Frankenmuth Chamber of Commerce

Trademark Trial and Appeal Board

May 18, 1999

No. 75113719 (T.T.A.B. May. 18, 1999)

Paper No. 17
CEW
THIS DISPOSITION IS CITABLE AS
PRECEDENT OF THE TTAB MAY 18, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Frankenmuth Chamber of Commerce
___________
Serial No. 75/113,719
___________
John F. Learman of Learman & McCulloch for applicant.
James L. Vana, Trademark Examining Attorney, Law Office 108
(David E. Shallant, Managing Attorney).
____________
Before Cissel, Hanak and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
The Frankenmuth Chamber of Commerce has filed a
trademark application to register the mark shown below for
“arranging and conducting entertainment and educational
exhibitions, namely a beer tasting event featuring a
variety of substantially domestic beers; educational
services, namely, conducting informal classes and seminars
Serial No. 75/113,719
2
in the field of home brewing.”1 The application includes a
disclaimer of EXPO OF BEER 1996 apart from the mark as a
whole.
The Trademark Examining Attorney has issued a final
refusal to register based on the requirement, under Section
6 of the Trademark Act, 15 U.S.C. 1056, that applicant
disclaim the word WORLD apart from the mark as a whole on
the ground that this portion of applicant’s mark is
deceptively misdescriptive of its identified entertainment
services, under Section 2(e)(1) of the Trademark Act, 15
U.S.C. 1052(e)(1).2

1 Serial No. 75/113,719, in International Class 41, filed June 4, 1996,
based on use of the mark in commerce, alleging first use and use in
commerce as of May 17, 1996.
2 The Examining Attorney, in his brief at page 9, concedes that he does
not contend that the word WORLD in the mark herein is deceptively
misdescriptive in connection with the educational services identified
in the application. Thus, we limit our consideration to the propriety
of the disclaimer requirement in connection with the identified
entertainment services.
Serial No. 75/113,719
3
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
The Examining Attorney contends that in the composite
mark herein, WORLD, modifies EXPO to form the phrase WORLD
EXPO; that a “world expo” is “an exposition having some
international aspect or characteristic”; that the
additional words in the mark, OF BEER, and the globe design
“identify the world as the source of the beer at the
applicant’s events”; that the specimen of record lists
beers, including imported beers, available at applicant’s
beer tasting events and, thus, WORLD “identifies the
international scope of the beer at the beer tasting
events.” The Examining Attorney notes, however, that the
beers offered in connection with applicant’s beer tasting
event, as indicated by the identification of services in
the application, are limited to “a variety of substantially
domestic beers.” Thus, he argues that, given the
availability and popularity of imported beers, consumers
are likely to mistakenly “believe that many imported beers
are available at the applicant’s beer tasting exhibitions.”
The Examining Attorney submitted, inter alia, copies
of excerpts of articles from the LEXIS/NEXIS database
showing use of the phrases “world expo” and “world
Serial No. 75/113,719
4
exposition,” variously, in connection with fairs and
exhibits that appear either to be located in several
different countries, to be aimed at an international
audience, or to feature participants or products from many
countries.3
Applicant agrees with the Examining Attorney that
WORLD modifies EXPO in its mark. Applicant contends that,
in view thereof, WORLD is more reasonably understood to
“indicate that the expo is ‘world class’ (high quality), or
that the exposition is ‘open to the world’ in the sense of
who might want to attend.” Applicant contends that the
design of the globe in the mark carries no inference with
respect to which of the several possible connotations of
WORLD apply herein. Applicant argues that the Examining
Attorney is incorrectly equating WORLD EXPO OF BEER with
the phrase “expo of internationally produced beer,” but
that the word WORLD does not modify or describe BEER in the
mark. Applicant argues, further, that, while the majority
of the beers at applicant’s tasting event are domestic,
several imported beers are included; and that domestic

3 A substantial number of the excerpts submitted are newswire articles.
A proprietary newswire article is circulated primarily to newspapers
and news journals whose editors select from the releases those stories
of sufficient interest to publish. Therefore, we find such evidence to
be of minimal evidentiary value herein because the articles’ appearance
in the NEXIS database do not prove that the news releases appeared as
stories in any newspapers or magazines. See, In re Men’s International
Professional Tennis Council, 1 USPQ2d 1917 (TTAB 1986).
Serial No. 75/113,719
5
beers are commonly sold abroad and, thus, may be considered
international in scope. Applicant concludes that the
Examining Attorney has not met his burden of proof in this
case.
With respect to the Examining Attorney’s contention
that WORLD is deceptively misdescriptive in connection with
the identified services, we note that the inquiry is
twofold. First we must determine whether the word at issue
here misdescribes a characteristic, quality, function,
composition or use of the services. If so, we must
determine whether the misdescription is deceptive, in other
words, whether prospective purchasers are likely to believe
that the word actually describes the services or a
characteristic thereof. The burden is on the Examining
Attorney to submit sufficient evidence to establish that
the term sought to be registered falls within the
proscription of the statute. In re Berman Bros. Harlem
Furniture Inc., 26 USPQ2d 1514 (TTAB 1993) citing In re
Budge Manufacturing Co., Inc., 857 F.2d 773, 8 USPQ2d 1259
(Fed. Cir. 1988).
We find that the Examining Attorney has not
established that the word WORLD in applicant’s mark
misdescribes a characteristic, quality, function,
composition or use of applicant’s identified entertainment
Serial No. 75/113,719
6
services. For this reason, it is unnecessary to consider
the second prong of the test for determining
misdescriptiveness under Section 2(e)(1).
We agree with the preliminary observation made by both
the Examining Attorney and applicant that WORLD, in the
context of applicant’s mark, modifies EXPO. However, we
disagree with the Examining Attorney’s further conclusion
that the phrase WORLD EXPO OF BEERS and the globe design
would be perceived by consumers as referring to “the
international scope of the beer at the beer tasting
events.” We find that, considered in connection with the
identified entertainment services, the WORLD portion of the
phrase WORLD EXPO OF BEERS refers to the nature or scope of
applicant’s beer tasting events, rather than indicating
that “many” of the beers featured at applicant’s events are
imported.
The record does not establish a specific meaning for
the word “world” as it appears in the term “world expo.”
Rather the LEXIS/NEXIS excerpts indicate some use of “world
expo” or “world exposition” as a general term suggesting
several concepts, as indicated above, including that
participants are from around the world, that attendees are
from around the world, that the expos are held in various
locations around the world, or that the products or
Serial No. 75/113,719
7
services demonstrated at the expos are available worldwide.4
There is no evidence or argument that, as it appears in the
mark herein, WORLD EXPO misdescribes applicant’s identified
services in any manner.
We find no reasonable basis for the Examining
Attorney’s contention that the word WORLD in the mark would
be perceived as indicating that applicant’s expo is an
event featuring “many” imported beers. Even if we were to
find that the word WORLD in applicant’s mark refers to the
beer available at applicant’s events, which we do not, it
is highly unlikely that the word WORLD would be perceived
as indicating that the featured beer, or any necessary
percentage thereof, is either domestic or imported.
Further, to the extent that a “world expo” is “an
exposition having some international aspect or
characteristic,” even if WORLD referred also to the beer

4 There are several cases in which the courts have declined to find that
the word “world” is either merely descriptive or primarily
geographically descriptive. See, O’Brien Int’l., Inc. v. Mitch et.
al., 209 USPQ 212, 220 (N.D. Ca. 1980) (WORLD in the mark WORLD TEAM
for water skis and accessories is neither generic nor descriptive);
Armstrong Cork Company v. World Carpets, Inc., et. al., 199 USPQ 30, 34
(N.D. Ga. 1978) (finding WORLD and WORLD with globe design confusingly
similar to ARMSTRONG WORLD INDUSTRIES INC., court stated that WORLD is
arbitrary for carpets and is not descriptive of goods or services of
carpet manufacturer, nor does it indicate geographic origin); and World
Carpets, Inc. v. Dick Littrell’s New World Carpets et. al., 168 USPQ
609, 613 (5th Cir. 1971) (finding NEW WORLD confusingly similar to WORLD
for carpets, the court stated that WORLD is “far to broad to suggest
any identifiable unit or place of origin [;] nor can it be said that
the term is used in a descriptive fashion, for it neither relates to
the place of origin of the goods so marked, nor is it descriptive of
the bounds within which the trademark owner functions”).
Serial No. 75/113,719
8
served at applicant’s events, we note that applicant’s
services as identified do not exclude imported beers and
its specimens of record indicate that at least some
imported beers are available. That alone, without further
evidence as to the nature or scope of applicant’s beer
tasting events, lends these events and “international
aspect or characteristic.” Thus, the term WORLD would not
misdescribe applicant’s services.
Decision: The requirement for a disclaimer of WORLD
apart from the mark as a whole, on the ground that it is
deceptively misdescriptive, is reversed. The application
will be forwarded for publication for opposition in due
course.
R. F. Cissel
E. W. Hanak
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board