Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE LONDON & EDINBURGH INSURANCE GROUP LIMITED
Serial No. 74/301, 935
July 5, 1995
Trademark Examining Attorney
Law Office 15
(Paul E. Fahrenkopf, Managing Attorney)
Before Rice, Seeherman and Hanak
Administrative Trademark Judges
Opinion by Seeherman
Administrative Trademark Judge
London & Edinburgh Insurance Group Limited has applied to register LONDON & EDINBURGH INSURANCE, with the word INSURANCE disclaimed, for "insurance underwriting services for all types of insurance." [FN1] Applicant, identified in the application as a corporation of the United Kingdom, claimed that the mark was first used on the services both in the United Kingdom and in foreign commerce in the United States on October 1, 1988 and is now in use in commerce.
Registration has been finally refused pursuant to Section 2(e)(2) of the Trademark Act, 15 U.S.C. 1052(e)(2), on the ground that applicant's mark is primarily geographically descriptive of its services.
Applicant has appealed.
Under Section 2(e)(2) of the Trademark Act, a mark may not be registered on the Principal Register if the mark, when used on or in connection with the goods of the applicant, is primarily geographically descriptive of them. Section 3 of the Act extends this provision to service marks.
In order to make out a prima facie case that a mark is primarily geographically descriptive, the Examining Attorney must 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 [or services] 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). When 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 [or services] with the place may ordinarily be presumed from the fact that the applicant's own goods [[[or services] come from the geographical place named in the mark. In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982).
In support of her position that applicant's mark is primarily geographically descriptive of its services, the Examining Attorney has submitted excerpts from Webster's New Geographical Dictionary, circa 1988, stating, inter alia, that London is the capital of the United Kingdom; that its 1981 population was 9,441,500; and that it is "a major political, cultural, financial, and transportation center." The excerpt for Edinburgh, the capital of Scotland, indicates that its 1981 population was 419,187 and lists for it "publishing; marine engineering; glassware, chemicals; tourism." In addition, the specimens of record indicate that applicant's registered office is located in London, England.
*2 Applicant admits that London is a city in England and Edinburgh is a city in Scotland, and that the dictionary listings show that the terms LONDON and EDINBURGH, taken individually, are "geographically descriptive." [FN2] Moreover, as the Examining Attorney has pointed out, applicant does not deny that its services originate in or are rendered from the areas named in the mark, nor has it submitted any evidence that would indicate the purchasing public would not make a goods/place association.
Despite the foregoing, applicant asserts that its mark LONDON & EDINBURGH INSURANCE as a whole is not primarily geographically descriptive because the term "LONDON & EDINBURGH" does not refer to a particular city. Essentially, applicant asserts that the Examining Attorney has not considered the mark in its entirety, but has dissected it into the individual elements of London and Edinburgh.
As far as we have been able to ascertain, the issue of whether a mark comprising a combination of geographic terms is primarily geographically descriptive has never been decided by this Board. Applicant's approach to the issue is to analogize it to marks consisting of a combination of surnames. Specifically, applicant relies on In re Standard Elektrik Lorenz Aktiengesellschaft, 152 USPQ 563 (CCPA 1967), in which the Court found that the Examiner had not proved that SCHAUB-LORENZ was primarily merely a surname. Although the Examiner had submitted telephone directory listings of the individual elements Schaub and Lorenz, the Court said this evidence regarding portions of the mark was insufficient to show that the mark Schaub-Lorenz was primarily merely a surname.
We believe that applicant's reliance on the Schaub-Lorenz case is misplaced. The language of the section prohibiting registration of surnames (formerly Section 2(e)(3), renumbered as Section 2(e)(4) effective January 1, 1994) is different from the language of the section prohibiting registration of geographically descriptive terms. Section 2(e)(2) uses the language "primarily geographically descriptive" while the language of Section 2(e)(4) uses "primarily merely a surname" (emphasis added). Because of this difference in statutory language, the combination of two surnames may result in a mark which is, in and of itself, not primarily merely a surname, i.e., the resultant term may not have significance as a single individual's surname; [FN3] however, the same conclusion will not necessarily be made when two geographic terms are combined in a mark. In the latter situation, the mark may still be primarily geographically descriptive if purchasers still perceive the mark as having geographic significance.
As noted above, the basis for applicant's position is that when combined in the phrase LONDON & EDINBURGH, the individual geographic terms become nongeographic because London & Edinburgh is not the name of a particular geographic place. We disagree. When the mark LONDON & EDINBURGH INSURANCE is viewed as a whole, the geographic significance of the words is not lost. Consumers will still regard the mark as referring to the cities of London and Edinburgh, rather than to some mythical place called "London & Edinburgh." Nor can London & Edinburgh be considered such an odd or incongruous combination of geographic place names that consumers will view it as an arbitrary combination without a geographic significance to the whole, in the way that, perhaps, "Borneo & Bulgaria" might be. London and Edinburgh are, respectively, the capitals of England and Scotland, and these two bordering countries are, in turn, part of the United Kingdom. Because of the natural association between these two capital cities of the United Kingdom, and their geographical proximity, consumers are likely to view the phrase LONDON & EDINBURGH as having a geographic significance. In the context of a mark used for insurance underwriting services, that significance will be of services which are rendered in or originate from both of these cities.
*3 As we have already stated, applicant's argument is directed solely to whether LONDON & EDINBURGH has a primarily geographic significance, the first part of the geographic descriptiveness test. Throughout the examination of the application this has been the sole point at issue. Applicant has never disputed that, if LONDON & EDINBURGH has such significance, a goods/place association would be made between these cities and insurance underwriting services. Having found that LONDON & EDINBURGH, as used in the mark LONDON & EDINBURGH INSURANCE, does project a primarily geographic significance, we need mention only briefly that the second part of the test of geographic descriptiveness has been met. The evidence of record shows that London is a financial center. Further, the Dorling Kindersley World Reference Atlas, (R) 1994, of which we take judicial notice [FN4] refers to London as dominating the country's financial life and carrying out 20% of all global banking transactions. Such evidence not only shows that consumers would make a goods (services)/place association between insurance services and London, but that London could be considered to be noted for such services, an even stricter test. As for Edinburgh, in addition to the evidence submitted by the Examining Attorney, the Dorling Kindersley atlas lists as its major businesses computers, electronics, chemicals, and the aerospace industry. Although the evidence does not indicate Edinburgh to be a financial center, as the capital and one of the largest cities in Scotland, consumers are likely to associate such common commercial services as insurance with that city.
Decision: The refusal of registration is affirmed.
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/301, 935, filed August 7, 1992.
FN2. Throughout its brief, applicant uses "geographically descriptive," rather than "primarily geographically descriptive," to refer to the ground for refusal of registration.
FN3. We question whether, if the Schaub-Lorenz case were to be decided today, the same result would obtain. The issue of whether a mark is primarily merely a surname goes to whether the primary significance to the public is that of a surname, and even a mark consisting of a very rare surname may be found to be primarily merely a surname if it looks like a surname. See In re Industrie Perelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988). Given the practice of many people today to hyphenate surnames to create a new surname (e.g., a person may combine his or her birth surname with that of a spouse to form a new surname; a child may be given a hyphenated surname consisting of the surnames of both parents), the public may well regard the combination of two surnames as primarily merely a surname.
FN4. The Board may take judicial notice of reference works. Sprague Electric Co., Inc. v. Electrical Utilities Co., 209 USPQ 88 (TTAB 1980).
Administrative Trademark Judge
As the majority notes, this case presents a very unusual fact situation. To our knowledge, this Board has never had occasion to consider whether a mark consisting of two or more geographic terms is primarily geographically descriptive [Section 2(e)(2) ]. [FN5]
In deciding whether such a mark is primarily geographically descriptive of an applicant's goods or services, it is useful to note that the historic rationale precluding registration of descriptive geographic terms absent a showing of acquired distinctiveness (secondary meaning) stems from the belief "that descriptive geographical terms are in the 'public domain' in the sense that every seller should have the right to inform customers of the geographical origin of his goods [or services]." 1 J. McCarthy, McCarthy on Trademarks and Unfair Competition, Section 14.01 at page 14-3 (3d ed. 1992). Relying on this historic rationale, Judge Nies noted that in order for the Patent and Trademark Office to sustain a refusal based on Section 2(e)(2), "it is incumbent on the PTO to put forth evidence that other businesses have or are likely to have legitimate interests in the use of the geographic name claimed by the applicant." In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889, 898 (CCPA 1982) (J. Nies concurring).
Putting aside obscure geographic terms, there are nonetheless literally hundreds if not thousands of geographic terms that are reasonably well known to the American public. Combinations of two or more of these known geographic terms are almost limitless. Hence, when an applicant is seeking to register not one geographic term, but rather a combination of two or more geographic terms, it becomes more difficult to show "that other businesses have or are likely to have legitimate interests in the use of the geographic name [combination] claimed by the applicant." Nantucket, 213 USPQ at 898. Moreover, given the fact that to the best of our knowledge, this Board has never been asked to consider the registrability of a combination of two or more geographic terms, it appears that in actuality, the use of such combinations is rare. The very rarity of such combinations further underscores the fact that, in most cases, it is unlikely that businesses will have legitimate interests in the use of the same two or more geographic terms previously used by another for similar goods or services. [FN6]
While I concur with the result reached by the majority, I believe that in determining whether a mark is primarily geographically descriptive, consideration should be given to whether the mark consists of two or more geographic terms. If it does, then, depending on the geographic terms, this could be a factor weighing in favor of a finding that the mark is not primarily geographically descriptive. The majority--citing the example of BORNEO & BULGARIA--appears to be of the view that a combination of geographic terms serves to indicate that a mark as a whole is not primarily geographically descriptive only when the combination is so "odd or incongruous" that the consuming public would view it as "an arbitrary combination without a geographic significance." In my view, this approach effectively accords no additional weight to the fact that a particular mark consists of a combination of geographic terms. A mark consisting of but one geographic term is registrable if the geographic term is "arbitrary." Examples of "arbitrary" geographic terms include ANTARCTICA, SUN and WORLD. Nantucket, 213 USPQ at 897. See also 1 J. McCarthy, supra, Section 14.03 at page 14-12.
*5 The reason that I concur with the result reached by the majority is because I believe that in this particular instance, other businesses may have legitimate interests in the use of the geographic names claimed by the applicant. As the majority states, "London could be considered to be noted for [[[insurance] services." Moreover, both London and Edinburgh are not only major commercial centers, but in addition, they are the capitals of the two bordering countries of England and Scotland. Under such circumstances, I think that it is not unreasonable to assume that other businesses may have legitimate interests in the use, as a combination, of the two geographic terms selected by applicant.
FN5. Moreover, this Board has never had occasion to consider whether a mark consisting of two or more geographic terms is primarily geographically deceptively misdescriptive [Section 2(e)(3) ] or geographically deceptive [[[Section 2(a) ].
FN6. Of course, many businesses have legitimate interests in the use of combinations such as PORTLAND OREGON and BRUSSELS BELGUIM. Obviously, this situation does not involve two truly different geographic terms. Rather, it involves essentially one geographic term in the sense that the term points to one geographic location with greater specificity (e.g. the Portland in Oregon, not Maine).