New York Transit, Inc.

Trademark Trial and Appeal Board

Aug 6, 2002

No. 75923790 (T.T.A.B. Aug. 6, 2002)

Hearing: Paper No. 13
June 27, 2002 RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re New York Transit, Inc.
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Serial No. 75/923,790
_______
Richard E. Backus for New York Transit, Inc.
Robert Clark, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Cissel, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On February 18, 2000, applicant filed the above–
identified application seeking registration of the mark
“N Y TRANSIT” on the Principal Register for “earrings and
other jewelry,” in Class 14; “purses and handbags,” in
Class 18; and “gloves, belts, and hosiery,” in Class 25.
The basis for filing the application was applicant’s
assertion that it possessed a bona fide intention to use
the mark in commerce in connection with these goods.
Applicant claimed ownership of three other registrations
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/923,790
2
and one other application for registration. Among these
was Registration No. 1,350,643.
In his first Office Action, the Examining Attorney
refused registration on the grounds that the mark is
deceptive (although Section 2(a) of the Lanham Act was not
cited), and also on the ground that the mark is primarily
geographically deceptively misdescriptive within the
meaning of Section 2(e)(3) of the Lanham Act, 15 U.S.C.
Section 1052(e)(3).
Applicant responded to the refusal to register with
argument that the refusal based on geographic deceptive
misdescriptiveness asserted by the Examining Attorney is
not appropriate in the instant case. The refusal based on
deceptiveness alone was not mentioned.
With respect to the refusal under Section 2(e)(3) of
the Act, applicant argued that the combination of “N Y” and
“TRANSIT” does not have a primary significance which is
geographic because the combination of these two terms would
call to mind the well known subway system in the city of
New York, and that prospective purchasers of applicant’s
products would certainly not believe that the New York
transit system is in the business of selling earrings and
jewelry, purses, handbags, gloves, belts or hosiery, which
are the goods listed in the instant application. As such,
Ser No. 75/923,790
3
applicant argued that in connection with these products,
applicant’s mark would have an incongruous meaning.
Attached to applicant’s response in support of this
contention was an entry from Webster’s New World College
Dictionary, Third Edition, wherein the term “transit” is
defined as “a system of urban public transportation (cf.
RAPID TRANSIT).”
In his second Office Action, the Examining Attorney
made final the refusal to register on both grounds asserted
in the first Office Action, i.e., deceptiveness under
Section 2(a) of the Act, and geographic deceptive
misdescriptiveness under Section 2(e)(3)of the Act. Along
with the final refusal, the Examining Attorney submitted
excerpts from several trade publications which establish
that New York is a center of activity in the fashion
industry.
Applicant timely filed a Notice of Appeal, followed by
a timely filed appeal brief. Submitted along with the
brief were a copy of the previously submitted dictionary
definition of the word “transit” and page retrieved from
the web site of the New York City rapid transit system,
which uses “New York City Transit” as the name of the
system.
Ser No. 75/923,790
4
The Examining Attorney then filed his brief on appeal.
In it, he withdrew the refusal to register based on
deceptiveness under Section 2(a) of the Act, but presented
arguments in support of the refusal to register under
Section 2(e)(3) on the ground that the mark sought to be
registered is primarily geographically deceptively
misdescriptive in connection with the goods specified in
this application.
Also in his appeal brief, he objected to the Board’s
consideration of the New York City Transit web site page
applicant submitted with its brief. Citing Trademark Rule
2.142(d), he pointed out that submission of this evidence
for the first time with applicant’s appeal brief is
prohibited. In its reply brief, applicant argued that the
Examining Attorney had waived to his right to object to the
submission of this evidence because, when applicant had
previously argued that the significance of the mark is as a
reference to the New York City transit system, the
Examining Attorney had not disputed this claim.
We sustain the objection of the Examining Attorney to
the untimely submission of this evidence. Trademark Rule
2.142(d) provides that the record should be complete prior
to the filing of the Notice of Appeal, and specifies the
procedure by which either applicant or the Examining
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5
Attorney may request the Board to allow submission of
evidence after that time. Applicant did not follow this
procedure and the Board did not grant applicant permission
to submit this evidence with its brief, so that evidence
has not been considered.
We note additionally that with its reply brief,
applicant submitted a copy of one of the registrations of
which applicant had claimed ownership in the application
which is the subject of this appeal, as it was originally
filed. Under these circumstances, we have considered
Registration No. 1,350,643, which is a registration on the
Principal Register of the mark here sought to be
registered. The goods listed therein originally included
handbags, which are also listed in the instant application,
but reference to these products was stricken from the
registration, leaving the following goods: “shoes and men’s
and women’s woven knit clothing, namely, pants, shorts,
belts, jumpsuits, tops, parkas, jackets, socks.”
Although we have considered this registration, it has
very little probative value and does not compel a result
different from the one we would have reached without it.
While uniform treatment under the Trademark Act is an
administrative goal, our task in this appeal is to
determine, based on the record before us, whether
Ser No. 75/923,790
6
applicant’s mark here sought to be registered is barred by
the statutory provision cited by the Examining Attorney.
As is often stated, each case must be decided on its own
merits. See, e.g., In re Best Software Inc., 58 USPQ2d
1314 (TTAB 2001). Neither the current Examining Attorney
nor the Board is bound by the prior action of the Examining
Attorney who examined applicant’s earlier-filed application
which resulted in the registration of record. In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001).
We thus turn to consideration of the merits of the
appeal before us. The test for determining whether a mark
must be refused registration under Section 2(e)(3) of the
Act because it is primarily geographically misdescriptive
is well settled and is not disputed by either applicant or
the Examining Attorney in the case at hand. A mark is
unregistrable under this section of the Act if: (1) its
primary significance is that of a generally known
geographic place; (2) it is used in connection with goods
or services which prospective purchasers are likely to
associate with the place named in the mark; and (3) the
goods or services do not originate from the place named in
the mark. In re Wada, 194 Fed.3d 1297, 52 USPQ2d 1539
Ser No. 75/923,790
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(Fed. Cir. 1999), and In re Loew’s Theaters, Inc., 769
Fed.2d 764, 226 USPQ 865 (Fed. Cir. 1985).
In the case at hand, the refusal to register is not
well taken because this mark fails to satisfy the first
element of the test under Section 2(e)(3) of the Act. The
significance of the mark, when considered in its entirety,
is not primarily that of a geographic place. Simply put,
we agree with applicant that the addition of the word
“TRANSIT” to the letters “N Y,” which indisputably stand
for “New York,” results in a composite term that would be
understood as a reference to the transit system in that
city, rather than to the city itself. The evidence made of
record by the Examining Attorney establishes that New York
is a well-known geographic place, and that prospective
purchasers of the goods listed in the application would be
likely to make an association between New York and the
fashion accessories listed in the application. Further, it
is not disputed that the goods with which applicant intends
to use this mark will not emanate from New York. The mark
is nonetheless registrable because this record does not
establish that the primary significance of the mark as a
whole is the place named in the mark, rather than the
transit system that operates there.
Ser No. 75/923,790
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In the Wada case, cited above, “NEW YORK WAYS GALLERY”
was held unregistrable for various types of bags,
backpacks, purses and so forth, and the case of In re
Handler Fenton Westerns, 214 USPQ 848 (TTAB 1982), “DENVER
WESTERNS” was found to be unregistrable for western style
shirts. Similarly, in the case of In re Cambridge Digital
Systems, 1 USPQ2d 1659 (TTAB 1986), the Board held that the
significance of “CAMBRIDGE DIGITAL,” as applied to computer
systems, was primarily that of the place named in the mark.
In each of these cases, the terminology combined with
the place name related to the products in question, i.e.,
“WESTERN” characterizes western style shirts; “DIGITAL” has
descriptive significance in connection with computers, etc.
The primary significance of the mark in the case at
hand, however, is unrelated to the goods specified in the
application. As applicant points out, the transit system
in the city of New York would not be expected to be the
source of jewelry, purses, handbags, gloves, belts or
hosiery. Moreover, this record does not establish the
existence of any connection whatsoever between the New York
transit system and goods of this kind. Fashion items like
the ones listed in the application are not designed by the
transit authority of New York; they are not purchased for
use in or by the transit system. The record does not show
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them to be especially popular on the system or even in use
on the trains which are operated within the system.
Contrary to the above-cited cases, in the case at hand, the
word combined with the geographic descriptor has no
connection with the involved goods, so its source-
identifying significance is not subsumed by the place name
with which it is combined.
In summary, the refusal to register in this case is
not well taken because the record does not establish that
the primary significance of the mark “N Y TRANSIT,” when
considered in its entirety and in connection these
products, would be as a reference to city of New York.
DECISION: The refusal to register under Section
2(e)(3) is reversed.
___________
Quinn, Administrative Trademark Judge, dissenting:
I would affirm the refusal to register under Section
2(e)(3) of the Trademark Act and, accordingly, I
respectfully dissent.
For a mark to be primarily geographically deceptively
misdescriptive, the mark must (1) have as its primary
significance a generally known geographic place, and (2)
identify products that purchasers are likely to believe
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mistakenly are connected with that location. Institut
National Des Appellations D’Origine v. Vintners
International Co., 958 F.2d 1574, 22 USPQ2d 1190, 1195
(Fed. Cir. 1992).
In the present case, applicant concedes that the goods
do not originate in the place identified in the mark.
(brief, p. 4).
Further, applicant recognizes that “N Y” has the
geographic meaning of “New York.” (brief, p. 4). Indeed,
the majority states that the letters “N Y” “indisputably
stand for ‘New York.’” (majority opinion, p. 7). There is
nothing obscure, minor or remote about the geographic
meaning of the letters “N Y.” In fact, it is hard to
imagine a geographic location in the world that is as well
known as New York City.
In addition, the evidence of record bearing on a
goods/place association establishes that New York City is
well known as a place for the design, manufacture and sale
of goods of the type listed in the application.
I differ from the majority in that I find that the
mark, when viewed in its entirety, projects a primarily
geographic significance, with the addition of the word
“TRANSIT” to “N Y” not detracting from this primary
geographic significance of the mark. Applicant simply has
Ser No. 75/923,790
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not provided any facts as to why the primary geographic
significance of the mark is lost by the addition of the
word. As stated in prior cases, the determination of
registrability under Section 2(e)(3) should not depend on
whether the mark is unitary or composite. See, e.g.: In
re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889, 893 at n. 7
(CCPA 1982); and In re Cambridge Digital Systems, 1 USPQ2d
1659, 1662 (TTAB 1986).
I believe that affirmance of the refusal here squares
with the reasoning and holding in the case of In re Wada,
194 F.2d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999), aff’g 48
USPQ2d 1689 (TTAB 1998) [NEW YORK WAYS GALLERY is primarily
geographically deceptively misdescriptive of leather bags,
luggage, back packs, wallets, tote bags, and the like not
originating in New York]. See also: In re Save Venice New
York Inc., 259 F.3d 1346, 59 USPQ2d 1778, 1783 (Fed. Cir.
2001) [mark consisting of the phrases THE VENICE COLLECTION
and SAVE VENICE INC. and an image of the winged Lion of St.
Mark is geographically misdescriptive when applied to a
variety of goods, and consumers would not associate the
mark with the fundraising activities of applicant rather
than with the city of Venice]; and In re Perry
Manufacturing Co., 12 USPQ2d 1751 (TTAB 1989) [PERRY NEW
YORK and a silhouette of the New York City skyline for
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women’s clothing is deceptive]. In the present case, given
the renown of New York City as a fashion center, I can only
conclude that consumers would assume a connection with New
York when encountering the mark N Y TRANSIT on applicant’s
jewelry, purses, handbags, gloves, belts and hosiery. As
Professor McCarthy has observed, “[i]f the composite mark
contains the name of the geographic location from which the
goods do not come, a court may be more strict in its
scrutiny...” 2 J. McCarthy, McCarthy on Trademarks and
Unfair Competition, § 14:11 (4th ed. 2001).
Simply put, the primary geographic significance of the
term New York, and the goods/place association between New
York and items such as jewelry, handbags and belts are not
lost when “N Y” is combined with “TRANSIT.” There is no
properly introduced evidence that “N Y Transit” is
recognized and understood as the name of New York’s public
transportation system. That is, the record does not
establish that to the purchasing public the primary
connotation of the term “N Y Transit” is the public
transportation system. I hasten to add that even if there
were evidence showing that “N Y Transit” identifies the
public transportation system in New York City, I would
reach the same result here as in the cases of PERRY NEW
YORK and NEW YORK WAYS GALLERY.
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An applicant should not be able to register a
geographically misdescriptive term by combining it with
another term that does not change the primary geographic
meaning. For example, PARIS METRO or LONDON TUBE (aside
from any possible Section 2(a) false suggestion of a
connection problem with the entities running the subways
located in those cities) for goods of the type involved
here would still have a primary geographic significance,
and purchasers would be likely to believe that the goods
are connected with Paris and London, respectively.
As to the issuance of applicant’s earlier
registration, I agree with the majority that this fact is
of no consequence in deciding this appeal. Further, the
goods in the present application are more expansive, with
the only overlapping items being “belts” and “hosiery”
(“socks”). See: In re Save Venice New York Inc., supra at
1783 [“A registered mark on goods other than those
previously registered carries no presumption of
distinctiveness”]; and In re Loew’s Theatres, Inc., 769
F.2d 764, 226 USPQ 865, 869 (Fed. Cir. 1985) [“Nothing in
the statute provides a right ipso facto to register a mark
for additional goods when items are added to a company’s
line or substituted for other goods covered by a
registration.”].
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I am not persuaded, based on this record, that
purchasers, when confronting applicant’s mark, would not
think that applicant’s jewelry, handbags and belts come
from New York City.