Thursday, October 31, 2019

TTAB Affirms Section 2(e)(2) Geographical Descriptiveness Refusal of "SE VENDE FOR SALE AMERICA" for Marketing Consulting

The Board affirmed a refusal to register the mark SE VENDE FOR SALE AMERICA for "marketing consulting" [AMERICA disclaimed], finding the mark to be primarily geographically descriptive of the goods under Section 2(e)(2). Applicant Camarena-Vazquez argued that the mark is not geographically descriptive because SE VENDE and FOR SALE are suggestive, not descriptive, of his services. Applicant himself does not sell goods or services. These terms "suggest an end-result (i.e., consulting for others so that they may sell their goods and services)." The Board didn't buy it. In re Guillermo Camarena-Vazquez, Serial No. 87734668 (October 21, 2019) [not precedential] (Opinion by Judge Cheryl S. Goodman).

A term is primarily geographically descriptive under Section 2(e)(2) when (1) the primary significance of the term is a place generally known to the public, (2) the public would make an association between the identified goods or services and the place named in the mark, that is, believe that the goods of services for which the mark is sought to be registered originate in that place, and (3) the source of the goods or services is the geographic region named in the mark.

If there is no question that the geographic significance of the term is its primary significance and the place is neither obscure nor remote, a public association of the goods or services with the place may be presumed if, in fact, the goods or services originate from the geographic place named in the mark.

The Board found the terms SE VENDE and FOR SALE to be highly descriptive of applicant's services" “Marketing encompasses business activity that involves the selling of products and services." The addition of highly descriptive matter to a geographically descriptive term does not detract from  the primarily geographically descriptive significance of the mark as a whole.

The Board first found that AMERICA is the name of a place known generally to the American public that is neither obscure nor remote. The primary significance of "America" is a geographic location. Applicant conceded the descriptiveness of "America" by disclaiming the word.

The combination of the highly descriptive term SE VENDE FOR SALE with the geographic term AMERICA does not detract from the primary geographic significance of the composite mark.

Applicant's address is in Las Vegas, Nevada. Therefore the Board presumes that the public would make an associate between applicant's services and the place named in the mark: that is, they would believe that the services originate in America.

And so the Board affirmed the refusal to register.

In his brief, applicant requested that he be allowed to amend his application to seek registration on the Supplemental Register if the Board upheld the Section 2(e)(2) refusal. Too late, said the Board. The Board has no power to re-open an application to propose such an amendment. See Rule 2.142(b) (An application which has been considered and decided on appeal will not be reopened except for the entry of a disclaimer ... or upon order of the Director").

Read comments and post your comment here.

TTABlog comment:  Is this a WYHA?

Text Copyright John L. Welch 2019.


At 11:24 AM, Anonymous Anonymous said...

The mistake here was the disclaimer of America. That term is incredibly broad-- North America, Central America, South America-- and easily could refer to any of those large geographic regions. Nothing within the mark or listed services suggests the USA, and the colors used by the applicant correspond with the flag colors of countries outside of the USA. There are MANY registered marks containing AMERICA that do not include a disclaimer, including several that have registered just in the past week by well-known entities located within the USA.


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