Friday, October 16, 2009

TTAB Reverses Section 2(e)(2) Refusal of "CATALINA ISLAND GRANOLA": Goods/Place Association Lacking

The Board reversed a Section 2(e)(2) refusal of CATALINA ISLAND GRANOLA & Des. for "granola" [GRANOLA disclaimed], because the record failed to establish that purchasers would make a goods/place association between Catalina Island and granola. In re Zeller, Serial No. 77544307 (September 30, 2009) [not precedential].

The Examining Attorney maintained that the primary significance of "Catalina Island" is a generally-known geographic place, that Applicant is located there, and that purchasers would believe that her granola originates from Catalina Island.

Applicant Kathleen Hill Zeller argued that the "main effect of the mark is to suggest a certain lifestyle and relaxation associated with Catalina Island." She stated that the goods do not originate from there, and she asserted that consumers would not be likely to make a goods/place association between the goods and the Island.

The Board first observed that the addition of the word GRANOLA "does not convert a geographically descriptive term into a non-geographic term."

Next, it found that the primary significance of CATALINA ISLAND is geographic. The record was devoid of evidence to support Applicant's contention that the public would associate "Catalina Island" with a leisurely lifestyle. "[T]he fact that 'hordes' of tourists flock to Catalina Island every year is not evidence of how they perceive the term 'Catalina Island.'"

Finally, the Board considered whether the public would believe that the goods originate on Catalina Island. Ordinarily, when the geographical place is neither obscure or remote, a goods/place association may be presumed when the goods come from the place named in the mark. Here, "the record is devoid of any evidence that Catalina Island is a well-known geographic location, from which we could assume that a wide variety of goods and services originate." In fact, the record showed that the Island "has no agricultural concerns and little to no manufacturing or other industrial industries."

The Examining Attorney argued that Applicant is located in Avalon, a city on the Island; that although Applicant stated that she will not manufacture granola on the Island, Applicant has not excluded the sale of granola on the Island; and that goods such as granola often originate from and are sold in popular tourist destinations.

Applicant argued that the fact that her address is Catalina Island is of no import, and that there is no proof that granola is manufactured there.

The Board agreed with Applicant that "merely living on Catalina Island is not necessarily enough to establish a goods/place relationship." Nor is the location of a corporate headquarters enough. The Board saw "no evidence regarding applicant's presence on Catalina Island, save applicant's acknowledgment that her address is in Avalon, a city on Catalina Island. This falls short of establishing that the origin of applicant's goods is Catalina Island such that there is a goods/place association between CATALINA ISLAND in granola."

The burden was on the Examining Attorney to provide evidence to establish a goods/place association. However, there was no competent evidence that granola originates on Catalina island. Applicant declared that her goods will not originate there. "The notion that granola could be manufactured on Catalina Island is too speculative."

Finally, the fact that Applicant's goods will be sold on the Island is not enough to support the refusal. The Island "would have to be associated with granola in such a way that the consuming public would be likely to assume that CATALINA ISLAND was the place in which the granola originates or is somehow connected."

And so the Board reversed the refusal.

TTABlog comment: If I saw a package of Catalina Island Granola, I would think it originated from Catalina Island. California has great fruits and vegetables. Why wouldn't it have great granola? What do you need to produce granola? Major equipment? A factory? No, just a mixing bowl.

Text Copyright John L. Welch 2009.


At 7:38 AM, Anonymous Anonymous said...

How does this decision get reconciled with the YOSEMITE BEER decision. Very similar facts, completely different outcome.

At 9:48 AM, Blogger John Ward said...

The ruling makes little sense to me. But it adapts well (sort of) to the old tune "26 Miles (Santa Catalina"). Close your office door before you sing along.

Twenty-six miles across the sea
Just beyond the reach of 15 USC § 1052(e)
Santa Catalina is not primarily descriptive geographically
So says the folks at American Heritage Dictionary

At 10:50 AM, Anonymous Josh said...

These decisions are driving me crazy. Should I tell my clients that the TTAB will practically flip a coin making these decisions?

At 3:49 PM, Anonymous JLHDEA said...

I think this is all on the examiner. It seems the board has lately been making a statement to the examiners, do your diligence, research and prove it, don't presume the obvious or you will lose. TMEP 1210.03, "Goods or services may be said to “originate” from a geographic location if, for example, they are manufactured, produced, or sold there. Well, this granola is sold on Catalina Island. The board says "the record is devoid of any evidence that Catalina Island is a well-known geographic location, from which we could assume that a wide variety of goods and services originate." So, "Lake Baikal" in Russia is a generally well known location but this vacation destination off the California coast is not? Again, this is all on the examiner, who took this obvious element for granted and didn't produce enough evidence. Perhaps the board would've liked to see an affirmative statement from applicant that the goods are sold on the island, that the granola is mixed and packaged with other ingredients on the island, e.g. fruits, veggies. Seems like a cut and dry case according to the TMEP and precedence, but the board didn't want to speculate.


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