TTAB Sustains Opposition to LAGUNA CANDLES: Geographically Descriptive of Candles

The Board sustained a Section 2(e)(2) opposition to registration of the mark LAGUNA CANDLES, finding it to be primarily geographically descriptive of "candles and fragrant candles" [CANDLES disclaimed]. Applicant claimed acquired distinctiveness - an issue that, although not pleaded, was tried by implied consent - but its proofs were unconvincing. Flame & Wax, Inc. v. Laguna Candles, Opposition No. 91200223 (October 2, 2013) [not precedential].

Section 2(e)(2): Opposer Flame & Wax had standing to bring the claim because it is a competitor of Applicant and sells a line of "Maison Laguna" candles. To establish a claim under Section 2(e)(2), a plaintiff must show that (1) the primary significance of the mark is a generally known geographic location, and (2) purchasers would be likely to believe that the goods originate in that location. If the named location is remote or obscure, or if the term has well recognized other meanings, then the term is not primarily geographic. A geographic nickname (like "Big Apple") is treated like the true geographic name.

Laguna Beach is a city in southwest California, a resort and artists' colony that draws millions of visitors annually. The evidence of record included many references to Laguna Beach as "Laguna." Applicant submitted evidence regarding other meanings of "laguna," including a definition of the word as a "lagoon, lake, or pond." "Laguna" is also a surname, as well as the name of multiple geographic locations, including Laguna Army Airfield in Arizona; Laguna, Imperial County in California; and Laguna, New Mexico. Website evidence referred to three "Laguna" cities in Orange County, California. However, according to the record evidence, Laguna Beach is the only city that has any renown outside of Orange County.

The Board was therefore satisfied that LAGUNA is primarily a geographic term that refers to Laguna Beach, California.

Applicant is located in Laguna Beach. Her Facebook page featured photographs of Laguna Beach, and her advertising created a connection with the artisans for which Laguna Beach is known. Candles are one of the products sold by artisans in Laguna Beach. Therefore, the Board found, consumers are likely to believe that applicant's candles originate in Laguna Beach.

And so the Board found the two-pronged test of Section 2(e)(2) to be satisfied.

Acquired Distinctiveness: Because applicant now invoked Section 2(f), it had in essence pleaded an affirmative defense of acquired distinctiveness and bore the burden to prove same.

Applicant asserted use of its mark since 2001, sale of approximately 15,000 candles, and revenues of approximately $384,000. Sales took place in eight stores in Orange County and one store in San Diego. It spent $86,500 on advertising.

The Board was not impressed. Although applicant has managed to stay in business for ten years, that does not indicate that the applied-for mark is recognized as a source indicator. The sales and advertising figures are "hardly persuasive evidence of acquired distinctiveness for products marketed to the general public." And there was no evidence of any media recognition of the applied-for mark as a source indicator.

And so the Board concluded that applicant had failed to establish acquired distinctiveness, and it sustained the opposition.

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TTABlog note: How did this application get past the examination stage?

Text Copyright John L. Welch 2013.