K. Hov IP II, Inc.v.Jonathan Benner-Ortega dba Metro Living

Trademark Trial and Appeal Board

Jun 26, 2012

No. 91185619 (T.T.A.B. Jun. 26, 2012)

Hearing: Mailed:
9/23/11 6/26/12

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

K. Hov IP II, Inc.
v.
Jonathan Benner-Ortega d/b/a Metro Living
_____

Opposition No. 91185619
to application Serial No. 78668494
filed on 7/12/05
_____

James L. Vana of Perkins Coie for K. Hov IP II, Inc.

Erik M. Pelton and Mark L. Donahey of Erik M. Pelton &
Associates for Jonathan Benner-Ortega.
______

Before Quinn, Cataldo and Taylor,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Jonathan Benner-Ortega filed an intent-to-use
application to register the mark shown below

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91185619
2
for “real estate brokerage services” (in International Class
36). The application includes the following description of
the mark: “The mark consists of stylized capital letters
with the images of famous Washington D.C. buildings next to
the words, namely the U.S. Capital [sic] Building, the
Washington Monument and the Lincoln Memorial. Applicant
does not claim any particular size or color.”
K. Hov IP II, Inc. opposed registration under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that applicant’s mark, when used in connection with
applicant’s services, is merely descriptive thereof; and
under Section 2(e)(2), 15 U.S.C. §1052(e)(2), on the ground
that applicant’s mark, when used in connection with
applicant’s services, is primarly geographically descriptive
thereof.
Applicant, in his answer, denied the salient
allegations. Applicant also asserts that opposer lacks
standing to bring the opposition on the two pleaded grounds.
The Record
The record comprises the pleadings; the file of the
involved application; testimony, with related exhibits,
taken by opposer; portions of a discovery deposition of
applicant with related exhibits, applicant’s responses to
opposer’s discovery requests, third-party registrations,
excerpts from printed publications, and excerpts of third-
Opposition No. 91185619
3
party websites, all introduced by way of opposer’s notice of
reliance; and third-party registrations, other official
records, certain of opposer’s responses to applicant’s
discovery requests, excerpts of opposer’s and third-parties’
websites, excerpts of printed publications, and additional
portions of applicant’s discovery deposition, all of which
applicant introduced through his notices of reliance.1 The
parties filed briefs, and both were represented by counsel
at an oral hearing.
The Parties
Opposer is a homebuilder and, in connection therewith,
opposer offers related services such as real estate
brokerage and financing, and home design.
Applicant is a licensed real estate agent serving the
Washington, D.C. metropolitan area.
The Issues
Opposer, in its brief, states that it “has opposed
registration as to the Alleged Mark in its entirety on
geographic descriptiveness grounds, and as to registration
of the Alleged Mark absent a disclaimer of the descriptive
wording METRO LIVING, on descriptiveness grounds.” (Brief,
p. 1). Opposer summarizes the case as follows: “[I]t is

1 Some of the evidence (e.g., Internet websites) is not proper
subject matter for introduction by way of a notice of reliance.
As pointed out by applicant (Brief, p. 3), neither party has
objected to any of the evidence, and accordingly we will treat
all of it as being properly of record for our consideration.
Opposition No. 91185619
4
clear that the Alleged Mark is primarily geographically
descriptive in its entirety, and that the word component
METRO LIVING is merely descriptive. Further, the evidence
of record shows that METRO LIVING is used by numerous
parties to convey its immediately descriptive meaning in
connection with real estate. As a result, registration of
the Alleged Mark should be refused in its entirety, or at
least refused absent a disclaimer of METRO LIVING.” (Brief,
pp. 11-12). With respect to mere descriptiveness under
Section 2(e)(1), opposer exclusively focuses its attention
on the word portion, METRO LIVING, of applicant’s mark;
opposer attacks the inherent distinctiveness of the design
element only in terms of primarily geographic
descriptiveness. As opposer reiterates: “[I]t is clear
that the Disputed Term [METRO LIVING] is merely descriptive
and that the Alleged Mark [METRO LIVING and design] is
primarily geographically descriptive in its entirety...As a
result, registration of the Alleged Mark should be refused
in its entirety, or at least refused absent a disclaimer of
the Disputed Term METRO LIVING.” (Reply Brief, pp. 8-9).
Standing
To establish standing, opposer must show that it is not
an intermeddler, but has a real interest in the proceeding.
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.
1999). Generally, where a claim of mere descriptiveness or
Opposition No. 91185619
5
primarily geographic descriptiveness is asserted, it is
sufficient to establish that the plaintiff is engaged in the
sale of the same or related goods and/or services, that is,
is a competitor. Anheuser-Busch Inv. v. Holt, 92 USPQ2d
1101, 1103 (TTAB 2009); Plyboo America, Inc. v. Smith & Fong
Co., 51 USPQ2d 1633 (TTAB 1999); and Binney & Smith, Inc. v.
Magic Marker Industries, Inc., 222 USPQ 1003, 1010 (TTAB
1984).
Opposer has filed three applications to register marks
that include METRO LIVING as a part thereof; in each case,
applicant’s application was cited as a potential bar under
Section 2(d) to the registration of opposer’s mark.
Further, opposer is using the term METRO LIVING in
connection with various services, including real estate
brokerage services; and, thus, opposer is a competitor of
applicant.
Accordingly, contrary to applicant’s arguments (Brief,
pp. 9-13), opposer clearly has established its standing to
be heard on the pleaded grounds for relief.
Mere Descriptiveness
The Law
Opposer bears the burden of showing, by a preponderance
of the evidence, that the designation sought to be
registered is merely descriptive. Goodyear Tire & Rubber
Co. v. Continental General Tire Inc., 70 USPQ2d 1067, 1070
Opposition No. 91185619
6
(TTAB 2003). A mark is descriptive if it "forthwith conveys
an immediate idea of the ingredients, qualities or
characteristics of the goods [and/or services]."
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,
189 USPQ 759, 765 (2nd Cir. 1976) (emphasis added). See In
re Abcor Development Corp., 616 F.2d 525, 200 USPQ 215 (CCPA
1978). Moreover, in order to be descriptive, the mark must
immediately convey information about the qualities, features
or characteristics of the goods and/or services with a
"degree of particularity." Plus Products v. Medical
Modalities Associates, Inc., 211 USPQ 1199, 1204-1205 (TTAB
1981). See In re Diet Tabs, Inc., 231 USPQ 587, 588 (TTAB
1986); Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ
949, 952 (TTAB 1981); In re TMS Corp. of the Americas, 200
USPQ 57, 59 (TTAB 1978); and In re Gourmet Bakers, Inc., 173
USPQ 565 (TTAB 1972).
A term need not immediately convey information about
each and every specific feature of the applicant’s goods
and/or services in order to be considered merely
descriptive; rather, it is sufficient that the term
describes one significant attribute, function or property of
the goods and/or services. In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB
1973).
Opposition No. 91185619
7
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods and/or
services for which registration is sought, the context in
which it is being used on or in connection with the goods
and/or services, and the possible significance that the term
would have to the average purchaser of the goods and/or
services because of the manner of its use; that a term may
have other meanings in different contexts is not
controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). It is settled that “[t]he question is not
whether someone presented with only the mark could guess
what the goods or services are. Rather, the question is
whether someone who knows what the goods or services are
will understand the mark to convey information about them.”
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
The Parties’ Arguments
Opposer argues that each of the component terms
comprising METRO LIVING has a clear and commonly understood
English meaning, and each describes a feature or
characteristic of applicant’s services. The word portion of
applicant’s mark, opposer contends, “immediately conveys the
message that Applicant’s services assist home buyers in
finding housing that provides an attractive lifestyle in a
metropolitan area.” (Brief, p. 10). According to opposer,
Opposition No. 91185619
8
the design element makes clear that METRO is intended to
identify the greater Washington, D.C. metropolitan area.
Applicant contends, on the other hand, that the wording
METRO LIVING is remote and indirect, not immediately
describing any particular quality of his services of helping
clients buy homes from or sell homes to others. Thus,
applicant urges, his mark is just suggestive of a vague
aspiration or result that consumers may hope to achieve with
a new home itself, rather than immediately describing a
significant feature, function or characteristic of
applicant’s real estate brokerage services. In applicant’s
words:
Opposer incorrectly suggests that upon
seeing “METRO LIVING,” as used in
applicant’s mark, prospective purchasers
will make a clear and immediate
connection between their ambitions for
their lifestyle, the role their home
could play in their lifestyle, and the
fact that people often employ brokers to
help them buy or sell homes, in order to
conclude without resorting to
“imagination, thought or perception,”
that their choice of real estate broker
is really a lifestyle choice. Such a
chain of reasoning is too remote and
subtle to be anything but suggestive.
(Brief, p. 20).

Dictionary Definitions
The parties submitted various dictionary entries
(Oxford English Dictionary Online and
www.education.yahoo.com/reference/dictionary) for the terms
“metro” and “living.” We highlight the most relevant
Opposition No. 91185619
9
meanings in the context of the involved services, and the
ones relied upon by opposer in its brief. (Brief, pp. 4-5).
The term “metro” is a shortened form of “metropolitan”
meaning “of, relating to or characteristic of a major city;
of or constituting a large city or urbanized area, including
adjacent suburbs and towns.”
The term “living” is defined as “a manner or style of
life.”
These commonly understood and recognized meanings are
confirmed by the testimony of opposer’s witnesses. Although
applicant offered additional meanings of the terms, he
essentially conceded that the meanings relied upon by
opposer could be the ones perceived by consumers. (Benner-
Ortega disc. dep., p. 120).
Applicant’s Use
Opposer highlights some examples of what it
characterizes as applicant’s own descriptive use of the term
“metro”: “Welcome to Metro Living at RE/MAX Supreme
Properties, your source of DC Metro Area real estate.”;
“With Metro Living behind you, you are guaranteed top notch
results, whether buying or selling in the DC Metro Area.”;
and “[t]he DC metro area encompasses the counties that
almost theoretically touch the District of Columbia and the
Beltway.”
Opposition No. 91185619
10
Opposer does not point to any merely descriptive use by
applicant of the wording “metro living” in its entirety
other than as used in the proposed mark.
Mr. Benner-Ortega testified that he chose the mark to
evoke thoughts about a lifestyle for prospective clients
(Benner-Ortega disc. dep., p. 148), and that lifestyles are
choices, whether urban, suburban or rural. (Benner-Ortega
disc. dep., p. 150).
Opposer’s Use
Laura VanVelthoven, opposer’s vice president of sales
and corporate marketing, testified about opposer’s use of
its house mark K HOVNANIAN in conjunction with METRO LIVING
to form the mark K HOVNANIAN’S METRO LIVING. Ms.
VanVelthoven states that the term “metro living” means:
“living in a metropolitan city or area around a metropolitan
area. Living is the living that you do within that
metropolitan area, the amenities and the conveniences that
living in a metropolitan area affords the purchaser or
buyer.” (VanVelthoven dep., p. 28). As Ms. VanVelthoven
tells it, “location and where you live is just as important
as how you live. They go hand in hand.” (VanVelthoven
dep., p. 36). As indicated above, opposer owns three
pending applications to register the mark K. HOVNANIAN’S
METRO LIVING for a variety of real estate services,
including real estate brokerage services. In those
Opposition No. 91185619
11
applications, which are currently suspended pending the
final outcome of this case, neither did the examining
attorney require a disclaimer of METRO LIVING nor did
opposer voluntarily disclaim the wording.
Ms. VanVelthoven stated that she does not know if there
“is a general term in the industry for the type of
properties K. Hovnanian’s Metro Living offers.”
(VanVelthoven dep., p. 90). None of opposer’s
advertisements show any merely descriptive uses of “metro
living” by opposer.
Third-Party Use
Opposer highlights six third-party uses of the term
“living” paired with the terms “urban” and “country” in
conjuction with real estate services. The uses include:
“Welcome to the #1 source for urban living!”; “The San Diego
Urban Living Specialists”; and “Country living specialists.”
Insofar as third-party use of the combination “metro
living” is concerned, opposer points to ten such uses as
part of a domain name: chicagometroliving.com;
phillymetroliving.com; austin-metro-living.com;
nymetroliving.com; houstonmetroliving.com; minneapolis-
metro-living.com; portlandmetroliving.com;
seattlemetroliving.com; metrolivingny.com; and
irvinemetroliving.com.
Opposition No. 91185619
12
Opposer also introduced additional third-party uses of
“metro living” on various websites dealing with real estate
services: “Metro living in the heart of downtown
Dadeland.”; “Every detail of the condo interior reflects
sophisticated metro living.”; “Experience the hottest metro
living in America...Downtown San Diego!”; “The hustle and
bustle of New York metro living.”; “Exciting metro living in
the city of Denver.”; “North metro living at its best.”;
“Your choice for metro living.”; and “Take a look at the
market, some of the hottest projects and an insight into the
future of metro living.”
Further, opposer relied upon third-party uses of
“metropolitan living” on real estate websites: “America’s
leading developer of sophisticated metropolitan living.”;
“Anchorage blends modern metropolitan living with gorgeous,
rugged, unspoiled wilderness.”; “It is truly an all-
inclusive metropolitan living experience.”; and “We provide
a number of services and specialize in Metropolitan living
and condos in the Atlanta and Miami areas.”
Sandra Matson, a third-party real estate agent who owns
the domain name “chicagometroliving.com”, testified that
“[w]hen you are selling a home, you’re selling a lifestyle.
They [consumers] choose locations based on their lifestyle,
how they live, what they do, their activity. I think
lifestyle is very basic to selling homes.” (Matson dep.,
Opposition No. 91185619
13
pp. 20-21). She also stated that she personally considers
METRO LIVING to mean “a general term...for a
lifestyle...within a metropolitan area.” (Matson dep., p.
19). According to Ms. Matson, “it can mean different
things.” (Matson dep., pp. 17-18).
Applicant for his part introduced the results of a
search of “metro living” in the LEXIS/NEXIS U.S.
Publications Database (which, according to opposer, does not
include advertisements such as those of real estate agents
or brokers) for a recent three year period; the search
yielded just three instances of what it perceives to be
descriptive use.2 The three uses are the following:
“cutting-edge, attractively priced metro living at...”;
“chic metro living anchored by the new stadium”; and
“opportunity for ‘metro living with retro living’ has
enticed a younger demographic.” Further, applicant showed
that the term “metro living” does not appear as an entry in
five different glossaries of real estate terms.
Third-Party Registrations
Opposer submitted several third-party registrations of
marks such as ALPINE LIVING, SOPHISTICATED URBAN LIVING, IN
TOWN LIVING, FAIRWAY LIVING, DESERT LIVING, REVITALIZED
WATERFRONT LIVING and LUXURY BAREFOOT LIVING. The

2 The search yielded seven hits, of which four showed use of
METRO LIVING in a capitalized form, arguably as a source
indicator.
Opposition No. 91185619
14
registrations cover real estate services or publications
related to real estate services, and all either include a
disclaimer of “LIVING” or reside on the Supplemental
Register.
Applicant countered with his own evidence of third-
Opposition No. 91185619
15
party registrations to support his contention that neither
“metro” nor “living” are merely descriptive when used in
connection with real estate brokerage services. None of the
registrations relied upon by applicant include a disclaimer
of “metro” or “living,” nor did any include a claim of
acquired distinctiveness under Section 2(f); and none issued
on the Supplemental Register.
There are numerous registrations of marks incorporating
the term METRO covering real estate services and brokerage
services. Examples include the following: METRO REALTY;
METRO RESIDENTIAL REALTY; METRO COMMERCIAL REALTY; METRO
BROKERS REAL ESTATE; and METRO ESTATES.
Examples of third-party registrations of marks which
comprise, in part, the term LIVING for real estate services
include the following: RESORT LIVING; RESORTLIVING.COM;
URBAN LIVING PERFECTED; TROPICAL LIVING; (SUB)URBAN LIVING;
NORTHWEST LIVING; MANSIONETTE LIVING; GREENWICH LIVING;
SONOMA COAST LIVING; QUALITY INDY LIVING; FINE AUSTIN
LIVING; DC LIVING; CHITOWNLIVING; SANTA FE LIVING; THE ART
OF CITY LIVING; and LEADERS IN URBAN LIVING.3

3 The record also includes one third-party registration of a mark
that comprises both the terms METRO and LIVING. Registration of
the mark METROLIVING issued for “magazines and printed guides on
the subject of real estate.” A check of Office records reveals
that the registration was cancelled by the Office for failure to
file a Section 8 affidavit of continued use.
Opposition No. 91185619
16
Analysis
We acknowledge at the outset that this is a fairly
close case. After review of the record, we find that the
record falls short of establishing, by a preponderance of
the evidence, that METRO LIVING merely describes applicant’s
real estate brokerage services. Rather, we find the mark to
be only suggestive.
There is often a fine line between merely descriptive
marks and those which are just suggestive. These
determinations are often subjective, this case being no
exception. The determination of whether a mark is
descriptive or suggestive is not an exact science. Our
primary reviewing court has observed:
In the complex world of etymology,
connotation, syntax, and meaning, a term
may possess elements of suggestiveness
and descriptiveness at the same time.
No clean boundaries separate these legal
categories. Rather, a term may slide
along the continuum between
suggestiveness and descriptiveness
depending on usage, context, and other
factors that affect the relevant
public’s perception of the term.

In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001).
Applicant’s mark METRO LIVING and design falls on the
suggestive side of the line. The term “metro” is
susceptible of various, albeit similar meanings, including
“a large, sprawling metropolitan area” or “urbane,
Opposition No. 91185619
17
sophisticated, excitingly varied, cosmopolitan.” Likewise,
the term “living” may be perceived as “dwelling in a
particular place” as well as “conducting one’s life in a
particular manner.” The mark does not immediately describe
any specific characteristic or feature of applicant’s real
estate brokerage services with any degree of particularity.
At most, the mark suggests that use of applicant’s real
estate brokerage services may result in some undefined,
amorphous urban lifestyle.
It is not fatal that a mark is informational. One may
be informed by suggestion as well as by description. In re
Reynolds Metals Company, 480 F.2d 902, 178 USPQ 296 (CCPA
1973). That is to say, the terms “descriptive” and
“suggestive” are not mutually exclusive. There is some
description in any suggestion or the suggestive process does
not occur. Applicant’s mark is no exception.
The mark at issue, METRO LIVING and design, is typical
of so many marks that consumers encounter in the
marketplace: a suggestive mark that tells consumers
something general about the services, without being specific
or immediately telling consumers anything with a degree of
particularity. The information given by applicant’s mark is
indirect and vague. The mark here conjures up indirect
mental associations in the consumer’s mind about a perceived
lifestyle. The visions of such a lifestyle in a
Opposition No. 91185619
18
metropolitan area would be as numerous and varied as the
number of consumers seeking to live in an urban environment.
The thought process beginning with the mark METRO LIVING and
design and leading to a characteristic or feature of real
estate brokerage services is neither immediate nor direct.
When confronting the mark METRO LIVING and design in
connection with real estate brokerage services, the ordinary
consumer will pause and reflect on the use of the mark
before understanding anything specific about a feature or
characteristic of the services. One must exercise thought
or engage in a multi-step reasoning process to determine
what attribute of the services may be identified by the
mark. The mark does not, in any clear or precise way, serve
to immediately describe a particular characteristic or
feature of the real estate brokerage services with any
degree of particularity. As just noted, the meaning of the
term “metro living” may well vary from consumer to consumer.
The mark METRO LIVING does not serve to directly tell a
consumer anything other than to suggest that utilization of
the services will result in an undefined lifestyle in an
urban environment. The mark is an ephemeral concept and
consumers are likely to have various ideas about what
specifically constitutes a “metropolitan lifestyle.” That
is, the mark conveys a nebulous and amorphous concept.
Opposition No. 91185619
19
At worst, METRO LIVING can be said to be broadly
suggestive of applicant’s services, but the term is in no
way immediately descriptive, in any clear or precise manner,
of any characteristic or feature of real estate brokerage
services.
A few additional points are noteworthy. The record is
devoid of any use of “metro living” by applicant in a merely
descriptive manner. Cf. In re Gould Paper Corp., 834 F.2d
1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987) (applicant’s own
use in a generic [or merely descriptive] manner is strong
evidence that the term is generic [or merely descriptive]).
As to third-party uses, we view them in the same fashion as
we view applicant’s use, namely as suggestive wording to
evoke some vague notion of an urban lifestyle. And, insofar
as the third-party registrations are concerned, this
evidence can be used in the manner of a dictionary
definition to illustrate how a term is perceived in the
trade or industry. See In re J.M. Originals Inc., 6 USPQ2d
1393, 1394 (TTAB 1987) (“Said third-party registrations are
of use only if they tend to demonstrate that a mark or a
portion thereof is suggestive or descriptive of certain
goods [or services] and hence is entitled to a narrow scope
of protection. Used in this limited manner, ‘third-party
registrations are similar to dictionaries showing how
language is generally used.’”). We view this registration
Opposition No. 91185619
20
evidence as decidedly in favor of applicant’s position that
METRO LIVING is just suggestive. In any event, third-party
registrations are not conclusive on the question of mere
descriptiveness. Each case must stand on its own merits,
and a mark that is is merely descriptive must not be
registered on the Principal Register simply because other
such marks appear on the register. See In re Nett Designs
Inc., 57 USPQ2d at 1566.
We find, based on the record before us, that opposer
has not established by a preponderance of the evidence that
METRO LIVING and design is merely descriptive of real estate
brokerage services. In reaching our conclusion we have
considered all of the evidence pertaining to the issue of
mere descriptiveness, as well as all of the parties’
arguments with respect thereto (including any evidence and
arguments not specifically discussed in this opinion).
Lastly, any doubt has been resolved in applicant’s favor.
See In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB
2006).

Primary Geographic Descriptiveness
Opposer spends barely one page in discussing this
ground. Opposer states that the design feature of
applicant’s mark consists of three structures in Washington,
D.C.: the Lincoln Memorial, the Washington Monument and the
Opposition No. 91185619
21
U.S. Capitol. These landmark memorials, opposer urges,
would be recognized by a significant portion of applicant’s
customers as being located in the District of Columbia,
thereby informing customers that applicant’s services are
provided and relate to properties located in the greater
Washington, D.C. area. Thus, opposer concludes, because the
wording “metro living” is merely descriptive, applicant’s
mark “is primarily geographically descriptive of the
location (metropolitan Washington, D.C.) where applicant’s
services are provided.” (Brief, p. 12). Applicant readily
concedes that the design element of its mark “features a
stylized composite silhouette of the U.S. Capitol building,
the Lincoln Memorial, and the Washington Monument.” (Brief,
p. 4).
To establish that a mark is primarily geographically
descriptive under Section 2(e)(2), 15 U.S.C. §1052(e)(2),
opposer 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 (i.e., a services/place association).
As is the case with the claim of mere descriptiveness
discussed above, opposer has the burden of proving this
claim of primarily geographic descriptiveness by a
Opposition No. 91185619
22
preponderance of the evidence. Futher, any doubts are
resolved in favor of applicant.
Opposer’s case fails with respect to the first required
element, namely that to be primarily geographic, the primary
significance of the mark must be that of a geographic
location. See, e.g., In re Wada, 194 F.3d 1297, 52 USPQ2d,
1539 (Fed. Cir. 1999). The fact that the mark has meaning
or usage other than as a geographic term does not
necessarily alter its primarily geographic significance; if
the geographic design present in applicant’s mark has
another meaning, it must still be determined whether the
primary significance is geographic. However, if the most
prominent meaning or significance of the mark is not
geographic, or if the mark creates a separate readily
understood meaning that is not geographic, then registration
of the mark is not precluded under Section 2(e)(2). See,
e.g., In re International Taste Inc., 53 USPQ2d 1604, 1605-
06 (TTAB 2000) (finding doubt as to the primary significance
of HOLLYWOOD because of other prominent, significant meaning
of HOLLYWOOD as referring to the entertainment industry in
general, with the doubt resolved in favor of the applicant);
In re Urbano, 51 USPQ2d 1776, 1780 (TTAB 1999) (finding the
primary significance of SYDNEY 2000, used for advertising,
business, and communication services, is as a reference to
the Olympic Games, not to the name of a place); In re Jim
Opposition No. 91185619
23
Crockett Promotions Inc., 5 USPQ2d 1455, 1456 (TTAB 1987)
(finding that the primary significance of THE GREAT AMERICAN
BASH for promoting, producing, and presenting professional
wrestling matches, is to suggest something of a desirable
quality or excellence rather than to describe the geographic
origin of the services; In re Dixie Insurance Co., 223 USPQ
514, 516 (TTAB 1984) (DIXIE held not primarily
geographically descriptive of property and casualty
underwriting services, where the examining attorney provided
no evidence to show that the geographical significance of
DIXIE was its primary significance).
The fact that applicant’s mark includes additional
matter that clearly is not geographic in nature is not
dispositive; a geographic composite mark, composed of
geographic matter coupled with additional wording, may still
be precluded under Section 2(e)(2) if the primary
significance of the composite is geographic. See In re Save
Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed.
Cir. 2001).
In the present case, we do not view the design element,
let alone the entire mark, to be primarily geographically
descriptive. As both opposer and applicant agree, a graphic
design element of a mark may serve the same purpose as a
geographic word, but that element must likewise be primarily
geographically descriptive to be precluded under the Act.
Opposition No. 91185619
24
See In re Canada Dry Ginger Ale, 86 F.2d 830, 32 USPQ 49
(CCPA 1936). In applicant’s mark, however, we agree with
applicant’s assessment that the primary significance of the
design is “varied and ambiguous.” (Brief, p. 30).
In that connection, applicant contends that the design
evokes other nongeographic connotations. Indeed, opposer’s
proofs fall short of establishing that the primary meaning
of the image is the geographic location Washington, D.C. “A
mark that has a popular significance apart from its
geographical meaning is not, in most cases, ‘primarily’
geographical.” J.T. McCarthy, McCarthy on Trademarks and
Unfair Competition, §14:28 (4th ed. 2012). The landmarks of
the Nation’s Capital depicted in applicant’s mark create a
separate readily understood meaning that is not geographic.
Among the ideas evoked by the design are national pride and
patriotism, the federal government, the seat of power in the
United States, and the memory of historical persons and
events that have shaped this country. These ideas flow from
the importance of these structures as national symbols. The
nongeographic significance of these national landmarks is
made abundantly clear in the materials submitted by opposer.
(Opposer’s notice of reliance, TTAB docket entry nos. 37 and
38). See, e.g., “The United States Capitol in Washington,
D.C. is a symbol of the American people and their
Opposition No. 91185619
25
government, the meeting place of the nation’s legislature.”
www.visitthecaptiol.gov.
Inasmuch as the design in applicant’s mark evokes
nongeographic ideas that are as strong and likely as any
geographic significance, we cannot say, based on the meager
record adduced by opposer, that the design, let alone the
entire mark, is primarily geographically descriptive. Any
doubt as to the primary significance of the design has been
resolved in applicant’s favor. In re International Taste
Inc., 53 USPQ2d at 1606.
Accordingly, opposer’s claim under Section 2(e)(2)
fails.
Decision
The opposition grounded on Sections 2(e)(1) and 2(e)(2)
is dismissed.