Monday, September 17, 2007

Geographically Descriptive Marks – LAS VEGAS BURGER loses its $325 trademark gamble

When I saw that a Section 1(b) trademark application for LAS VEGAS BURGER (word mark) for restaurants went abandoned last Friday, September 14, 2007, I could not resist using it as an illustration of the Section 2(e)(2) geographically descriptive rejection, especially since it has the words LAS VEGAS in it (and I’m all about Vegas).

In its non-final action, the PTO refused registration under Section 2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2), on the grounds that the mark was primarily geographically descriptive of the origin of applicant’s goods and/or services. The office action set forth the three-part test for determining whether a mark is primarily geographically descriptive of the goods and/or services within the meaning of Section 2(e)(2):
(1) the primary significance of the mark must be geographic (i.e., the mark names a particular geographic place or location);
(2) purchasers would be likely to make a goods-place or services-place association (i.e., purchasers are likely to believe the goods or services originate in the geographic location identified in the mark); and
(3) the goods and/or services originate in the place identified in the mark.
See TMEP §1210.01(a); see also In re MCO Properties, Inc., 38 USPQ2d 1154 (TTAB 1995); In re California Pizza Kitchen, 10 USPQ2d 1704 (TTAB 1989).

The examining attorney attached evidence from Wikipedia showing that the primary significance of the term “Las Vegas” is the name of a geographic location. Furthermore, consumers are likely to believe the goods will originate in Las Vegas because the applicant is located in Las Vegas. When the geographic significance of a term is its primary significance and the geographic place is neither obscure nor remote, then for purposes of §2(e)(2) the PTO can presume a services-place association from the fact that the applicant's services originate in the place named in the mark – a presumption which is rebuttable. See TMEP §1210.04; see also In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001) (MINNESOTA CIGAR COMPANY primarily geographically descriptive of cigars); In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988) (CALIFORNIA PIZZA KITCHEN held primarily geographically descriptive of restaurant services that originate in California); In re Handler Fenton Westerns, Inc., 214 USPQ 848, 849-50 (TTAB 1982) (DENVER WESTERNS held primarily geographically descriptive of western-style shirts originating in Denver). Furthermore, the addition of another generic or merely descriptive term (e.g., BURGER) to a geographic term does not overcome a refusal based on geographic descriptiveness. See In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); TMEP §1210.02(c)(ii).

In response to the non-final action, applicant made the following argument:

The examining attorney has refused registration because the mark is allegedly primarily geographically descriptive of the goods and/or services. Las Vegas is indeed a city in Nevada, but it is also reference that invokes far-reaching implications regarding gambling, recreation, vacationing, images of slot machines, a glittery style, a campy style, etc. In fact, the Applicant's first restaurant is not in Las Vegas, but instead is located in Primm, Nevada, near the California border. The Applicant's restuarants [sic] are Las Vegas-themed, and include a single hamburger called the "Ace," a double burger called a "Pair," a triple burger called "Three of a Kind," etc. "Las Vegas" in this context indicates the gambling theme, design, look and feel of a restaurant that is not located in Las Vegas. Inasmuch as the goods and services provided by a restaurant originate at the restaurant (in the presence of the customers) where they are sold and rendered, the good and services in this case do not originate in the place identified in the mark, and therefore the mark is not primarily geographically descriptive.

In the PTO’s final office action, the examining attorney, however, found applicant’s argument unpersuasive. The examining attorney cited to the applicants business address (Food Courts of Nevada, LLC; 300 S. 4th Street, 11th Floor, Las Vegas, NEVADA 89101 ) and stated that “[s]ince applicant’s services appear to be located in Vegas, a geographic place and location that is not remote or obscure, nor has any other significant non-geographic meaning, a public association of the services with the place is presumed. . . .”

In both actions, the examining attorney reminded applicant about the possibility of registering the mark on the Supplemental Register once it is actually being used (and either an amendment to allege use or statement of use is filed). I’ve mentioned before the benefits of registration on the Supplemental Register (here).

Two things I found strange about this application’s prosecution. First, how come the application was not filed under Section 1(a)? Applicant’s response to the non-final action stated that “In fact, the Applicant's first restaurant is not in Las Vegas, but instead is located in Primm, Nevada, near the California border.” This would seem to suggest that the applicant was already using the mark in commerce. In addition, the applicant filed state trademark registrations in Nevada (see here and here) in March 2005, which suggests the marks were being used at that time. More significantly, if this was the case, why didn’t the applicant submit evidence that the restaurant was located in Primm, Nevada, and not in Las Vegas? The PTO cited to the company’s corporate records filings to support the notion that the services originate in Las Vegas. Evidence of the applicant’s Primm restaurant under this name could have helped rebut the PTO’s services-place association presumption.

Second, the same applicant has an application for VEGAS BURGER for restaurants, but in that case, an amendment to allege use was filed and the applicant filed an amendment to have the mark registered on the Supplemental Register. So why would the applicant choose to “expressly” abandon this application, rather than go for registration on the supplemental register. At least they could put the ® symbol next to the mark and prevent anyone else from registering, at the federal level, a confusingly similar mark. After all, they already paid the $325 filing fee – a supplemental trademark registration is better than nothing. Perhaps they decided to go with VEGAS BURGER instead of LAS VEGAS BURGER for the name of its chain. They also have two applications pending for design versions of the same marks, here and here.

I personally think the applicants may have gotten an unfair refusal simply because they have their corporate address in Las Vegas. The address cited by the PTO – 300 S. 4th Street, 11th Floor – is not the future home of any burger restaurant, but instead more likely rented office space or mail drop that Nevada corporations and LLCs sublease from Brownstein Hyatt Farber Schreck, P.C., 300 S. 4th Street, Suite 1200 – the applicant’s Nevada resident agent.

If this restaurant had opened up in any other part of the country, the outcome may have been different. But for the fact that the applicant had a Las Vegas address, the PTO would have likely have had to base its refusal of the mark on either §2(e)(3) (primarily geographically deceptively misdescriptive) or §2(a) (geographically deceptive). However, under these grounds for refusal, the services-place association that the PTO easily presumed for §2(e)(2) purposes requires some additional reason for the consumer to associate the services with the geographic location invoked by the mark. See In re Municipal Capital Markets, Corp., 51 USPQ2d 1369, 1370-71 (TTAB 1999) ("Examining Attorney must present evidence that does something more than merely establish that services as ubiquitous as restaurant services are offered in the pertinent geographic location."). A services-place association in a case dealing with restaurant services requires a showing that the patrons of the restaurant are likely to believe the restaurant services have their origin in the location indicated by the mark – a much greater burden due to the presence of restaurants everywhere. See In re Les Halles De Paris J.V., 334 F.3d 1371 (Fed. Cir. 2003); In re Consolidated Specialty Restaurants, Inc., 71 USPQ2d 1921 (TTAB 2004).

So while I do not think that consumers would necessarily think that that LAS VEGAS BURGER’s services originate from Las Vegas, the PTO has the rebuttable presumption in its favor – a presumption that applicant did not sufficiently rebut. The PTO also has the California Pizza Kitchen precedent -- a TTAB decision with which I do not necessarily agree -- to rely upon, which has held that when the goods or services may be said to originate both in the geographic place named in the mark and outside that place, registration is normally refused based on primarily geographically descriptive under §2(e)(2). See In re California Pizza Kitchen Inc., 10 USPQ2d 1704, 1706 n.2 (TTAB 1988) (CALIFORNIA PIZZA KITCHEN for restaurant services held primarily geographically descriptive, where the services were rendered both in California and elsewhere

Instead, it looks like Las Vegas Burger will have to just use the mark in commerce, and later come back and file a Section 2(f) application for principal registration arguing secondary meaning – which is exactly what California Pizza Kitchen did for “restaurant services” (see here).

All this thought about burgers is making me hungry. I can’t wait to check out the menu and try the “ROYAL FLUSH” (currently under suspension pending the outcome of ROYAL FLUSH for energy drinks).

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