TTABlog Test: Is MALIBU SUPPER CLUB Primarily Geographically Descriptive of Restaurant Services?

The USPTO refused to register the proposed mark MALIBU SUPPER CLUB for restaurant and bar services [SUPPER CLUB disclaimed], finding the mark to be primarily geographically descriptive under Section 2(e)(2). On appeal, the applicant argued that the word Malibu "will be seen by consumers not primarily as a place, but rather as a general reference to luxury and relaxation – a “[glitzy] area that Hollywood movie stars flock to." How do you think this came out?  In re Argent Media Group, LLC, Serial No. 88780676 (April 6, 2021) [not precedential] (Opinion by Judge Frances S. Wolfson). 

 

Photos: Copyright William Maguire 2017.

Section 2(e)(2) of the Trademark Act bars registration on the Principal Register of a mark which “when used on or in connection with the goods of the applicant is primarily geographically descriptive of them." To establish that a mark is primarily geographically descriptive, the USPTO must prove three elements: 

1.  The primary significance of the term in the mark sought to be registered is the name of a place generally known to the public;
2. The services originate in the place named in the mark; and
3. The public would make an association between the goods or services and the place named in the mark by believing that the goods or services originate in that place.
   
   

In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448 (Fed. Cir. 2015) (internal quotations and citations omitted).

 

The evidence established that MALIBU is a generally known geographic location, as shown by gazetteer and dictionary references, that "supper club" is commonly used to identify a type of registrant, that applicant's services will (admittedly) originate in Malibu, and that consumers will immediately make a connection between the services and Malibu.

Applicant relied upon a portion of a "Pop Culture Dictionary" excerpt from dictionary.com, but the fuller reference "shows that the primary significance of 'Malibu,' even in pop culture, is to the geographic location." The full version of the dictionary entry states:

“Malibu variously refers to a wealthy beach city near Los Angeles, a coconut-flavored liqueur made with rum, and a sedan made by Chevrolet.” *** “This is not meant to be a formal definition of Malibu like most terms we define on Dictionary.com, but is rather an informal word summary that hopefully touches upon the key aspects of the meaning and usage of Malibu that will help our users expand their word mastery.”

The Board found that, in the context of the restaurant and bar services of the subject application, consumers would immediately perceive MALIBU as designating the location of applicant's restaurant. 

Applicant's third-party registrations for marks containing MALIBU were not life savers for applicant. One group involved goods and services unrelated to restaurant services. Another group contained additional distinctive wording: MALIBU PRINCESS and MALIBU GIRLS for dresses, MALIBU ROAD for clothing, MALIBU BEACH BASICS for handbags. 

 

The sole remaining registration, MALIBU for alcoholic and non-alcoholic beverages - even if the goods were considered related to applicant' services - was alone not enough to overcome the other evidence of record.

Examining Attorney James Hill submitted eleven third-party registrations that include disclaimers of the word MALIBU, five of which were for restaurant services.

Third-party registrations featuring services that are the same as or similar to Applicant’s services are probative evidence on the issue of geographic descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register. See Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006).

The Board concluded the USPTO had established the elements for a Section 2(e)(2) refusal, and so it affirmed the USPTO refusal.

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Text Copyright John L. Welch 2021.