Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 PHILIP MORRIS INCORPORATED D/B/A BENSON & HEDGES
REEMTSMA CIGARETTENFABRIKEN GMBH, ASSIGNEE OF GOLDEN GATE TOBACCO CORPORATION
January 18, 1990
Hearing: October 25, 1989
Opposition No. 73,739 to application Serial No. 464,918, filed February 9, 1984.
Hunton & Williams for Philip Morris Incorporated
Wenderoth, Lind & Ponack for Reemtsma Cigarettenfabriken GmbH, assignee of Golden Gate Tobacco Corporation
Before Rice, Rooney and Seeherman
Opinion by Rooney
An application was filed to register the mark PARK AVENUE for cigarettes and smoking tobacco. [FN1] Registration has been opposed by Philip Morris Incorporated d.b.a. Benson & Hedges.
Opposer begins its pleadings by alleging that opposer and applicant are competitors in the manufacture and sale of cigarettes in various countries, including the United States; the mark applicant seeks to register, PARK AVENUE, is the name of a well-known thoroughfare in New York City where opposer's worldwide headquarters has been located since 1950; that for many years opposer has sold various types of BENSON & HEDGES cigarettes in packages which also contain the designation 'Park Avenue New York'; that opposer owns three registrations of BENSON & HEDGES labels [FN2] which also bear the designation 'Park Avenue New York'; and that applicant did not use PARK AVENUE for its cigarettes prior to October 14, 1983.
Opposer's first pleaded claim for relief is that PARK AVENUE, as used by applicant, so resembles the previously used marks shown in opposer's pleaded label registrations, as to be likely to cause confusion, mistake or deception.
The second claim of relief is that applicant's cigarettes do not come from Park Avenue so that applicant's use of PARK AVENUE is geographically deceptively misdescriptive and without secondary meaning for applicant's cigarettes.
A third claim for relief is that PARK AVENUE is geographically deceptive for applicant's cigarettes.
Applicant admits opposer's allegations relative to the marks shown in the pleaded registrations and that copies thereof were attached as exhibits; [FN3] that the packaging shown in Exhibits C and F contains the repeated designations 'Park Avenue New York'; that its own alleged first use is October 14, 1983; and that Exhibit I shows the form in which applicant uses the mark PARK AVENUE. The remaining allegations are denied.
The record consists of a dictionary definition of the term PARK AVENUE [FN4] and the testimony deposition with exhibits of Ellen Merlo, Vice-President of Marketing Services for Philip Morris U.S.A. Both parties filed briefs and were represented at the oral hearing held in this matter. [FN5]
The issues raised by the pleadings are that confusion of source is likely to occur because of the use of applicant's mark on cigarettes in view of opposer's labels on which it uses PARK AVENUE NEW YORK either in a single appearance or in a repetitive pattern; that since applicant's cigarettes do not originate on Park Avenue, its use of PARK AVENUE is geographically deceptively misdescriptive; and, for the same reason, applicant's use of PARK AVENUE on cigarettes is deceptive. [FN6]
*2 We turn first to the question of whether applicant's mark is primarily geographically deceptively misdescriptive. To find a term primarily geographically deceptively misdescriptive, it must be shown that the term in question denotes a geographical location which is neither obscure nor remote, that there is a goods/place association between the goods on which the mark is used and the geographical place named by the term and that the goods do not, in fact, originate in that geographical place. 'A geographically descriptive term can indicate any geographic location on earth, such as continents, nations, regions, states, cities, streets and areas of cities, rivers and any other location referred to by a recognized name.' Trademarks and Unfair Competition, Section 14.2A, J. Thomas McCarthy see also In re Jacques Bernier, Inc., 10 USPQ2d 1955 (TTAB 1989). Thus, there is no question that PARK AVENUE, which is recognized by its definition in the Random House Dictionary of the English Language, supra, as a street in New York known for luxurious residential and professional buildings, fashionable living and high society, is primarily a geographical designation that is neither remote nor obscure. However, we are not convinced that there is a goods/place association between PARK AVENUE and tobacco products.
Opposer argues that the record amply demonstrates that an appreciable segment of the public would associate cigarettes with Park Avenue in New York. As evidence thereof, opposer notes that for more than twenty years its corporate headquarters has been located at 100 and 120 Park Avenue, New York, 'addresses thousands of people pass each working day'; that Park Avenue in New York has historically been a source of tobacco products since Benson & Hedges was a Park Avenue tobacconist before opposer purchased the business and trade name; and that the packaging for opposer's Benson & Hedges DeLuxe [FN7] cigarettes carries the legend Park Avenue New York as part of its background design while other of its packages carry Park Avenue New York on the lower portion thereof. According to opposer, Benson & Hedges is currently the seventh largest selling brand in the United States and is widely advertised. Below are copies of sample advertisements of opposer's product in which the appearance of Park Avenue New York on the packaging can be seen.
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
As the court said in In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982),
geographically deceptive misdescriptiveness cannot be determined without considering whether the public associates the goods with the place which the mark names. If the goods do not come from the place named, and the public makes no goods/place association, the public is not deceived and the mark is accordingly not geographically deceptively misdescriptive.
We are not convinced by opposer's arguments or its testimony and exhibits that the appearance of the words Park Avenue on its packaging (which is clearly used as an address and is unlikely to be seen as anything else), the fact that opposer's corporate headquarters is located on Park Avenue, New York, and the earlier existence of a Benson & Hedges tobacconist on Park Avenue are enough to establish even a reasonable basis on which to conclude that the public is likely to believe that PARK AVENUE, as used on applicant's goods, identifies the geographic origin thereof. We recognize, as opposer has urged, that Park Avenue represents a certain 'upscale, affluent' imagery and style. However, there is nothing in this record from which it may be concluded that because of this imagery, tobacco products are likely to be associated with Park Avenue.
*3 Neither is there anything in this record which would even suggest why people passing 100 and 120 Park Avenue would associate those buildings with tobacco products or any other products. New Yorkers are notoriously blase' and probably pass by the buildings without even a glance. But, even if they were to stop and stare at these addresses, what is there about them which would give anyone a clue as to what transpires inside? Nothing in this record answers that question.
The final portion of opposer's argument is equally devoid of conviction. Opposer has not submitted any evidence regarding Benson & Hedges, tobacconist. We don't know how long or when it was there, whether it was a successful business or the extent of its exposure to the public. There is, therefore, no reason for us to conclude that the existence of this business made any impact on the public such as would cause one to associate tobacco products with Park Avenue.
We are of the view that Park Avenue New York, as used on opposer's packaging would be seen as opposer's address and nothing more. While Benson & Hedges cigarettes may well have been widely advertised, as opposer claims, none of the copies of advertising submitted shows any effort to impress on the public that Park Avenue New York serves in any manner other than as an address. There is no evidence to persuade us to another view.
Finally, in contrast to the instant case, there was sufficient evidence in the cases cited by opposer to make out a prima facie showing of geographically deceptive misdescriptiveness. In In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) there was evidence to establish Durango as a geographical term, neither obscure nor remote, and to show that tobacco is produced and marketed there, thus establishing a goods/place association. Since the applicant's chewing tobacco did not come from Durango, the alleged mark was deemed to be barred by Section 2(e)(2). In the Rodeo Drive case, In re Jacques Bernier, Inc., supra, it was shown that Rodeo Drive is a well-known geographical location where expensive consumer goods such as clothing, jewelry and perfume are sold and that the applicant's goods (perfume) did not come from Rodeo Drive. Similar evidence was submitted in the Manhattan cookie case, [In re The Cookie Kitchen, Inc., 228 USPQ 873 (TTAB 1986)] and in the California Mix case, [In re Midwest Nut & Seed Company, Inc., 214 USPQ 852 (TTAB 1982)]. It was the absence of any evidence to support a conclusion that the purchasing public would expect men's shirts to originate in Nantucket which resulted in the court's allowance of NANTUCKET as a mark for men's shirts. [In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982)]. In our opinion this case is closer to Nantucket than to any of the other cited cases.
In view of the foregoing, we conclude that, although PARK AVENUE is a geographical designation, there is no goods/place association between it and tobacco products so that its use as a mark for cigarettes and smoking tobacco is neither geographically deceptively misdescriptive under Section (2)(e)(2) nor deceptive under Section 2(a).
*4 As to likelihood of confusion, opposer claims that Park Avenue serves as a secondary mark for its goods in view of its long usage on its packaging. However, opposer's case for likelihood of confusion suffers the same deficiency as its preceding claims. There is no evidence that opposer has ever used, advertised or promoted Park Avenue as anything but its address. While it has long been settled that use analogous to trademark use may be sufficient to defeat a later use as a trademark, we do not believe one's address on its packaging can necessarily be characterized as use analogous to trademark use. Even on those packages where it appears in a repeated pattern, it still appears as the address Park Avenue New York. The advertisements submitted for the record clearly do not promote or even call attention to Park Avenue. Its appearance therein is merely incidental to the depiction of a package of Benson & Hedges cigarettes carrying the address. In our view it would be unlikely that anyone reading the ads would be at all separately impressed by Park Avenue New York on the packaging.
Opposer's reliance on the case of The West End Brewing Co. of Utica, N.Y. v. The South Australian Brewing Co. Ltd., 2 USPQ2d 1306 (TTAB 1987) is misplaced since in that case the opposer clearly used the term West End as part of its trade name and had done so for many years. Such use is sufficient under the statute to defeat the claim of a later use albeit the later use is in a strict trademark sense. Opposer here has not shown any use as a trade name or any other use which may be considered as analogous to trademark use and for that reason we find that there is no likelihood of confusion in this case.
In view of the foregoing, the opposition is dismissed.
J. E. Rice
L. E. Rooney
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN2. Regn. No. 738,424 issued Sept. 25, 1962 on the Supplemental Register; Regn. No. 852,189 issued July 9, 1968; Regn. No. 1,142,092 issued December 2, 1980.
FN3. Opposer states in its brief that applicant's admission of the allegations relative to the attachment of copies of the registrations enumerated in the notice of opposition makes those registrations of record. However, applicant merely admitted what is shown on each of those registrations as a mark and that true copies of the registrations are attached as exhibits. Since there is no admission as to the status of or title to those registrations, and they have not been otherwise introduced, they are not properly of record. [The copies of the registrations which were attached to the pleadings were not official copies issued by the Office, except for Regn. No. 738,424. However, that copy was issued by the Office on April 12, 1963 and such copies must be reasonably contemporaneous with the filing of the opposition. See Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945 (TTAB 1983)].
FN4. 'Park Avenue, a wide street in New York City traditionally associated with luxurious residential and professional buildings, fashionable living, and high society.' (The Random House Dictionary of the English Language, Second Edition 1987)
FN5. Although opposer has not made the pleaded registrations of record, its standing has been established through the testimony of Ms. Merlo.
FN6. Although opposer made reference to its use of PLAYERS in a design for a brand of cigarettes and Ms. Merlo gave testimony regarding her opinion that applicant's packaging was a direct copy of the PLAYERS package, this, as no doubt opposer is aware, is not a ground for opposition. To the extent that it may have been offered to show an intent to trade on opposer's good will, there is no evidence, other than appearances, from which to derive such an intent.
FN7. According to Ms. Merlo's testimony this particular package is in 'limited distribution.'