Test Your TTAB Judge-Ability: Is TINSELTOWN Geographically Descriptive of Clothing from Hollywood?
The PTO refused registration of the mark TINSELTOWN on the ground that the mark is primarily geographically descriptive of the goods, clothing items, under Section 2(e)(2). The Board inferred that the goods will come from Hollywood, California. The examining attorney relied on dictionary definitions and online references in maintaining that Tinseltown means Hollywood. But is Hollywood the primary meaning of Tinseltown? How do you think this came out? In re Topson Downs of California, Inc., Serial No. 85067696 (December 4, 2012) [not precedential].
Applicant Topson Downs got into early trouble by trying to convince the Board that the evidence attached to its appeal brief should be given consideration, claiming that it was not new evidence but was submitted "to demonstrate that unpersuasive quality of the Examiner's evidence." Not surprisingly, the Board was unmoved. Applicant should have submitted this evidence when the case was still before the Examining Attorney, or it could have sought remand from the TTAB in order to submit the new evidence.
The examining attorney claimed that Topson had failed to respond properly to a Rule 2.61 request that it "provide a written statement specifying where its goods will come from or originate." Topson stated that "its goods will originate in various locations both inside and outside California." The Examining Attorney found this response to be disingenuous because it "encompasses the entire universe." The Board, however, found the response acceptable, seeing no reason to question Topson's assertion that it had not yet made a decision in that regard. However, in light of Topson's broad statement, the Board inferred that "the locations inside California in which applicant's goods will originate include the area of Los Angeles known as Hollywood."
Turning to Section 2(e)(2), the first issue was whether the mark is the name of a place known generally to the public. [The second is whether the public would make a goods/place association, i.e., believe that the goods originate in that place].
The Board found it clear on the record that "Tinseltown" is a term used to refer both to the Hollywood section of Los Angeles and to the motion picture industry for which it is famous. In fact, the examining attorney's own evidence "suggest that it is the latter meaning, namely, that of the movie industry, that may be the primary denotation of the term Tinseltown as used in relation to applicant's goods."
The Board therefore found that the PTO failed to establish that the primary significance of TINSELTOWN is a geographic location, and so it reversed the refusal to register.
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TTABlog note: The Board pointed out that it reached a similar conclusion regarding the term HOLLYWOOD in In re International Taste Inc., 52 USPQ2d 1604 (TTAB 2000). There it ruled that the PTO had failed to establish that HOLLYWOOD primarily refers to a geographic location rather than the general entertainment industry. It therefore reversed a refusal to register the mark HOLLYWOOD FRIES for french fries and fast food restaurants absent a disclaimer of HOLLYWOOD.
Text Copyright John L. Welch 2012.