Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE BIESSECI S.P.A.
Serial No. 634,507
June 23, 1989
George F. Dvorak for applicant
Richard B. Gordon
Trademark Examining Attorney
Law Office 5
(Paul E. Fahrenkopf, Managing Attorney)
Before Rice, Rooney and Seeherman
Opinion by Rooney
Biesseci S.p.A. filed an application to register the mark shown below (the word "American" disclaimed) for shirts, pants, jackets and coats for men, women and children, alleging a first use in commerce with the United States of February 14, 1985. [FN1] Registration has been finally refused on the ground that the material sought to be registered is deceptive as applied to applicant's goods which are manufactured in Italy. Applicant has appealed. We affirm.
Referring to In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982), the court said in In re Loew's Theatres, Inc., 226 USPQ 865 (Fed Cir 1985) that, "our precedent continues to hold that to establish a primarily geographically deceptively misdescriptive bar, the PTO must show only a reasonable basis for concluding that the public is likely to believe the mark identifies the place from which the goods originate and that the goods do not come from there." Where, as here, the Examiner has proceeded to the next step by refusing to register on the ground that the mark as applied to applicant's goods is deceptive, a further inquiry must be made, i.e., would the misdescriptive use of the geographic term to designate goods which would be expected to emanate therefrom materially affect the decision to purchase those goods? If the answer is affirmative, the use of the geographic term for those goods is considered to be deceptive and unregistrable. See In re Budge Manufacturing Co., Inc., 857 F.2d 773, 8 USPQ2d 1259 (Fed.Cir.1988).
Applying these principles to applicant's mark, we note that it cannot be seriously argued that the word "American" is not a geographic designation and one which is well known to the relevant public. Applicant has not so contended. Nor is there any argument that applicant's goods are of a type which would not be expected to originate in the United States. We believe it is common knowledge that the United States has an extensive and well-known clothing industry. Thus, we believe there is the requisite goods/place association between the geographical description "AMERICAN" and "shirts, pants, jackets and coats for men, women and children. [FN2]
It is applicant's contention that we must look at the composite mark, "AMERICAN SYSTEMS" and design, and applicant maintains that in doing so one will see "a composite mark which connotes a style, cut or consumer of the product," and one which "as a whole conveys nothing about the place the product may come from or the product itself."
It is well settled that a geographic term is protectible as a mark if it is used in a fictitious, arbitrary or fanciful manner or in such a way that the geographic connotation is subsumed in the meaning of the mark as a whole. Usage of a geographical term in any such manner would not fall under the bar applicable to primarily geographic designations.
*2 We cannot say that applicant's mark, which adds to the geographic term "AMERICAN" the word "SYSTEM" and a design of a running man, creates a designation which is fanciful or arbitrary. Since applicant volunteers the information that "AMERICAN SYSTEM" connotes a style, cut or consumer of the product, it appears to be applicant's intention to impress on the consumer of its clothing sold under this mark that the goods are "American". In fact, applicant indicated in its response of January 28, 1988 to an Office action that the goods "are specifically designed for the American market and with the expectation of satisfying the American taste for clothing, which is in reality, slightly different than the style of clothing popular in the mass market outside of the United States."
In view of applicant's contentions and since we perceive no particular meaning in the term "AMERICAN SYSTEM" as used in this context which would diminish the geographic significance thereof, we conclude that, if applicant's goods came from the United States, "AMERICAN SYSTEM" and design would be seen as nothing more than a primarily geographically descriptive term as applied to applicant's goods. The addition of the "running man" figure in no way detracts from that impression of the mark. Since applicant's goods come from Italy, the mark is primarily geographically deceptively misdescriptive. Aided by the fact that the goods are manufactured in an "American" cut and style, it appears certain that purchasers would believe the misdescription.
Turning to the question of deceptiveness, we must first dispose of applicant's arguments relative to the Lexis/Nexis evidence introduced by the Examining Attorney. First, applicant objects to the fact that the Lexis/Nexis search was not for the mark sought to be registered but for the expression "Buy American" With regard thereto, the Examining Attorney made it clear that the purpose of the submission was to support the contention that applicant's mark, as used on applicant's clothing, would, indeed, be a material motivating factor in their purchase. To the extent that they indicate that there has been an active "Buy American" campaign of late, the Lexis/Nexis excerpts are admissible, not for the truth of the contents thereof, but for what they show on their face. Offered for this purpose, they are clearly not subject to applicant's hearsay objection. As to applicant's objection to the use of the KWIC feature in reporting the material and of the submission of less than an entire article, we note that each excerpted article was clearly identified, permitting applicant to check the entirety of each article if it so desired. [FN3] See In re Capital Formation Counselors, Inc., 219 USPQ 916 (TTAB 1983) and In re Murphy Door Bed Company, Inc., 223 USPQ 1030 (TTAB 1984) reversed on other grounds.
With further reference to the Lexis/Nexis evidence, applicant argues that if "Buy American" were, in fact, a purchaser motivation, there would be no need for an advertising campaign to tout "Buy American" and concludes that the campaign itself is evidence that purchasers have not been buying American goods exclusively and would not be motivated to purchase applicant's goods because of a belief in their American origin.
*3 The evidence establishes that, since at least early 1985, there has been an active campaign to emphasize a "Buy American" attitude in response to what is commonly referred to as the trade deficit. The question is not the degree of success the campaign has realized as applicant contends, but whether, because of it, purchasers have been made more aware of the geographic origin of the goods they buy. We believe the latter to be true. That is to say, some purchasers may well prefer foreign-made goods, but, to those purchasers who choose, for whatever reason, to buy only what they believe to be American-made goods, the appearance of applicant's mark on its goods would materially influence their decision to buy. For that reason, we agree with the Examining Attorney that the mark is unregistrable under Section 2(e)(2) on the ground of deceptiveness.
Accordingly, the refusal to register is affirmed.
J. E. Rice
L. E. Rooney
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Serial No. 634,507 filed December 9, 1986. It is noted that in a response to an Office action filed January 28, 1988, applicant requested that it be permitted to rely on its Italian Registration No. 459,018, application for which was filed on October 31, 1986. A copy of the registration was subsequently filed. Since the amendment was apparently approved but not entered by the Examining Attorney, the application is hereby amended to include reference to the Italian registration.
FN2. Evidence would need to be submitted to establish a public association with the place named if a genuine issue were raised that the place named in the mark may be so obscure or remote that purchasers would fail to recognize the term as indicating the geographical source of the goods to which the mark is applied or an admittedly well recognized geographical term may have other meanings so that the geographical significance may not be the primary significance to prospective purchasers. See In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982) It is clear that the term "AMERICAN" does not fall into either category.
FN3. Applicant referred to its own submission of entire articles, entire chapters of books and entire pages from dictionaries. However, as the Examining Attorney has noted, applicant submitted this evidence with its appeal brief. Consequently, it has not been considered in determining the registrability of applicant's mark. See Rule 2.142(d).