Thursday, October 13, 2016

TTAB Test: Is MERSIN (Turkey) Primarily Merely Geographically Descriptive of Cheese?

The USPTO refused to register the mark MERSIN, in the design form shown below, for cheese, garnish, and pastry products, without a disclaimer of the word MERSIN, on the ground that Mersin is primarily merely geographically descriptive of the goods under Section 2(e)(2). Applicant Gungor relied on In re the Newbridge Cutlery Co. [TTABlogged here] in arguing that Mersin, Turkey is so obscure and remote that its primary significance to US consumers is not geographic. How do you think this came out? In re Yahya Kemal Gungor, Serial No. 86263642 (October 11, 2016) [not precedential].

Applicant submitted four maps of Turkey that did not identify Mersin, but Examining Attorney Seth Dennis proffered 18 maps, 17 of which identified Mersin. Gungor acknowledged that the population of Mersin is 940,000 (far more than Newbridge, Ireland's 20,000). Moreover, unlike the word Newbridge, Mersin has no other meaning. "Thus, with a sizeable population, and no alternative meaning, we find that the primary significance of Mersin is a generally known geographic location."

As to whether consumers are likely to make a goods/place association, Applicant stated that the goods will be manufactured, packaged, shipped from, and sold in Mersin, as well as other cities within Turkey. That was sufficient to show a nexus with Mersin, and thus a goods/place association may be presumed. In addition, the Examining Attorney provided evidence that Mersin is known for some of the goods identified in the application.

Applicant argued that the very small subgroup of Arab Americans constitutes about 1.2 million people, and those of Turkish ancestry comprise another half million. The Board found those numbers not insubstantial. In any event, the consumers of applicant's goods are not limited to any particular ethnic or national origin and include anyone interested in foods of this type. Indeed, Internet evidence submitted by the Examining Attorney demonstrated that consumers have associated applicant's food products with Turkey and with Mersin in particular.

Finally, applicant pointed to third-party registration for marks containing the names of Turkish cities, but the Board noted that all but two were registered under Section 2(f), indicating that those terms have been recognized as primarily merely geographically descriptive. Of course, the Board is not bound by these registrations anyway.

And so the Board affirmed the refusal based on applicant's failure to disclaim MERSIN. Applicant was allowed two months to submit an appropriate disclaimer.

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Text Copyright John L. Welch 2016.


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