Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE MCO PROPERTIES INC.
Serial No. 74/438,943
November 27, 1995
Date released for publication: February 14, 1996
Susan J. Kastriner
Trademark Examining Attorney
Law Office 12
(Deborah Cohn, Managing Attorney)
Before Simms, Cissel and Hohein
Administrative Trademark Judges
Opinion by Cissel
Administrative Trademark Judge
On September 22, 1993, applicant filed an application to register the term "FOUNTAIN HILLS" on the Principal Register for "real estate development services." The application was based on a claim of first use in commerce as early as January of 1987. Registration was refused under Section 2(e)(2) of the Act on the ground that the term "FOUNTAIN HILLS" is primarily geographically descriptive of applicant's services.
Applicant's response to the refusal to register was essentially to point out that the Examining Attorney had not supported the refusal to register with any evidence. The Examining Attorney countered by making the refusal final, directing applicant's attention to the facts that the application states applicant's address as "Fountain Hills, Arizona, 85268," and that the specimens of record describe Fountain Hills as "a hometown with its own government, school system and public library." Attached to the final Office Action were copies of excerpts of articles retrieved from the Nexis computer database of publications; excerpts from the HAMMOND GOLD MEDALLION WORLD ATLAS; and brochures provided by the Chamber of Commerce of Fountain Hills, Arizona. All relate to the town where applicant conducts business.
Applicant responded with argument and its own information from the Nexis database, in the form of one hundred twenty-four story excerpts. Only 7.26% of these excerpts were from news sources outside of Arizona. One of them refers to "Fountain Hill, (Pa.)" and the others all referred to "Fountain Hills" in conjunction with "Arizona." From this evidence applicant argued that while people in Arizona might know of the Arizona town of Fountain Hills, the nationwide purchasing public does not understand the term "FOUNTAIN HILLS" to refer to the town in Arizona. Applicant contended that purchasers of applicant's services "would not recognize 'FOUNTAIN HILLS' as indicating that the [services] emanate from such an obscure geographical place." (July 25, 1994 response from applicant to the final refusal). Applicant further argued that the Examining Attorney's evidence that Fountain Hills, Arizona, has a population of 10,030 is not a sufficient basis for a finding that the town is anything but remote or obscure.
The Examining Attorney was not persuaded. After the final refusal to register was maintained, applicant appealed. Briefs were filed by both applicant and the Examining Attorney. No oral hearing was conducted.
Based on the record before us in this case and the relevant legal precedents argued by applicant and the Examining Attorney, we affirm the refusal to register.
*2 In order for a term to be held unregistrable under Section 2(e)(2) of the Act, it must be demonstrated that the primary significance the term would have in the marketplace for the particular services in question is geographic, that is, that the term names a place. Further, it must be shown that there is a basis for prospective purchasers of such services to make an association between the place named by the term and the services. In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982). When it has been demonstrated that the primary significance of the term is geographic, and the services of the applicant are in fact rendered from the place the term names, a public association of the services with the place will be presumed. In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982); In re California Pizza Kitchen, 10 USPQ2d 1704 (TTAB 1992).
The record shows that "FOUNTAIN HILLS" is the name of the town in Arizona where applicant is located and renders its services. The materials submitted by the Examining Attorney, as well as the specimens submitted by applicant with its application, establish this. The term sought to be registered is clearly a geographic name and has no other significance. This satisfies the first part of the test.
The second part of the test is whether there is an association between the place and the services. Even if the association between this place name and the services set forth in the application would not be assumed, despite the fact that applicant actually renders its services there, the record here supports that such an association is made by people in the real estate market where applicant is using the term. That is to say, unlike goods, which can be manufactured in some remote or obscure location and then shipped all over the world, real estate development services are rendered in particular geographic areas which are being developed. In this case, the services for which applicant seeks to register "FOUNTAIN HILLS" are in fact rendered in Fountain Hills.
Clearly, anyone who comes in contact with applicant's promotional brochure (which was submitted as a specimen) will recognize the connection between the mark "FOUNTAIN HILLS" and the name of the place where applicant is offering its real estate development services, Fountain Hills. The brochure is replete with references to Fountain Hills as the town where applicant's development services are rendered. Examples include the following: "Fountain Hills is home to ...; it is a hometown with its own government, school system, and a public library.... All this makes Fountain Hills one of the most desirable communities in Arizona.... In Fountain Hills, you can be part of a community.... As a resident of Fountain Hills, you can enjoy.... Come spend the day at Fountain Hills." These uses of the term by applicant hardly show use of "FOUNTAIN HILLS" as an indication of the source of applicant's real estate development services. Rather, they evidence use of the term as the name of the place where the services are rendered.
*3 If a term names an obsure or remote place, an association between the term and particular goods or services may not be made. Applicant's argument that Fountain Hills, Arizona must be widely recognized all across America in order for the refusal to register to be proper under Section 2(e)(2) is not well taken, however. Whether there is an association between the name of the place and the services is determined not in the abstract, but rather in connection with the services with which the mark is used, and from the perspective of the relevant public for those services. In the case at hand, the relevant purchasing public for applicant's service of developing real estate includes people considering purchasing real property in Fountain Hills, Arizona. Whether or not they presently live in Arizona, these people are aware (or will become aware) of the fact that "FOUNTAIN HILLS" is the name of that place where applicant is located, that is, the town promoted by applicant as a wonderful place to buy real estate. In the context of applicant's services, the place is not obscure or remote. A clearer association between these services and this place name is difficult to imagine.
We note further that there is no evidence that the term has significance as anything other than a place name. The reference to the similarly named place in Pennsylvania is not an exception to the consistent references to the Arizona Fountain Hills. The Pennsylvania town is called "Fountain Hill," not "Fountain Hills." Moreover, Fountain Hill is nonetheless the name of a place.
This record shows that the primary significance of the term sought to be registered is geographic--that it is used, even by applicant, to refer the relevant purchasing public for applicant's real estate development services to the town in Arizona where applicant's services are rendered.
The purpose of the proscription in Section 2(e)(2) of the Act against registration of primarily geographically descriptive terms is to leave place names free for all businesses operating in particular areas to inform customers where the goods or services originate. It would be completely inconsistent with the objectives of the Trademark Act to register "FOUNTAIN HILLS" as a service mark for applicant's services rendered in Fountain Hills unless applicant had claimed and proved that the term has acquired secondary meaning as an indication of the commercial source of the services. We have no such claim or proof, so we are left to conclude that the primary significance of this term is geographic. As such, it is unregistrable under Section 2(e)(2) of the Act.
Decision: The refusal to register is affirmed.
Administrative Trademark Judges, Trademark Trial and Appeal Board