Fire Island Brewing Company LLC

Trademark Trial and Appeal Board

Sep 23, 2011

No. 77696816 (T.T.A.B. Sep. 23, 2011)

Oral Hearing: Mailed:
May 11, 2011 September 23, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fire Island Brewing Company LLC
________

Serial Nos. 77696805 and 77696816
_______

Erik M. Pelton and Mark Donahey of Erik M. Pelton &
Associates PLLC for Fire Island Brewing Company LLC

Howard Smiga, Trademark Examining Attorney, Law Office 102
(Karen M. Strzyz, Managing Attorney)
_______

Before Zervas, Kuhlke and Wellington, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On March 23, 2009, applicant, Fire Island Brewing
Company LLC, filed applications to register the following
marks on the Principal Register for goods identified as
“ale; beer” in International Class 32:
FIRE ISLAND BEER COMPANY LIGHTHOUSE ALE1; and

1 Application Serial No. 77696805, filed under Section 1(a) of
the Trademark Act, 15 U.S.C. §1051(a) based on allegations of
first use in June 1999 and use in commerce in July 2008, standard
characters claimed, and “BEER COMPANY” and “ALE” disclaimed.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 77696805; 77696816
2
2
In each application, the examining attorney refused
registration pursuant to Section 6(a) of the Trademark Act,
15 U.S.C. §1056(a), based on applicant’s failure to comply
with the requirement to disclaim the wording FIRE ISLAND on
the ground that it is primarily geographically descriptive
of applicant’s goods within the meaning of Section 2(e)(2)
of the Trademark Act, 15 U.S.C. §1052(e)(2).
An examining attorney may require an applicant to
disclaim an unregistrable component of a mark otherwise
registrable. Trademark Act Section 6(a). Primarily
geographically descriptive terms are unregistrable, under
Trademark Act Section 2(e)(2) and, therefore, are subject
to disclaimer if the mark is otherwise registrable.
Failure to comply with a disclaimer requirement is ground
for refusal of registration. See In re Omaha National
Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re

2 Application Serial No. 77696816, filed under Section 1(b) of
the Trademark Act, 15 U.S.C. §1051(b), based on an allegation of
an intention to use the mark in commerce, “BEER CO.” disclaimed.

Ser Nos. 77696805; 77696816
3
Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975);
In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007); In re
National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977);
and In re Pendleton Tool Industries, Inc., 157 USPQ 114
(TTAB 1968).
When the refusal was made final, applicant appealed
and requested reconsideration. After the examining
attorney denied the request for reconsideration, the appeal
was resumed. Briefs have been filed and an oral hearing
was held on May 11, 2011.
We begin by addressing two preliminary matters.
First, the examining attorney requests that the Board take
judicial notice of a registration issued to applicant prior
to issuance of the final office action; however, the Board
does not take judicial notice of registrations. In re
Wada, 48 USPQ2d 1689, 1690 n.2 (TTAB 1998). In view
thereof, the request is denied.
Second, in its brief, applicant requests “in the
alternative” that in the event the Board sustains the
disclaimer requirement, the Board remand the applications
for consideration of whether FIRE ISLAND has acquired
distinctiveness. A request for remand should be made in a
separate filing and must include a showing of good cause.
Trademark Trial and Appeal Board Manual of Procedure (TBMP)
Ser Nos. 77696805; 77696816
4
§1205.01; 1209 (3d ed. 2011). In this case, applicant
buried the request in its brief and did not make the
requisite showing of good cause for the remand.
More importantly, throughout prosecution of the
applications applicant never requested in the alternative
to amend the applications to seek registration, in part,
under Section 2(f) of the Trademark Act, 15 U.S.C.
§1052(f), based on acquired distinctiveness of FIRE ISLAND.
Such a request should not be made for the first time in its
appeal brief. See In re Major League Umpires, 60 USPQ2d
1059 (TTAB 2001). Once an application has been considered
and decided on appeal it will not be reopened except for
the entry of a disclaimer or upon order of the Director.
Trademark Rule 2.142(g). See also In re Societe
D/Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784,
1789 (TTAB 2003) (Board has no authority to grant
applicant’s request made for the first time in its appeal
brief to amend application to seek registration on an
intent-to-use basis); TBMP §§1217, 1218; Trademark Manual
of Examining Procedure (TMEP) §1501.06 (7th ed. 2010) and
cases cited therein. In view thereof, the request is
denied.
In support of his position that FIRE ISLAND is
primarily geographically descriptive of applicant’s goods,
Ser Nos. 77696805; 77696816
5
the examining attorney submitted the following dictionary
definition:
Fire Island a narrow spit off S Long Island, New
York; summer resort and lighthouse station ¼ - ½
mi. (0.4-0.8 wide; 30 mi. (48 km) long).

Random House Unabridged Dictionary (1997) at
infoplease.com.
In addition, he submitted several pages from
applicant’s website. Below are examples of text and
pictures appearing on the website:
Welcome To FIRE ISLAND BEER COMPANY “Craft beer
from The Other New York”

WELCOME TO THE OTHER NEW YORK ... Hello. We’re
two brothers and a cousin who love good beer.
For years we spent our summers in Fire Island,
New York. Maybe you’ve heard of it. It’s an
island off Long Island which is off Manhattan
Island which is off the rest of New York State.
We call it The Other New York because it doesn’t
operate like the rest of New York ... or the rest
of the world really. It’s only accessible by
ferry and there’s no cars allowed. You’ll see
just as many deer on the beaches as you will
seagulls. And people here are just generally
chilled out, welcoming and casual. It’s
different... in a good way.

FIRE ISLAND LIGHTHOUSE ALE ... Fire Island is
known for being easy going with a lot of
character, so Fire Island Lighthouse Ale has been
crafted the exact same way. A soft carbonation
and light caramel finish make Fire Island
Lighthouse Ale easy to drink, yet it has the
toasty round body of a classic American Ale to
give it real substance. It’s a beer for all
seasons, all foods and all friends. Or as we
like to say, the kind of beer you want to have a
beer with.
Ser Nos. 77696805; 77696816
6

www.fireislandbeer.com.
Finally, he submitted printouts of pages from third-
party websites and a few excerpts are reproduced below:
Fire Island, New York Travel Guide ... Fire
Island awaits your arrival, with its pristine
sand dune beaches, dazzling nightlife, fine
dining, and striking scenery that will take
you’re your breath away. ... Going out in Fire
Island? Know Before you go read “The Fire Island
Bar Hop – Get your Drink On!”

www.fireisland.com;

Fire Island is both the name of an island and the
name of a census-designated place. The island is
one of Long Island’s south shore outer barrier
islands, approximately 31 miles long. The land
area is 8.687 sq. mi. ... and a permanent
population of 491 people was reported as of the
2000 census. (There are hundreds of thousands of
summertime residents, groupers and daytrippers.)
Ser Nos. 77696805; 77696816
7
... ... The island has very limited access by
automobile for day use, from Long Island by the
Robert Moses Causeway on its western end to
Robert Moses State Park ... Motor vehicles are
not permitted on the approximately 20 miles in
between ... Essentially the island and its
resort towns are accessible only by the numerous
ferries. ... In popular culture ... Fire Island
is repeatedly referenced on the NBC sitcom Will
and Grace. Many references are made to the
adventures had by Will Truman and Jack McFarland
during their vacations on the Fire Island. The
impression given in the references is that gay
people are welcome and there is a loosening of
one’s inhibitions when there. ... Fire Island
serves dual meanings as both a vacation
destination and a homoerotic euphemism in “Dress
Your Family in Corduroy and Denim” by David
Sedaris. In the story “Blood Work,” David
describes an instance in which he is mistaken for
an erotic housekeeper and his would-be John makes
frequent and emphatic mention of FIRE ISLAND as
a secret code. Ignoring the awkward advances and
a travel brochure featuring scantily clad men,
David’s only response is to ask “do you bring
your Mother to Fire Island?”

En.wikipedia.org; and

Fire Island National Seashore Long Island, New
York …Rhythmic waves, high dunes, ancient
maritime forests, historic landmarks and glimpses
of wildlife – Fire Island has been a special
place for diverse plants, animals and people for
centuries. Far from the sounds and pressures of
nearby big-city life, Fire Island National
Seashore’s dynamic barrier island beaches offer
solitude and camaraderie, and spiritual renewal
to civilization-weary people. Things To Do ...
Fire Island Lighthouse

www.nps.gov.

In traversing the refusal, applicant “does not dispute
that Fire Island is a generally known geographic location.
Ser Nos. 77696805; 77696816
8
However, the geographic meaning of ‘FIRE ISLAND’ is too
minor and unconnected to Applicant’s goods to be the
primary significance of the mark. The use of the word
‘primarily’ in the phrase ‘primarily geographically
descriptive’ means that registration should not be refused
if the geographic meaning is minor, obscure, remote or
unconnected with the goods in question.” Br. p. 5. More
specifically, applicant argues that:
Applicant’s FIRE ISLAND Marks are not primarily
geographically descriptive because the term “FIRE
ISLAND” as used in Applicant’s marks does not
primarily serve as a geographical indicator.
Rather, Applicant’s use of “FIRE ISLAND” suggests
that Applicant’s beer and ale goods share certain
qualities commonly associated with Fire Island
itself. Furthermore, because Fire Island does
not have a beverage production or distribution
industry, and tourism is essentially the only
industry on the island, there is no reason to
believe that consumers would assume a goods/place
association exists.

Br. p. 4.

Relying on cases such as In re Jacques Bernier, Inc.,
894 F.2d 389, 13 USPQ2d 1725, 1727 (Fed. Cir. 1990) where a
term is suggestive of a quality of the goods, such as FIFTH
AVENUE for luxury cars, HYDE PARK for clothing and RODEO
DRIVE for perfumes, applicant contends that:
[T]he primary significance of ‘FIRE ISLAND’ is
the connotation attached with the island itself,
specifically the laid back and uninhibited
vacation atmosphere among several small but
diverse communities of neighbors who are
Ser Nos. 77696805; 77696816
9
physically and psychologically disconnected from
the typical anxieties of daily New York life.

Br. p 6.
Further, applicant argues that Fire Island is known as
a tourist destination “accessible only by ferry lacking any
appreciable industries other than those related to tourism
[and] [g]iven this reputation among the relevant public,
consumers are not likely to conclude that Applicant’s goods
originate from Fire Island ... [thus,] evidence that Fire
Island is a well known vacation location actually reduces
the likelihood that consumers are likely to make a
goods/place association between applicant’s mark and
Applicant’s beer and ale goods.” Br. pp. 12-13. As such,
applicant asserts that it would be incongruous for
consumers to believe that Applicant’s goods originate on
Fire Island. Reply Br. p. 1.
In support of its position applicant submitted, inter
alia, the declaration of Mr. Thomas Fernandez, applicant’s
Vice President and Manager and one of applicant’s founders.
Excerpts from Mr. Fernandez’ declaration are set forth
below:
3. The inspiration for FIBC grew out of our
hobby of making our own home-brew beer while
vacationing on Fire Island. When we decided to
start brewing beer professionally, we chose to
name our company and beer after Fire Island to
suggest the friendly and easy-going attitude of
Ser Nos. 77696805; 77696816
10
the island and its people. We still visit our
vacation home on Fire Island, and some of the
recipes we developed while home-brewing there
have matured into beers currently offered for
sale under the applied-for marks.

4. ... FIBC does not maintain brewing,
distribution, or warehousing operations on Fire
Island because there is little or no industry on
Fire Island apart from tourism. Furthermore,
such activities are made impractical by strict
limitations on access to the island by trucks and
other automotive vehicles.

5. FIBC beer and ale is currently brewed
under contract in upstate New York by Olde
Saratoga Brewing Company, Saratoga Springs, NY.
Olde Saratoga Brewing ships most FIBC beer
directly to Manhattan Beer Distributors of Bronx,
NY for distribution throughout New York’s five
Burroughs, Long Island, and Chester County. FIBC
maintains a small wholesale warehouse in
Brightwaters, NY, where a small inventory is
maintained for tastings and other promotional
events held throughout the region. The bulk of
FIBC’s remaining administrative activities are
conducted in the co-founders’ home offices
located in Manhattan, NY, and Hamden, CT.

6. FIBC beer is available for purchase
through beer retailers and restaurants on Fire
Island, as it is elsewhere in our distribution
region. FIBC also hosts tastings and other
promotional events on and off Fire Island.

Fernandez Declaration, Request for Reconsideration (June 8,
2010).
Applicant’s labels submitted in Application Serial No.
77696805 are shown below:
Ser Nos. 77696805; 77696816
11

“In order for a mark to be considered primarily merely
descriptive under Section 2(e)(2), it must be shown that
(1) the mark’s primary significance is a generally known
Ser Nos. 77696805; 77696816
12
geographic location; and (2) that the relevant public would
be likely to make a goods/place association, that is, would
be likely to believe that the goods originate in the place
named in the mark.” In re Spirits of New Merced LLC, 85
USPQ2d 1614, 1616 (TTAB 2007). See also In re Brouwerij
Nacional Balashi NV, 80 USPQ2d 1820, 1821 (TTAB 2006); In
re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); and TMEP
1210.01(a) (“To establish a prima facie case for refusal to
register a mark as primarily geographically descriptive,
the examining attorney must show that: (1) the primary
significance of the mark is a generally known geographic
location, (2) the goods or services originate in the place
identified in the mark ; and (3) purchasers would be likely
to believe that the goods or services originate in the
geographic place identified in the mark.”)
“[W]here there is no genuine issue that the
geographical significance of a term is its primary
significance, and where the geographical place named by the
term is neither obscure nor remote, a public association of
the goods or services with the place may ordinarily be
presumed from the fact that the applicant’s goods or
services come from the geographical place named in the
mark.” JT Tobacconists, 59 USPQ2d at 1082. See also In re
Handler Fenton Western, Inc., 214 USPQ 848, 850 (TTAB
Ser Nos. 77696805; 77696816
13
1982). However, if the term is remote or obscure, the
public is unlikely to make a goods/place association. In
re Societe Generale Des Eaux Minerales de Vittel S.A., 824
F.2d 957, 3 USPQ2d 1450, 1451 (Fed. Cir. 1987); Balashi, 80
USPQ2d 1820.
We begin by finding that the relevant purchasing
public for the goods at issue (beer and ale) consists of
average American beer purchasers. Balashi, 80 USPQ2d at
1829.
Fire Island is a popular summer resort and National
Park. Applicant does not contest and the evidence shows
that FIRE ISLAND is a generally known geographic location.
As to its primary significance, the descriptive wording
“BEER COMPANY” and the additional word LIGHTHOUSE in the
mark in Application Serial No. 77696805, and the
descriptive wording “BEER CO.” and the design element of a
deer leaping over beer kegs in the mark in Application
Serial No. 77696816 do not detract from the geographic
significance of the wording FIRE ISLAND. These elements do
not create an incongruity or imbue it with another meaning;
if anything, the word LIGHTHOUSE enhances the geographic
significance, giving the impression of a specific location,
for example, the lighthouse on Fire Island shown below.
Ser Nos. 77696805; 77696816
14

www.nps.gov, attached to December 8, 2009 Office Action.
Moreover, we are not convinced by the evidence of
record that FIRE ISLAND presents circumstances similar to
HYDE PARK for clothing such that its geographic
significance is overtaken by another meaning that directly
suggests an attribute of the goods, i.e., that the beer is
“laid back” and “uninhibited.” The third-party usages of
record simply describe a vacation destination, both in
terms of the place itself and its clientele. The examples
do not show use of the term as, for example, a modifier
with the proposed alternate meaning such that the relevant
consumers, beer drinkers, are more likely to perceive that
meaning.3
Finally, based on this record, including the online
travel guides, FIRE ISLAND is not obscure or remote to the
American public. In re Nantucket Allserve Inc., 28 USPQ2d
1144, 1145 (TTAB 1993).

3 The one example makes reference to a more specific meaning used
in one book. See infra wikipedia excerpt attached to December 8,
2009 Office Action (“Fire island serves dual meanings as both a
Ser Nos. 77696805; 77696816
15
We now consider whether the goods come from the place
identified in the mark, namely, Fire Island, and whether
the public would make a goods/place association. As noted
above, when goods come from a specific geographic location,
that is normally enough to find a goods/place relationship.
In re Compagnie Generale Maritime, 993 F.2d 841, 26 USPQ2d
1652, 1655 (Fed. Cir. 1993) (“We likewise hold that the
Board did not clearly err in finding that ‘France, a major
manufacturing and commercial nation, would be perceived as
the source of the numerous goods and services listed in the
applications of the mark is primarily geographical’”).
In general, in cases where the Board has found a
goods/place association, the goods were produced in that
location, or sufficiently nearby to be considered as part
of the region. In Merced, 85 USPQ2d at 1617-1622, the
applicant produced its beer in the city of Merced on-site
at its brewpub. The Board found that consumers would
regard Merced and Yosemite Park as part of the same
geographic area. The fact that both the city of Merced and
applicant promoted an association with Yosemite, and
beverages are served in Yosemite underpinned the
determination that “[c]onsumers would likely believe that

vacation destination and a homoerotic euphemism [in a book by
David Sedaris].”)
Ser Nos. 77696805; 77696816
16
applicant’s beer had its origin in or was in some way
connected to Yosemite. Merced, 85 USPQ2d at 1623 (emphasis
added.) See also In re Joint-Stock Co. “Baik” 80 USPQ2d
1305, 1310 (TTAB 2006) (vodka produced in city of Irkutsk
near Lake Baikal and made with water from Lake Baikal); JT
Tobacconists, 59 USPQ2d 1080 (point of origin of
applicant’s goods is Minnesota).4
Applicant’s goods are manufactured in Saratoga
Springs, New York. Thomas Fernandez Declaration.
Therefore, this case is not similar on its facts to those
cases where the goods are manufactured in the named
location or near enough to be considered as that location.
Unlike the facts in Merced or Joint-Stock “Baik,” there is
nothing in the record to connect the locations of Fire
Island and Saratoga Springs to each other.
When the goods are not actually produced in the
location, we look to other points of contact that may be
sufficient to consider the origin of the goods to be from
the location (otherwise the mark may be primarily

4 In Balashi, while the goods were produced at the location, the
location was found to be too remote for consumers to make the
goods/place association. Balashi, 80 USPQ2d 1820.

Ser Nos. 77696805; 77696816
17
geographically deceptively misdescriptive) and for evidence
that consumers would be likely to make that association.5
In Nantucket Allserve, where the beverages were not
produced in Nantucket, the Board found sufficient
connection to the location based on the following facts:
(1) the headquarters and research and development were
located in Nantucket; (2) the labels included a picture of
Nantucket Town and statements such as “Born on the Faraway
Isle, Nantucket Nectars were created during the long winter
months of 1990. Their flavor embodies the wholesome
quality of the Island whose name they bear,” and listed
Nantucket, MA as the company address; (3) applicant sold
its beverages at its store in Nantucket; and (4) some
ingredients may have come from Nantucket.
The Board concluded that:
[I]ndividuals seeing applicant’s labels on
applicant’s soft drinks would make a goods/place
association between applicant’s product and
Nantucket, and would assume that applicant’s soft
drinks have their origin on Nantucket. Indeed,
the labels state that applicant’s soft drinks
were “born on the Faraway Isle.” While it is
true that applicant’s NANTUCKET NECTARS soft
drinks are manufactured in Worcester,
Massachusetts, applicant’s corporate headquarters
and, perhaps more importantly, applicant’s center
for research and development are located on
Nantucket. ... Thus, a principal origin, if not

5 In this case, the examining attorney did not make a refusal in
the alternative that FIRE ISLAND is primarily geographically
deceptively misdescriptive under Section 2(e)(3).
Ser Nos. 77696805; 77696816
18
the principal origin, of applicant’s products is
Nantucket.

Nantucket Allserve, 28 USPQ2d at 1145 (emphasis added).
At the other end of the spectrum, the Board has not
found the requisite goods/place association where the only
point of contact was the individual applicant’s address
listed in the application. In re Roy J. Mankovitz, 90
USPQ2d 1246, 1250 (TTAB 2009) (MONTECITO DIET not primarily
geographically descriptive). Noting that “the mere fact
that applicant sleeps in Montecito is not necessarily
enough to establish a goods/place relationship,” the Board
continued:
In this case, however, not only do we not have
any evidence that books and publications
originate in Montecito, but we have no specific
evidence that applicant’s publications will
originate in Montecito. We add that there is
also no evidence that the public would believe
that applicant’s on-line journals and health
information services originate from applicant’s
home or even some other location in Montecito.

Id. at 1249-1250. See also In re John Harvey & Sons Ltd.,
32 USPQ2d 1451, 1454 (TTAB 1994) (“The mere fact that
applicant’s headquarters are in Bristol, England does not
mandate a finding here that a goods/place association
should be presumed”).
The record in this case establishes that Fire Island
has a very small year round population of approximately 491
Ser Nos. 77696805; 77696816
19
individuals. In the summer months approximately 820,865
people visit the island. See App. Req. for recon. Exh. D,
fireisland.info. During this time only pedestrian and
bicycle traffic is allowed on the island and access to the
island is primarily by ferry. See December 8, 2009 Office
Action, nps.gov. However, the record also includes
evidence of commercial activity on Fire Island, including
several bars, restaurants and stores. See, e.g., App. Req.
for Recon. Exh. E Business Directory and Shops; December 8,
2009 Office Action, nps.gov.
Clearly this is not a case where there is evidence
that it is a well-known geographic location, such as
France, from which we could assume that a wide variety of
goods and services originate. However, Fire Island as
discussed above, is not obscure or remote and there is
nothing in the record to support a finding that it would be
incongruous or otherwise unexpected for the purchasing
public to expect that bars, restaurants and stores on the
island would sell beer or to believe that beer, produced,
for example, from a brewpub, originates on Fire Island.
See Merced, 85 USPQ2d at 1622 (evidence shows the park not
devoid of commercial activity). In fact, based on
applicant’s evidence of commercial enterprises on FIRE
ISLAND, including bars and restaurants, it is reasonable to
Ser Nos. 77696805; 77696816
20
believe that a brewpub is on the island and offers its own
label.
The question then is whether there are enough points
of contact between applicant and the location to create a
sufficient nexus such that use of the term in connection
with its beer and ale is primarily geographically
descriptive. In this case, the points of contact that
serve to establish Fire Island as the origin of the goods
and to create a goods/place association in the minds of the
consumers are: (1) recipes for some of applicant’s goods
were developed on Fire Island; (2) applicant’s website and
labels tout the connection to Fire Island (including
pictures and maps of the island and statements such as
“Craft beer from The Other New York”); (3) the goods are
sold on Fire Island in stores and restaurants; (4)
applicant maintains inventory in a warehouse across the bay
from Fire Island and conducts tastings and promotional
events in the area, including on Fire Island; and (5)
applicant’s owners maintain a presence on Fire Island
through their home.6

6 While this factor alone may not be sufficient to establish a
goods/place association it may be included in considering the
totality of the circumstances. Further, with regard to the
location of applicant’s administrative office in Manhattan, aside
from Manhattanites vacationing on Fire Island, there is
insufficient evidence upon which to find that Fire Island is
Ser Nos. 77696805; 77696816
21
Weighing against finding a goods/place association are
the facts that the goods are bottled in Saratoga Springs,
New York and that address appears on its labels. While
consumers might not believe that applicant’s beer and ale
are mass produced and bottled on Fire Island, (obviously a
difficult task when the only mode of transportation is a
bicycle or a red wagon) certainly it is reasonable to
believe the beer originates from there in the sense that
Nantucket was “a principal origin if not the principal
origin” of Nantucket Nectars or was in “some way connected
to” Fire Island. Merced, 85 USPQ2d at 1622. In this case,
the goods were developed on Fire Island, applicant sells
and promotes its product on Fire Island, and applicant
underscores its connection to Fire Island in its
advertising and on its labels – “Craft Beer from the Other
New York” (emphasis added). Nantucket Allserve, 28 USPQ2d
at 1146. Weighing the evidence of record, we find that
there is a sufficient connection to establish that
applicant’s goods originate from Fire Island and consumers
would make the goods/place association.
The purpose of Section 2(e)(2) of the Trademark Act is
“to leave geographic names free for all businesses

linked with Manhattan in the way that Yosemite is linked with the
city of Merced.
Ser Nos. 77696805; 77696816
22
operating in the same area to inform customers where their
goods or services originate.” Merced, 85 USPQ2d at 1621.
There is no question that Fire Island is a term that
applicant’s competitors are entitled to use to describe the
geographical origin of their beer or ale. Id. The
examining attorney need not show that the public would
actually make the asserted association; rather, the
examining attorney need only show a “reasonable basis” for
concluding that the public would make the goods/place
association. Merced, 85 USPQ2d at 1623. Given the nexus
between applicant and Fire Island and the existence of
commercial activities on Fire Island relevant to
applicant’s goods, the circumstances in this case establish
a goods/place association between applicant’s goods and
Fire Island and consumers would likely believe that
applicant’s beer and ale had its origin in or is in some
way connected to Fire Island. Merced, 85 USPQ2d at 1623.
In view of the above, we conclude that FIRE ISLAND for
use in connection with applicant’s beer and ale is
primarily geographically descriptive.
Applicant correctly states that in cases of refusals
under Section 2(e)(2) we must resolve doubt in favor of
applicant; however, we have no such doubt in this case. In
re International Taste Inc., 53 USPQ2d 1604, 1605-06 (TTAB
Ser Nos. 77696805; 77696816
23
2000); John Harvey, 32 USPQ2d at 1455. Cf. In re Merrill
Lynch Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1144 (Fed. Cir. 1987) (on issue of mere
descriptiveness, reasonable doubts are resolved in favor of
the applicant).
Thus, the disclaimer requirement is appropriate. In
view of the above, the requirement to provide a disclaimer
for the word FIRE ISLAND is affirmed in each application.
Decision: The refusal to register based on the
requirement for a disclaimer of FIRE ISLAND is
affirmed in each application. However, if applicant
submits the required disclaimer of FIRE ISLAND in each
application to the Board within thirty days, this
decision will be set aside as to the affirmance of the
disclaimer requirement.7 See Trademark Rule 2.142(g),
37 C.F.R. §2.142.

7 The standardized printing format for the required disclaimer
text is as follows: “No exclusive right to use FIRE ISLAND is
claimed apart from the mark as shown.” TMEP 1213.08(a) (5th ed.
2007).