Thursday, October 06, 2011

TTAB Finds FIRE ISLAND Primarily Geographically Descriptive of Beer

Examining Attorney Howard Smiga required disclaimer of the words FIRE ISLAND in Applicant's marks FIRE ISLAND BEER COMPANY LIGHTHOUSE ALE and the logo shown below, for "ale; beer," on the ground that the phrase is primarily geographically descriptive of the goods under Section 2(e)(2). Applicant declined to disclaim and then appealed, contending that "the geographic meaning of 'FIRE ISLAND' is too minor and unconnected to Applicant's goods to be the primary significance of the mark," and that "it would be incongruous for consumers to believe that Applicant’s goods originate on Fire Island." The Board affirmed the refusal to register. In re Fire Island Brewing Company, LLC, Serial Nos. 77696816 and 77696805 (September 23, 2011) [not precedential].

Applicant got off on the wrong feet when it asked the Board to take judicial notice of a registration issued to Applicant prior to the final refusal; the Board does not take judicial notice of registrations. Applicant also requested that, if the Board affirmed the disclaimer requirement, the application be remanded to the Examining Attorney for consideration of the issue of acquired distinctiveness. The Board doesn't do that either, unless the request is filed in a separate motion paper and includes a showing of good cause. Applicant provided neither.

Turning to the merits of the appeal, the Board observed that "[i]n order for a mark to be considered primarily merely descriptive under Section 2(e)(2), it must be shown 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."

Applicant did not dispute that Fire Island is a generally known geographic location, and the Board concluded that Fire Island is neither remote nor obscure to the American public. Applicant did not provide evidence that the phrase has any meaning other than the geographically descriptive one.

As to the issue of goods/place association, this requirement is satisfied when the goods come from the specific location. Here, however, Applicant's goods are produced in Saratoga, New York, and there is nothing in the record connecting Saratoga with Fire Island.

When the goods are not actually produced in the location, we look to other points of contact that may be sufficient to consider the origin of the goods to be from the location (otherwise the mark may be primarily geographically deceptively misdescriptive) and for evidence that consumers would be likely to make that association.

In the NANTUCKET NECTARS case, the Board found the island of Nantucket to be a principal place of origin for the goods, even though the goods were manufactured elsewhere. On the other hand, the required goods/place association was not found in the MONTECITO DIET case, where the only contact was the individual applicant’s address.

Here, the evidence showed that commercial activity on Fire Island includes several bars, restaurants, and stores.

There is nothing in the record to support a finding that it would be incongruous or otherwise unexpected for the purchasing public to expect that bars, restaurants and stores on the island would sell beer or to believe that beer, produced, for example, from a brewpub, originates on Fire Island. *** In fact, based on applicant’s evidence of commercial enterprises on FIRE ISLAND, including bars and restaurants, it is reasonable to believe that a brewpub is on the island and offers its own label.

The Board then weighed Applicant's points of contact with Fire Island: (1) recipes for some of applicant's goods were developed on Fire Island; (2) applicant's website and labels tout the connection to Fire Island (including pictures and maps of the island and statements such as "Craft beer from The Other New York"); (3) the goods are sold on Fire Island in stores and restaurants; (4) applicant maintains inventory in a warehouse across the bay from Fire Island and conducts tastings and promotional events in the area, including on Fire Island; and (5) applicant’s owners maintain a presence on Fire Island through their home.

Although the Board recognized that "consumers might not believe that applicant’s beer and ale are mass produced and bottled on Fire Island, (obviously a difficult task when the only mode of transportation is a bicycle or a red wagon) certainly it is reasonable to believe the beer originates from there in the sense that Nantucket was 'a principal origin if not the principal origin' of Nantucket Nectars or was in 'some way connected to' Fire Island."

Concluding that "Fire Island" is a term that "applicant's competitors are entitled to use to describe the geographical origin of their beer and ale," the Board deemed the disclaimer requirement to be appropriate and it affirmed the refusals to register.

TTABlog comment: It really doesn't take much contact with the geographic location to trigger a goods/place association, does it? Seems to me that the Board should focus on consumer perception rather than a mechanical recitation of "contacts" with the location. Do consumers know where the owners of the business live, where the goods are warehoused, and where the recipes were created? If not, then aren't these facts irrelevant?

Text Copyright John L. Welch 2011.


At 9:39 AM, Anonymous Anonymous said...

Isn't the public policy behind the geographic descriptive rejection to prevent a one producer of goods from that locale, where the locale is considered by the consuming public to indicate a quality of the product, from inhibiting other producers of those goods from that locale from claiming the benefit of that consumer perception?

If so, then how is that policy being given effect by the Boards wooden rule?

At 10:50 AM, Anonymous Anonymous said...

I always find it difficult to know when a geographic term crosses over from being merely descriptive to geographically misdescriptive. Saratoga is nowhere near Fire Island but the Boards decision seemed to hinge on the fact that the products were produced in the same state (NY) and marketed as such. But what if applicant's goods were instead produced in parts of NJ or Conn. or New Hampshire that are actually closer to Fire Island than Saratoga ... would the term now be misdescriptive? An applicant can have all the "contacts" the Board listed in this decision and still produce and bottle its beer in California or Canada or Europe ... would the mark now be misdescriptive? When consumers drink beer with a geographic term they most likely believe the ingredients, water, hops, etc. have a connection to the geographic term NOT a warehouse nearby.

At 3:15 PM, Anonymous Anonymous said...

I would answer John's final question: yes, that evidence (numbered 1, 3, 4 & 5 in his summary) should be irrelevant in this case.

But, wasn't the remaining evidence -- "applicant's website and labels tout the connection to Fire Island (including pictures and maps of the island and statements such as "Craft beer from The Other New York"); " (2 in his summary) -- sufficient to show likelihood of consumers associating goods/source?

The board's 'piling on' of other irrelevant evidence raises two worrisome concerns: (i) further encouraging applicants to also pile-on or pad submissions; (ii) providing support for the sufficiency of 1, 3, 4 & 5 type evidence in a case where there is no type 2 evidence.

At 4:33 PM, Anonymous Anonymous said...

By allowing these irrelevant "contacts" to demonstrate geographic descriptiveness the Board is also making it more difficult to prove that a geographic term is misdescriptive.


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