Florida Tan Center, Inc.

Trademark Trial and Appeal Board

Feb 27, 2001

No. 75543289 (T.T.A.B. Feb. 27, 2001)

2/27/01
Paper No. 9
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Florida Tan Center, Inc.
________
Serial No. 75/543,289
_______
Dean E. McConnell of Brinks Hofer Gilson & Leone for
Florida Tan Center, Inc.
Tami Cohen Belouin, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______
Before Cissel, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On August 27, 1998, applicant filed the above-
identified application to register the mark “FLORIDA TAN
CENTRES” on the Principal Register for “tanning salon
services,” in Class 42. The application was based on
applicant’s claim that it had used the mark since September
of 1994 and had used the mark in interstate commerce since
at least as early as February of 1995.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/543,289
2
The Examining Attorney refused registration under
Section 2(e)(3) of the Lanham Act on the ground that
applicant’s mark is primarily geographically deceptively
misdescriptive. She also required applicant to disclaim
the descriptive terminology “TAN CENTRES” apart from the
mark as shown.
Applicant submitted an amendment with the requested
disclaimer, along with argument that its mark is not
primarily geographically deceptively misdescriptive within
the meaning of Section 2(e)(3) of the Act.
The Examining Attorney was not persuaded by
applicant’s arguments, however, and the refusal to register
was made final in her second Office Action. Submitted in
support of the refusal with that action were copies from
various Florida telephone directories wherein a number of
tanning salons in Florida are promoted. She also submitted
excerpts from articles retrieved from the Nexis
database
of publications wherein tanning salons in Florida are
discussed. Particularly noteworthy in this regard is the
excerpt from the Palm Beach Post newspaper, July 9, 1999
edition. The article states that “[d]espite year-round
rays and shores galore, Florida--with 1,768 salons--ranks
10th among states for indoor tanning. Ohio is No. 1 with
2,635, and Hawaii is last with 15.”
Ser No. 75/543,289
3
Applicant timely filed a Notice of Appeal. Both
applicant and the Examining Attorney filed appeal briefs,
but applicant did not request an oral hearing before the
Board.
The sole issue presented by this appeal is whether the
mark “FLORIDA TAN CENTRES,” as used in connection with
tanning salon services, is primarily geographically
deceptively misdescriptive within the meaning of the Act.
Based on careful consideration of the record and arguments
before us, we find that the refusal to register is well
taken.
The test for determining whether a mark is primarily
geographically deceptively misdescriptive has three parts.
First, we must ask whether the primary significance of the
mark is geographic. The next issue is whether purchasers
would likely think that the services originate in the place
named in the mark, i.e., that they would make an
association between the place and the services. If the
first two questions are answered in the affirmative, the
third question is whether the services do in fact originate
in the place named in the mark. If they do not, then the
mark must be considered to be primarily geographically
deceptively misdescriptive within the meaning of Section
Ser No. 75/543,289
4
2(e)(3) of the Lanham Act. In re Kimpton Hotel and
Restaurant Group, Inc., 55 USPQ2d 1154 (TTAB 2000).
In the case at hand, the first part of the test is
satisfied because the primary significance of the mark is
geographic. In this regard, the disclaimed, descriptive
term “TANNING CENTRES” does not alter the primary
significance of “FLORIDA” as the name of a well-known
geographic location. Applicant does not contest this
point.
The second part of the test is whether consumers will
make an association between the place named in the mark and
the services set forth in the application. The Examining
Attorney does not need to establish that the named place is
famous for the services in issue. Her burden is only to
make a prima facie showing that a public association exists
between the services and place. In re Loew’s Theaters,
Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985).
In the case at hand, the Examining Attorney has met
her burden with respect to the second part of the test as
well. The evidence submitted by the Examining Attorney
establishes that prospective purchasers of tanning salon
services would make an association between “FLORIDA” and
tanning salon services. It shows that Florida ranks very
high among states in terms of the number of tanning salons
Ser No. 75/543,289
5
doing business within the state. Not only do tourists
avail themselves of these services when the natural
environment of the Sunshine State does not cooperate, but
the evidence indicates that many natives partake of these
services because they want the tanned appearance of people
who spend time outdoors, but they simply do not have the
time to get tans the natural way.
The third and final part of the test for
registrability under Section 2(e)(3) of the Act is whether
the services do, in fact, come from the place named in the
mark. The mark is obviously not misdescriptive if it
accurately names the place from which the services emanate.
In the instant case, the record makes it clear that
applicant is an Indiana corporation located in Terre Haute,
Indiana. Its services are in no way connected with the
state of Florida.
The mark would lead people to believe that applicant’s
services come from, originated in, or have some connection
with Florida, but they do not. All three parts of the test
are therefore satisfied, so we must conclude that the mark
is geographically deceptively misdescriptive within the
meaning of the Act.
Applicant’s arguments to the contrary are not
persuasive. Applicant argues that the Examining Attorney
Ser No. 75/543,289
6
failed to prove that Florida is well known for tanning
salons. As the Examining Attorney points out, however, she
was only required to make a prime facie showing that a
public association exists between tanning salon services
and Florida. See In re The Cookie Kitchen, Inc., 228 USPQ
873 (TTAB 1986). The evidence she submitted accomplished
this. She established not just that these services are
widely available in Florida, but in addition, that Florida
is a place where they are more available than they are in
eighty per cent of the country. The requirement for
“something more” laid out in In re Municipal Capital
Markets, Corp., 51 USPQ2d 1369 (TTAB 1999), does not apply
in the case at hand because tanning salon services are not
“ubiquitous” services in the sense that restaurant services
were held to be in that case. Moreover, even if we were to
apply that test to the facts in the case at hand, this
evidence of the relative popularity of these services in
the location named in the mark would satisfy the
requirement.
It is significant that responsive to the Examining
Attorney’s showing, applicant did not submit any evidence
which established that the significance the term sought to
be registered is not primarily geographical or that there
Ser No. 75/543,289
7
is no association between Florida and tanning salon
services.
Applicant contends that the public is not likely to
believe that applicant’s services originate in Florida
because tanning salons provide tans by means of electronic
tanning beds and not direct sunlight, for which Florida is
famous. As the Examining Attorney points out, her refusal
is not based on a premise that consumers would believe that
the tans they are getting from applicant’s tanning beds are
a result of Florida sunshine, or that the tanning beds in
applicant’s salons are necessarily products of Florida.
The refusal is based on the fact that consumers would
believe applicant’s salon business itself originates from
or is otherwise related in some way to Florida. See In re
Kimpton Hotel and Restaurant Group, Inc., supra. It is
likely that consumers would believe that applicant services
are provided through a chain of tanning salons based or
originating in Florida, where, as indicated by the evidence
of record, tanning by means of tanning salons is more
popular than it is in most of the rest of the country.
Decision: The refusal to register under Section
2(e)(3) of the Lanham Act is affirmed.
Ser No. 75/543,289
8
Ser No. 75/543,289
9