Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE JULEIGH JEANS SPORTSWEAR, INC.
Serial No. 73/833,721
September 25, 1992
Kam Louie, Attorney for applicant.
Trademark Examining Attorney
Law Office 15
(Paul Fahrenkopf, Managing Attorney)
Before Seeherman, Quinn and Hohein
Opinion by Hohein
An application has been filed by Juleigh Jeans Sportswear, Inc. to register the mark "LONDON LONDON" and design, as reproduced below, for "sportswear, namely, jackets, skirts, shirts and pants". [FN1]
Registration on the Supplemental Register has been refused under Sections 2(a) and 23(a) of the Trademark Act, 15 U.S.C. §§ 1052(a) and 1091(a), on the ground that applicant's mark is geographically deceptive. [FN2]
Applicant has appealed. Briefs have been filed but an oral hearing was not requested. We affirm.
Preliminarily, there is an issue as to what evidence is properly of record in this case. In this regard, the Board on October 28, 1991 issued an order which, after noting the filing of applicant's notice of appeal and its request for reconsideration on April 25, 1991, and the subsequent submission of its appeal brief, [FN3] stated in relevant part that:
Since the amendment to the Supplemental Register serves to obviate the final refusal to register upon the Principal Register, proceedings in the appeal are suspended and the file of this case is remanded to the Trademark Attorney for consideration of the question of the registrability upon the Supplemental Register of the phrase which is the subject matter of this application. .... If the Trademark Attorney ultimately issues a final refusal to register upon the Supplemental Register, the "6-month response" clause usually appearing in the letter in which such action is taken should be deleted; the file of this case should be returned to the Board; action on the appeal will be resumed; and applicant will be allowed sufficient time in which to file a supplement to its appeal brief.
Applicant's amendment to the Supplemental Register is acknowledged. The Office Action of November 11, 1990 withdrew the Section 2(e)(2) refusal because applicant had disclaimed the word LONDON in a previous amendment. The only refusal made final in that Office Action was the Section 2(a) refusal. While the Examining Attorney has no objection to applicant's amendment to the Supplemental Register, such an amendment has no bearing on the Section 2(a) refusal. The only issue on appeal therefore is whether the mark is deceptive as applied to the goods in the application. The applicant's arguments that the term LONDON is not deceptive is [sic] not persuasive and the final refusal to register under Section 2(a) is maintained.
After an explanation of the basis for her position, including reference to additional evidence consisting of an encyclopedia article and excerpts from stories appearing in Mead Data Central, Inc.'s NEXIS data base, the Examining Attorney concluded by stating that:
*2 For these reasons, the refusal to register under Section 2(a) because the applicant's mark LONDON LONDON is geographically deceptive is repeated. This file is being returned to the Trademark Trial and Appeal Board for resumptions [sic] of the appeal.
Thereafter, the Board on December 16, 1991 issued an order resuming the appeal and allowed applicant until February 14, 1992 to file a supplemental brief. Applicant, on February 14, 1992, submitted its supplemental brief and attached thereto, as further evidence, copies of numerous third-party applications and registrations for marks containing the term "LONDON" as applied to clothing and footwear items. In its supplemental brief, applicant noted the additional evidence furnished by the Examining Attorney and, contending that it "has not had a similar opportunity to provide additional or countervailing information after ... filing of the Notice of Appeal," requested that "this matter be remanded to the Examining Attorney for consideration of such evidence". [FN4]
The Examining Attorney, in her brief, has objected to the further evidence presented by applicant, arguing that the submission thereof is untimely under Trademark Rule 2.142(d). [FN5] Applicant, in its reply brief, stresses that it was the Examining Attorney who first introduced additional evidence after the filing of the appeal. Applicant consequently "objects to the introduction of this evidence unless Applicant also has an opportunity to introduce countervailing evidence". [FN6]
In this case, the only basis for the final refusal was the Section 2(a) ground and, as correctly recognized by the Examining Attorney, the amendment to the Supplemental Register had no effect on that ground. That is, a mark which falls within the prohibition of Section 2(a) is no more registrable on the Supplemental Register than it is on the Principal Register. Thus, because the amendment to the Supplemental Register did not serve to overcome the final refusal to register, or to raise a new issue, [FN7] the Examining Attorney should have requested a remand in order to make of record the additional evidence included with the Office Action of December 4, 1991. [FN8]
Nevertheless, while the above practice was not followed, it is clear that applicant has no objection to the Examining Attorney's introducing additional evidence provided that the further evidence offered by applicant is also considered. [FN9] The application is accordingly deemed to have been remanded for inclusion of the supplemental evidence furnished by both the Examining Attorney and the applicant. We hasten to point out, however, that even if such evidence were to be excluded, it would make no difference in the result in this appeal.
Turning now to the refusal predicated on the basis that applicant's mark is geographically deceptive within the meaning of Section 2(a), the Federal Circuit has recently stated in this respect that:
A mark may be established as a geographically deceptive mark under § 2(a) by showing that it is primarily geographically deceptively misdescriptive under § 2(e)(2), and additionally showing that the geographic misrepresentation is material to the decision to purchase the goods so marked. See In re House of Windsor, Inc., 221 USPQ 53, 56-57 (TTAB 1983); cf. In re Budge Manufacturing Co. Inc., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed.Cir.1988) (whether the misdescription is likely to affect the decision to purchase).
*3 Institut National des Appellations D'Origine v. Vintners International Co. Inc., 958 F.2d 1574, 22 USPQ2d 1190, 1195 (Fed.Cir.1992). The court additionally indicated that:
Whether a mark is primarily geographically deceptively misdescriptive under § 2(e)(2) requires an analysis under a two prong test to establish (1) whether the primary significance of the mark as it is used is a generally known geographic place; and (2) whether the public would make a "goods/place association, i.e., believe that the goods for which the mark is sought to be registered originate in that place." In re Societe Generale Des Eaux Minerales de Vittel, S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1452 (Fed.Cir.1987); In re Loew's Theatres, Inc., 769 F.2d 764, 767, 226 USPQ 865, 867 (Fed.Cir.1985); In re Nantucket, Inc., 677 F.2d 95, 98-99, 213 USPQ 889, 892-93 (CCPA 1982). In addition, the word "primarily" in § 2(e)(2) should not be overlooked, for it is not the intent of the federal statute to refuse registration of a mark where the geographic meaning is minor, obscure, remote, or not likely to be connected with the goods. Nantucket, 677 F.2d at 99, 213 USPQ at 893.
Id. Thus, provided that all of the above tests are satisfied and that the goods, in fact, do not originate from or otherwise have a significant connection with the geographical location named in or by the mark, a refusal under Section 2(a) is proper. See, e.g., In re Perry Manufacturing Co., 12 USPQ2d 1751 (TTAB 1989) and In re House of Windsor, Inc., 221 USPQ 53, 56- 57 (TTAB 1983), recon. denied, 223 USPQ 191, 192 (TTAB 1984). See also In re Sharky's Drygoods Co., 23 USPQ2d 1061, 1062 (TTAB 1992).
Applying the law to the facts of this case, we agree with the Examining Attorney that applicant's mark is geographically deceptive and hence is not registrable on the Supplemental Register. Applicant, in this regard, has stated that its goods "mostly" originate from Taiwan, Indonesia and Los Angeles. Moreover, there is no question that London, as the capital of England, is a well-known, major city and thus is a geographical designation. While, concededly, London also has some surname significance, there can be no doubt, in light of the evidence included with the first and second Office Actions, that the primary connotation of such term, especially as applied to items of clothing, is geographical given London's reputation as a center of fashionable apparel.
In particular, such evidence includes excerpts, made of record with the initial Office Action, from a travel guide to London, England which states, with respect to shopping for clothing, that:
*4 London is one of the top cities for women's fashion. Clothes are on offer here in every price range and every style, and many leading international houses have major branches in the city.--Fodor's 89 London at 182; and
What is true for women's wear goes even more for men's. London is still renowned for its male fashions, especially in the more sober, traditional categories.--Id.
A portion of another travel guide, furnished as part of the second Office Action, similarly indicates that: "Clothes in London divide themselves easily into two categories: the traditional 'correct English' look you'll find on Savile Row and the Bond streets, and the new wave of British designers who take their cue from modern architecture and street fashion". A Bantam Travel Guide London 1989 at 167.
Other evidence submitted with the latter action consists of an article from the November 1990 edition of Elle magazine which notes that London, England is a "fashion capital" with "a well-deserved reputation for creating bold, daring fashion that seasonally piques the interest of international press and buyers eager to soak up or adopt the oozing creativity"; [FN10] an article from the September 1989 issue of Taxi magazine which refers to the Fall fashion collections from London, Milan, Paris and New York; and several stories from other publications, obtained from a search of the NEXIS data base, which report on fashions created by London-based designers.
Although applicant, in its initial brief, stated that "it is not denied that London has a fashion industry," applicant argues in its reply brief that such statement is not a concession that London "has fashion as one of its principal products". We believe, however, that the Examining Attorney has established a prima facie case that the public would make a goods/place association in that, given the renown of London, England for both the latest as well as the more traditional styles of apparel and the influence of its fashion designers, the public would be likely to believe that the clothing for which applicant seeks registration of its mark originates in London. [FN11]
Applicant further contends that the design of its mark, in which the words "LONDON LONDON" are "rendered in a fanciful and distinctive manner," is such that "the geographic connotation is subsumed in the meaning of the mark as a whole". There is nothing, however, in the repetition of the term "LONDON" in a reversed, upside-down presentation which would slow, obscure or preclude recognition of the primary geographical significance of such term. If anything, separately repeating the term in the way applicant has done in its mark serves to reinforce the image of London as a trendy center of fashion. Furthermore, as the Examining Attorney has observed, the hangtags (one of which is illustrated below) submitted as some of the specimens with the application feature a representation of a London policeman, in the recognizable uniform of a bobby, [FN12] as well as depicting the monetary symbol for the English pound.
*5 The hagtags, besides bearing applicant's mark next to the picture of a bobby, also contain the legend "the new untraditional look!" In this context, there simply is no doubt that the public would associate applicant's clothing with London, England and would regard the unorthodox, if not novel, manner in which applicant's mark displays the terms "LONDON" as evocative of the latest in the contemporary fashion designs for which London is well known.
Accordingly, and in light of applicant's admission in its supplemental brief that its mark is "geographically misdescriptive," it is clear that such mark is at least primarily geographically deceptively misdescriptive of its goods. The determinative issue in this appeal, therefore, is whether the geographical misdescription created by applicant's mark has been shown to be material to the purchase of items of clothing which are so marked. We think that the evidence of record fully supports a finding that the necessary showing has been met. Specifically, given the demonstrated fame of London as a center for contemporary as well as traditional fashions, and the cachet attached to the clothes made and sold there due to London's longstanding reputation for fine quality and stylish apparel, [FN13] we can only conclude that a London connection would be more appealing or desirable to prospective purchasers [FN14] and, thus, this factor would be material to the decision to purchase such clothing. See In re Perry Manufacturing Co., supra at 1752.
Applicant nevertheless contends that while the Patent and Trademark Office "is not bound by previous registrations, the great number of registered and soon-to-be registered trademarks comprising the word 'LONDON' for apparel goods is compelling evidence that the United States Patent and Trademark Office has consistently, overwhelmingly and recently, taken the position that 'LONDON', when used in connection with apparel goods, is not a material factor in a purchaser's decision to buy those goods". Such, however, is simply not the case. The drawings from the third-party applications are evidence of nothing other than the fact that the applications containing the drawings were filed. As to the third-party registrations, some of which issued anywhere from 15 to 25 years ago, and before the Board specifically adopted the materiality test for geographically deceptive marks as set forth in In re House of Windsor, supra, we observe that the primary significance of many of the marks, such as "LONDON FOG," "LONDON METRO" and "MAGGY LONDON," is not geographical. More importantly, as applicant acknowledges, 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 registration by the Trademark Examining Groups does not control the result in another case, like this one, which involves a different mark.
*6 Lastly, applicant asserts that inasmuch as all clothing manufactured in a foreign country and imported into the United States is required to bear a country of origin designation, [FN15] the reality is that consumers would not be deceived into believing that applicant's goods come from London, England. While, in actuality, neither the hangtags nor the labels submitted by applicant as specimens designate the country of origin for its goods, we observe that even if applicant otherwise is in compliance with the labeling requirements in this respect, its mark must still be regarded as geographically deceptive. This is because, as explained in In re Budge Manufacturing Co. Inc., 857 F.2d 773, 8 USPQ2d 1259, 1261 (Fed.Cir.1988) (citation omitted):
Misdescriptiveness of a term may be negated by its meaning in the context of the whole mark inasmuch as the combination is seen together and makes a unitary impression. .... The same is not true with respect to explanatory statements in advertising or on labels which purchasers may or may not note and which may or may not always be provided. The statutory provision bars registration of a mark comprising deceptive matter. Congress has said that the advantages of registration may not be extended to a mark which deceives the public. Thus, the mark standing alone must pass muster, for that is what the applicant seeks to register, not extraneous explanatory statements.
In summary, whether it is the traditional tailoring of Savile Row and Bond Street, or the new wave stylings of its cutting-edge designers, fashion and London are inextricably linked in the public's mind. Applicant, by adopting and using the mark "LONDON LONDON" and design for its items of clothing, plainly seeks to benefit from the renown of London for fashionable articles of apparel. Because, in fact, no such connection exists with respect to applicant's goods, and since the favorable reputation of London for clothing is a material factor influencing the decision to purchase an item therefrom, we conclude that applicant's mark is geographically deceptive within the meaning of Section 2(a). It therefore is precluded by Section 23(a) from registration on the Supplemental Register.
Decision: The refusal under Sections 2(a) and 23(a) is affirmed.
Members, Trademark Trial and Appeal Board
FN1. Ser. No. 73/833,721, filed on October 25, 1989, which alleges dates of first use of November 15, 1987. The term "LONDON" is disclaimed.
FN2. Although registration was originally sought on the Principal Register, applicant amended the application to the Supplemental Register when, in response to a final refusal on the basis of geographical deceptiveness, it filed a request for reconsideration thereof, together with a notice of appeal, on April 25, 1991. Such amendment was requested by applicant even though other previously issued refusals on the grounds that its mark was primarily geographically deceptively misdescriptive and was likely to cause confusion had already been withdrawn.
FN3. Such brief was timely filed with a certificate of mailing dated June 24, 1991. Trademark Rule 2.142(b)(1).
FN4. While applicant characterizes the material furnished with its supplemental brief as "new evidence," it appears therefrom that four of the seven applications had been filed, and all but two of the 22 registrations had been issued, prior to applicant's filing of its notice of appeal. Such applications and registrations can scarcely be called "new evidence," that is, evidence which was not previously available.
FN5. The rule specifies that:
The record in the application should be complete prior to the filing of an appeal. The Trademark Trial and Appeal Board will ordinarily not consider additional evidence filed with the Board by the appellant or by the examiner after the appeal is filed. After an appeal is filed, if the appellant or the examiner desires to introduce additional evidence, the appellant or the examiner may request the Board to suspend the appeal and to remand the application for further examination.
FN6. It is apparent from the reply brief that the "countervailing evidence" applicant seeks to have considered is the copies of the third-party applications and registrations it submitted with its supplemental brief. This material, according to applicant, constitutes "substantial evidence that the United States Patent and Trademark Office has consistently found the term 'LONDON' to not play a material part in a purchaser's decision to purchase apparel goods bearing that word".
FN7. The Board's October 28, 1991 order is in error in indicating that "the amendment to the Supplemental Register serves to obviate the final refusal to register upon the Principal Register".
FN8. Similarly, when an applicant files a notice of appeal from a final refusal made under both Sections 2(a) and 2(e), and also files an amendment to the Supplemental Register (in order to overcome the Section 2(e) refusal), an Examining Attorney may not use the Board's suspension of the appeal and remand of the application for a determination of registrability on the Supplemental Register as an opportunity to introduce additional evidence in support of the prior refusal to register under Section 2(a). Instead, if an Examining Attorney determines upon remand that, while an amendment to the Supplemental Register is permissible, the Section 2(a) refusal must be maintained, and also desires to introduce additional evidence in support of such refusal, a request for remand of the application for that purpose, indicating the reasons therefor, should generally be submitted to the Board.
FN9. We also recognize that the Examining Attorney's failure to request a remand for the submission of additional evidence may have been the result of the error in the Board's October 28, 1991 order remanding the application for consideration of the amendment to the Supplemental Register (see footnote 7).
FN10. The article also states that:
"Every fashion capital has its signature, the hallmark style that telegraphs that city's pulse in no uncertain terms. New York is No Nonsense Modern. Paris is No Limits Chic. And London is No Rules Wild!" ....
Set against the world-famous English style that is impeccable Savile Row suits, crisp Jermyn Street shirts, and shiny Church brogues is London's seemingly cyclical need to startle and shock not only itself but the rest of the planet as well.
FN11. Applicant's reliance upon Kayser-Roth Corp. v. Silver Knit Hosiery Mills, Inc., 481 F.2d 1348, 179 USPQ 41 (CCPA 1973), is misplaced. While, as to the marks "LONDON GUARD" and "LONDON LEGS," the majority of the court in that case did indeed agree that "the word 'LONDON' is arbitrary as applied to hosiery," which obviously is an item of wearing apparel, it also pointed out, with respect to the third-party registrations cited by the appellee, that: "As is so often the case, there is no further evidence of use of the marks on the goods recited therein, and there is nothing else in the record which would suggest any other reasonable connection between 'LONDON' and hosiery". The record here, by contrast, strongly supports the association of London with articles of apparel of all kinds, including such sportswear items as jackets, skirts, shirts and pants.
FN12. We judicially notice that The Random House Dictionary of the English Language (2d ed. 1987) at 231 defines "bobby" as an informal British term for "a policeman" and further indicates that such term had its derivation from "special use of Bobby, for Sir Robert Peel, who set up the Metropolitan Police system of London in 1828".
FN13. Applicant asserts that the materiality of the city of London for fashion is brought into question by the story appearing in the New York Times on June 4, 1989, which is headlined "Fashion: The Allure of Milan and London" and states, in part, that: "It would be all too easy to dismiss London and Milan as second cities--once-celebrated fashion capitals whose offerings these days pale in the blaze of French creativity". The very next sentence in the article, however, reads: "Easy, and shortsighted too, since each remains a mecca to fashion watchers, who look at London for trendy ideas and to Milan for the sort of refined innovation that ultimately finds its way into fashion's mainstream." The article, therefore, can hardly be said to disparage London's renown for fashion and, instead, plainly supports the Examining Attorney's position.
FN14. Although the evidence is cumulative and, therefore, unnecessary to support the finding of materiality, we note that the encyclopedia article submitted as part of the additional evidence submitted by the Examining Attorney after applicant filed its notice of appeal discloses the following information about London's shopping districts and markets:
The most important retail shopping concentration in the United Kingdom is Oxford Street.... The heavy shopping activity flows southward along Regent Street to Piccadilly Circus, turns right along Piccadilly, with northward branches along Sackville Street and Savile Row, where eminent tailors still make some of the world's finest men's clothing. .... Parallel and a little further west, Bond Street is still a magnet for lavish spenders from around the world. South of Piccadilly, and parallel to it, Jermyn Street is studded with long-established makers of costly shirts, hats, and other male accoutrements.
23 New Encyclopaedia Britannica 296-97 (15th ed. 1988).
FN15. Applicant requests that the Board take judicial notice of 19 U.S.C. § 1304. According to applicant, "[t]hat statute requires that every article of foreign origin (or its container) imported into the United States ... 'shall be marked in a conspicuous place as legibly, indelibly and permanently as the nature of the article will permit in such manner as to indicate to an ultimate purchaser in the United States the English name of the country of origin of the article'."