Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE PERRY MANUFACTURING COMPANY
Serial No. 625,440
July 28, 1989
Dalbert U. Shefte, Francis M. Pinckney and Karl S. Sawyer, Jr. for applicant.
Richard B. Gordon
Trademark Examining Attorney
Law Office 5
(Paul E. Fahrenkopf, Managing Attorney)
Before Sams, Rooney and Cissel
Opinion by Sams
Perry Manufacturing Company has appealed from the Trademark Examining Attorney's final refusal to register its mark "PERRY NEW YORK" (and design), as shown below, for goods described in the application as "clothing, namely jackets, pants, skirts, blouses, knit tops, culottes, shorts and sweaters." [FN1] The Examining Attorney refused registration, under Section 2(a) of the Trademark Act, on the grounds that applicant's mark, as applied to its goods, is deceptive, because it deceives purchasers into believing that the goods bearing the mark have their geographic origin in New York, when the goods have no connection with New York and, in fact, originate in North Carolina. [FN2]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Applicant and the Examining Attorney are in agreement as to the standard for determining whether a mark consisting of or containing a geographic term is deceptive within the meaning of Section 2(a) of the Trademark Act. Put simply, a mark is geographically deceptive if (1) the mark contains a term that is geographic and the goods or services for which registration of the mark is sought do not have their origin in or any other connection with that geographic location, (2) purchasers are likely to believe, erroneously, that the goods or services sold under applicant's mark have their origin in or are somehow connected with the geographic place named in the mark, and (3) a purchaser's erroneous belief as to the geographic origin of the goods or services would materially affect that purchaser's decision to buy the goods or services sold under the mark. See In re House of Windsor, Inc., 221 USPQ 53, 55 (TTAB 1983).
In this case, there can be no serious argument that "New York" is a geographic term. Applicant has, in fact, disclaimed the term under Section 6 of the Trademark Act, presumably because of the term's geographic descriptiveness. Nor is there any doubt that the goods to which applicant's mark is applied come from North Carolina and have no connection with New York.
Where the Examining Attorney's analysis of the case departs from applicant's is on the issue of how purchasers perceive the term "New York" as it appears in applicant's composite mark. The Examining Attorney contends that purchasers viewing applicant's mark would believe that the goods to which that mark is applied are manufactured in or otherwise have a connection with New York. Applicant, while disclaiming "New York" under Section 6 of the Trademark Act, argues that purchasers would see the word "New York", as it forms a part of applicant's mark, as merely suggestive of high fashion clothing and would not assume that the clothing to which its mark is applied emanates exclusively from New York. Applicant argues, further, that, even if purchasers believe that goods bearing its mark come from New York, such geographic origin would not be material to the purchasing decision; that New York, being a source of a wide variety of goods, is not synonymous with or famous for clothing in the way some geographic places would be famous for other sorts of products (applicant citing, as examples, France for perfume and Switzerland for cheese). The Examining Attorney, on the other hand, argues that New York is the home of a thriving garment industry and a hub of fashion and that a New York origin would obviously be a material factor in the consumer's decision to purchase an article of clothing. In support of his refusal to register, the Examining Attorney made of record an excerpt from an article from "The New Encyclopedia Britannica" (1973-1974). The article from which the excerpt comes discusses New York City and makes reference to the city's "fabulous garment centre...."
*2 While the evidence submitted by the Examining Attorney is admittedly minimal, we have no difficulty in concluding that applicant's mark is deceptive. Only studied ignorance would prevent us from finding as fact that New York is a world renowned center of culture and high fashion and that people from throughout the world go to New York to purchase the latest styles in clothing, from haute couture to off-the-rack garments. Such fact is the appropriate matter for judicial notice. See B.V.D. Licensing v. Body Action Design, 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed.Cir.1988). That being the case, we have no doubt that purchasers seeing clothing bearing applicant's mark, which incorporates the words "New York" and the New York skyline, would immediately assume that such clothing has a connection with New York, either in its manufacture or its design. Given the renown of New York as a fashion center, we can only conclude that a New York connection for women's clothing would be material to the decision to purchase such clothing. Indeed, we can fathom no reason for a North Carolina manufacturer, with no connection to New York, to adopt a mark incorporating the words "New York" and the New York skyline other than an attempt to appeal to the consumer's desire for clothing connected with New York and its fashion image and industry.
Applicant's reliance on Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc., 97 USPQ 246 (2d Cir.1953) is misplaced here. "Hyde Park", being a geographic location not known as a garment manufacturing or clothing design center, conveys a wholly different commercial impression, when applied to garments, than does "New York."
Decision: The refusal to register is affirmed.
Members, Trademark Trial and Appeal Board
FN2. In his Office action of May 4, 1988, the Examining Attorney made final a refusal under Section 2(d), which refusal he withdrew contemporaneously with the filing of his brief on appeal. Therefore, the only issue before us is the refusal of registration under Section 2(a) of the Trademark Act.