Wednesday, April 08, 2009

Precedential No. 14: TTAB Finds "THE MONTECITO DIET" Not Primarily Geographically Descriptive of Diet Publications

Observing that "the mere fact that applicant sleeps in Montecito [California] is not necessarily enough to establish a goods/place relationship," the Board reversed a Section 2(e)(2) "primary geographically descriptive" refusal to register the mark THE MONTECITO DIET [DIET disclaimed] for printed publications, online publications, and informational services in the field of health, nutrition, illness prevention, detoxification, diet, and lifestyle choices. In re Roy J. Mankovitz, 90 USPQ2d 1246 (TTAB 2009) [precedential].

The Examining Attorney submitted information from Wikipedia regarding Montecito, California, indicating that the 9.3 square-mile community adjacent Santa Barbara is the home to some 10,000 residents, including various celebrities. Applicant Roy J. Mankovitz listed Montecito as his address.

The Board pointed out that, for a Section 2(e)(2) refusal, the PTO must establish that (1) the mark’s primary significance is a generally-known geographic location; and (2) that the
relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate in the place named in the mark.

As to the first prong of the test, the Board found the "minimal information" provided by the PTO, along with the lack of evidence showing any other meaning for the term, to be sufficient to establish that Montecito is a generally known geographic location.

As to the second prong, when an applicant's own goods come from the geographical place named in the mark, a goods/place association may ordinarily be presumed. The PTO argued that because Applicant "is located in Montecito" his goods and services do or will originate there and purchasers will believe that the goods and services originate there. The Board was not convinced: "the mere fact that applicant sleeps in Montecito is not necessarily enough to establish a goods/place relationship."

The Board pointed to the lack of any evidence regarding Mankovitz's presence in Montecito.

In this case, however, not only do we not have any evidence that books and publications originate in Montecito, but we have no specific evidence that applicant’s publications will originate in Montecito. We add that there is also no evidence that the public would believe that applicant’s online journals and health information services originate from applicant’s home or even some other location in Montecito.

Likewise as to Applicant's services, there was no evidence that Mankovitz provides his services from a public location in Montecito. "[I]t would be speculation on our part to reach the conclusion that the goods or services originate there or that the public would understand that there is a goods/place relationship."

Therefore, the Board concluded that the PTO failed to meet its burden of proof, and it reversed the refusal.

TTABlog comment: Applicant's ITU application provided "limited information" regarding the geographic origin of his goods and services. When Mankovitz submits his Statement of Use in this case, will the PTO have another shot at reviewing the issue of geographical descriptiveness? See TMEP Section 1109.07 ("The examining attorney will review the statement of use to confirm that it meets the requirements of the Act and the rules.") Suppose Applicant's specimens of use provide further evidentiary support for the Section 2(e)(2) refusal? May the PTO, when reviewing the Statement of Use, ask for more information regarding the geographical source of the goods and services?

The Board here focused on the issue of whether Applicant's publications and website would be located in Montecito, but shouldn't the question be whether the "diet" that Applicant apparently proposes to offer will be seen as having an association with Montecito? Maybe it features fruit and vegetables grown in the Montecito area, for example.

Text Copyright John L. Welch 2009.


Post a Comment

<< Home