TTAB Reverses 2(e)(2) Refusal: KAPALUA Not Geographically Descriptive of Retail Store Services

The Board reversed a Section 2(e)(2) refusal to register the mark KAPALUA for retail an online store services, finding that the primary significance of the mark is to identify the source of Applicant’s services rather than the geographic location of its resort development. The examining attorney submitted numerous third-party Internet references to "Kapalua," but Applicant showed that most of the references pertained to the resort and/or other services rendered under the mark. In re Kapalua Land Company, Ltd. , Serial No. 76670962 (March 26, 2013) [not precedential].

A mark is primarily geographically descriptive under Section 2(e)(2) if (1) the mark’s primary significance is the name of a place generally known to the public, and (2) the relevant public would be likely to make a goods or services/place association (i.e., would be likely to believe that the services originate in the place named in the mark).

Applicant owns the Kapalua Resort on the northwestern coast of the Hawaiian island of Maui. Its parent company adopted "KAPALUA" as the name for its resort, and it was the first to apply that name to the resort’s location. Applicant argued that KAPALUA had no geographical significance before Applicant chose the name for its resort; that it has extensively promoted its upscale real estate properties, hotel services, and golf services under the KAPALUA mark; and that it has maintained quality control over use of that mark by others.

The first question for the Board was whether the primary significance of the mark KAPALUA is to designate applicant’s services or to designate the geographic location where its resort development is sited. The Board noted that neither the fact that an applicant coins a name for a geographic area, nor that it owns and controls access to or use of that property, changes the nature of a term that is in fact primarily geographically descriptive.

The Board found the geographic significance of KAPALUA to be subsidiary to the function of the word as a service mark.

[T]he greater weight of the evidence shows that KAPALUA did not signify a geographic place before applicant adopted the term to designate the origin of its services and it continues to serve the function of designating source. Second, there is no record evidence of any manufacturer or other commercial enterprise in a place named “Kapalua” outside of applicant’s ownership or control.

Although the examining attorney submitted numerous third-party Internet references to "Kapalua," Applicant overcame that evidence "by demonstrating that most such references either clearly pertain to the resort and other services rendered under its mark (by applicant or authorized third parties) or are consistent with that interpretation.

Because the first prong of the Section 2(e)(2) test was not met, the Board did not need to consider the second prong.

And so it reversed the refusal to register.

Read comments and post your comments here.

Text Copyright John L. Welch 2013.