MovieFone, Inc.

Trademark Trial and Appeal Board

May 26, 1999

No. 75024380 (T.T.A.B. May. 26, 1999)

Paper No. 13
PTH
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT OF THE TTAB MAY 26,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re MovieFone, Inc.
________
Serial No. 75/024,380
_______
Amy J. Benjamin and Karin Segall of Darby & Darby P.C. for
MovieFone, Inc.
Erica D. B. Glembocki, Trademark Examining Attorney, Law
Office 102 (Thomas Shaw, Managing Attorney).
_______
Before Simms, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
MovieFone, Inc. has filed an application to register
the mark AMERICA’S MOVIE GUIDE for the following services:
Promoting the services and products of the
movie industry by preparing and placing
prerecorded telephone advertisements for
others; transmission of data, namely movie
listings and other advertisements for others
via telephone and global computer network;
providing movie directory information and
arranging for the purchase of movie tickets
Ser No. 75/024,380
2
via telephone and global computer network;
[and] telephone information services,
featuring movie listings.1
Registration has been refused under Section 2(e)(2) of
the Trademark Act, 15 U.S.C. §1052(e)(2), on the ground
that the mark AMERICA’S MOVIE GUIDE is primarily
geographically descriptive of the identified services.
When the refusal was made final, applicant appealed.
The case has been fully briefed,2 but no oral hearing was
requested.
It is applicant’s position that the mark AMERICA’S
MOVIE GUIDE is not primarily geographically descriptive of

1 Application Serial No. 75/024,380 filed November 27, 1995;
asserting a bona fide intention to use the mark in commerce.
2 We note that, in her appeal brief, the Examining Attorney has
objected to a list of third-party registrations included in
applicant’s response to an Office Action and another list of
third-party registrations applicant included in its appeal brief.
While the proper procedure to make third-party registrations of
record is to submit copies of the actual registrations or the
electronic equivalent thereof, i.e., printouts of the
registrations taken from the Office’s own computerized data base,
inasmuch as the Examining Attorney failed to make this objection
earlier, and instead discussed the registrations, we consider any
objection to the first list to have been waived. However, the
Examining Attorney’s objection to the list of third-party
registrations included in applicant’s appeal brief is sustained.
Trademark Rule 2.142(d) provides that the record in an
application should be complete prior to the filing of the appeal
and that the Board will ordinarily not consider evidence
submitted after an appeal is filed. Also, as indicated above, a
mere list is not the proper way to make such registrations of
record. Finally, applicant’s request to remand the application
to make copies of the registrations of record is denied. See
Rule 2.142(d) and TMBP 1207.02.
Ser No. 75/024,380
3
its services. Applicant maintains that the term AMERICA’S,
as used in its mark, is laudatory and that MOVIE GUIDE is
at most suggestive of its services.
In order for registration to be properly refused under
Section 2(e)(2) of the Act, the Office must establish that
the mark sought to be registered is the name of a place
generally known to the public and that the public would
make a services/place association; i.e., believe that the
services for which the mark is sought to be registered
originate in that place. See In re California Pizza
Kitchen, Inc., 10 USPQ2d 1704, 1705 (TTAB 1989) and cases
cited therein. Moreover, if a geographic term in a mark is
neither remote or obscure and the geographic significance
is the primary connotation of the term, and where the goods
or services actually originate from the geographic place
designated in the mark, a public association of the goods
or services with the place may ordinarily be presumed. See
California Pizza Kitchen, supra, and In re Handler Fenton
Westerns, 214 USPQ 848 (TTAB 1992). In this case, the
dictionary definitions submitted by the Examining Attorney
show that AMERICA indicates the United States of America.
See Webster’s New Geographical Dictionary and Webster’s II
New Riverside University Dictionary. Also, we agree with
the Examining Attorney that MOVIE GUIDE is highly
Ser No. 75/024,380
4
descriptive, if not generic, of applicant’s services. The
fact that applicant transmits movie listings and provides
movie directory information via telephone and global
computer network, rather than in a printed publication,
does not render the term MOVIE GUIDE any less descriptive.
Thus, the primary significance of AMERICA’S MOVIE GUIDE is
geographic. The addition of a highly descriptive or
generic term to a geographical term does not avoid the
refusal of primary geographic descriptiveness. See In re
U.S. Cargo Inc., 49 USPQ2d 1702 (TTAB 1998); BankAmerica
Corp., 231 USPQ 873 (TTAB 1986); and In re Cambridge
Digital Systems, 1 USPQ2d 1659 (TTAB 1986). Further,
inasmuch as it appears that applicant’s services will come
from the United States, applicant being located in New
York, a public association of the services with the place
named in the mark is presumed.
We should add that this case is readily
distinguishable from In re Jim Crockett Promotions Inc., 5
USPQ2d 1455 (TTAB 1987) [The GREAT AMERICAN BASH is not
primarily geographically descriptive of promoting
professional wrestling matches]. In Crockett, the term
GREAT AMERICAN was found to suggest some desirable quality
or excellence and BASH was not generic or highly
descriptive of services involving wrestling matches.
Ser No. 75/024,380
5
Finally, as to the third-party registrations relied on
by applicant, we note that each case must be decided on its
own merits based on the evidence of record. We obviously
are not privy to the records involved in the registered
marks and, in any event, the allowance of those
registrations does not control the result in this case,
which involves a different mark.
Decision: The refusal to register is affirmed.
R. L. Simms
T. J. Quinn
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
Ser No. 75/024,380
6