Les Halles De Paris J. V.

Trademark Trial and Appeal Board

May 2, 2002

No. 75751177 (T.T.A.B. May. 2, 2002)

Mailed: May 2, 2002
Hearing: Paper No. 15
December 11, 2001 cl

UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Les Halles De Paris J.V.
________
Serial Nos. 75/479,362 and 75/751,177
_______
Lance J. Lieberman of Cohen, Pontani, Lieberman & Pavane
for applicant.
Won T. Oh, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney).
_______
Before Simms, Cissel and Hanak, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Les Halles De Paris J.V. (applicant), a New York joint
venture, has appealed from the final refusals of the
Trademark Examining Attorney to register the mark shown
below for hotel and lodging services
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial Nos. 75/479,362 and 75/751,177
2
and the mark LE MARAIS for restaurant services.1
The Examining Attorney has refused registration under
Section 2(e)(3) of the Act, 15 USC §1052(e)(3), on the
basis that applicant’s mark is primarily geographically
deceptively misdescriptive of applicant’s services.
Applicant and the Examining Attorney have submitted briefs,
and an oral hearing was held.
While similar arguments were presented in each of
these cases, somewhat different evidence has been made of
record in each case. Accordingly, while we will decide
these cases in one opinion, after reciting the arguments
made by both the Examining Attorney and by applicant’s
attorney, we shall separately discuss the evidence in each
case and decide each case on the basis of that evidence and
the arguments pertaining to that evidence.
It is the Examining Attorney’s position that the
primary significance of applicant’s mark is geographic,
that purchasers are likely to think that applicant’s

1 Application Serial No. 75/479,362, filed May 4, 1998, based upon
applicant’s allegation of a bona fide intention to use the mark in
commerce; and Serial No. 75/751,177, filed July 14, 1999, based on
allegations of use since June 4, 1995. Applicant indicated that the
English translation of the mark is “The Marsh.”
Serial Nos. 75/479,362 and 75/751,177
3
services originate in the place named in the mark (that is,
that there is a services/place association), and that
applicant’s services do not in fact come from the place
named in the mark. According to the Examining Attorney, Le
Marais was once a Jewish ghetto in Paris but is now a well-
known and fashionable neighborhood, a popular tourist
attraction in and of itself. The Examining Attorney
maintains that Le Marais is a place of fine lodging and
restaurants that serve as tourist attractions. It is not
just a place where numerous hotel and restaurant facilities
are located, according to the Examining Attorney, but is a
part of Paris known for its hotels. Also, the Examining
Attorney points to the Washington Post article, noted
below, which purportedly shows that applicant is using the
mark to create an association with this neighborhood of
Paris. Nevertheless, the Examining Attorney maintains that
there is no requirement that the place identified by the
mark be well-known or noted for the goods or services with
which the mark is used in order to find a goods- or
services/place association. Also, according to the
Examining Attorney, Le Marais is not so obscure or remote a
geographic place that it would not be recognized as a
geographic location by the relevant U.S. consumers.
Further, the fact that the mark may have a meaning other
Serial Nos. 75/479,362 and 75/751,177
4
than that of a geographic place does not alter its primary
geographic significance, according to the Examining
Attorney. The Examining Attorney contends that a prima
facie showing has been made of a services/place association
such that the public will associate applicant’s hotels and
restaurants with the place named in the mark. Because
applicant’s hotels and restaurants do not have their origin
in that section of Paris, it is the Examining Attorney’s
position that applicant’s mark is primarily geographically
deceptively misdescriptive.
While the Examining Attorney states that it is Office
policy to take consistent action with respect to related
cases, the Examining Attorney contends that decisions of
other Examining Attorneys in different cases (noted by
applicant below) have no precedential value and that
Examining Attorneys are not bound by those prior decisions
to allow registration. The Examining Attorney also objects
to the introduction of the Internet evidence made of record
for the first time with applicant’s appeal brief.2
Applicant, which owns and operates restaurants under
this mark in New York City and in Washington, D.C.,
contends that the primary significance of LE MARAIS is not

2 The Examining Attorney’s objection to the new evidence submitted with
applicant’s briefs is well-taken, and this evidence has not been
considered. See Trademark Rule 2.142(b).
Serial Nos. 75/479,362 and 75/751,177
5
geographic, that there is no services/place association
between the Paris neighborhood and restaurant and hotel
services, and that, therefore, the public will not be
deceived into believing that applicant’s restaurants and
hotels have their origin in the Le Marais neighborhood of
Paris. More particularly, while admitting that its
services do not originate from the Le Marais neighborhood
of Paris, and that Le Marais may be well-known to the
French public as the name of a neighborhood in Paris,
applicant contends that there is no “clear evidence” that
the average American consumer would necessarily recognize
Le Marais as a geographic term, even if he or she were
fluent in French. Applicant argues that Internet and other
database searches reveal even obscure places, so that the
ability to locate references to this neighborhood cannot be
deemed conclusive of this term’s primary significance to
the American public. Relying upon evidence to which the
Examining Attorney has objected, applicant also argues that
the term “Marais” is also a surname as well as a name
included in other place names. Accordingly, applicant
states that Le Marais is, if not obscure, at least not
widely known to the American hotel or restaurant patron.
Rather, applicant contends that its mark suggests to the
public an association with things French, such as French
Serial Nos. 75/479,362 and 75/751,177
6
cooking or cuisine, French-style food, or French
architecture or décor (in the case of its hotel services).
If the services do not come from the place named in the
mark and the public makes no services/place association,
then the public is not deceived and the mark is not
geographically deceptively misdescriptive, applicant
argues.
Even assuming that the American public may understand
Le Marais to have primarily geographic significance,
applicant maintains that the Examining Attorney must
further prove that there is services/place association
between the mark and applicant’s hotel and restaurant
services. The mere existence of hotels and restaurants in
this Paris neighborhood is insufficient, according to
applicant, to establish a services/place association, where
none of the references indicate that the Le Marais
neighborhood of Paris is known for or associated with
hotels and restaurants. Applicant argues that the
Examining Attorney’s position would lead to the refusal of
registration on the basis of geographic deceptive
misdescriptiveness of all known place names for hotel and
restaurant services where such ubiquitous services do not
in fact originate in the place named in the mark.
Applicant maintains that the Examining Attorney’s argument
Serial Nos. 75/479,362 and 75/751,177
7
ignores the “deception” requirement of Section 2(e)(3) of
the Act. The required services/place association exists
only if the public is likely to believe-–that is, will be
deceived into believing--that applicant’s services come
from the place named in the mark, according to applicant.
Applicant argues that the Examining Attorney’s position
requires applicant to prove a negative--that the place
named in the mark is not associated by the public with
hotel and restaurant services. Finally, pointing to
several third-party registrations of geographic terms for
hotel and restaurant services, applicant contends that the
Examining Attorney’s refusal here is at odds with Office
practice and policy. In particular, applicant points to
applicant’s own registered mark LES HALLES for butcher and
restaurant services, Les Halles identifying a well-known
marketplace in Paris, as well as the third-party mark
DALLAS BBQ for restaurant services (Reg. No. 1,567,659,
issued November 21, 1989) and NEW YORK NEW YORK for
resort/hotel services not rendered in New York City or
state (Reg. No. 2,187,032, issued Sept. 8, 1998).
In support of his refusal with respect to applicant’s
attempt to register the mark for restaurant services, the
Serial Nos. 75/479,362 and 75/751,177
8
Examining Attorney has made of record the following
excerpts from the Nexis database:3
Try Barfly, just off the Champs Elyses
[sic], for an international atmosphere.
The area around Le Marais also has fun
restaurants and bars…
Sunday Business, March 19, 2000
* * * * * * *
…descended into an architectural
wasteland, before being rescued in the
1960s and declared a historical
monument. Over the years Le Marais has
moved from obscurity into a gilded age
of offbeat and fashionable galleries[,]
restaurants, chic boutiques and unusual
museums. It is a mecca for designers
and artists from around the globe and
because of its buildings from the 14th
through…
The Tribune (San Luis Obispo,) January
25, 2000
* * * * * * *
…18th and L Streets NW, to be called Le
Marais and modeled on their kosher
steakhouse in New York City. (Le Marais
is the fashionable Jewish Quarter of
Paris, near the original Les Halles
market.)
According to Les Halles co-owner
Michel Verdon, whose two partners will
be running new restaurant with its
Orthodox Jewish owners, he sometimes
eats at the Le Marais in New York, “and
except for the margarine on the table,
you can’t really tell the difference”
because the restaurant buys the kosher

3 We have excluded other excerpted references of record to Le Marais
contained in foreign newspapers, whose circulation in this country has
not been demonstrated. See In re Urbano, 51 USPQ2d 1776, 1778 n. 3
(TTAB 1999) and In re Men’s International Professional Tennis Council,
1 USPQ2d 1917 (TTAB 1986).
Serial Nos. 75/479,362 and 75/751,177
9
beef and ages it in-house. Verdon also
says Le Marais tends to draw younger
Orthodox customers, “who want something
a little more ’90s than the more common
kosher…
The Washington Post, January 9, 1998
* * * * * * *
The names of good, reasonable
restaurants in Paris are to be
cherished. Here are two we like (we’d
make reservations for either):
Le Marais Ste Catherine, in the heart
of the old Marais area, is housed in a
medieval cellar. There are two three-
course…
Consumer Reports Travel Letter, April,
1993
* * * * * * *
…a jitterbug dance hall in the Latin
Quarter…, the carry-out restaurants in
the Jewish quarter of Le Marais…that
serve mouth-watering shwarma, lamb with
a spicy sauce…
Washington Post, August 14, 1988
* * * * * * *
Paris has long been a city of ethnic
neighborhoods and many of them still
offer fascinating strolls. The old
Jewish Quarter, Le Marais, for example,
these days blends chic apartment
renovations with tiny cafes, fine new
restaurants and ancient synagogues, all
on narrow, sinuous streets. Other
ethnic sections are blossoming…
New York Times, September 23, 1984
* * * * * * *
Serial Nos. 75/479,362 and 75/751,177
10
The Examining Attorney has also made of record the
following Internet evidence concerning the Le Marais
neighborhood:
Today, a trip around the Marais shows
the numerous restorations it has seen.
The neighborhood contains some of the
oldest buildings in Paris, and their
architectural treasures make the Marais
a charming and unforgettable place to
visit.
The Trademark Act prohibits the registration of
primarily geographically deceptively misdescriptive marks
under §2(e)(3). Whether a mark is primarily geographically
deceptively misdescriptive is determined according to a
two-part test where the Examining Attorney has the initial
burden of proving that: (1) the mark’s primary
significance is a generally known geographic location; and
(2) consumers would reasonably believe the applicant’s
goods are connected with the geographic location in the
mark, that is, that purchasers would make a goods or
services/place association, when in fact the goods or
services do not come from the place named in the mark. In
re Save Venice N. Y., Inc., 259 F.3d 1346, 59 USPQ2d 1778
(Fed. Cir. 2001); In re Wada, 194 F.3d 1297, 52 USPQ2d
1539, 1540 (Fed. Cir. 1999); Institut National des
Appelations d’Origine v. Vintners Int’l Co., 958 F.2d 1574,
1580, 22 USPQ2d 1190, 1195 (Fed. Cir. 1992); In re Societe
Serial Nos. 75/479,362 and 75/751,177
11
Generale des Eaux Minerals de Vittel S.A., 824 F.2d 957, 3
USPQ2d 1450 (Fed. Cir. 1987); In re Loew’s Theaters, Inc.,
769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985); and In re
Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982).
The evidence demonstrates that Le Marais is the
fashionable Jewish Quarter in Paris, and we believe that
the primary significance of this term, at least to an
appreciable segment of applicant’s restaurant patrons, will
be of the geographic location in Paris. This place is not
so obscure that it will be unknown to many American
consumers, especially those likely to frequent applicant’s
restaurants.
With respect to the services/place connection between
restaurant services and the Le Marais area of Paris, we
acknowledge that restaurant services are “ubiquitous” and
that the Board, in In re Municipal Capital Markets Corp.,
51 USPQ2d 1369 (TTAB 1999), stated that “the Examining
Attorney must present evidence that does something more
than merely establish that services as ubiquitous as
restaurant services are offered in the pertinent geographic
location.” We find, however, that, with respect to
restaurant services, this record is sufficient to satisfy
that test.
Serial Nos. 75/479,362 and 75/751,177
12
On this record, which shows not only that Le Marais is
the Paris Jewish Quarter but also that that area has a
number of fine restaurants, it is reasonable to assume that
consumers encountering applicant’s LE MARAIS restaurants
will mistakenly believe that applicant’s restaurant
services have a connection with the Le Marais part of
Paris. In this regard, we note that applicant’s
restaurants are touted as being French kosher steakhouses,
with the menu being in French followed by an English
translation. Contrary to applicant’s contention, we
believe that the mark will conjure up more than simply
French cuisine. The connection to the Paris Jewish Quarter
Le Marais is likely to be made, especially by those patrons
and prospective patrons who are likely to frequent
applicant’s restaurants.
To be clear, we are not finding that the Examining
Attorney has shown that Le Marais is noted for its
restaurants or cuisine. Rather, we find that there is
sufficient evidence of record to show that actual and
potential customers of applicant’s restaurants will believe
that there is a connection between applicant’s restaurants
and the area in Paris known as Le Marais. Thus, we
conclude that the public would mistakenly believe that
applicant’s restaurant services rendered under applicant’s
Serial Nos. 75/479,362 and 75/751,177
13
mark have a connection with Le Marais. See: In re
California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1989).
With respect to the third-party marks that have been
registered by this Office, this evidence is of little help
in determining the registrability of the marks at issue in
this case. As often noted by the Board, each case must be
decided on its own set of facts, and we are not privy to
the facts involved with these registrations and
applications. While uniform treatment under the Trademark
Act is highly desirable, our task here is to determine,
based upon the record before us, whether applicant’s marks
are registrable.
The evidence of record with respect to applicant’s
application covering hotel and lodging services consists of
the following entry for Le Marais from The Columbia
Gazetteer of the World:
[O]ld quarter of Paris, France, on
right bank of the Seine R., now
comprised in 3d and 4th Arrondissements
of the city. Until 18th cent. it was
the most aristocratic sect. of Paris.
The Hotel Des Tournelles, long the
residence of the kings of France (Henry
II was killed in its court during a
joust), was replaced by the Place des
Vosges. The Marais park, surrounded by
uniform houses in pink brick and gray
slate, remains a perfect ensemble of
17th-cent. architecture. Nearby is the
Musee Carnavalet, once the home of Mme.
de Sevigne, which now houses the
Serial Nos. 75/479,362 and 75/751,177
14
municipal mus. of Paris. During 19th
cent. it became a ghetto area for
Jewish refugees from Europe. Since
1969, a major restoration program has
been underway, including renovation of
several mus., mansions, and hotels,
such as the 17th-cent. Hotel Sully.
Some of the Nexis excerpts are set forth
below:
…I visited about a dozen hotel booking
sites, some run by large chains and
others by groups of smaller, independent
properties. The number of choices
overwhelmed me. I ended up picking a 23-
room hotel in the Marais district simply
because I like the photo of the stone
walls in the breakfast room.
Business Week, March 29, 1999
* * * * * * *
…The first salons in the seventeenth
century were centered on the hotels of
aristocracy in the Marais. With the
increasing importance of the noblesse de
robe, the basis of conversation changed:
descent was replaced by education,
bienseance, and esprit as the fundamental
code of communication…
Daedalus, June 22, 1998
* * * * * * *
Last month that breakfast, coffee, tea,
or hot chocolate, croissant and
baguettes, butter, jam, and a wedge of
cheese, cost 50 francs per person at our
charming three-star hotel in the Marais…
The Record (Bergen County, N. J.),
September 21, 1997
* * * * * * *
Serial Nos. 75/479,362 and 75/751,177
15
Her favorite place to stay is the top
floor of the Hotel Pratic in the Marais
district. “It’s very basic: six floors,
with no elevator, just a narrow, winding
stairway. It’s quiet, which can be a
real challenge in Paris.”
The San Diego Union-Tribune, August 24,
1997
* * * * * * *
…An Internet search for keywords “Paris
Hotels” led to www.paris-hotel.com, a
reservation service with photos that
turned up a romantic hotel in the Marais
for $100 a night.
Daily News (New York), March 30, 1997
* * * * * * *
The best time to visit Paris is in late
spring, early summer and September.
During July and August the city is
besieged by tourists.
Where to stay:
There are many small hotels in the
southern section of the Marais.
Here are some…
The Plain Dealer, March 9, 1997
* * * * * * *
To learn more about the city’s past, take
the Metro to the fashionable Marais
district. Here the Hotel Carnavalet
serves as the Museum of the History of
Paris. Built in 1548 for the family
Kernevoi…This rich renaissance residence
evokes the rhythms of the city from
antiquity to the present.
The Tennessean, February 16, 1997
* * * * * * *
Hotel Place Des Vosges near its beautiful
namesake square in the 4th Arrondisement,
Serial Nos. 75/479,362 and 75/751,177
16
is simple and small (16 rooms), so book
early. The hotel’s neighborhood, the
Marais, is the trendiest in Paris now,
and the requisite street seems
interesting little shops and hopping bars
and restaurants make it a fun quartier to
stay in…
The Commercial Appeal (Memphis), October
13, 1996
* * * * * * *
Like many of its Marais neighbors, the
Hotel de Sully is an example of France’s
greatest, most civilized contribution to
residential architecture – l’hotel
particulier entre cour et jardin – the
private townhouse elegantly situated
between courtyard and garden…
House Beautiful, July 1995
* * * * * * *
…More than two days in the park would be
excessive. In fact, here’s what I would
do if I had to do it all over: I’d fly to
Paris, check into a charming hotel in the
Marais and have a dinner at Bofinger…
Newsday, May 3, 1992
* * * * * * *
Save the Louvre for your second day.
Start your art and culture tour in the
less crowded and more manageable Marais
district, where “hotels,” or homes built
by the nobility in the 16th and 17th
centuries grace the streets. A glimpse
into these historic gardens and rooms
gives your youngsters a sense of court
life in a time of castles and kings.
The Washington Times, March 22, 1992
Serial Nos. 75/479,362 and 75/751,177
17
The Examining Attorney has also made of record a page
from a Web site listing six hotels in Le Marais district of
Paris.
With respect to the issue of geographic deceptive
misdescriptiveness of LE MARAIS as it pertains to hotel and
lodging services, we do not believe that this evidence is
sufficient to demonstrate that a services/place association
exists between applicant’s hotel services and the place in
Paris. Unlike the case with regard to restaurant services,
where there is evidence that the Le Marais area of Paris is
the home of ethnic restaurants not unlike applicant’s,
there is no analogous evidence with respect to hotel
services beyond the fact that hotels are located there.
The evidence that the nobility built “hotels” or homes
there in the 16th and 17th centuries and that hotels are now
located there is not sufficient to make out a prima facie
case of a services/place association. Accordingly, we
conclude that the Examining Attorney has not satisfied his
burden with respect to demonstrating a services/place
association concerning applicant’s hotel and lodging
services.
Decision: The refusal to register the mark in
Application Serial No. 75/479,362 is reversed; the refusal
Serial Nos. 75/479,362 and 75/751,177
18
to register the mark in Application Serial No. 75/751,177
is affirmed.