Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE PEBBLE BEACH COMPANY
Serial Nos. 73/810,571; 73/810,572; 73/810,573; 73/810,574; 73/810,576
April 29, 1991
Kerry C. Smith of Pettit & Martin for applicant.
Fred Carl III
Trademark Examining Attorney
Law Office 8
(Sidney Moskowitz, Managing Attorney)
Before Cissel, Seeherman and Hohein
Opinion by Seeherman
Pebble Beach Company, a California partnership comprising two Colorado general partnerships, MKDG II and MKDG IV, has filed applications to register "17 MILE DRIVE" for tee-shirts and sweatshirts, [FN1] paper napkins, [FN2] ceramic mugs, [FN3] canvas tote bags, [FN4] and recreational services, namely providing facilities for picnicking and sightseeing. [FN5] The Examining Attorney entered final refusals in each application on the ground that the mark is primarily geographically descriptive of the applicant's goods or services. Applicant appealed, and because the issues in each appeal are the same, the proceedings were consolidated. Accordingly, we shall render a single opinion on the five appeals.
Section 2(e)(2) of the Trademark Act, 15 U.S.C. 1052(e)(2), prohibits the registration on the Principal Register of marks which, when used on or in connection with the goods [or services] of the applicant, are primarily geographically descriptive or deceptively misdescriptive of them. In order to establish that a mark is primarily geographically descriptive the Examining Attorney typically 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 Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988).
The Examining Attorney asserts that applicant's mark is primarily geographically descriptive of applicant's goods and services because "17 mile drive" is a specific geographic place which is a well-known tourist area, and the goods and services identified in applicant's applications are of the type likely to be sold or rendered at such an area. In support of his position the Examining Attorney has made of record excerpts of articles taken from the NEXIS data base which make reference to "fabled 17-mile Drive" and "the renowned 17- Mile Drive," and include the following:
. . . and Poppy Hills, the home course of the Northern California Golf Association, are all on the famed 17-Mile Drive. (Chicago Tribune, June 28, 1989);
As we stand on the tee, 17-Mile Drive winds along the ocean to our right. (The Boston Globe, July 16, 1989); and
Take time to stroll the delightful streets of Carmel, then pay the $5 toll to tour legendary 17-Mile Drive at Pebble Beach. (Los Angeles Times, April 17, 1988).
*2 Applicant does not dispute the fame of its mark, but argues that "17 MILE DRIVE" is not primarily geographically descriptive because its primary significance is to designate applicant's goods and services. According to the history provided by applicant, in 1880 its predecessor began offering carriage trips along the scenic Monterey, California coastline. The trip was advertised as the 17 Mile Drive. The area encompassing the 17 Mile Drive roadway (which today is 14 miles long), is fully owned, operated and maintained by applicant. The Pebble Beach preserve which contains the roadway is gated and fenced, and access to both the roadway and the surrounding Pebble Beach area is by one of four company-owned gates. The public cannot enter freely, but must pay a fee.
This appeal presents the unusual question of whether a term which is recognized as identifying a specific location, but which location is owned by the applicant, can be considered a geographic term under Section 2(e)(2) of the Trademark Act.
Commentators have ascribed two basic reasons for the prohibition against the registration of primarily geographically descriptive terms. One is that such a term would be perceived by the public not as an indication of source, i.e., a trademark, but as an indication of the geographic place from which the product comes. The second reason is that all manufacturers in a particular geographic place have the right to use the geographic name to indicate where their products are made. See, J. McCarthy, Trademarks and Unfair Competition, § 14.1, (2d. ed. 1984), citing Canal Co. v. Clark, 80 US 311 (1872); Restatement of Torts § 720, Comment c (1938). See also, Hearings on H.R. 6248 Before the House Comm. on Patents, 69th Cong., 1st Sess. 81-82 (1926).
Neither reason applies in the present case. "17 MILE DRIVE" is a term which was coined by applicant's predecessor to refer to both its carriage ride services and the place where those services were performed. Thus, "17 MILE DRIVE" has never been a merely or primarily geographic term, but has always been a term associated with applicant and its services. Today, because "17 MILE DRIVE" continues to refer to a place owned by applicant, to the extent that "17 MILE DRIVE" is descriptive of goods or services originating at that location it is identifying goods or services originating with applicant. As for the second reason, i.e., keeping the term free for all traders in that area to describe the origin of their goods, because applicant owns, maintains and controls the area known as "17 Mile Drive," there can be no other parties located in that area with rights to describe the geographic origin of their goods or services by using applicant's designation "17 MILE DRIVE".
The mere fact that a term may be the name of a place that has a physical location does not necessarily make that term primarily geographically descriptive under Section 2(e)(2). If that were so, the name of literally every retail store or restaurant would be primarily geographically descriptive, since the public would associate the name with the physical place where the services were rendered or the goods sold. The Patent and Trademark Office and the courts have implicitly and explicitly recognized that terms which denote areas which have a physical location can also be registered and function as trademarks. Applicant itself was previously issued a Principal Register registration for "17-MILE DRIVE" for amusement park services without resort to the provisions of Section 2(f) of the Act. [FN6] See also, Dominion Federal Savings and Loan Association v. Ridge Development Corporation, 231 USPQ 976 (E.D.Va. 1986), and cases cited therein. We point out that the names of such areas are not protectable in the abstract, however. Rather, they are accorded the status of marks only if they in fact function as marks, that is, they identify the sources of goods or services and distinguish them from similar products or services from other sources.
*3 The fact that "17 MILE DRIVE" is well known, and people may know the geographic area where it is located, does not make this a geographic term within the meaning of the Act. On the contrary, the fame of the geographic area establishes that "17 MILE DRIVE" functions as a mark, because it is through applicant's efforts (whether directly through advertising or indirectly through publicity) that the name given by applicant to part of its land has come to be recognized as indicating a specific physical location.
The present case is similar to the situation of privately owned amusement parks or shopping centers or colleges, whose locations may be well known and whose marks may even appear on maps to indicate the location where their goods are sold or their services are rendered. Despite the fact that an amusement park, for example, occupies a specific physical location, and it renders services and sells goods under the name of the amusement park at that location, the park's name is not a geographic term. In the same way, while "17 MILE DRIVE" may denote a specific physical place, it is not a geographic term within the meaning of Section 2(e)(2) of the Act, and it is therefore registrable as a trademark.
In view of our finding that "17 MILE DRIVE" is not a geographic term we need not reach the question of whether the Examining Attorney has established a goods/place association between the term and the applied-for goods and services.
Decision: The refusals are reversed, and the five applications will be forwarded for publication in the Official Gazette.
R. F. Cissel
E. J. Seeherman
G. D. Hohein
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 73/810,571, filed July 3, 1989 and asserting first use and first use in commerce in January 1987.
FN3. Application Serial No. 73/810,573, filed July 3, 1989 and asserting first use and first use in commerce in January 1987.
FN4. Application Serial No. 73/810,574, filed July 3, 1989 and asserting first use and first use in commerce in January 1987.
FN5. Application Serial No. 73/810,576, filed July 3, 1989 and asserting first use and first use in commerce as early as 1880.
FN6. Registration No. 1,037,666, issued April 6, 1976; cancelled Section 8.