Milano Hat Co., Inc.

Trademark Trial and Appeal Board

Jun 26, 2002

No. 75199345 (T.T.A.B. Jun. 26, 2002)

6/26/02 Paper No. 15
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Milano Hat Company, Inc.
________

Serial No. 75/199,345
_______

Alan W. Lintel of Anderson, Levine & Lintel, L.L.P. for
Milano Hat Company, Inc.

Sharon Asar, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
_______

Before Hairston, Bucher and Bottorff, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by the Milano Hat
Company, Inc. to register the composite mark MILANO HATS
and design, as shown below for “western hats and caps.”1

1 Serial No. 75/199,345 filed November 18, 1996, based on an
allegation of a bona fide intention to use the mark in commerce.
The word “HATS” and the pictorial representation of Italy have
been disclaimed apart from the mark as shown.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/199,345
2

Registration has been refused under Section 2(a) of
the Trademark Act on the ground that the mark is
geographically deceptive.2 It is the Examining Attorney’s
position that if applicant were to use this mark on the
identified goods, purchasers would mistakenly believe that
the goods originate in Milan, Italy, and that this

2 The Examining Attorney also initially refused registration
under Section 2(e)(3) of the Trademark Act on the ground that the
mark is geographically deceptively misdescriptive. In response
thereto, applicant submitted a declaration under Section 2(f) of
the Act claiming that the mark had acquired distinctiveness as a
result of over fourteen years use. Further, applicant asserted
that the mark had become distinctive prior to December 8, 1993,
the date of enactment of the North American Free Trade Agreement.
The Examining Attorney subsequently withdrew the Section 2(e)(3)
refusal. We consider the Section 2(a) and 2(e)(3) refusals to be
alternative refusals. Thus, if we find that the mark is not
geographically deceptive under Section 2(a), it may be registered
pursuant to the provisions of Section 2(f).
Ser No. 75/199,345
3
misunderstanding would be a material factor in the
purchasing decision.
Applicant has appealed. Briefs have been filed, but
no oral hearing was requested.3
The test for determining whether a mark is
geographically deceptive under Section 2(a) is set forth in
Institut National des Appellations D’Origine v. Vitners
International Co., Inc., 958 F.2d 1574, 22 USPQ2d 1190,
1195 (Fed. Cir. 1992). The elements are as follows:
1. Whether the primary significance of the
mark as it is used is a generally known
geographic place;

2. Whether purchasers are likely to
believe, mistakenly, that the goods or
services sold under applicant’s mark
have their origin in or are somehow
connected with the geographic place
named in the mark and, if so;

3. Whether a purchaser’s mistaken
belief as to the geographic origin
of the goods or services would
materially affect that purchaser’s
decision to buy the goods or services
sold under the mark.

3 We note that the Board, in a decision issued March 27, 2002,
affirmed the Examining Attorney’s refusal to register, under
Sections 2(e)(2) and 2(a) of the Act, applicant’s composite mark
MILANO and design for western shirts (Serial No. 75/199,511).
Ser No. 75/199,345
4
At the outset, we note that applicant is incorporated
in the state of Texas and has indicated that its western
hats and caps will not be manufactured or produced in
Milan, Italy. Further, there is no dispute that the term
“Milano” is Italian for the city of Milan in Italy.4
In urging reversal of the refusal to register,
applicant argues that the primary significance of the term
Milano is not geographic. Rather, applicant maintains that
the primary significance of Milano is as a surname, and
that applicant selected the applied-for mark because of the
surname of its founder, John Milano, and not because of any

4 In this regard, the Examining Attorney submitted an entry from
Webster’s New Geographical Dictionary (1988), the relevant
portion of which is reproduced below:

Ser No. 75/199,345
5
desired connection with Milan. According to applicant,
because its founder is one of the best known figures in the
hat industry, prospective purchasers of applicant’s goods
will associate the applied-for mark with applicant, the
Milano Hat Company, and not the city of Milan.
Further, applicant maintains that western hats, in
particular, are indigenous to the southwest United States,
and that no appreciable number of western hats have ever
been designed or produced in Milan. Applicant maintains
that while Milan may be well known as a fashion center, it
is not known for the design or production of western hats.
In this regard, applicant offered the declaration of Clay
Cavender, vice-president and head buyer of Cavender’s Boot
City, a chain of approximately forty western wear stores
located throughout Texas. According to Mr. Cavender,
Cavender’s Boot City is one of the largest sellers of
western wear products in the country. Mr. Cavender states
that he is familiar with buyer preferences in relation to
western wear and that he has purchased products from
applicant for many years for sale in Cavender’s Boot City
stores. Further, Mr. Cavender states that to his
knowledge, no customer has ever purchased or considered
purchasing applicant’s products sold under the same or
similar mark involved herein under the impression that the
Ser No. 75/199,345
6
products had a connection with Milan; that customers of
western wear prefer that such goods come from a company
based in the southwest United States rather than from a
company in a “high fashion” center such as Milan, Paris,
London or New York; that almost all of the western wear
vendors with whom he does business are based in the
southwest United States, although some vendors manufacture
their products elsewhere because of cost considerations;
and that no significant number of consumers of western wear
has been or will be deceived with regard to any geographic
connection to Milan by applicant’s mark as used on western
hats.
With respect to caps, applicant argues that baseball
caps, in particular, are indigenous to the United States
and that they are generally associated with athletic teams
and company promotions. Applicant argues, therefore, that
prospective purchasers will not associate these kinds of
goods with Milan.
Finally, applicant states that the star on the map of
Italy in the drawing of its mark designates the city of
Sorrento, which is located in the southern part of Italy,
and is the birthplace of applicant’s founder. Applicant
maintains that there will be no deception in this case
Ser No. 75/199,345
7
because the star serves to negate any connection with
Milan, which is located in the northernmost part of Italy.
It is the Examining Attorney’s position that the
primary significance of applicant’s mark as a whole is the
geographic place Milan, Italy. As noted previously, the
Examining Attorney submitted a dictionary entry with regard
to the term “Milano.” The Examining Attorney acknowledges
that the entire mark is more than the word MILANO.
However, the Examining Attorney notes that the term “HATS”
is simply the generic name for applicant’s goods and serves
no source-identifying function. Moreover, the Examining
Attorney argues that the pictorial representation of Italy
in the drawing of the mark reinforces the geographic
connotation of the mark as a whole.
Further, in view of the evidence of a goods/place
association between clothing and Milan, and the fame of
Milan as a fashion center, the Examining Attorney argues
that the public will be likely to believe that applicant’s
goods come from Milan and this belief will materially
affect the public’s decision to buy applicant’s goods.
Also, the Examining Attorney argues that the city of Milan
is especially associated with hats as evidenced by the
Ser No. 75/199,345
8
following definition of the word “milliner” taken from The
American Heritage Dictionary of the English Language (3ed.
1992)[electronic version]:
milliner (noun): one that makes, trims, designs,
or sells hats. [Probably alteration of Middle
English Milener, native of Milan, from Milan,
the source of goods such as bonnets and lace.

After careful consideration of the record herein and
the arguments of the Examining Attorney and applicant, we
find that purchasers would be likely to believe,
mistakenly, that western hats and caps sold under
applicant’s mark originated in or were somehow connected
with Milan. While it appears that the term “Milano” has
some surname significance, the evidence of record
demonstrates that the primary significance of the term is
geographical. Applicant has presented no evidence that
“Milano” is a common surname. Moreover, we agree with the
Examining Attorney that the pictorial representation of
Italy in the drawing of the mark reinforces the geographic
connotation. Most American consumers would certainly
recognize the pictorial representation as Italy and along
with the word MILANO would make an association with Milan.
On the other hand, we are not convinced that most Americans
would know that the star is in the location of Sorrento,
rather than Milan. Thus, contrary to applicant, we do not
Ser No. 75/199,345
9
find that the star negates any association with Milan.
Also, in our minds, the lasso which surrounds the term
MILANO and the pictorial representation of Italy does not
detract from the geographic significance of the mark, but
instead serves to convey that the goods are western in
nature with a Milan origin or connection.
With respect to applicant’s argument that customers
will understand that MILANO in its mark refers to applicant
and not the city of Milan, while customers who have some
familiarity with applicant or its founder may well
recognize this, our concern is not limited to these
customers. Rather, we must concern ourselves with the
purchasing public in general, and purchasers who are not
familiar with either applicant or its founder would be free
to make the association between the city of Milan and
applicant’s goods.
Turning then to the question of whether purchasers are
likely to make a goods/place association between western
hats and caps and Milan, we find that the Examining
Attorney has submitted ample evidence to support such an
association. In addition to the dictionary entry which
indicates that Milan is a producer of clothing, the
Examining Attorney submitted Nexis excerpts which
demonstrate that, as applied to items of clothing, the
Ser No. 75/199,345
10
primary significance of Milan is geographical given Milan’s
reputation as a center of fashion apparel. Examples are
set forth below.
Spurring Milan’s growth as a high-fashion
hub are a handful of design houses such as
Krizia, Versace, and Ferre, whose ties to
Italian textile giants give them global
reach.
(Business Week; July 20, 1987);

Although no strangers to fashion – the word
“millinery” comes from “Milaner” – the
Milanese have become a major power in the
the international fashion world in just
the last decade. Fashion generates more
than $10 billion in sales for Italy, almost
half of which comes from exports. Even the
French, vaunted masters of the fashion
world, come here to buy much of their fabric,
as do many of America’s top designers.
(Chicago Tribune; March 9, 1998);

Over the past decade, Milan has come to
rival New York and Paris as one of the
world’s fashion centers.
(The Boston Globe; November 10, 1997); and

Okun is constantly at work with the company’s
customer base. And he travels all over to
the world’s fashion centers: Paris, London,
Milan, attending all the important fashion
shows and functions.
(Textile World; June 1996).

Further, the Examining Attorney made of record Nexis
excerpts, which demonstrate that western wear, in
particular, debuts or premieres in Milan.

Ser No. 75/199,345
11
Every few years, as faithfully as a
Yellowstone geyser, fashion goes cowboy
crazy. Rodeo gaga. Boots, hats, beadwork,
fringe – the icons of Western mythology
suddenly start appearing on the likes of
Madonna and Kate Moss and in places far,
far from the Santa Fe Plaza or Mesquite
Rodeo . . . Although this may be the
biggest year for Westernalia since the
roundup of ’88, the specifics have changed
just enough to require that we all go
shopping. Far from “Urban Cowboy’s” boot-
scootin’ flash or “Lonesome Dove’s” dusty
drovers, the latest spin on Western is
rooted not in Laramie or Dodge, but in
New York, Paris and Milan.
(Pittsburgh Post-Gazette; September 19,
1999);

Last summer, fashion magazines targeting
both men and women touted “Vegas chic”—
fringed and beaded jackets, skirts and
pants, for instance . . . as the style
to mimic. The industry’s affinity for
all things Western carried over into the
fall and winter, when people attending
the fashion shows in New York, Paris and
Milan turned out in dark denim outfits
accented with scrunched cowboy hats and
gleaming black boots.

Your father’s suits, your son’s cowboy
boots, the animal skin rug in your den
should form about the right inspirational
mix for your fall fashion wardrobe, if
the European shows have any say. In
Milan, London and Paris, the world’s top
designers are going for menswear
inspirations, American Western wear and
animal prints in the clothes that will
come here in may forms for fall and
winter.
(The Boston Globe; March 23, 1992); and

“Here in Italy, I’m seeing a lot of big
Western buckles, as well as exotic cowboy
boots,” said Julian by phone from a trend-
Ser No. 75/199,345
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watching trip to Milan. The revival of the
Western look as fashion fare is hitting in
the high-end designer category, says Julian.
(The Times-Picayune; January 16, 2001).

This record establishes Milan’s prominence as a center
of fashion, including western wear, and the public would be
likely to believe that applicant’s western hats originate
in or are somehow connected with Milan. The declaration of
Mr. Cavender does not rebut this prima facie case. While
traditional customers of western wear may be knowledgeable
about its origins and may even prefer that it come from
companies located in the southwest United States, our
concern is not limited to such individuals. There is no
question that western wear is sold to the buying public at
large, and that from time to time, western styles are in
fashion. Thus, the average purchaser would be likely to
believe, mistakenly, because of the association between
Milan and clothing that applicant’s western hats originate
in or are somehow connected to Milan.
In addition, because applicant’s identification of
goods is not restricted as to any specific types of caps,
it must be assumed that applicant will sell caps of all
types; not only baseball caps.5 This would necessarily

5 We should make clear that applicant has not argued that its
identification of goods should be read to mean “western caps.”
Moreover, we are not aware of any such type of caps.
Ser No. 75/199,345
13
include stylish or dressy caps. Because of Milan’s
prominence as a fashion center, prospective purchasers
would be likely to believe, mistakenly, that applicant’s
caps originated with or had some connection with Milan.
Moreover, even if applicant’s identification of goods
were limited to baseball caps, we would not be persuaded by
applicant’s argument that consumers would not believe its
baseball caps originated from Milan because baseball caps
are generally associated with athletic teams and company
promotions. In today’s market, baseball caps are
emblazoned with cartoon characters, geographic names, and
trendy expressions, among other things. We have no doubt
that if a prospective purchaser were to encounter a
baseball cap under applicant’s mark with “Milan” emblazoned
on the front of the cap, the purchaser would be likely to
believe, mistakenly, that the baseball cap originated in or
had some connection with Milan.6
The final question then is whether the geographical
misdescription created by applicant’s mark has been shown

6 In reaching our conclusion that purchasers are likely to make a
goods/place association between western hats and caps and Milan,
we accorded little weight to the dictionary entry for the word
“milliner” made of record by the Examining Attorney. We do not
believe the average American consumer is aware of the derivation
of the word “milliner.”
Ser No. 75/199,345
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to be material to the purchase of western hats and caps
bearing the mark. We find that it has. The evidence put
forth by the Examining Attorney demonstrates the fame of
Milan as a center of fashion and its reputation for fine
quality and famous designers. Thus, there is no question
that a Milan connection would more appealing or desirable
to prospective purchasers, and thus, this factor would be
material to the decision to purchase western hats and caps.
Decision: The refusal to register under Section 2(a)
of the Trademark Act is affirmed.