TTAB Test: Is EAST END Geographically Descriptive of a Houston Applicant's Alcoholic Beverages?

The USPTO refused registration of EAST END for "Alcoholic beverages, except beers, ales, stouts, ciders and wines; alcoholic beverages, namely, distilled spirits, vodka," finding the mark to be primarily geographically descriptive under Section 2(e)(2). The examining attorney relied on a variety of evidence indicating that "East End, Houston" is a district in Houston, Texas, and on applicant's website stating that applicant is located in Houston's East End.How do you think this came out? In re Buffalo Bayou Distilleries, LLC, Serial No. 86583137 (July 30, 2018) [not precedential] (Opinion by Judge Cynthia C. Lynch).

To establish that a term is primarily geographically descriptive and therefore barred by Section 2(e)(2), the USPTO must show that:

1. the primary significance of the term is the name of a place generally known to the public.
2. the source of the goods is the place named in the mark.
3. the public would make an association between the goods and the place by believing that the goods originate there.

When the goods do emanate from the place named, a goods/place association may be presumed. The CAFC in Newbridge Cutlery [TTABlogged here] clarified that refusals under Section 2(d) applies "only to those marks for which the geographical meaning is perceived by the relevant public as the primary meaning and ... the geographical significance of the mark is to be assessed as it is used on or in connection with the goods."

The Board found that EAST END "clearly has geographical significance, but ... the inquiry under Section 2(e)(2) is more involved."

Applicant Buffalo Bayou argued that every town has an East end and each consumer would understand the mark EAST END as referring to the East end of his or her own town. BB submitted a list of the first ten Google brand search results for "east end usa," the first four entries being: East End, U.S. Virgin Islands East End Historic District (Newburgh, New York); East End, Arkansas; and East End (Long Island). The ninth entry referred to the district in Houston. The examining attorney submitted search results for "east end and texas" and found references to Houston's East End.The Board found that, to the extent the lists are probative, applicant's list was more persuasive since the applied-for mark contains no reference to Texas.

The examining attorney also pointed to two registrations in which "East End" is disclaimed, but it appeared that both references were to locations not in Houston.

The Board was "unconvinced that 'East End' primarily identifies a geographic location in Houston that is 'known generally to the American purchasing public.'" Quoting Newbridge.

In this case, the record reflects that “East End” can refer to numerous geographic locations, suggesting that its primary significance is not referring to the area in Houston, Texas. Also, the quantity and nature of the evidence regarding the East End of Houston does not establish that it is generally known to U.S. consumers. We lack persuasive evidence showing, for example, that the East End of Houston has a sizable population, a well-known historical significance, is a popular tourist destination, or has a widely recognized reputation for some other reason. Rather, we find a similarity to the situation in Societe Generale des Eaux Minerals de Vittel, 3 USPQ2d at 1452, where the Court stated, “[t]here can be no doubt that the PTO has established that Vittel is in fact the name of a small town in the Voges mountain region of France … but how many people in this country know that?” The first prong of the inquiry under Section 2(e)(2), that the primary significance of the term in the mark sought to be registered is the name of a place generally known to the public, is not satisfied.

And so the Board reversed the refusal.

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TTABlog comment: Hat tip to FOB's John Egbert and Kevin Wilson, perennial Meet-the-Bloggers attendees.

Text Copyright John L. Welch 2018.