonald's Corporation, 230 USPQ 304,
307 (TTAB 1986). See also In re Stenographic Machines, Inc., 199
USPQ 313, 317 (Comm'r Pats. 1978) ("Consistency of Office
practice must be secondary to correctness of Office practice.").
Furthermore, collateral estoppel does not apply to
cancelled registrations. A cancelled registration is not
entitled to any of the statutory presumptions of Section 7(b) of
the Trademark Act. See, e.g., In re Hunter publishing Company,
204 USPQ 957, 963 (TTAB 1979) (cancellation "destroys the Section
[7(b)] presumptions and makes the question of registrability 'a
new ball game' which must be predicated on current thought.").
In any event, applicant has failed to provide potentially
relevant information about the registrations. We have no
Serial No. 78222332
19
information as to whether those registrations issued under
Section 2(f) and we are left to speculate as to what the record
in those cases showed, such as whether there was any inquiry by
the examining attorney in those cases as to the geographic nature
of the mark.
Finally, we note that applicant has included in its brief a
typed listing of third-party registrations that consist of or
include the term "Princeton." The listing identifies only marks,
registration numbers and goods/services. Applicant argues based
on this evidence that the registration of the term "for a broad
spectrum of goods and services...is evidence of its
registrability on the Principal Register." (Brief, p. 10.) The
examining attorney objected to the listing only insofar as copies
of the registrations were not submitted and not to the timeliness
of the evidence. We have therefore treated the evidence as
properly of record. However, we find it of no probative value
for a number of reasons. Most notably, applicant has omitted
significant information about the listed registrations such as
whether the marks issued on the Principal Register, or whether
they issued under Section 2(f), or whether the geographic terms
in the marks were disclaimed, making it impossible to evaluate
the evidence in any meaningful way.
We find that the examining attorney has made a prima facie
case that applicant's mark is primarily geographically
Serial No. 78222332
20
descriptive of applicant's goods and that applicant has failed to
rebut the prima facie case. See In re Pacer Technology, 338 F.3d
1348, 67 USPQ2d 1629 (Fed. Cir. 2003).
Decision: The refusal to register is affirmed.