National Park Servicesv.Hot Springs Advertising & Promotion Commission

Trademark Trial and Appeal Board

May 25, 2011

No. 92049191 (T.T.A.B. May. 25, 2011)

Hearing: December 9, 2010 Mailed: May 25, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

National Park Service1
v.
Hot Springs Advertising & Promotion Commission
_____

Cancellation No. 92049191
_____

Scott Bolden and Sheryl L. Rakestraw of U.S. Department of
the Interior for National Park Service.

Gary N. Speed of Speed Law Firm for Hot Springs Advertising
& Promotion Commission.
_____

Before Kuhlke, Cataldo and Taylor,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On April 11, 2008, Petitioner, National Park Service,
petitioned to cancel Registration No. 2706344, issued April
15, 2003 on the Principal Register to respondent, Hot
Springs Advertising & Promotion Commission, for the mark
displayed below for “creating advertising for publications
or direct mail advertising; cooperative advertising and

1 Petitioner’s consented motion, filed on December 10, 2010 to
substitute National Park Service as petitioner in place of U.S.
Department of the Interior, National Park Service, Hot Springs
National Park, is hereby granted.

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Cancellation No. 92049191
2
marketing; displaying advertisements for others; and
dissemination of advertising for others” in International
Class 35. “HOT SPRINGS NATIONAL PARK ARKANSAS” is
disclaimed apart from the mark as shown.

As grounds for cancellation, petitioner alleges that
respondent’s mark is primarily geographically descriptive of
the services under Section 2(e)(2) of the Trademark Act.2
Respondent, in its answer, denied the salient allegations of
the petition for cancellation.3

2 Petitioner alleged additional grounds for cancellation in its
petition but did not pursue them at trial. Accordingly, they are
deemed waived.
3 Respondent asserted certain affirmative defenses in its answer
but did not pursue them by motion or at trial. Accordingly, they
are deemed waived. Respondent also asserted additional
“affirmative defenses” that are more in the nature of
amplification of its denials of the allegations contained in the
petition to cancel and have been so construed.
Cancellation No. 92049191
3
The Record
By rule, the record consists of the pleadings and the
file of the involved registration. In addition, during its
assigned testimony period, petitioner filed notices of
reliance upon the following: portions of the discovery
deposition of Steve Arrison, respondent’s executive
director; various printed publications, dictionary
definitions and official records; and respondent’s responses
to petitioner’s first set of requests for admissions.
Respondent, during its assigned testimony period, filed
notices of reliance upon the discovery depositions, with
accompanying exhibits, of the following individuals: Daniel
Wenk, acting director of petitioner; Ernest Quintana,
regional director for the Midwest Region and acting deputy
director of petitioner; Bernard Fagan, chief of petitioner’s
Office of Policy; Josie Fernandez, superintendent of Hot
Springs National Park; Roger Giddings, retired former
superintendent of Hot Springs National Park;4 and the
complete discovery deposition of Mr. Arrison. Respondent
also filed notices of reliance upon printed publications and
official records; and petitioner’s responses to respondent’s
first set of request for admission.

4 The Board notes with approval the parties’ stipulation to the
admissibility of Mr. Giddings’ deposition, subject to
petitioner’s objections made during the course thereof. Such
stipulation is consistent with the collegiality displayed by the
parties and their counsel throughout this proceeding.
Cancellation No. 92049191
4
Petitioner and respondent filed briefs, and petitioner
filed a reply brief. In addition, counsel for both parties
presented arguments at an oral hearing held before the Board
on December 9, 2010.
Evidentiary Objections
Each party has filed objections against certain
testimony and exhibits introduced by its adversary. We
note, however, that none of the testimony and/or exhibits
sought to be excluded is outcome determinative. Given this
fact, we see no compelling reason to discuss the objections
in a detailed fashion. Suffice it to say, we have
considered all of the testimony and exhibits submitted by
the parties. In doing so, we have kept in mind the various
objections raised by the parties, and we have accorded
whatever probative value the subject testimony and exhibits
merit.
General Facts
The following facts are not in dispute. Petitioner is
an agency of the U.S. Department of the Interior that
administers “the Nation’s natural and cultural heritage and
historic resources for future generations,”5 including
national parks. Hot Springs National Park was granted
National Park status in 1921.6 It is the smallest of the

5 Petitioner’s brief, p. 3.
6 41 Stat 1407 (1921), codified at 16 U.S.C. § 2 (2008).

Cancellation No. 92049191
5
National Parks, but is widely-visited and “distinguished as
the oldest federal reserve of land by Congress.”7 The city
of Hot Springs, Arkansas, is located adjacent to Hot Springs
National Park, but not on park land.8 The United States
Postal Service has, since 1922, identified the mailing
address for the city of Hot Springs, Arkansas as Hot Springs
National Park, although the post office locations therefor
are not located within the national park.9
Respondent is a commission “created by the city of Hot
Springs, Arkansas to promote Hot Springs National Park and
the surrounding attractions that make it a popular tourist
destination.”10 The city of Hot Springs, Arkansas and
respondent are “related entities and two members of
[respondent] are elected city officials.”11 Respondent
“receives revenue from various resources that it promotes,
including revenue from the City’s convention center, the Hot
Springs Mountain Tower (a concessions contract with the
National Park Service) and a food and hospitality tax on
food and lodging within the City limits.”12 Respondent
“creates advertising campaigns through radio, television,
Internet, brochures to attract visitors and convention

7 Petitioner’s brief, p. 3.
8 Arrison Deposition, Exhibit p. 184-6.
9 Respondent’s Notice of Reliance, Exhibits 5-7, 27.
10 Respondent’s brief, p. 8, citing to Arrison Deposition, p. 8-
11.
11 Id.
12 Petitioner’s brief, p. 4, citing to Arrison Deposition, p. 13.
Cancellation No. 92049191
6
business to the City and community.”13 Respondent
advertises Hot Springs National Park in many of its
marketing campaigns.14
Petitioner’s Standing
Petitioner has demonstrated that it is a Federal agency
that administers national parks. Petitioner further has
demonstrated that respondent: uses the involved mark as a
brand identity for the city of Hot Springs, Arkansas;15
licenses the mark for use by tourist entities that provide
services in the region but not within the park;16 and denies
use of the mark to entities that it believes will not
properly promote the city of Hot Springs, Arkansas or with
which the city does not want to be associated.17 Petitioner
argues it is “concerned that [respondent] began using the
Mark to advertise services that were not approved, endorsed,
or associated with the National Park Service.”18 Petitioner
further argues respondent’s “use of the Mark, and the
geographically descriptive nature of the Mark, was causing
consumers to be confused as to the origin of the goods and
services.”19

13 Id. citing to Arrison Deposition at 14.
14 Arrison Deposition at 47.
15 Id. at 23.
16 Id. at 56; Quintana Deposition at 25; and Fernandez Deposition
at 52.
17 Id. at 56-8, 65.
18 Petitioner’s brief, p. 6.
19 Id.
Cancellation No. 92049191
7
Based upon the foregoing, we find that petitioner, as
the agency that administers national parks in the United
States of America, has a direct and personal stake in the
outcome of this cancellation proceeding which involves a
mark incorporating the name of a national park. We further
find that petitioner’s belief of damage based upon
respondent’s use of a mark incorporating the name of a
national park in connection with services not approved or
endorsed by or associated with petitioner has a reasonable
basis in fact. Thus, petitioner has a “real interest” in
the proceedings and a “reasonable basis” for its belief of
damage. See Ritchie v. Simpson, 170 F.3d 1092, 1094-5 (Fed.
Cir. 1999). As a result, we find petitioner has standing to
demonstrate that respondent is not entitled to continued
registration of its mark.
Geographic Descriptiveness
Section 2 of the Trademark Act, 15 U.S.C. §1052,
provides, in part, as follows:
No trademark by which the goods of the applicant
may be distinguished from the goods of others
shall be refused registration on the principal
register on account of its nature unless it–
(e) Consists of a mark which ... (2) when used on
or in connection with the goods of the applicant
is primarily geographically descriptive of them,
except as indications of regional origin may be
registrable under section 4....
Section 2(e)(2) of the Trademark Act prohibits registration
of marks which, when used in connection with the identified
Cancellation No. 92049191
8
goods and services, are primarily geographically
descriptive. For petitioner to establish that respondent’s
mark is primarily geographically descriptive, it must show
that the mark is the name of a place known generally to the
public, and that the public would make a goods/place
association, i.e., believe that the goods or services for
which the mark is registered originate in that place. See
In re Societe Generale des Eaux Minerals de Vittel, S.A.,
824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); and In re
California Pizza Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988).
However, “a case of unregistrability cannot be made out
simply by evidence showing that the mark sought to be
registered is the name of a place known generally to the
public.” See In re Societe Generale 824 F.2d at 959, 3
USPQ2d at 1452. Further, it has been held that a
designation coined and promoted as a mark but which
incidentally designates a particular location can function
as a mark and is not primarily geographically descriptive.
See In re Pebble Beach Co., 19 USPQ2d 1687 (TTAB 1991). See
also Horseshoe Bay Resort Sales Co. v. Lake Lyndon B.
Johnson Improvement Corporation, 53 S.W.3d 799 (Tex. App.
2001).
Turning to the mark at issue, respondent concedes “that
Hot Springs National Park is a geographically descriptive
term. However, the Registrant disclaimed the exclusive
Cancellation No. 92049191
9
right to use the words Hot Springs National Park Arkansas
apart from the mark as shown.”20 In its answer to the
petition to cancel, respondent states as follows:
Registrant admits the term Hot Springs National
Park is geographically descriptive as a place
name, although Registrant denies that its mark as
registered is geographically descriptive due to
incorporated [sic] the design element and the
acquisition of secondary meaning by Registrant, so
the allegations contained in Paragraph 13 [are]
denied.21

Further, respondent provided the following response to
petitioner’s first request for admission:
REQUEST FOR ADMISSION NO. 1: Admit that the
primary significance of the phrase “Hot Springs
National Park” is a generally known geographic
location.
RESPONSE: Request for Admission No. 1 is
admitted.22

Based upon respondent’s above admissions, there is no
dispute that the wording HOT SPRINGS NATIONAL PARK ARKANSAS
in respondent’s mark is primarily geographically descriptive
of respondent’s services. Petitioner cites to Grand Canyon
West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501 (TTAB 2008)
in support of its contention that respondent’s “inclusion of
the word ARKANSAS to HOT SPRINGS NATIONAL PARK does not
detract from the geographic significance of the Mark;
indeed, the inclusion reinforces the geographic

20 Respondent’s brief, p. 22.
21 Answer, paragraph 13.
22 Petitioner’s notice of reliance, Exhibit II.
Cancellation No. 92049191
10
significance.”23 We agree, and respondent does not argue
the point. However, respondent’s mark, displayed below,
includes both the geographically descriptive wording and an
abstract, geometric design.

As such, the mark is a geographic composite mark, composed
of admittedly geographic matter, i.e., the wording HOT
SPRINGS NATIONAL PARK ARKANSAS, and additional matter, in
this case, a design element. We must therefore determine
whether the primary significance of the mark, as a whole, is
a generally known geographic location. See In re Save
Venice New York Inc., 259 F.3d 1346, 1352, 59 USPQ2d 1778,
1782 (Fed. Cir. 2001).
Petitioner argues that respondent’s “use of a generic
blue diamond and teal rectangle do [sic] not detract from
the geographic significance of the Mark”24 and, therefore,
“the primary significance of the overall Mark is

23 Petitioner’s brief, p. 9.
24 Id. It is noted that respondent has made of record examples of
its mark presented in the colors described by petitioner;
however, color is not claimed as a feature of the mark.
Cancellation No. 92049191
11
geographic.”25 However, the only evidence of record of the
possible significance of the design is the following
exchange from the discovery deposition of respondent’s
executive director, Steve Arrison:
Q. And other than the wave design, do you know
whether there’s any significance to the diamond
shape or the rectangle design?

A. No clue. I always wondered if they tied it
into the Crater of Diamonds in Arkansas, but I
have no knowledge of why they came up with this
design or what the components are. I just always
assumed the waves signified water.26

This exchange indicates only that Mr. Arrison does not know
the significance of the design, and his mere speculation as
to the possible meaning of components thereof falls far
short of establishing that the geometric design in
respondent’s mark has any significance, let along geographic
significance. There is no other testimony or evidence of
record that addresses the significance of the design element
in respondent’s mark. Furthermore, respondent denied all of
petitioner’s requests for admission directed to the
geographic significance of the mark as a whole.27
Petitioner’s reliance upon In re Save Venice New York
Inc., supra, in support of its position is misplaced. In
that case, the Federal Circuit affirmed this tribunal’s
determination that the image of a winged Lion of St. Mark

25 Petitioner’s brief, p. 10.
26 Arrison Deposition, p. 24.
27 Petitioner’s Notice of Reliance, Exhibit II.
Cancellation No. 92049191
12
was recognized as a symbol of the city of Venice, Italy, and
thus reinforced the geographic significance of the wording
SAVE VENICE and THE VENICE COLLECTION in the mark at issue.
In this case, however, the abstract design has no recognized
significance and, as such, does not reinforce the
geographically descriptive wording HOT SPRINGS NATIONAL PARK
ARKANSAS. In that regard, all of the cases relied upon by
petitioner involve marks consisting of a geographic term and
additional word or design components that reinforce the
geographic significance of that term. All of these cases
can be distinguished from the case at issue because there
simply is no testimony or evidence that the design portion
of respondent’s mark possesses any geographic significance
or reinforces the geographic significance of the disclaimed
wording HOT SPRINGS NATIONAL PARK ARKANSAS.
We find, therefore, that petitioner has failed to
establish that the mark as a whole is the name of a place
known generally to the public. Rather, the evidence of
record supports a finding that only the disclaimed wording
in the mark is the name of a geographic location. Thus, the
disclaimed geographically descriptive wording HOT SPRINGS
NATIONAL PARK ARKANSAS in respondent’s mark is a separate
element from the inherently distinctive design. See
generally TMEP §1210.06(a). As discussed above, there is no
evidence that the design is geographically descriptive, nor
Cancellation No. 92049191
13
can we construe any statement by respondent or its officers
as an admission that the design is geographically
descriptive.
Because petitioner has failed to establish the first
element of its claim of geographic descriptiveness, namely,
that the mark as a whole is the name of a place known to the
public, we find that petitioner cannot prevail on its
pleaded ground for cancellation, and we need not consider
whether the public would make a goods/place association,
i.e., believe that the goods or services for which the mark
is registered originate in that place. Cf. In re Societe
Generale des Eaux Minerals de Vittel, S.A., 824 F.2d 957, 3
USPQ2d 1450 (Fed. Cir. 1987); and In re California Pizza
Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988).
As a result, we find that respondent’s mark is entitled
to continued registration with the geographically
descriptive wording disclaimed.28
DECISION: The cancellation is dismissed with
prejudice.

28 In view thereof, the parties’ arguments directed toward the
issue of whether respondent’s mark has acquired distinctiveness
under Trademark Act Section 2(f) will be given no consideration.