Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE CALIFORNIA PIZZA KITCHEN, INC.
Serial No. 580,581
October 27, 1988
Michael A. Painter for applicant
Trademark Examining Attorney
Law Office 7
(Lynne Beresford, Managing Attorney)
Before Sams, Krugman and Seeherman
Opinion by Seeherman
California Pizza Kitchen, Inc. has applied to register "CALIFORNIA PIZZA KITCHEN" for restaurant services, disclaiming exclusive rights to the use of the words "PIZZA KITCHEN". [FN1] Registration has been refused pursuant to Section 2(e)(2) of the Trademark Act, 15 U.S.C. 1052(e)(2), on the ground that the mark is primarily geographically descriptive of the services.
Section 2(e)(2) provides that registration shall not be refused unless a mark is primarily geographically descriptive of the applicant's goods or, as made applicable by Section 3, its services. In order for registration to be properly refused on this basis, it is necessary to show that the mark sought to be registered is the name of a place known generally to the public, and that the public would make a goods/place association, i.e. believe that the goods for which the mark is sought to be registered originate in that place. In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed.Cir.1987). Where there is no genuine issue that the geographical significance of a term is its primary significance and where the geographical place is neither obscure nor remote, a public association of the goods with the place may ordinarily be presumed from the fact that the applicant's own goods come from the geographical place named in the mark. In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982).
Applying these principles to the present case, there can be no dispute that California, one of the largest and most populous states in the United States, is a place known generally to the public and is neither remote nor obscure. Further, as used in the mark "CALIFORNIA PIZZA KITCHEN", we find that this geographical significance is the primary connotation of the term. In this connection, we note that applicant has disclaimed exclusive rights to "PIZZA KITCHEN", thereby conceding the descriptive significance of this phrase in connection with restaurant services.
Applicant argues that "CALIFORNIA" is suggestive of a style of cooking, and therefore that its primary significance is not geographical. Applicant contends that, as used in its mark, "CALIFORNIA" identifies the western-style cooking employed in its restaurants, which involves cooking pizza over wood fires. However, applicant has not submitted any evidence whatsoever in support of the contention that the public would associate "CALIFORNIA" with western-style or wood-fire cooking. In the absence of any evidence of a non-geographical meaning of "CALIFORNIA", we conclude that the primary (and on this record the only) significance of "CALIFORNIA" is its geographical significance.
*2 Applicant also makes the argument that it renders its services both within and outside the state of California, and therefore the public would not associate the services with California. Although applicant has couched this argument as relating to the goods/place association requirement, in effect it is arguing that (1) because its services are also rendered out of the state, the mark does not signify that the services are rendered only in California, and (2) that the primary significance of "CALIFORNIA" in applicant's mark as used in connection with its services is not geographical.
With regard to the first point, we cannot accept applicant's argument, which ignores the tests of geographic descriptiveness set forth in In re Societe Generale, Handler Fenton Westerns, supra, and their progeny. It is the perception of the public as to the geographical significance of the mark which controls whether registration should be refused pursuant to Section 2(e)(2), not whether an applicant also renders the service or manufactures some of the goods outside of the geographical area named in the mark. [FN2] The second part of applicant's argument in effect goes to whether "CALIFORNIA," as used in its mark, would be perceived as primarily a geographical term by out-of-state customers. We recognize that a geographical term in a mark may not be as readily perceived as indicating the geographical origin of services as it does goods, simply because services are normally rendered where the consumer is; while goods may be manufactured anywhere. Nevertheless, we see no inherent reason why a service mark, when used for services rendered outside the named geographical area, would not be primarily geographically descriptive within the meaning of Section 2(e)(2) if it meets the other requirements noted above. See, In re Opryland USA Inc., 1 USPQ2d 1409, 1413 (TTAB 1986).
In the case of applicant's restaurant services, even if applicant may have opened a branch of its restaurant outside of California, [FN3] we believe customers encountering this out-of-state restaurant would believe that the services originated in California. It should be noted that restaurant services would include the restaurant concept, menu, recipes, etc., and even though a customer in Atlanta, Georgia would obviously recognize that the particular branch of the restaurant was physically located outside of California, he would be likely to assume that the restaurant services such as the concept, recipes and even possibly the food originated in the state of California. Thus, we believe that the primary significance of "CALIFORNIA" in applicant's mark would be its geographical significance.
The same would be true for customers encountering applicant's out-of-state advertisements. Moreover, it would appear that these advertisements are for applicant's restaurants located in California, in which case the geographical significance of the mark would be even stronger.
*3 The second part of the test for geographical descriptiveness under Section 2(e)(2) is whether the public would make a goods/place association or, in this case, a services/place association. The Examining Attorney's evidence on this point is limited to the fact that applicant itself is located and renders its services in California.
Applicant argues that such evidence is insufficient to establish a goods (services)/place association because pizza is not a product which is associated with California in the public mind. We concede that the Examining Attorney's evidence is the absolute minimum necessary to establish a prima facie case for refusing registration under Section 2(e)(2). However, as stated in Handler Fenton Westerns, supra, and noted above, absent a genuine issue that the term is remote or obscure or that its primary significance is other than geographical, a goods (or in this case services)/place association may be presumed from the fact that the applicant's own goods come from the place named in the mark.
In this case, as discussed previously, there is no genuine issue that California is not a remote or obscure geographical place, and that, as used in applicant's mark, the primary significance of "CALIFORNIA" is geographical.
Moreover, in addition to the fact that applicant's services originate and are rendered in California, we think a services/place association can be presumed from the nature of the services and the particular geographical place named in the mark. That is, restaurant services are so ubiquitous and a state is such a large, significant geographic area that it can be treated as a matter of common knowledge that restaurant services are rendered throughout every state of the United States, including California.
We also point out that applicant's position that the Examining Attorney must show "that the public associates pizza with California in the same manner it would associate 'perfume and wines with France, potatoes with Idaho, rum with Puerto Rico, and beef with Argentina' ", brief p. 8, is not an accurate statement of the law. Aside from the fact that applicant is seeking registration for restaurant services and not simply pizza, a place need not be well known or noted for the goods (or services) for a goods (or services)/place association to be found. In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed.Cir.1985); In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982).
Decision: The refusal to register is affirmed.
J. D. Sams
G. D. Krugman
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Serial No. 580, 581, filed January 31, 1986, and asserting first use and first use in commerce on March 23, 1985.
FN2. In such circumstances, where goods come from or services are rendered both in the geographical place named and outside the geographical area, registration would normally be refused under Section 2(e)(2) on the basis that the mark is primarily geographically descriptive.
FN3. In its November 20, 1986 response to an Office Action, applicant indicated it would "soon open" a restaurant in Atlanta, Georgia, and in its appeal brief it stated that its services are rendered within and outside of California.