TTABlog Test: Is AMERICAN CLOUD Primarily Geographically Descriptive of Cloud-Based Computer Services?

The USPTO refused to register the proposed mark AMERICAN CLOUD (in standard character form) for various cloud-based computer services [CLOUD disclaimed], finding the mark to be primarily geographically descriptive under Section 2(e)(2). Applicant acknowledged that its services originate in the United States but argued that the primary significance of the term AMERICAN is not geographic because it "shows [Applicant’s] commitment to 'American' values dealing with freedom, innovation and persistence." And it pointed to other Board and court decisions that it contended should have been taken into account. How do you think this appeal came out? In re American Cloud, LLC, Serial Nos. 97582004 & 97582005 (September 19, 2024) [not precedential] (Opinion by Judge Thomas L. Casagrande).

For a mark to be deemed primarily geographically descriptive under Section 2(e)(2), it must be shown that (1) the mark's primary significance is a generally known geographic location; (2) the goods or services do originate in that place; and (3) the relevant public would be likely to make a goods/place association - that is, would be likely to believe that the goods or services originate in the place named in the mark. A presumption that the third element―the goods/place or services/place association―is satisfied arises when the named place is neither obscure or remote, the primary significance of the term is geographic, and the goods or services originate in the named place.

Examining Attorney George Pelletier II submitted dictionary definitions of "American:" e.g., "[o]f or relating to the United States of America or its people, language, or culture." Applicant, pointing to statements at its website, insisted that it primarily uses "American" in a non-geographic way because it “shows [Applicant’s] commitment to ‘American’ values dealing with freedom, innovation and persistence." The Board was unimpressed: "we fail to see how these vague laudatory statements detract from the primary geographic significance of the term 'AMERICAN' in the proposed mark AMERICAN CLOUD." Furthermore, applicant displays the mark adjacent a stylized version of the American flag (see above) with the stars replaced by a cloud design. "This flag logo reinforces the geographic significance of the term 'AMERICAN' in Applicant’s proposed mark."

Because America is a universally-known place, the primary significance of the term “AMERICAN” in this case is geographic, and Applicant’s services are rendered in America, the Examining Attorney appropriately presumed that consumers will make the services/place association.

Applicant mainly relied on Board and court decisions involving other marks, for other goods or services, based on other evidentiary records. Again, the Board was unimpressed. It observed that the question at hand, "like so many factual questions in trademark law, concerns consumer perception," and in answering that question the Board "depend[s] on evidence that bears on how consumers would perceive the mark at issue in connection with the goods or services at issue."

Findings in other cases concerning other marks, other goods or services, and on different evidence―some made decades ago―have no bearing on what findings we make on the evidence in this case concerning this mark and these services

The Board concluded that the examining attorney "applied the governing principles correctly," and it therefore found "Applicant’s 'other cases' argument entirely unconvincing."

And so, the Board affirmed the refusal to register.

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Text Copyright John L. Welch 2024.