“The test for determining whether a term is primarily geographically descriptive is whether (1) the primary significance of the term in the mark sought to be registered is the name of a place generally known to the public, (2) the goods or services originate in the place identified in the mark; and (3) the public would make an association between the goods or services and the place named in the mark, that is, believe that the goods or services for which the mark is sought to be registered originate in geographic place identified in the mark.” In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448-9 (Fed. Cir. 2015) (emphasis added); see also 15 U.S.C. § 1052(e)(2).

John Welsh has commented whether a mark for online services can ever be primarily geographically descriptive?

Is L.A. Geographically Descriptive for Casinos?

For the mark CASINOLA for downloadable game software and related retail store services featuring virtual casino and gaming goods in Classes 9 and 35, the Trademark Trial and Appeal Board reversed a geographic descriptiveness refusal. In re Casinola LLC, Ser. Nos. 90115759 and 90115777 (TTAB July 5, 2023).

Primary Significance

The TTAB found that CASINOLA was a compound mark consisting of “Casino” and “LA”; where the primary significance of CASINOLA was “the geographical place known as LA, i.e., the City of Los Angeles, California and the highly descriptive term CASINO.” The Applicant had argued that consumers would associate CASINOLA with New Orleans (Nola) or Louisiana (LA); but the TTAB did not buy it.

Rather, the consuming public commonly uses and recognizes LA to refer to Los Angeles as its primary significance. See, e.g., In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (finding no allusion to the alternative meaning of “Hollywood” referencing the film industry when viewed in the context of applicant's services and without additional elements in the mark to detract from the geographic significance); In re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986) (finding THE NASHVILLE NETWORK primarily geographically descriptive of television program production and distribution services where primary significance of NASHVILLE was the geographic location of Nashville, Tennessee and not that of a style of music); In re Cookie Kitchen, Inc., 228 USPQ 873, 874 (TTAB 1986) (fact that MANHATTAN identifies an alcoholic cocktail does not alter the primary significance of the term as a borough of New York City).

The TTAB further noted that “the presence of generic or highly descriptive terms in a mark which also contains a primarily geographically descriptive term does not serve to detract from the primary significance of the mark as a whole.” In re JT Tobacconists, 59 USPQ2d 1080, 1082 (TTAB 2001); see also In re Bacardi & Co. Ltd., 49 USPQ2d 1301 (TTAB 1997).

Origination

As for the origination prong of the test, aside from Casinola having a business address in Los Angeles, there was little evidence that its goods or services will be developed or produced in Los Angeles. See In re Mankovitz, 90 USPQ2d 1246, 1249 (TTAB 2009) (“Even the location of a corporate headquarters is not necessarily sufficient to show a goods/place relationship.”). Instead, its goods would be available online by means of an app store with no physical location, and its services will be available online.

Association

As for the association prong, the TTAB found there was insufficient evidence that Los Angeles is known for the identified goods or services.

Aside from a single webpage discussing one casino assertedly located in Los Angeles, the record does not support a finding that consumers generally associate LA with computer and video gaming goods and online retail store services of the type intended to be offered by Applicant. Absent from the record is evidence from Applicant's website or marketing materials, third-party webpages, an electronic database, gazetteers, encyclopedias or geographic dictionaries establishing an association between Los Angeles and the identified goods and services. See TMEP §1210.04 and authorities cited therein.

            The facts of this case are analogous to those in In re Gale Hayman Inc., 15 USPQ2d 1478 (TTAB 1990), in which the Board found SUNSET BOULEVARD not primarily geographically descriptive of perfume and cologne. The Board did not presume a goods/place association based upon the mere fact that the applicant's principal offices were located in Century City, close to Sunset Boulevard. In determining that the public would not make a goods/place association, the Board noted that there was no evidence that any perfume or cologne was manufactured or produced on Sunset Boulevard or that the applicant's goods were sold there.

Accordingly, the Board reversed the Section 2(e)(2) refusal.

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.