TTAB Affirms Geographical Descriptiveness Refusal of "SOHO INK" for Tattoo Ink

The Board affirmed a Section 2(e)(2) refusal of SOHO INK for tattoo ink, tattooing equipment, and tattoo services in Classes 2, 8, and 44 [INK disclaimed], finding the mark to be primarily geographically descriptive of those goods and services. It also affirmed a requirement that the applicant disclaim the word SOHO for clothing. In re Ink Projects LLC, Serial No. 87856799 (March 15, 2023) [not precedential] (Opinion by Judge Angela Lykos).

The test for determining if a mark is primarily geographically descriptive is whether:

• (1) the primary significance of the term in the mark is a generally known geographic location;
• (2) the goods or services originate in the place identified in the mark; and
• (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark.

The relevant public consists of individuals "seeking 'tattooing services, body piercing services, permanent makeup services, and cosmetic tattooing services,' as well as related goods and collateral merchandise demonstrating a consumer's affinity for Applicant’s goods and services."

As to the first prong of the test, the Board observed that the presence of a generic or descriptive term in a proposed mark does not detract from the primary geographical significance of the mark as a whole. Examining Attorneys Susan Leslie DuBois, David C. Reihner, and Esther A. Belenker submitted a Wikipedia entry for "SoHo, Manhattan" showing that SoHo is a well-known geographical designation for a neighborhood located in New York City.

SoHo is a neighborhood in Lower Manhattan, New York City, which in recent history came to the public’s attention for being the location of many artists’ lofts and art galleries, but is now better known for its variety of shops ranging from trendy upscale boutiques to national and international chain store outlets. The area’s history is an archetypal example of inner-city regeneration and gentrification, encompassing socioeconomic, cultural, political, and architectural developments. *** The name “SoHo” refers to the area being “South of Houston Street” ....

The applicant argued that SoHo "is more than a geographic location,' 'it has come to mean a certain style or artistic nature, due to various studios, galleries, shops, and restaurants' and is known as 'a trendy haven for artists and for its upscale shopping'" That meaning is "reinforced by the fact that there is also a SoHo neighborhood in London that is also considered a fashionable district." Applicant also pointed to other meanings of SOHO, such as an abbreviation or acronym for the “Solar & Heliospheric Observatory, Save Our Heritage Organization, SOHO family of fonts, Small Office/Home Office, and the Society of Hematologic Oncology."

The Board was persuaded by the Office's evidence, finding that "'SoHo' is a well-known geographic moniker for a neighborhood in New York City." The fact that the term may have other meanings in other contexts does not alter its geographic significance in the context of the instant application.

Thus, while SoHo may also connote fashion or a trendy area for artists, a neighborhood in London, or constitute an abbreviation for various entities, these other meanings do not detract from its primary significance to the relevant public in the United States as a neighborhood in New York City.

Therefore, the Board found that the first prong of the test was met.

As to the second prong, the applicant confirmed that at least some of its goods and services will be offered at its location at 85 Lafayette St., south of Houston, in New York City. That location is either in SoHo or, depending on how you define the area, close enough. And so, the second prong of the test was met.

If the first two prongs are met, a goods/place association is presumed when the goods or services originate from the named location. Thus, the third prong of the test was satisfied.The Board noted that even without this presumption, the third prong was met because the evidence established that the relevant consumers would associate the applicant's goods and services with SoHo. "SoHo has a well-known reputation for its art galleries and as an artist colony, and tattooing has evolved into an art form for personal expression. Indeed, Applicant touts its tattoo service providers on its website as 'resident artists' with their own portfolios of work."

And so, the Board affirmed the refusal to register SOHO INK for the applicant's Class 2, 8, and 44 goods and services. As to the applicant's clothing in Class 25, the Board affirmed the refusal to register absent a disclaimer of the geographically descriptive term "SOHO." That refusal will be set aside if the applicant submits an appropriate disclaimer within 30 days.

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TTABlogger comment: What about the Wikipedia entry for SOHO? [not SOHO, MANHATTAN]. It begins, "Soho is an area of the City of Westminster, part of the West End of London."

Text Copyright John L. Welch 2023.