Thursday, March 22, 2007

TTAB Affirms 2(e)(2) Refusal of "CONFERENCE AMERICA" as Geographically Descriptive

Finding the mark CONFERENCE AMERICA ["CONFERENCE" disclaimed] to be primarily geographically descriptive, the Board affirmed a Section 2(e)(2) refusal to register the mark for various telecommunications services. In re Pirnie, Serial No. 76555048 (March 2, 2007) [not precedential].

The test for determining whether a service mark is primarily geographically descriptive has two prongs: (1) the mark (or portion thereof) must be the name of a place known generally to the public; and (2) the public must believe that the services originate in that place (i.e., there must be a services/place association). If the services do in fact originate from the place named, the requisite services/place association may be presumed.

The Board first found, not surprisingly, that AMERICA is the name of a place generally known to Americans, namely the United States of America, a place that is neither obscure nor remote. The business of Applicant Robert M. Pirnie is located in Montgomery, Alabama, a location within America. Therefore a services/place association may be presumed in this case.

As to CONFERENCE, Applicant's own use of the term at his website was "strong evidence that the term is highly descriptive of its services."

What about the composite mark, CONFERENCE AMERICA? In accordance with Board precedent, the addition of the highly descriptive term CONFERENCE does not detract from the geographical descriptiveness of AMERICA.

Applicant Pirnie argued that CONFERENCE AMERICA has a double meaning: it could be taken "as a command for 'America' to 'conference.'" The Board deemed that argument "wholly unpersuasive," finding "this meaning of CONFERENCE AMERICA to be so nebulous and tenuous that it cannot be said to detract from the primarily geographical significance of the mark."

Finally, Pirnie pointed to a 1993 registration that he already owns for CONFERENCE AMERICA for "telephone communication services; namely, connecting telephone conference calls for others." The Board noted, however, that it is "not bound by the Office's previous decision to allow this mark to be registered." Nor was the prior registration sufficient to rebut the "clear evidence presented by the Trademark Examining Attorney [Toni Y. Hickey] in this case that the mark is primarily geographically descriptive."

The Board therefore affirmed the Section 2(e)(2) refusal.

Text Copyright John L. Welch 2007.


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