Texas Steakhouse of Roanoke, Inc.

Trademark Trial and Appeal Board

Jun 18, 1997

EX (T.T.A.B. Jun. 18, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB
Paper No. 13
CEW
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Texas Steakhouse of Roanoke, Inc.
___________
Serial No. 74/565,919
___________
Gary S. Morris and William K. Wells, Kenyon & Kenyon for
applicant.
David C. Reihner, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
____________
Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Texas Steakhouse of Roanoke, Inc. has filed a trademark
application to register the mark TEXAS STEAKHOUSE & SALOON,1
for “restaurant services.”
The Trademark Examining Attorney has finally refused
registration under Section 2(e)(3) of the Trademark Act, 15

1 Serial No. 74/565,919, in International Class 42, filed August 26,
1994, based on an allegation of use of the mark in commerce, alleging
dates of first use and first use in commerce of April 7, 1992. The
application includes a disclaimer of the phrase STEAKHOUSE & SALOON
apart from the mark as a whole and a statement of ownership of
Registration No. 1,801,237.
Serial No. 74/565,919
2
U.S.C. 1052(e)(3),2 on the ground that applicant’s mark is
primarily geographically deceptively misdescriptive in
connection with its services.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
In order for registration to be properly refused under
Section 2(e)(3), it is necessary to show that (i) the mark
sought to be registered is the name of a place known
generally to the public; and that (ii) 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. In
re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982).
See also, In re California Pizza Kitchen, Inc., 10 USPQ2d
1704 (TTAB 1988), citing In re Societa Generale des Eaux
Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed.
Cir. 1987).
Mark Conveys Primarily Geographic Connotation.

2 The amendments to Section 2 of the Trademark Act of 1946 made by
Public Law 103-183, 107 Stat. 2057, The North American Free Trade
Enactment Act, apply to applications filed on or after December 8, 1993.
Prior to these amendments, the prohibitions against registration on the
grounds that a mark is primarily geographically descriptive or that a
mark is primarily geographically deceptively misdescriptive were
contained in Section 2(e)(2) of the Act. Under the law as amended, the
prohibition against registration on the ground that a mark is primarily
geographically deceptively misdescriptive is contained in Section
2(e)(3) of the Act, which is applicable to the case herein. The legal
standard for determining this issue has not changed, although marks
found to be primarily geographically deceptively misdescriptive are no
Serial No. 74/565,919
3
With regard to the first prong of the test, we find
that the primary significance of TEXAS is geographical.
There is no dispute that TEXAS is a state in the
southwestern part of the United States and that, as one of
the largest states in the United States, it is a place known
generally to the public.3
Further, we conclude that this geographic significance
is the primary connotation of the mark TEXAS STEAKHOUSE &
SALOON. We note that applicant has entered a disclaimer of
STEAKHOUSE & SALOON in the application. Notwithstanding the
disclaimer of record, the record supports the conclusion
that the phrase STEAKHOUSE & SALOON would be perceived as
merely informational in connection with the identified
services, signifying that applicant’s restaurants serve, at
least, steak and alcoholic beverages. As such, the addition
of the phrase STEAKHOUSE & SALOON to TEXAS does not detract
from the primary geographic significance of the composite
mark. See, In re Chalk’s International Airlines Inc., 21
USPQ2d 1637, 1639 (TTAB 1991).
Origin and Nature of Applicant’s Services.
Applicant states (5th unnumbered page of July 28, 1995,
response) that it does not operate any restaurants under the
mark in TEXAS; that its services do not originate from, and

longer eligible for registration under the provisions of Section 2(f) of
the Act, subject to certain grandfather provisions.
3 In support thereof, the Examining Attorney has made of record an
excerpt from Webster’s New Geographical Dictionary (1988).
Serial No. 74/565,919
4
are not based in, TEXAS; and that “none of [its] goods
originate from the State of Texas” (brief, p. 5).4 As the
Board noted in California Pizza Kitchen, supra at 1706:
[R]estaurant services would include the restaurant
concept, menu, recipes, etc., and even though a
customer in Atlanta, Georgia, would obviously
recognize that the particular branch of the
restaurant was physically located outside of
California, he would be likely to assume that the
restaurant services such as the concept, recipes
and even possibly the food originated in the state
of California.
In this regard, a perusal of the menu from applicant’s
restaurant, submitted as a specimen, indicates a restaurant
concept and menu theme strongly connected to the state of
TEXAS. For example, the menu cover includes the restaurant
name, the caption “Lunch Menu” and the slogan “A Texas State
of Mind.” Menu items include “Yellow Rose of Texas -
Awesome Onion,” “On the Border Favorites,” “Naples (TX)
Pasta,” “Texas Traditions,” and “Texas Pheasant on a Stick.”
Further, the menu includes several items which are touted as
coming from TEXAS, for example, “Del Rio Delmonico - a 7 oz.
Texas certified Delmonico ribeye...” and “Mustang Island

4 If applicant’s services or some of the food sold in applicant’s
restaurants, in fact, originated in TEXAS, the mark herein could be
appropriately refused registration under Section 2(e)(2) of the Act, on
the ground that such mark would be primarily geographically descriptive
in connection with the identified goods. However, in view of
applicant’s assertions that neither its restaurant services nor the food
served in its restaurants originates in TEXAS, the mark is properly
refused registration, under Section 2(e)(3), on the ground that the mark
is primarily geographically deceptively misdescriptive of the identified
services. To the extent purchasers believe that the restaurant services
or food served in applicant’s restaurants under the mark originate in
TEXAS, this belief is mistaken.
Serial No. 74/565,919
5
Shrimp - Four jumbo Lake Texas shrimp...” Neither
applicant’s menu nor the photographs of the front of one of
applicant’s restaurants, both submitted as specimens herein,
indicate a concept that is limited to “a romantic image of
the Old West.” Rather, the restaurant, as evidenced in this
record, portrays a timeless state of TEXAS theme.
Goods/Place Association.
We turn to the question of whether purchasers are
likely to make a services/place association between the
geographic place named in applicant’s mark and the
identified services. We answer that question in the
affirmative. The Examining Attorney has submitted an
excerpt from The University Desk Encyclopedia (1977)
indicating that “Texas is the leading state for cotton,
beef-cattle and sheep.” (p. 967.) The possibility that
restaurant patrons will draw an association between Texas
and beef is supported by the very fact that applicant’s own
previously referenced menu touts its steak as being “Texas
Certified.” We find a clear likelihood that prospective and
existing restaurant patrons are likely to believe,
mistakenly in this case, that applicant’s services have
their origin in or are somehow connected with TEXAS. The
record strongly supports the conclusion that applicant’s
restaurant theme encourages such an association. Further,
Serial No. 74/565,919
6
we note the Board’s discussion of this issue in California
Pizza Kitchen, supra at 1706-1707:
[R]estaurant services are so ubiquitous and a
state is such a large, significant geographic area
that it can be treated as a matter of common
knowledge that restaurant services are rendered
throughout every state of the United States,
including California.
In view of the foregoing, we have no
hesitation in concluding that consumers would
assume restaurant services rendered under the mark
“CALIFORNIA PIZZA KITCHEN” have their origin in
California.
We believe the same is true in this case with regard to the
state of TEXAS. Thus, we find sufficient evidence herein to
conclude that a services/place association is likely to be
made by purchasers between TEXAS and the restaurant services
identified in this application.
Applicant’s Argument.
Applicant argues, essentially, that the addition of the
phrase STEAKHOUSE AND SALOON to TEXAS serves to mitigate the
geographic significance of TEXAS because the mark, viewed in
its entirety, “suggests the romance of the open range,
gunfights at high noon, and an Old West saloon with swinging
doors, an image that is deliberately enhanced by the
carefully chosen Old West decor with which applicant has
furnished each of his eating establishments.” Applicant
argues, further, that no association would be made by the
public between applicant’s services and the state of TEXAS.
Serial No. 74/565,919
7
The only evidence that applicant has submitted in
support of these contentions is three statements signed by
patrons of applicant’s restaurants. The statements are
identical and appear to have been prepared by applicant. In
addition to stating that the individual is a regular patron
of a specified one of applicant’s restaurants, each
statement reads as follows:
I have never believed, and do not currently
believe, that the food or food services at the
Texas Steakhouse & Saloon actually come from the
State of Texas. I believe that the food and
services probably originate locally.
I patronize the Texas Steakhouse & Saloon
because I like the style of the restaurant and the
quality of its food and service, not because I
think either the food or food services actually
come from Texas. I associate the words “Texas”
and “Saloon” and the decor used throughout the
restaurant with the informal, maverick image of
the Western United States originating with the Old
West cowboy movie and not with the present-day
State of Texas or anything specific to Texas.
Two of the three statements are accompanied by the
statements of applicant’s restaurant managers to the effect
that:
. . . I presented the attached Statement of Patron
to a patron in the restaurant and asked him to
read it and to sign it if he found it to be
truthful and accurate. The patron agreed that the
statement is truthful and accurate and has
willingly signed the same.
We do not find these three conclusory form statements
persuasive of a different result in this case. First, we
find the submission of statements from only three of
Serial No. 74/565,919
8
applicant’s patrons to be a woefully small sample which is
insufficient to support applicant’s contentions. Second, we
are not persuaded by the form of the statements. Individual
testimonials in the patron’s own words would be
significantly more persuasive, although three samples would
remain too small a number to warrant a different conclusion.
Further, even if applicant had established an
association between TEXAS and a particular “image,” such
association would not contradict the primary geographic
significance of the term, as the association may be made
precisely because of the primary significance of TEXAS as a
state in the western part of the United States.
In conclusion, the Examining Attorney properly
considered the facts and correctly refused registration
under Section 2(e)(3) of the Act on the ground that the mark
herein is primarily geographically deceptively
misdescriptive in connection with the identified services.
Serial No. 74/565,919
9
Decision: The refusal under Section 2(e)(3) of the Act
is affirmed.
E. J. Seeherman
T. J. Quinn
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board