The opinion
Paper No. 23
CEW
THIS DISPOSITION IS CITABLE AS PRECEDENT
OF THE TTAB MAY 12, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Jose Ignacio Guisado Urbano
___________
Serial No. 74/441,447
___________
Thomas J. Moore of Bacon & Thomas for applicant.
Edward Nelson, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
____________
Before Simms, Cissel and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Jose Ignacio Guisado Urbano has filed a trademark
application to register the mark SYDNEY 2000 for
“advertising and business services, namely, the preparation
of advertisements for others, the placement of
advertisements for others, publicity services, and
assistance in managing industrial or commercial companies,”
in International Class 35, and “communication services,
namely, telephone communication services, electronic
Serial No. 74/441,447
transmission of data and documents via computer terminals,
delivery of messages by electronic transmission, electronic
mail services, electronic storage of messages and data,
facsimile transmission, pay-per-view television
transmission services, telephone communication services,
voice and data telecommunications services, and radio
broadcasting services and telegraph communications
services,” in International Class 38.1 The application
includes a disclaimer of SYDNEY apart from the mark as a
whole.
The Trademark Examining Attorney has finally refused
registration under the following sections of the statute:
(1) Section 2(a) of the Trademark Act, 15 U.S.C. 1052(a),
on the ground that applicant’s mark falsely suggests a
connection with the Olympic games to be held in
Sydney, Australia, in the year 2000;
(2) Section 2(e)(1) of the Trademark Act, 15 U.S.C.
1052(e)(1), on the ground that applicant’s mark is
merely descriptive in connection with its services
1
Serial No. 74/441,447, in International Classes 35 and 38, filed
September 29, 1993, based on Spanish Registrations No. 1,753,659 (for
the services in International Class 35) and No. 1,753,660 (for the
services in International Class 38) under Section 44(e) of the
Trademark Act and claiming priority, under Section 44(d) of the Act,
based on the filing in Spain of the applications that matured into the
noted registrations. The application as originally filed at the Patent
and Trademark Office (PTO) also included goods in International Classes
16, 18 and 32, all of which were subsequently deleted.
2
Serial No. 74/441,447
because the mark “describes the fact that the services
pertain to events that will be taking place in Sydney,
Australia, during the summer Olympics in the year
2000” (final refusal, November 22, 1995); and
(3) Sections 2(e)(2) and 2(e)(3) of the Trademark Act, 15
U.S.C. 1052(e)(2) and 1052(e)(3), on the ground that
applicant’s mark is primarily geographically
descriptive in connection with the identified
services, or, alternatively, if the identified
services do not originate in Sydney, on the ground
that applicant’s mark is primarily geographically
deceptively misdescriptive in connection with the
identified services. In this regard, the Examining
Attorney contends that the primary significance of
SYDNEY is geographic; that 2000 is highly descriptive
because “it denotes the year that the Olympic games
will take place in Sydney” (final refusal, November
22, 1995); that the addition of highly descriptive
matter to a primarily geographic term does not avoid
the geographic significance of that term; and that,
therefore, the mark SYDNEY 2000 is either primarily
geographically descriptive if applicant’s services
come from Sydney, Australia, or the mark is primarily
geographically deceptively misdescriptive if
3
Serial No. 74/441,447
applicant’s services do not originate in Sydney,
Australia.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not held.2
We consider, first, the refusal under Section 2(a) of
the Act. Section 2(a) of the Act requires that
registration be refused if the mark sought to be registered
“consists of or comprises matter which … may falsely
suggest a connection with persons, living or dead,
institutions, beliefs, or national symbols, or bring them
into contempt, or disrepute.” As the Court explained in
University of Notre Dame du Lac v. J.C. Gourmet Food
Imports, Inc., 703 F.2d 1373, 217 USPQ 505 (Fed. Cir.
1983),
A reading of the legislative history with respect
to what became Section 2(a) shows that the
drafters were concerned with protecting the name
of an individual or institution which was not a
technical “trademark” or “trade name” upon which
an objection could be made under Section 2(d) …
Although not articulated as such, it appears that
the drafters sought by Section 2(a) to embrace
the concepts of the right to privacy, an area of
the law then in an embryonic state …
The Examining Attorney, who has the burden of
establishing the elements of the refusal to register under
2
Applicant initially requested an oral hearing, but subsequently
withdrew that request.
4
Serial No. 74/441,447
Section 2(a), must establish that the mark in question, or
the relevant portion, points uniquely to persons, living or
dead, institutions, beliefs, or national symbols.
University of Notre Dame du Lac v. J.C. Gourmet Food
Imports, Inc., supra at 509. Further, the Examining
Attorney must establish that such person or institution:
(1) is not connected with the goods or services performed
by applicant under the mark, and (2) is sufficiently famous
that a connection with such person or institution would be
presumed when applicant’s mark is used in connection with
its goods or services. See, In re Sloppy Joe’s
International Inc., 43 USPQ2d 1350 (TTAB 1997); In re North
American Free Trade Association, 43 USPQ2d 1282 (TTAB
1997); In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB
1990); In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985);
and Buffett v. Chi-Chi’s Inc., 226 USPQ 428 (TTAB 1985).
We turn, first, to the requirement that the Office
establish that SYDNEY 2000 points uniquely to an
institution and that it would be recognized as such. The
Examining Attorney has submitted excerpts of news articles
from the LEXIS/NEXIS database3 concerning the fact,
3
We note that a few of the excerpts made of record are duplicative, are
from non-U.S. publications, or are newswire stories. Those excerpts
from non-U.S. sources are of minimal evidentiary value as they do not
necessarily show the use of the term as it would be viewed by U.S.
5
Serial No. 74/441,447
acknowledged by applicant, that the Olympic Games will take
place in Sydney, Australia, in the year 2000. The excerpts
from U.S. non-newswire sources do not reflect use of the
exact phrase SYDNEY 2000 to refer to the upcoming Olympic
Games, but they include numerous uses of the following
phrases: “the Games … in Sydney, Australia (2000)”;
“Australia’s 2000 Olympic Games”; “the 2000 Olympics in
Sydney, Australia”; and “Summer Olympics in Sydney in
2000.”
Additionally, the Examining Attorney submitted copies
of registrations, issued to The Atlanta Committee for the
Olympic Games, for marks including the phrase ATLANTA 1996
alone and with various designs, for a wide variety of
goods.4
The application also includes evidence submitted in
connection with a Letter of Protest.5 This evidence
consumers. Similarly, newswire stories are of minimal evidentiary
value because it is not clear that such stories have appeared in any
publication available to the consuming public. See, In re Marico Inc.,
24 USPQ2d 1938 (TTAB 1992); and In re Men’s International Professional
Tennis Council, 1 USPQ2d 1917 (TTAB 1986).
4
While the Examining Attorney submitted this evidence with his brief,
we have considered this evidence as of record as applicant did not
object and considered this evidence on its merits in its reply brief.
5
The record includes a memorandum, dated September 27, 1998, from the
Administrator for Trademark Classification and Practice, granting the
third-party Letter of Protest, directing the Examining Attorney to
issue a refusal to register based on the objection in the Letter of
Protest, and forwarding the evidence submitted therewith to the
application file. The application record does not include the identity
of the party submitting the Letter of Protest. As applicant notes in
6
Serial No. 74/441,447
includes excerpts from periodicals that appear to be
Australian in origin. While these periodicals use the
phrase “Sydney 2000” in reference to the upcoming Olympic
Games, this evidence is of minimal evidentiary value
herein, as we have no indication of the extent to which the
general public in the United States may have been exposed
to these articles and, thus, to the phrase “Sydney 2000.”
The Letter of Protest evidence also includes a cover page
identified as a report to the IOC (presumably, the
International Olympic Committee), excerpts from what
appears to be an IOC periodical, and brochures and
advertising copy which appear to be from the respective
organizing committees for the Olympic Games in Nagano,
Atlanta, and Lillehammer. These documents refer to the
respective Olympic Games by their location, followed by the
year, e.g., “Nagano 1998,” “Atlanta 1996,” “Lillehammer
’94.” However, the record includes no affidavits or other
evidence establishing any foundation for these documents
and, thus, they are of minimal evidentiary value. In
its reply brief, we are not bound in any way by these statements of the
Administrator for Trademark Classification and Practice. The objection
by the third party is stated as follows:
The phrase SYDNEY 2000 is commonly used to refer to the
Olympics that will take place in the year 2000 in Sydney,
Australia. It is noted that the Examining Attorney has
refused registration of this mark to this applicant,
however, the evidence offered in this Letter of Protest may
assist the Examining Attorney in maintaining that refusal.
7
Serial No. 74/441,447
particular, we have no information establishing either the
authenticity or the exact nature or source of the
documents.6 While this Letter of Protest material shows
the phrase “Sydney 2000” as a reference to the upcoming
Olympic Games, for the reasons stated, we find this
material of extremely limited evidentiary value.
Having said this, we find sufficient evidence properly
in the record clearly indicating that there has been
widespread publicity for the Olympic Games so that we can
conclude that the Olympic Games are well known to the
general public; and that the general public is likely to be
well aware that the 2000 Olympic Games will be taking place
in Sydney, Australia. Thus, while the general public in
the United States may or may not have seen the upcoming
Olympic Games referred to precisely as “Sydney 2000,” we
have no doubt that the general public in the United States
would recognize this phrase as referring unambiguously to
the upcoming Olympic Games in Sydney, Australia, in the
year 2000.
6
While we note that, as a matter of practice, the evidentiary
requirements in an ex parte record are less formal than in an inter
partes context, we agree with applicant that a third party cannot
submit documents in an ex parte record in a manner that would be
unacceptable in an inter partes context, i.e., in this case, without
any foundation. The author of the Letter of Protest should have
submitted an affidavit of an appropriate witness to identify and
authenticate the documents that are not clearly identified as to nature
or source and are not self-authenticating.
8
Serial No. 74/441,447
While we do not consider the Olympic Games, per se, to
be an “institution,” it is only common sense that an event
of such magnitude, which occurs on a regular and ongoing
basis, requires a substantial organizational structure to
support and organize it. In this regard, we refer to
Section 103(4) of the Amateur Sports Act of 1978, 36 U.S.C.
373(4), which defines “Corporation” as the “United States
Olympic Committee,” and Section 110 of the Amateur Sports
Act of 1978, 36 U.S.C. 380, which provides to the
Corporation exclusive rights in specified Olympic symbols
and terms.7 Additionally, we note the registrations of
record issued to “The Atlanta Committee for the Olympic
Games.”8 It appears from this record that there are various
international and national organizations pertaining to the
Olympic Games, although we assume, in the absence of
evidence to the contrary, that there is some relationship
among them for the purpose of presenting the Olympic Games.
Thus, we believe that the entire organization which
7
This statute pertains to words and designs that are not part of the
mark in this case. We note this statute only because it indicates at
least one of the organizations responsible for organizing and
presenting the Olympic Games.
8
We are not persuaded by applicant’s arguments in its reply brief
regarding the registrations in the record issued to The Atlanta
Committee for the Olympic Games. In particular, the fact that the
“institution” organizing and presenting the Olympic Games may own
trademarks in connection therewith does not negate the Section 2(a)
refusal herein.
9
Serial No. 74/441,447
comprises the Olympic Games, as a whole, qualifies as an
“institution” within the meaning of Section 2(a) of the
Trademark Act.9 It is unnecessary for us to determine the
specific responsibilities of the various Olympics
organizations relative to each other or to the Games in
Sydney.
Next, we look at whether the Office has met its burden
with respect to the requirement that the institution
identified by the mark is not connected with the services
to be performed by applicant under the mark, and we find
that it has. Applicant does not contend that it is a part
of, or an authorized sponsor or licensee of, the official
Olympic Games.
Finally, we look at whether a connection with the
Olympic Games would be presumed when applicant’s mark,
SYDNEY 2000, is used with its identified advertising and
business services and/or its communications services.
Applicant’s identified services, in particular, those
advertising services involving “placing advertisements for
others” and “publicity services,” and the identified
9
See, In re North American Free Trade Association, supra at 1285,
wherein the Board notes that the legislative history of Section 2(a)
indicates that the reference to “institution” therein “was designed to
have an expansive scope.”
10
Serial No. 74/441,447
communications services, are services that can be
reasonably assumed to be offered as part of the massive
infrastructure necessarily comprising the Olympic Games in
Sydney in 2000. It is reasonable to expect such services
to be offered to and by those organizing and presenting the
Games, as well as to and by participants, sponsors,
licensees, and attendees of the Games.
Accordingly, we find that the Patent and Trademark
Office has met its burden of proving that applicant’s
proposed mark SYDNEY 2000 falsely suggests a connection
with the Olympic Games, and we affirm the refusal on this
ground.
While we have affirmed the refusal to register under
Section 2(a), in order to render an opinion on all issues,
we also consider the additional grounds of refusal. We
begin by noting the relevant factual finding we have made
in connection with the Section 2(a) refusal herein, that a
connection with the institution of the Olympic Games would
be presumed when applicant’s mark SYDNEY 2000 is used in
connection with its proposed services.
Considering, first, the Section 2(e)(1) refusal on the
ground of mere descriptiveness, the test for determining
whether a mark is merely descriptive is whether the
involved term immediately conveys information concerning a
11
Serial No. 74/441,447
quality, characteristic, function, ingredient, attribute or
feature of the product or service in connection with which
it is used, or intended to be used. In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979); In re Engineering Systems
Corp., 2 USPQ2d 1075 (TTAB 1986). Because we have found
that the primary significance of the phrase SYDNEY 2000 is
as a reference to the Olympic Games, to which the phrase
points uniquely, we find that, when considered in
connection with applicant’s services, SYDNEY 2000 is not
merely descriptive, and the Examining Attorney’s refusal on
this ground is reversed.
Turning next to the Sections 2(e)(2) and 2(e)(3)
refusals, the test for determining, under Section 2(e)(2),
that a mark is primarily geographically descriptive, is
whether (i) the mark sought to be registered is the name of
a place and this place is known generally to the public,
and (ii) the public would make a goods/place association,
that is, believe that the goods or services for which the
mark is sought to be registered originate in that place.
See, e.g., University Book Store v. University of Wisconsin
Board of Regents, 33 USPQ2d 1385, 1402 (TTAB 1994); and In
re California Pizza Kitchen, Inc., 10 USPQ2d 1704 (TTAB
1988), citing In re Societa Generale des Eaux Minerals de
Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).
12
Serial No. 74/441,447
The same test applies to determining the alternative
question of whether a mark is primarily geographically
deceptively misdescriptive, under Section 2(e)(3), with the
additional requirement that purchasers mistakenly believe
that the goods or services originate in, or are connected
with, the geographic place named.10
Because we have found that the primary significance of
the phrase SYDNEY 2000 is as a reference to the Olympic
Games, to which the phrase points uniquely, we find that
the Examining Attorney has not established the first prong
of the test, namely, that the mark is the name of a place.11
10
The amendments to Section 2 of the Trademark Act of 1946 made by
Public Law 103-183, 107 Stat. 2057, The North American Free Trade
Enactment Act, apply to applications filed on or after December 8,
1993. While this application was filed before the effective date of
the amendments, we note that prior to these amendments, the
prohibitions against registration on the grounds that a mark is
primarily geographically descriptive or that a mark is primarily
geographically deceptively misdescriptive were contained in Section
2(e)(2) of the Act. Under the law as amended, the prohibition against
registration on the ground that a mark is primarily geographically
deceptively misdescriptive is contained in Section 2(e)(3) of the Act.
The legal standard for determining this issue remains the same,
although marks found to be primarily geographically deceptively
misdescriptive under the amended provisions are not eligible for
registration under the provisions of Section 2(f) of the Act, subject
to certain grandfather provisions which do not appear to be applicable
in this case. Similarly, while a disclaimer of a primarily
geographically descriptive element of a mark remains permissible under
the amended provisions, disclaimer will not overcome a refusal under
Section 2(e)(3) on the ground that the subject term is primarily
geographically deceptively misdescriptive. See, In re Hiromichi Wada,
48 USPQ2d 1689, 1691 (TTAB 1998).
11
The Examining Attorney has established the primary geographic
significance of SYDNEY. Applicant’s arguments to the contrary are
disingenuous. However, as we have already found, the mark SYDNEY 2000,
in its entirety, points uniquely to the institution of the Olympic
Games. Thus, SYDNEY 2000 is not the name of a place in the context of
Sections 2(e)(2) and (3) of the Act.
13
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Therefore it is unnecessary to consider the second prong of
the test as it applies to the refusal under either Section
2(e)(2) or Section 2(e)(3). Because the Examining Attorney
has not met the first prong of the test for determining
either that, in connection with the identified services,
the mark is primarily geographically descriptive or,
alternatively, primarily geographically deceptively
misdescriptive, the refusals under Section 2(e)(2) and,
alternatively, under Section 2(e)(3), are reversed.
Decision: The refusal to register is affirmed under
Section 2(a) of the Act. However, the refusals to register
are reversed as to Section 2(e)(1) of the Act, and as to
the alternative grounds of Sections 2(e)(2) and 2(e)(3) of
the Act.
R. L. Simms
R. F. Cissel
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board
14