Reversing a 2(e)(2) Geographical Descriptiveness Refusal, TTAB Asks, Where The Heck Is WINDHOEK?

The PTO refused registration of the marks WINDHOEK LAGER and WINDHOEK LIGHT [LAGER and LIGHT disclaimed], finding them to be primarily geographically descriptive of "beers" under Section 2(e)(2). The Board reversed the refusals because the PTO failed to establish that "the primary significance of applicant's marks is that of a generally known geographic place." Or to put it another way, where the heck is Windhoek? In re Namibia Breweries Limited, Serial Nos. 77761812 and 77761817 (September 12, 2011) [not precedential].


Well, Windhoek is the capital of the of the Republic of Namibia, in southern Africa. There was no dispute that Windhoek is a geographical place. Applicant is located in Windhoek and its beers originate there. The key question under Section 2(e)(2) was whether the primary significance of the marks WINDHOEK LAGER and WINDHOEK LIGHT is that of a name of a place that is generally known to the relevant purchasing public

To support a finding under Section 2(e)(2) that the primary significance of a mark consisting of or including a place name is its geographical significance, it must be shown that the place named in the mark is a place that is or would be generally known to the relevant purchasers, and not a place that is remote or obscure.

Applicant argued that Windhoek, Namibia "is so remote and obscure that the primary significance of the word WINDHOEK to those purchasers would not be that of the name of a geographical place."

The Board first found that the relevant purchasing public for "beers" is the average American beer purchaser. [What image comes to your mind? - ed.]. The generic terms LAGER and LIGHT have no significance in the 2(e)(2) analysis.

The Examining Attorney's evidence showed that Windhoek is the capital of Namibia and has a population of some 233,000. It is a tourist center for southern Africa, and various websites refer to Windhoek.

The Board, however, found that the PTO's evidence fell short of "establishing that the primary significance of WINDHOEK to average American beer purchasers would be its geographical significance."

The evidence does not establish that these purchasers have had any significant exposure to the designation WINDHOEK, and thus any basis for readily recognizing its geographical significance, when they encounter applicant’s marks.

There was no evidence that Windhoek is commonly mentioned in U.S. media, and the websites cited by the PTO are aimed at African readers. Nor was there evidence that Windhoek is a common or likely tourist destination for Americans, or statistics as to how many Americans visit Windhoek, or evidence of promotion of Windhoek as a tourist destination in this country. There was no evidence of American trade or scientific or cultural exchanges with Windhoek or Namibia.

And so the Board concluded that, on this record, Windhoek, Namibia "is a relatively obscure and remote place which would not be generally known to average American beer purchasers."

We find it to be unlikely that average American beer purchasers would have been exposed to the geographical significance of the designation WINDHOEK to such an extent that, when they encounter applicant’s marks, they will readily recognize WINDHOEK to be a place name, rather than view it as an arbitrary designation being used as a trademark for the goods.

The Board therefore concluded that the first prong of Section 2(e)(2) was not satisfied, and so it reversed the refusal.

TTABlog comment: I like to think of myself as an above-average American beer purchaser, and I've never heard of Windhoek. I does sound like a geographical place, maybe in Australia or New Zealand. Suppose the average consumer thinks that Windhoek is a place, but doesn't know where it is. Would that be enough to satisfy the first prong of Section 2(e)(2)? I doubt it.

Text Copyright John L. Welch 2011.