TTAB Finds AUSTRALIAN BOTANICAL SOAP (Stylized) Geographically Descriptive of . . . SOAP

The Board upheld a Section 2(e)(2) refusal to register the mark AUSTRALIAN BOTANICAL SOAP in the stylized form shown below, for body soaps and various other Class 3 products [SOAP disclaimed], finding that the proposed mark is primarily geographically descriptive of the goods. Applicant claimed acquired distinctiveness based on several years of use in the United States and sales representing some 17 million bars of soap, but the Board found the evidence insufficient. In re Apperley Holdings Pty. Ltd., Serial No. 79277754 (September 11, 2023) [not precedential] (Opinion by Judge Thomas V. Shaw).

To support a Section 2(e)(2) refusal, the Office must show that: 

• (1) the primary significance of the term in the mark sought to be registered is the name of a place generally known to the public; 
• (2) the source of the goods or services is the geographic region named in the mark; and 
• (3) the public would make an association between the goods or services and the place named in the mark, that is, believe that the goods or services for which the mark is sought to be registered originate in that place. 

The Board first noted that Section 2(e)(2) still applies "if merely descriptive matter is included and the mark as a whole retains its primarily geographic significance." 

The Board unsurprisingly found that "the primary significance of AUSTRALIAN is geographic, i.e., the adjective form of AUSTRALIA, a place generally known to the American public." The addition of the term BOTANICAL SOAP does not detract from the geographical significance of the mark as a whole, since the disclaimed word SOAP is the generic name of the goods and the word BOTANICAL is at least descriptive of goods, like applicant's, made from plant-based ingredients.

Applicant's goods are made in Australia and its headquarters are there, so there was no dispute regarding the second element of the test. 

As to the required goods/place association, the Board observed that "[w]hen there is no question that the geographical significance of a term is its primary significance, and the geographical place is neither obscure nor remote, a public association of the goods with the place is presumed if an applicant’s goods originate in the place named in the mark."

Applicant argued that Australia "is not particularly known for cleaning products, nor is it shown that purchasers particularly care if cleaning products come from a country or continent." The Board deemed this argument "misplaced as a matter of law. Australia need not be known for Applicant’s goods if they are, as here, made there."

Applicant also argued that "Australian" could have more than one meaning: "For example, whether the product may be made in a fashion or manner first developed or used in Australia, the product includes ingredients that are 'Australian Botanical' products, the product uses ingredients favored by Australian wildlife such as the koala or kangaroo, or, as argued by the Examining Attorney, the product is made in Australia." The Board was unimpressed: "Applicant’s mark need not specify exactly which meaning of 'Australian' is intended for its goods because all of the suggested meanings have geographic significance." Furthermore, there was no evidence that AUSTRALIAN "refers to a non-geographic characteristic of the goods, i.e., that consumers would view the term AUSTRALIAN as anything but a geographic place."

Finally, the Board observed that the minimal stylization of the mark "does not creates a commercial impression separate and apart from the impression made by the wording itself."

Turning to the issue of acquired distinctiveness, the Board found that the proposed mark is "highly geographically descriptive," and therefore  a concomitantly high amount of evidence is needed to show secondary meaning. Applicant averred that it has sold some 19 million bars of soap, beginning in 2019. Again, the Board was not impressed: "Applicant’s use of the mark for only a few years—since 2019—suggests that the mark is unlikely to have acquired distinctiveness in the minds of consumers." Moreover, "although the volume of product sold is not insignificant, the numbers lack any context comparing them to soap sales generally (or even soap sales within a subcategory such as 'botanical' soaps), which would be required to show that the mark has acquired distinctiveness."

And so, the Board concluded that applicant failed to prove acquired distinctiveness, and it affirmed the refusal to register.

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