Monograms America, Inc.

Trademark Trial and Appeal Board

Mar 3, 1999

No. 75097874 (T.T.A.B. Mar. 3, 1999)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 3, 99
Paper No. 8
HRW
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Monograms America, Inc.
________
Serial No. 75/097,874
_______
Gary L. Bush of Bush, Riddle & Jackson, L.L.P.
for applicant.
John Tingley, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
_______
Before Seeherman, Chapman and Wendel, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
Monograms America, Inc. has filed an application to
register the mark MONOGRAMS AMERICA for “monogramming store
services.”1

1 S.N. 75/097,874, filed May 2, 1996, based on a bona fide
intention to use the mark in commerce.
Ser No. 75/089,735
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Registration has been finally refused under Section
2(e)(2) on the ground that the mark is primarily
geographically descriptive of the services involved.
Applicant and the Examining Attorney have filed
briefs, but no oral hearing was requested.
As a preliminary matter, the Board recently issued a
published decision in the companion case to this appeal, In
re Monograms America, Inc., ___ USPQ2d ___, S. N.
75/089,735 (TTAB Feb. 12, 1999), involving the same mark
for the related services of consultation services for
owners of monogramming shops. In that case, we affirmed
the refusal of registration, inter alia, on the ground that
the mark MONOGRAMS AMERICA was primarily geographically
descriptive of the involved services under Section 2(e)(2).
While the services here are somewhat different, our
analysis is very similar.
As we stated in the companion case, in order for
registration to be refused under Section 2(e)(2) of the
Trademark Act, on the ground that the mark is primarily
geographically descriptive of the goods or services, it
must be established that
(1) the mark sought to be registered is the name of
a place known generally to the public, and
(2) the public would make a goods/place
(or in this case, services/place) association,
Ser No. 75/089,735
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i.e., would believe that the services originate
from this place.
See In re Societe Generale des Eaux Minerals de Vittel
S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); In re
California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988).
Where there is no question but that the geographic
significance of a term is its primary significance, and the
place named is neither obscure nor remote, a public
association of the goods (or services) with the place may
be presumed if, in fact, the goods (or services) originate
from the geographic place named in the mark. See In re
California Pizza Kitchen Inc., supra; In re Handler Fenton
Westerns, Inc., 214 USPQ 848 (TTAB 1982). Moreover, the
addition of highly descriptive matter to a geographic term
does not detract from the mark’s primary significance as
being geographically descriptive. See In re U.S. Cargo,
Inc., 49 USPQ2d 1702 (TTAB 1998); In re Cambridge Digital
Systems, 1 USPQ2d 1659 (TTAB 1986)
Applicant argues that its composite mark, MONOGRAMS
AMERICA, must be considered in its entirety in determining
whether it is primarily geographically descriptive. As
such, applicant maintains that the term AMERICA does not
only indicate that applicant’s monogramming store services
are offered in America but also implies the excellence or
Ser No. 75/089,735
4
high quality of these services. As for the term MONOGRAMS,
applicant argues that while this word is suggestive that
applicant’s monogramming services are to be performed in a
retail store setting, it is also suggestive that other
products with monograms or just the monogram letters are
also available at the stores. Thus, applicant contends
that its mark, as a whole, is not merely or only
descriptive of the fact that applicant’s monogramming
services are being performed in America but is also
suggestive that applicant’s monograms are of the high
quality typical of American providers.
The Examining Attorney, on the other hand, maintains
that applicant’s mark is no more than the combination of
the primarily geographic term AMERICA with the highly
descriptive or generic term MONOGRAMS, and that the latter
term does not detract from the geographic significance of
the mark as a whole. He argues that the term AMERICA as
used by applicant primarily denotes the United States and
is not being used in a composite mark in such a way to
create an overall non-geographic connotation. As for the
term MONOGRAMS, he argues that it is merely descriptive so
long as it describes one significant feature of applicant’s
store services.
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The word AMERICA is obviously well known to the United
States public as the name of a geographic location. The
question is whether the primary significance of the term
AMERICA as used in applicant’s mark would be this
geographic location or whether the term would possess some
other, at least equally significant connotation. As
support for its arguments that the latter is true,
applicant has referred to cases in which another meaning
has been found to predominate for terms which applicant
considers in the same class as AMERICA. For example, in In
re Jim Crockett Promotions Inc., 5 USPQ2d 1455 (TTAB 1987)
the Board found the term “Great American” to be suggestive,
in the same way that the term “All-American” had previously
been found suggestive, of high quality or excellence,
rather than a mere descriptor of the geographic origin of
the involved services.
But applicant has produced no evidence of other
potential connotations for the term AMERICA standing alone.
Thus, we have no reasonable basis for holding that AMERICA,
as opposed to “Great American” or “All-American,” is
capable of any other interpretation. Applicant has
submitted no evidence of use by others of the term
“America,” without more, as a designation of high quality
or excellence. Instead we find the situation here to be
Ser No. 75/089,735
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similar to that in In re BankAmerica Corp., 231 USPQ 873
(TTAB 1986), where we held BANK OF AMERICA to primarily
signify that the applicant’s financial services originated
from an American bank or from a bank in the United States.2
We consider AMERICA as used in applicant’s mark to
similarly signify United States origin and/or geographical
scope.
Accordingly, since the primary significance of the
term AMERICA is its geographic significance and the place
named is far from obscure,3 and since applicant’s services
originate in America, a services/place association on the
part of the public may be presumed. See In re Handler
Fenton Westerns, Inc., supra. Although the mark includes
the additional term MONOGRAMS, we have no reason to believe
that this term serves any purpose other than to describe a
significant feature of applicant’s monogramming store
services. As such, we consider the term MONOGRAMS to be
incapable of detracting from the primary significance of
applicant’s mark as being geographically descriptive.

2 See also the several cases cited in BankAmerica, supra, finding
the terms “America” or “American” primarily geographically
descriptive.
3 See footnote 2 of BankAmerica, supra, for reference to
dictionary definitions of “America” as “the United States of
America.”
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While applicant may argue that other suggestive
connotations exist for the mark as a whole, we find the
primary significance to be that of being geographically
descriptive of applicant’s services.
Decision: The refusal to register under Section
2(e)(2) of the Trademark Act is affirmed.
E. J. Seeherman
B. A Chapman
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board
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