TTABlog Test: Is CALIHEMP Geographically Descriptive of Skin Care Products?

The USPTO refused to register the proposed mark CALIHEMP for “skin and body topical lotions, creams, oils, balms and salves for cosmetic use, all of the foregoing containing hemp oil extract containing hemp ingredients solely derived from hemp with a delta-9 tetrahyrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis,” deeming the mark primarily geographically descriptive of the goods under Section 2(e)(2). Applicant Smith & Vandiver argued that, because Cali is the name of a city in Colombia, the proposed mark does not solely signify the State of California. How do you think this came out? In re Smith & Vandiver, Corp., Serial No. 88477576 (December 20, 2022) [not precedential] (Opinion by Judge Martha B. Allard).

The Board observed that a term is primarily geographically descriptive under Section 2(e)(2) if “(1) the primary significance of the term in the mark sought to be registered is the name of a place that is generally known to the public; (2) the goods originate in the place identified in the mark; and (3) the public would make an association between the goods and the place named in the mark by believing that the goods originate in that place.”

Examining Attorney Diana Zarick made of record a variety of evidence, including evidence that the term CALI is the nickname for the state of California, that the term CALI is used by persons in the hemp industry to refer to the state of California, and that hemp-based goods commonly originate from there. She also made of record several third-party registrations for marks incorporating the term CALI for use with goods similar to those identified in the involved application, which registrations include disclaimers of “CALI” or reside on the Supplemental Register.

Noting that it is “well-settled that a geographic nickname, such as ‘Big Apple’ or ‘Motown’, is treated the same as the actual name of the geographic location” if it is likely to be perceived as such by the purchasing public. Here, the evidence showed that “the term CALI is a well-known nickname for the state of California and that it will be perceived as such by the purchasing public.”

Applicant argued that the primary significance of its proposed mark is not a reference to California because other locations also have the name CALI. It pointed to evidence that Cali is the capital of the Valle del Cauca department and the most populous city in southwest Colombia. As a result, applicant contended, there is insufficient evidence to establish that the term CALI will be perceived by the public “solely” as signifying the state of California, particularly since the record does not show that the Colombian population in the United States is de minimis.

The Board was unimpressed: “U.S. consumers will perceive CALI as referring to California given that CALI is well-known as the state’s nickname and given Applicant’s location in California.”

The Board further found that inclusion of the term HEMP in the mark is not sufficient to establish a non-geographically descriptive significance: i.e., "the addition of descriptive wording to a geographically descriptive term does not detract from the primary geographic significance of the mark.” In sum,  the Board found that “the geographical significance of the term CALI in the CALIHEMP mark is its primary significance.” Therefore, the first element of the Section 2(e)(2) test was satisfied.

As to the second element, the evidence established that Applicant Smith and Vandiver is located in California and that it intends to manufacture its goods therel. Thus, applicant’s goods originate in California. A goods/place association may ordinarily be presumed from the fact that “applicant’s goods originate in or near the place named in the mark.”

Having found that the first two elements are met, the Board may presume that the third element is also met: i.e, that the consuming public would believe that the goods originate in California.

[Applicant’s] arguments do not overcome the evidence of record that the primary significance of the term CALI to US consumers would be California. Applicant’s arguments also ignore the fact that Applicant itself is located in California and intends to produce its goods there; and (2) that the above evidence of third-party websites, such as Cali Cannabis Marketplace, Cali CBD, Cali Garden CBD and others, show a reasonable basis for concluding that the public is likely to believe that the CALI portion of the mark identifies the place, i.e., California, from which the goods will originate. Consequently, Applicant has failed to rebut the presumption that arises from having found that the first two elements of the test for geographical descriptiveness have been met.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Is this a WYHA? Before you answer that questions, did you know that CALIFLOWER is registered on the Principal Register, without a Section 2(f) claim, for "pre-packaged dried hemp flower cigarettes for smoking, and containing no more than 0.3% THC on a dry-weight basis." Double entendre?

Text Copyright John L. Welch 2022.