Jurassic Stone Co.v.Solnhofen Natural Stone, Inc.

Trademark Trial and Appeal Board

Oct 29, 1999

No. 92025354 (T.T.A.B. Oct. 29, 1999)

1
Paper No. 34
YMO/RLS
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 29, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Jurassic Stone Company
v.
Solnhofen Natural Stone, Inc.
_____
Cancellation No. 25,354
_____
Edward A. Pennington of Morgan & Finnegan for Jurassic Stone
Company
Veronica Colby Devitt of Limbach & Limbach for Solnhofen
Natural Stone, Inc.
_____
Before Simms, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Jurassic Stone Company (petitioner), a partnership of
Albert Gregory and Jura Marble Suppliers (JMS), seeks
cancellation of Reg. No. 1,753,923, issued February 23, 1993
(Section 8 affidavit filed) for the mark SOLNHOFEN for
natural building stone, owned by Solnhofen Natural Stone,
Inc. (respondent), a California corporation. The
registration issued pursuant to the provisions of Sec. 2(f)
2
of the Act, 15 USC Sec 1052(f).1 In the petition for
cancellation, petitioner asserts that since August 1994 it
has been importing and selling masonry materials including
“solnhofen stone,” which goods are of a related nature to
respondent’s products. Petitioner asserts that because
“Solnhofen” is a common term used to describe or identify a
type of product, which petitioner has a valid and legal
right to use, respondent’s mark is primarily geographically
descriptive of respondent’s goods. Further, petitioner
charges that the registered mark has not become distinctive
of respondent’s goods because there is no customer
recognition of this term as a mark identifying only
respondent’s goods. Finally, petitioner charges that the
registration was fraudulently obtained because respondent,
as applicant, stated that it was the sole and exclusive user
of this term in order to establish acquired distinctiveness,
when in fact others had been using this term to identify a
type of product rather than a single source. Petitioner
asserts that statements made in the application were
knowingly false and that they were made with the intent to
induce this Office to grant a registration.

1 In the original application, filed April 16, 1992, respondent
indicated that “Solnhofen” is the name of a village in Germany
within the general vicinity of which the goods are quarried. In
the original application, respondent also asserted that the mark
had become distinctive as a result of substantially exclusive and
continuous use of the mark by applicant in commerce for the five
years preceding the filing date of the application. The
3
In its answer, respondent has denied the essential
allegation of the petition.
The record of the case consists of testimony (and
exhibits) submitted by both parties, as well as portions of
printed publications (technical journals) relied upon by
petitioner’s notices of reliance; and the registration file.
The parties have submitted briefs and an oral hearing was
held.
Petitioner’s Record
According to petitioner’s record, petitioner is a
partnership of Mr. Albert Gregory and the export company
JMS, an affiliation of seven German stone quarrying
companies. Petitioner was formed in April 1995. Petitioner
sells Jura limestone and what it has characterized as
“solnhofen” or Solnhofen stone (we shall use the term with
an initial capital), sometimes called slate limestone or
natural cleft stone. Solnhofen stone is hand quarried and
petitioner’s sales of this stone are around $50,000-$60,000
annually. Approximately one percent of its sales are the
Solnhofen stone, most of which is used for flooring
purposes. Petitioner sells its goods by way of trade shows
and trade publications.
Concerning the significance of the term Solnhofen, Mr.
Gregory testified as follows, at 100, 101-102, 114, 116-117:

registration, which recites dates of use of 1984, issued under
4
Q. And you mentioned before that the Jura
limestone that you sell is a marble produced
in the Eichstatt area. Is Solnhofen, what
you’ve described as Solnhofen stone the slate
limestone that is also produced in the
Eichstatt area?
A. Well, it’s Eichstatt Solnhofen, that whole
area, which is probably 25 to 30 miles or
something like that, in a [sic] that whole
area, Solnhofen, the name of one town, and
Eichstatt the name of another town.
Q. So is it your position that Solnhofen
describes a geographic region or a type
of stone?
A. It’s a geographic region, and a type of
stone, probably named for the geographic
region.
*************************
Q. Okay. If Solnhofen describes a type of stone,
is that type of stone available in other
places of the world other than near
Solnhofen?
A. Not that I am aware of. That’s the area of
the world were it’s quarried.
Q. When did you first hear of Solnhofen stone?
A. About, I would believe [′]91, while I was
working with Harold Vogel, Wood & Stone, as
their sales estimator. And it might have been
even [′]90, because I was also in the office
and in the shop during those initial periods.
Q. And did Wood & Stone carry a Solnhofen
stone?
A. Yes.
Q. And do you know who the producer or
fabricator of the stone was?
A. I believe they bought it from one of the
Sheffield companies, but I’m not sure which
one—
*************************
Q. Do you—-I believe that you need to use the
term Solnhofen to sell any product, any of
your products?
A. The Solnhofen stone, as a Solnhofen
limestone, yes, because that what it’s known
as, and that’s what I’ve always known it as.
Q. Do your customers specify Solnhofen
limestone?
A. Some of them will request, if we go back in,

the provisions of Sec. 2(f) of the Act.
5
Jack T. Irwin will ask for the Solnhofen
stone, meaning that he wants the—-Jack T.
Irwin is also the--actually I take that back.
Mickey Irwin has the one that I talk to and
requested it. I think Jack had probably died
by then, because it was his father’s company.
*************************
Q. Returning now to your company, Jurassic Stone
Company’s use of the term Solnhofen, do you
use that term on any labels?
A. Yes, for Solnhofen stone.
*************************
Q. Do you use the term Solnhofen on cartons?
A. Yes, again, as an attached label on the
cartons.
Q. And it’s a separate label that is attached
to the cartons?
A. Right.
Q. And is that label different from
the label that is on the product itself?
A. Occasionally. If it’s on a sample, the
sample might just include our address and
everything with just it. If it’s a carton
for resale it might just say Jurassic Stone,
Solnhofen stone, natural cleft.
Mr. Gregory also testified that third parties have
used the term Solnhofen in connection with their sales of
stone. Dep., 120, 121.
Petitioner also took the testimony of Mr. Harold Vogel,
a natural stone consultant. According to his testimony,
Solnhofen is the name of the town, in southern Bavaria, near
where he grew up, known for its limestone quarries.
Q. Is Solnhofen known for anything besides its
stone quarries?
A. Is it known for anything else? Well, I
mean, this is what put it on the map is the
material, the material is not only quarried
in Solnhofen. It’s quarried in that area, in
the Solnhofen area. I’d say within about a
10 mile radius of Solnhofen there are
probably 20 or 30 quarries where the same
6
type of material is quarried and that’s all
called Solnhofen.
*************************
Q. I’ll hand you what the court reporter has
marked Vogel 3. Can you identify that stone?
A. Yes. That’s a Solnhofen stone.
Q. And how do you know it’s Solnhofen stone?
A. Characteristic of Solnhofen stone is that it
is very uniform in hardness. That’s why up
until 1940 it was used worldwide, including
the United States, for lithography because it
was the only stone totally uniform in
hardness. In other words, you could etch
into it and the depth of the etching would be
uniform all the way through. Okay.
A characteristic of the Solnhofen stone is
dendrite in there. Dendrite is a carbon
intrusion into the layers. If you put it on
a machine and grind this layer off, you come
down to a very uniform stone. All fossils or
dendrites are always in the surface only.
They don’t go through the material.
*************************
Q. Can you describe that process, how it’s done?
A. Well, the material is a layered material.
and the cycles of layers were very regular.
There’s a variation in thickness of layers
that goes from approximately a 16th of an inch
to approximately 2 inches in thickness.
That’s a standard, standard on this material
here, when you quarry that, it’s all quarried
by hand. It’s all done by hand.
*************************
Q. Is this stone quarried anywhere outside of,
let’s say, a 10 mile radius of Solnhofen?
A. Not that I know of. I mean, outside that
region? I mean, if I say 10 miles, I say
approximately ten miles. If you say, I find
one that’s 12 miles away, that’s possible
too. But outside that region, no. It’s
typical for that region.
Q. And how long has Solnhofen stone been
quarried out of these quarries in Germany?
A. Well I know from my days in school that the
Romans were using it. So I would say like
2,000 years. The Romans they occupied part
of Germany if you remember your school days
and they build a wall there to keep whatever
the Huns or whatever you call them, the
barbarians out. And that wall actually went
7
right across the Jurassic mountain range,
near within about 3 or 4 miles of that area.
And they used a lot of that stone in that
wall too because it’s there.
Vogel dep., 12, 16, 17, 18. Mr. Vogel testified that the
stone was first imported by his company (Wood and Stone) in
November 1980 (dep., 30-31). While this stone was for a
time referred to as natural cleft, for ease of
pronunciation, it was then Solnhofen stone, the original
name. His company sold Solnhofen stone from 1980 to 1994.
Dep., 48. Mr. Vogel testified that to him “Solnhofen
natural stone” is a particular type of stone. Dep., 59.
Mr. Gerhard Ruf, the managing director of JMS, also
testified that Solnhofen stone, which is distinctive and
recognizable, has been quarried in the Solnhofen area of
Germany since Roman times. Further, he stated that the JMS
companies have used Solnhofen to describe stone since prior
to 1992, and to describe stone sold in the United States.
Ruf dep., 31,32-33, 36. Invoices were made of record
reflecting sales in United States.
Another witness, Mr. Ludwig Miehling, the export sales
director of a German company called Niefnecker, testified
that in December 1990 Solnhofen stone was sold in San
Francisco. Like the other witnesses called by petitioner,
Mr. Miehling testified that Solnhofen limestone describes a
certain kind of material that is produced and distributed by
many companies in the Solnhofen area. Dep., 42. He also
8
testified concerning an August 1989 sale to a Florida
company. Five to 10 large containers of Solnhofen stone
were shipped to this country in 1996. Mr. Miehling
testified that about one percent of his exports are to the
United States. He testified that his first sale to this
country was in 1989 (dep., 102) and that sales have been
made every year since that time. Dep., 102, 109. Finally,
he testified that respondent was aware in February 1990 that
Niefnecker was using the term Solnhofen as of that time.
Petitioner has also relied upon a substantial number of
printed publications and other publicly available materials
such as reference works and technical publications. For
example, petitioner has made of record an article from a
1972 Journal of Geophysical Research entitled “Triaxial
Stress Behavior of Solenhofen Limestone…” Another reference
to Solnhofen limestone, in the sense of limestone from
Solnhofen, is excerpted below:
…These rocks [limestone quarried since the
Stone Age for roof and floor tiles]—-known
as the Solnhofen or Solnhofen Limestone, after
the small town of Solnhofen—-are also famous
for their fossils.
Localities of the Jurassic: The Solnhofen Limestone of
Germany, petitioner’s notice of reliance, item 2.
Respondent’s Testimony
Respondent took the testimony of Mr. Gunther Kleber, a
former managing director of JMS. He testified that, by
9
agreement, JMS could not sell its stone to customers in the
United States until 1994, unless all JMS members agreed to
the contrary. Dep., 40-41, 74. However, on cross-
examination, Mr. Kleber testified that individual members of
JMS could sell their products in the United States. Dep.,
75. Mr. Kleber left the employment of JMS in 1990. Dep.,
56.
Respondent also took the testimony of Mr. Detlev
Wolske, its president and minority shareholder.2 Founded in
1984, respondent now has offices in San Francisco and New
York. Respondent primarily sells various colors of Jura
stone, which its calls “Solnhofen stone.” Mr. Wolske
testified that when respondent began selling its products in
this country in 1984, he was not aware of others using the
term Solnhofen. Respondent currently distributes its
products through Architectural Product Group (APG).
Respondent’s customers are the architectural design
community as well as dealers and distributors of floor
coverings, and tile contractors. Respondent targets hotels
and restaurants and has done stone installations at malls,
office buildings, universities and hospitals. Mr. Wolske
testified that respondent’s first major installation in this
country was in San Francisco in the mid-1980s. Respondent
has promoted its goods by means of press releases, industry
10
trade shows, and, for a time, by advertisements in trade
magazines.
With the exception of respondent’s Solnhofen
greenstone, which is quarried near Westphalia in northern
Germany, all of respondent’s Solnhofen stone is quarried
near the town of Solnhofen. Dep., 65. Mr. Wolske did
testify, however, that other companies quarry stone from the
Solnhofen area. Dep. 68, 241. When asked what the
Solnhofen name means to potential purchasers, Mr. Wolske
testified, at 72:
Q. Is the Solnhofen name associated with
lithostone?
A. Yes.
Q. Is there any other area for which the Solnhofen
name or any other area which the Solnhofen name is
associated with a particular type of stone besides
the lithostone?
A. Well, it’s associated with the fossils found.
Q. Which fossils?
A. We have the—-in the period the quarries formed,
during that period, a lot of animals, if I can
say, fish, et cetera, got embedded in the layers
of the quarry, and when we quarry, we find these
fossils, these fish fossils, all kinds of fossils,
and that’s what the name Solnhofen is associated
with, also.
Mr. Wolfke testified that in 1989 he became aware of
the Niefnecker company’s use of the name “Solnhofer” in
connection with limestone in an advertisement in a trade
publication distributed in this country (Stone World).
Dep., 161, 260. Respondent then sought information from

2 The majority shareholder is Solnhofer Portland-Zementwerke
(SPZ). SPZ is a German cement factory.
11
Niefnecker by way of an inquiry card and received
information and price quotes from Niefnecker. Mr. Wolske
testified, at 164:
Q. After receiving the price quotes, did your
company have any further contact with
Niefnecker.
A. Well, that was then—-let me think a little
bit timewise. We later on then registered
our trademark, and I remember Niefnecker
continuing their advertising, and obviously
it started or it continued to bother us, and
we then decided to write them.
Q. Did someone from your company write to
Niefnecker?
A. We had an attorney write at that time.
On cross-examination, Mr. Wolske was asked about the
significance of the term Solnhofen in this country.
Q. Do you ever have customers ask you what
Solnhofen is? When you market your product
as Solnhofen greenstone, has anybody ever
said what does Solnhofen mean or –-
A. They may sometimes ask me what Solnhofen
stands for.
Q. Do you tell them?
A. I tell them, yeah.
Q. Do you tell them it’s a village in Germany?
A. Yeah.
Q. So if you told them that Solnhofen is a
village in Germany and you’re selling them
Solnhofen greenstone, wouldn’t they get the
idea that this greenstone comes from
Solnhofen?
A. I don’t think so because what they know in
the U.S. is that Solnhofen is my trademark,
but they don’t associate it with a village in
Germany unless they maybe are dealing with
fossils that they are really knowledgeable
about, that Solnhofen is a place were you
find fossils or where the lithostones come
from.
*************************
Q. You keep saying, “Where? In Germany?” And
again, I question you. Do you believe there
is a difference between what people know and
12
understand in Germany versus what people know
and understand in the United States when it
comes to-—
A. Yes. There is a difference.
Q. What is that difference? Are you saying
people in the-—
A. That Solnhofen in Germany is known as a—-may
be known as a village and that Solnhofen in
the United States is my trademark.
Q. Well, what if people in the United States
knew that the stones that you sell come from
the village of Solnhofen? Does that change
your position?
A. What position?
Q. You seem to be saying that over here people
think of Solnhofen merely as your trademark,
whereas in Germany, they think of it as a
name of a town.
Do you think it would make any difference to
your case if people over here understood
Solnhofen to be a German town?
A. Yes, because that’s not what it is.
Q. It’s not a German town?
A. No. What they refer to in the United States,
they don’t know Solnhofen in Germany is a
village. Only the ones perhaps who deal with
fossils or with lithostones may know that in
the U.S., but I don’t know.
*************************
Q. So far as you know, your customers have not
been told about the fact that Solnhofen is a
village in or near where your stones are
quarried; is that correct?
A. Well, if they ask us, we tell them. If they
don’t ask us, we don’t tell them.
Wolske dep., 188, 193-194, 274. Mr. Wolske testified that
respondent did ask Niefnecker to describe it goods as
limestone from Solnhofen, a request which was apparently
honored for a short period of time.
Respondent’s Ex. 26 is a brochure, made of record
during the Wolske testimony, which discusses “the ancient
limestone beds…[of] the Solnhofen quarry.”
13
The Romans may have been the first to
appreciate the buried treasure of Solnhofen
limestone. 1800 years ago, Roman soldiers,
garrisoned in what is now Bavaria, used
Solnhofen stone in their public baths for
its remarkable heat conduction.
One of respondent’s exhibits (Ex. 52), a reprinted
article from the October-November 1991 Dimensional Stone
magazine, contains the following about “Solnhofen Stone from
Germany”:
Some building materials are like shooting
stars; they are introduced into the market,
achieve a short-lived popularity and disappear.
Other building materials last through political
eras, wars, upheavals and even beyond the demise
of great civilizations. Solnhofen stone is such
a material. Its first recorded use was during
Roman times, and today the material is enjoying
a popular renaissance as one of the world’s
favorite paving stones.
HISTORY
Looking back 1,800 years to the time of the first
Roman garrisons in Germany, we find that baths
were built for the military. These baths were
very much like today’s modern health clubs; in
them, men gathered to bathe, to play sports and
to “network.” The tiles in the pools and
surrounding rooms of these Roman “health spas”
were made from locally quarried Solnhofen Stone,
which was known for its density, fine grain and
resistance to water penetration…
Arguments of the Parties
Briefly, petitioner argues that it imports into this
country a variety of building stones including those known
in the trade as Solnhofen stones, quarried from the
Solnhofen region of Germany. According to petitioner,
14
Solnhofen is well known in the building stone industry for
its quarries and the stone that comes from those quarries.
Petitioner argues that the term is primarily geographically
descriptive, without secondary meaning because others were
selling and advertising similar stone under a similar name
and because respondent’s activities under the asserted mark
were insufficient to establish secondary meaning.
Petitioner also contends that the registration was obtained
fraudulently. We note that petitioner argues in its brief
that the asserted mark is descriptive and generic. Suffice
it to say that we believe that these issues were not
adequately pleaded in the petition for cancellation, and we
do not believe that respondent was placed on notice that
these issues were the subject of trial.3
Respondent, on the other hand, contends that petitioner
has failed to produce sufficient evidence that the relevant
customers (conceded to be architects, “specifiers,” builders
and distributors) would perceive Solnhofen to be
geographically descriptive; that the evidence offered by
petitioner contains self-serving opinions and is otherwise
irrelevant; that the third-party and other uses of Solnhofen

3 It appears from the testimony in this case that respondent is
also using the term Solnhofen to identify a German greenstone
that is quarried in northern Germany, hundreds of miles from
Solnhofen. However, petitioner has not pleaded, and we will
therefore not decide, the issue of primary geographic deceptive
misdescriptiveness of the term Solnhofen used in connection with
these goods (see Sec. 2(e)(3) of the Act).
15
relied on by petitioner are sporadic, de minimis, infringing
and “purely geographically descriptive” (brief, 33); and
that respondent’s use to support acquired distinctiveness
was “substantially” exclusive. Respondent also maintains
that the German town of Solnhofen is obscure and virtually
unknown in this country, except within certain specialized
fields unconnected to the building stone industry.
Respondent also contends that it committed no fraud in the
application process.4 Finally, respondent argues that
others are free to use Solnhofen in a purely geographical
sense. Respondent does acknowledge that the record contains
some evidence (letters to potential customers beginning in
1983, for example) of use of the term Solnhofen in this
country by others such as the Niefnecker company.5
Respondent contends, however, that some of the uses were
after respondent commenced use in this country.
Discussion and Opinion
In order for registration to be refused (or cancelled)
under Section 2(e)(2) of the Trademark Act, it is necessary
to establish that the primary significance of the mark

4 Some of the particular allegations of fraud addressed by the
parties (e.g., use by respondent of the term for goods not coming
from Solnhofen) were not pleaded “with particularity” by
petitioner, and we have not considered them.
5 See brief, 14, 16, 31-32. Concerning objections raised in the
parties’ briefs, we have excluded respondent’s search report (Ex.
75) relied on by notice (see Weyerhaeuser Co. v. Katz, 24 USPQ2d
1230 (TTAB 1992)). To the extent that some of the evidence
relied on may be considered to be directed to geologists,
16
sought to be registered (or cancelled) is the name of a
place generally known to the relevant public and that the
relevant public would make a goods/place association, that
is, believe that the goods for which the mark is sought to
be registered (or cancelled) originate in that place. See
In re California Pizza Kitchen Inc., 10 USPQ2d 1704, 1705
(TTAB 1988), citing In re Societe Generale des Eaux
Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1452
(Fed. Cir. 1987). Provided that these conditions are met,
and the goods come from the place named by or in the mark,
the mark is primarily geographically descriptive.
Moreover, where 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 with the place may ordinarily be presumed from the
fact that the goods come from the geographical place named
in the mark. See, e.g., In re Handler Fenton Westerns,
Inc., 214 USPQ 848, 850 (TTAB 1982).
After careful consideration of this record, we agree
with petitioner that the record demonstrates that the term
Solnhofen is the name of a geographic place known to the
relevant public (the stone building industry, architectural
designers, etc.), and that, because respondent’s Solnhofen

geophysicists and paleontologists and not the relevant customers
17
stones come from that place (with the exception of the
Solnhofen greenstone), the registered mark is determined to
be primarily geographically descriptive under Sec. 2(e)(2)
of the Act. While it might be true that the German town of
Solnhofen is not well known to the general public in this
country, we believe that this record adequately demonstrates
that the term is known to the relevant class of purchasers
involved in this case. Cf. In re Societe Generale des Eaux
Minerales de Vittel S.A., supra, and cases cited therein.
In addition, respondent in its initial application
recognized, by its claim of acquired distinctiveness, that
Solnhofen was not inherently distinctive. The term should
be freely available to all competitors who quarry and sell
stone from the Solnhofen region.
Furthermore, concerning the question of acquired
distinctiveness, the record amply demonstrates that the
primary significance of the term Solnhofen is not and was
not (at the time of registration) respondent, but the town
and the stones that come from there, regardless of
particular source. Moreover, respondent did not, at the
time of registration, and does not have substantially
exclusive use of this term so as to justify registration
under Sec. 2(f). The testimony and exhibits show sales and
advertising in this country of Solnhofen stone by the

herein, we have given this material appropriate weight.
18
Niefnecker company since at least 1979, by Wood and Stone
since 1980, and by the German quarrier Stiegler since 1983.
See Levi Strauss & Co. v. Genesco, Inc., 222 USPQ 939, 940-
41 (Fed. Cir. 1984)(“When the record shows that purchasers
are confronted with more than one (let alone numerous)
independent users of a term or device, an application for
registration under Section 2(f) cannot be successful, for
distinctiveness on which purchasers may rely is lacking
under such circumstances.”) Finally, the publications made
of record show that the trade press used Solnhofen, not as
respondent’s trademark, but rather to refer to the town, its
quarries and stone which came from there, regardless of
particular source.
With respect to the issue of fraud, we note that
petitioner has only spent two (out of 42) pages of its brief
devoted to this issue. While we have considered
petitioner’s arguments, suffice it to say that, on this
record, we believe that, at the time of registration,
respondent’s statement in the application that it was
entitled to registration on the basis of acquired
distinctiveness was not knowingly false, keeping in mind
that one must prove fraud by clear and convincing evidence
of an intent to mislead this Office. Respondent may have
reasonably believed that it was entitled to registration on
19
the basis of substantially exclusive and continuous use of
the term Solnhofen in this country.
Decision: The petition for cancellation is granted in
part and denied in part; the registration will be cancelled
in due course.
R. L. Simms
T. J. Quinn
C. E. Walters
Administrative Trademark
Judges, Trademark Trial and
Appeal Board