TTAB Affirms 2(e)(2) Refusal of "THE MUNICH & Design" for Business Services Without a Disclaimer of MUNICH

Applicant Christoph Geskes stated that his various recited business services would originate from Munich, Germany. Examining Attorney Andrea R. Hack issued a final refusal of his applied-for mark THE MUNICH on the ground that the word MUNICH is primarily geographically descriptive under Section 2(e) and must be disclaimed. The Board affirmed the refusal. In re Geskes, Serial No. 77911173 (February 9, 2012) [not precedential].


Applicant's recited services ranged from forestry management to insurance brokerage to beauty care for human beings. He relied on Section 44(d) of the Lanham Act as his basis for registration.

Pursuant to Section 2(e)(2), a mark is primarily geographically descriptive if (1) it is the name of a place that is generally known to the public, and (2) the public would make a goods/place association, believing that the goods or services originate from that place. When there is no doubt that the geographical significance is the mark's primary significance, and where the place is neither obscure nor remote, a public association would be presumed if the applicants goods/services originate from that place.

Applicant did not dispute the Board's presumption of a services/place association. Instead he argued that a disclaimer of Munich is not warranted because the combination of THE and MUNICH creates an incongruity:

THE MUNICH is incongruous because in common usage the word the is a definite article that is not used before the names of cities. And, of course, "incongruity is one of the accepted guideposts in the evolved set of legal principles for discriminating the suggestive from the descriptive mark.” In re Shutts, 217 U.S.P.Q. 363, 364-65 (T.T.A.B. 1983) (SNO-RAKE held not merely descriptive).

The Board agreed that an incongruous combination of nondistinctive words is registrable as a unitary mark: e.g., URBAN SAFARI, MR. MICROWAVE, DR. GRAMMER, FRANKWURST, TINT TONE. The Board stated the question at hand thusly: "[W]hether the addition of the definite article 'The' before the word MUNICH in applicant's composite mark THE MUNICH, turns the unregistrable term into a trademark." [I would have said "turns the unregistrable term into a registrable trademark" - ed.].

The Board answered the question in the negative. A number of cases have found the definite article "THE" to have no source-identifying significance when added to an otherwise descriptive term: e.g., THE MART, THE MAGAZINE FOR YOUNG WOMEN. Here, combining THE with MUNICH, although in a grammatically incorrect manner, "does not create a unique, incongruous or geographically non-descriptive term whose meaning would require some measure of imagination and 'mental pause.'"

And so the Board affirmed the disclaimer requirement.

TTABlog comment: The USPTO recently issued an Examination Guide concerning disclaimers: "Additional Considerations for Determining Whether Wording in a Mark Comprises a Unitary Phrase or Slogan for Purposes of Disclaimer." Available at this link.

What about THE HARTFORD, registered for insurance services? Ahhhh, but under Section 2(f).

Text Copyright John L. Welch 2011.