Air New Zealand Ltd.

This Opinion is not a
Precedent of the TTAB

Mailed: November 9, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Air New Zealand Ltd.
_____

Serial No. 79192386
_____

William J. Seiter of Seiter Legal Studio,
for Air New Zealand Ltd.

Ryan Cianci, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.

_____

Before Kuhlke, Shaw and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:

Air New Zealand Ltd. (“Applicant”), based in Auckland, New Zealand, seeks

registration on the Principal Register of the mark AIR NZ (in standard characters,

with “AIR” disclaimed) for airline-related travel services, specifically

Arranging and conducting incentive loyalty rewards
programs to promote the sale of airline tickets;
Membership privileges programs, namely, membership
club services in the nature of providing discounts to
members in the field of travel; Sales promotion of travel for
others; Consumer loyalty services for commercial,
promotional, and/or advertising purposes, namely,
administration of frequent flyer programs that allows
Serial No. 79192386

members to redeem miles for points and artificial currency
in International Class 35;

Airline transportation services; Shipping of goods and
freight by air; passenger transport; provision of airport
facilities, namely, airport services featuring transit lounge
facilities for passenger relaxation; Travel agency services,
namely, providing information about tariffs, timetables,
and methods of transport for goods and people for travel
purposes; Travel ticket reservation services; Travel ticket
upgrade reservation services; Planning travel and
transport via electronic contact and communication with
customers, namely, providing a website for the
arrangement and booking of travel; Booking travel and
transport via electronic contact and communication with
customers, namely, providing a website for the
arrangement and booking of travel; Travel ticket
reservation services for airline frequent flyer programs in
International Class 39; and

Services relating to the provision of accommodation,
namely, booking of temporary accommodation; Provision of
temporary accommodation services, namely, making
bookings and reservation for others for accommodations;
Services for the booking and reserving of temporary
accommodation, namely, providing online reservations and
bookings for temporary accommodation in International
Class 43.1

The Trademark Examining Attorney initially refused registration of Applicant’s

mark on the ground that AIR NZ is primarily geographically descriptive of the

identified services under Section 2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2),

stating, “The primary significance of ‘NZ’ is a generally known geographic location,

1Application Serial No. 79192386 was filed on February 18, 2016, seeking an extension of
protection of International Registration No. 1310619 under Section 66(a) of the Trademark
Act, 15 U.S.C. § 1141f (Madrid Protocol).

Page references to the application record are to the .pdf version of the USPTO’s Trademark
Status & Document Retrieval (TSDR) system. References to the briefs on appeal are to the
Board’s TTABVUE docket system.

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Serial No. 79192386

namely, New Zealand. … The applicant’s address is in New Zealand and the applicant

offers flights to and from New Zealand.”2 “Applicant is advised that, if the application

is amended to seek registration on the Principal Register under Trademark Act

Section 2(f), applicant will be required to disclaim “AIR” because such wording

appears to be generic in the context of applicant’s services.”3 Applicant accordingly

amended its application, disclaiming “AIR” and claiming that AIR NZ had acquired

distinctiveness based on Applicant’s ownership of the active prior registered mark

AIR NEW ZEALAND for the same or related airline-related travel services.4 15

U.S.C. § 1052(f).

The Examining Attorney refused to accept Applicant’s prior registration as proof

that AIR NZ had acquired distinctiveness, stating that, “[a] claim of acquired

distinctiveness may be based on an applicant’s ownership of one or more active prior

registrations of the same mark on the Principal Register. 37 C.F.R. §2.41(a)(1); TMEP

§1212.04.” However, “[i]n the present case, the applied-for mark and the mark in the

2 Sept. 30, 2016 Office Action TSDR p. 2.
3 Id. at 3.
4 March 6, 2017 Response to Office Action TSDR pp. 4, 9, 12, citing Reg. No. 4148227, issued
on May 29, 2012 under Section 2(f), 15 U.S.C. § 1052(f), for “Airline transportation services;
transportation and delivery of goods and people by air; storage of goods; providing
information and data relating to the transportation of goods and people; tourist agency
services, namely, arranging excursions for tourists; providing transportation information
about tariffs, timetables and methods of transport for goods and people; arranging of tours
and the operation of tourist offices; making reservations and bookings for airline
transportation services via television, the Internet and electronic mail; all the aforesaid being
in relation to airline services; reservation services for travelers, namely, travel and tour ticket
reservation service” in International Class 39 and “Providing temporary accommodation, food
and beverages; travel agency services, namely, making reservations for temporary
accommodations and meals” in International Class 43. Combined declaration of use and
incontestability under Sections 8 and 15 accepted and acknowledged on May 21, 2018.

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Serial No. 79192386

prior registration are not the same mark, and thus are not legal equivalents, because

while the acronym ‘NZ’ commonly refers to ‘New Zealand,’ it can also reference other

terms.”5 Applicant pointed out the incongruity in stating that the primary

significance of ‘NZ’ is New Zealand, but that AIR NZ does not convey the same

commercial impression to the consuming public as AIR NEW ZEALAND.6 “[I]t is

inconceivable that a consumer who comes across the Applicant’s mark ‘AIR NZ’ is

going to think of any other airline besides ‘Air New Zealand’ or any other airline

company besides the Applicant,” it stated.7

The Examining Attorney nonetheless maintained and made final the refusal to

register on the ground that AIR NZ is primarily geographically descriptive of the

identified services and has not acquired distinctiveness. When the refusal was made

final, Applicant appealed and requested reconsideration. After the Examining

Attorney denied the request for reconsideration, the appeal was resumed. We reverse

the refusal to register.

I. Primarily Geographically Descriptive

The Trademark Act provides that “No trademark by which the goods of the

applicant may be distinguished from the goods of others shall be refused registration

on the principal register on account of its nature unless it– … [c]onsists of a mark

which … when used on or in connection with the goods of the applicant is primarily

5 March 28, 2017 Office Action TSDR p. 2.
6 July 17, 2017 Response to Office Action TSDR pp. 9-10.
7 Id. at 9.

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Serial No. 79192386

geographically descriptive of them….” 15 U.S.C. § 1052(e)(2). Section three of the Act,

15 U.S.C. § 1053, extends this provision to service marks. In re London & Edinburgh

Ins. Grp. Ltd., 36 USPQ2d 1367, 1368 (TTAB 1995).

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 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 that place, and (3) the source of the goods or services is the geographic

region named in the mark. In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d

1445, 1448-49 (Fed. Cir. 2015) (citing In re Societe Generale des Eaux Minerals de

Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987)). “The second

prong, or services-place association, can be presumed when the services do in fact

emanate from the place named in the mark.” In re American Furniture Warehouse

Co., 126 USPQ2d 1400, 1403 (TTAB 2018) (citing In re JT Tobacconists, 59 USPQ2d

1080, 1082 (TTAB 2001) (“[W]here there is no genuine issue that the geographical

significance of a term is its primary significance, and where the geographical place

named by the term is neither obscure nor remote, a public association of the goods or

services with the place may ordinarily be presumed from the fact that the applicant’s

goods or services come from the geographical place named in the mark.”)).

Here, it is clear that, absent acquired distinctiveness, AIR NZ is primarily

geographically descriptive of Applicant’s airline/travel services. As the Examining

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Serial No. 79192386

Attorney has established, the primary significance of ‘NZ’ is a generally known

geographic location, namely, New Zealand.8 See In re Charles S. Loeb Pipes, Inc., 190

USPQ 238, 246 (TTAB 1975) (“Nicknames and even maps and geographical

abbreviations used as trademarks, have, over the years, been treated under the

common law and statutory interpretation in the same manner as ordinary

geographical marks.”). The second prong, of services-place association, can be

presumed because Applicant’s address is in New Zealand and it offers flights to and

from New Zealand.9 See In re Chalk’s Int’l Airlines Inc., 21 USPQ2d 1637, 1639 (TTAB

1991) (“[I]t is not a coincidence that applicant selected ‘PARADISE ISLAND

AIRLINES’ to identify its air transportation services to and from Paradise Island.”).

Applicant does not dispute these facts: “Regarding the term NZ, what the

Examining Attorney said about it in his first office action was true: ‘The primary

significance of “NZ” is a generally known geographic location, namely, New Zealand.’

He proffered very credible evidence from multiple sources in support of this fact.”10

Applicant’s addition of the disclaimed generic or highly descriptive term “AIR” for its

airline-related services does not detract from the primary geographical significance

8 In support of this point, the Examining Attorney adduces evidence from the Acronym
Finder, www.AcronymFinder.com/NZ 9/28/2016, showing that the first two meanings of “NZ”
are New Zealand and Applicant’s airline code; Columbia Gazetteer of the World,
www.ColumbiaGazetteer.org 9/28/2016, the Oxford Dictionary, www. OxfordDictionaries
.com 9/28/3016, and Wikipedia, www.en.Wikipedia.org 9/28/2016, in which “NZ” redirects to
the article on New Zealand. Sept. 30, 2016 Office Action TSDR pp. 11-15. See also Aug. 7,
2017 Office Action TSDR p. 3.
9See Applicant’s listing of flight departures from cities in New Zealand, including Auckland,
Christchurch, Dunedin, Queenstown, and Wellington. www.AirNewZealand.com 9/28/2016,
Sept. 30, 2016 Office Action TSDR p. 16.
10 Applicant’s reply brief, 10 TTABVUE 5.

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Serial No. 79192386

of the mark as a whole. See In re Chalk’s Int’l Airlines, 21 USPQ2d at 1639 (“The

addition of the generic and disclaimed word ‘AIRLINES’ to applicant’s mark cannot

avoid the refusal.”) cited in TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)

§ 1210.02(c)(ii) (Oct. 2018). Moreover, because Applicant has made an unconditional

claim of acquired distinctiveness under Section 2(f), it has effectively conceded that

the proposed mark is primarily geographically descriptive. See, e.g., Yamaha Int’l

Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988)

(“Where, as here, an applicant seeks a registration based on acquired distinctiveness

under Section 2(f), the statute accepts a lack of distinctiveness as an established

fact.”); see also Grand Canyon W. Ranch, LLC v. Hualapai Tribe, 88 USPQ2d 1501,

1504 (TTAB 2008); TMEP § 1212.02(b).

We find, then, that Applicant’s mark is primarily geographically descriptive of its

services under Section 2(e)(2), and thus not registrable on the Principal Register

absent proof of acquired distinctiveness.

II. Acquired Distinctiveness

A. Proving Acquired Distinctiveness

Section 2(f) of the Lanham Act provides, in part, that “nothing herein shall prevent

the registration of a mark used by the applicant which has become distinctive of the

applicant’s goods in commerce.” 15 U.S.C. § 1052(f) quoted in Coach Services Inc. v.

Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1729 (Fed. Cir. 2012).

“Even though geographic terms are generally considered not to be inherently

distinctive, they are capable of acquiring distinctiveness. See, e.g., Boston Beer Co. v.

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Serial No. 79192386

Slesar Bros. Brewing Co., 9 F.3d 175, 28 USPQ2d 1778, 1783 (1st Cir. 1993)

(‘secondary meaning has been established in a geographically descriptive mark where

the mark no longer causes the public to associate the goods [or services] with a

particular place, but to associate the goods [or services] with a particular source.’)….”

In re Society of Health and Physical Educators, 127 USPQ2d 1584, 1588-89 (TTAB

2018) (collecting cases where primarily geographically descriptive terms acquired

distinctiveness).

The burden of establishing that a mark has acquired distinctiveness is on the

Applicant. See Yamaha v. Hoshino Gakki Co., 6 USPQ2d at 1006; In re LC

Trademarks, Inc., 121 USPQ2d 1197, 1199 (TTAB 2016). This burden increases with

the degree of descriptiveness: the greater the degree of descriptiveness, the greater

the burden. Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., __ F.3d __, 128 USPQ2d

1370, 1378 (Fed. Cir. 2018); In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420,

1424 (Fed. Cir. 2005). This is because “[h]ighly descriptive terms … are less likely to

be perceived as trademarks and more likely to be useful to competing sellers than are

less descriptive terms. More substantial evidence of acquired distinctiveness thus will

ordinarily be required to establish that such terms truly function as source-

indicators.” Alcatraz Media, Inc. v. Watermark Cruises, 107 USPQ2d 1750, 1767

(TTAB 2013) (quoting In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1085 (TTAB

2010)).

The issue of acquired distinctiveness is a question of fact. In re Compagnie

Generale Mar., 993 F.2d 841, 26 USPQ2d 1652, 1655 (Fed. Cir. 1993). The statute is

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Serial No. 79192386

silent as to the evidence required under Section 2(f), except for suggesting that

substantially exclusive use for a period of five years immediately preceding filing of

an application may be considered prima facie evidence of acquired distinctiveness. 15

U.S.C. § 1052(f); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417,

422 (Fed. Cir. 1985). Trademark Rule 2.41 fills in this gap for trademarks and service

marks, stating in relevant part that “[i]n appropriate cases, ownership of one or more

active prior registrations on the Principal Register or under the Trademark Act of

1905 of the same mark may be accepted as prima facie evidence of distinctiveness if

the goods or services are sufficiently similar to the goods or services in the application;

however, further evidence may be required.” 37 C.F.R. § 2.41(a)(1), quoted in In re

Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir.

2001); In re Olin Corp., 124 USPQ2d 1327, 1334 (TTAB 2017); TMEP § 1212.04.

B. The Applicant’s and Examining Attorney’s Arguments

As indicated, Applicant relies on this provision, claiming that AIR NZ has

acquired distinctiveness based on Applicant’s ownership of active prior Registration

No. 4148227 for the mark AIR NEW ZEALAND, essentially for airline services. That

registration issued on May 29, 2012 based on acquired distinctiveness under Section

2(f); Applicant’s combined declaration of use and incontestability under Sections 8

and 15 was accepted and acknowledged in May 2018.11 Applicant maintains that AIR

NEW ZEALAND is the legal equivalent of AIR NZ.12 “For purposes of Trademark

11 See n. 4 supra.
12 Id.

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Serial No. 79192386

Rule 2.41(a)(1), the term ‘same mark’ does not mean identical mark,” Applicant

contends. “A proposed mark is the ‘same mark’ as a previously registered mark if it

is the ‘legal equivalent’ of such mark,” that is, “if it creates the same, continuing

commercial impression such that the consumer would consider them both the same

mark.”13

In support of this claimed equivalence, Applicant alludes to evidence it adduced

in its responses to Office Actions, and attaches copies of this previously-submitted

evidence as exhibits to its main brief on appeal.14 The Board discourages the practice

of attaching copies of evidence submitted during examination to appeal briefs. See,

e.g., In re Allegiance Staffing, 115 USPQ2d 1319, 1323 (TTAB 2015); TBMP § 1203.01

(June 2018). Nonetheless, the Examining Attorney does not object to these exhibits,

and refers to them in his brief, so we shall give them due consideration. The exhibits

consist of:

A. Google® search engine summary of results indicating that a search for “NZ”

yields the result “New Zealand.”15 For example:

13 Applicant’s brief, 7 TTABVUE 10, quoting In re Dial-A-Mattress, 57 USPQ2d at 1812.
14 7 TTABVUE 20-135.
15 7 TTABVUE 20-77.

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Serial No. 79192386

16

B. Dictionary entries from seven online dictionaries, offered to show that the only

definition of “NZ” is “New Zealand.” For example:

• Merriam-Webster “Definition of NZ “ New Zealand;

• Oxford Advanced American Dictionary: “NZ abbreviation – New Zealand”;

• Webster’s New World College Dictionary: “NZ in American or N Zeal – New

Zealand”;

• Macmillan Dictionary: “N.Z. … New Zealand”;

16 7 TTABVUE 20.

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Serial No. 79192386

• Dictionary.com: “N.Z. or N. Zeal 1. New Zealand” (citing Random House

Dictionary);17

Applicant likens this dictionary evidence to similar evidence adduced in In re

Thomas Nelson, Inc., 97 USPQ2d 1712 (TTAB 2011) (finding “NKJV” substantially

synonymous with the term “New King James Version” of the Bible).18

C. An Airline and Airport code search issued by the International Air Transport

Association (IATA), the trade association for the world’s airlines, indicating that “NZ”

is the airline code for Applicant “Air New Zealand Limited.”19

D-F. Webpages from Acronym.com indicating that “NZ” is the country code for the

New Zealand Internet top level domain.20

G. Country abbreviations issued by SustainableSources.com indicating that “NZ”

denotes “New Zealand.”21

The Examining Attorney argues that the two marks, AIR NZ and AIR NEW

ZEALAND, are not legal equivalents. Although he adduced evidence during the

course of examination showing that “[t]he primary significance of ‘NZ’ is a generally

known geographic location, namely, New Zealand,”22 that same evidence, he later

stated, shows that “NZ” can have other meanings in other contexts:

17 7 TTABVUE 80 -111.
18 7 TTABVUE 14-15.
19 7 TTABVUE 114-120.
20 7 TTABVUE 122-129.
21 7 TTABVUE 134-135.
22 Aug. 7, 2017 Office Action TSDR p. 3.

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Serial No. 79192386

[w]hile the acronym NZ commonly refers to New Zealand, it can also
reference other terms and creates a different commercial impression. See
attached evidence from the March 28th Office Action. Additionally, third-
parties use NZ not to reference to New Zealand. An algebra book shows NZ
means “not zero,” The Neutral Zone is an online store and uses NZ to
reference its website, and Sporting Charts shows NZ is used to explain
neutral zone starts.23

The evidence the Examining Attorney submitted from AcronymFinder.com/NZ is

as follows:

24

23 Id. at TSDR p. 4.
24 Sept. 30, 2016 Office Action TSDR p. 11.

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Serial No. 79192386

In his brief, though, the Examining Attorney focuses not on the evidence he

submitted during the course of examination, but on minimizing the probative value

of Applicant’s evidence. Applicant’s Google® search summary of results have minimal

probative value, he contends, because they do not show the websites, which would

show the term “NZ” in context.25 See In re Star Belly Stitcher, Inc., 107 USPQ2d 2059,

2062 n. 4 (TTAB 2013). The IATA airline codes are irrelevant, he contends, because

there is no proof that the code is displayed to airline travelers, and it is speculative

to presume that these travelers would know that the IATA code for New Zealand is

NZ.26 Applicant has provided dictionary and acronym-defining evidence, as in In re

Nelson, the Examining Attorney admits; but the applicant in Nelson, in addition to

dictionary and acronym-defining evidence, provided declarations from corporate

officers, retailers, and end consumers attesting that “NKJV” was substantially

synonymous with the term “New King James Version.” Here, the Examining Attorney

argues, Applicant has provided no corollary evidence showing that consumers will

interpret “NZ” as “NEW ZEALAND” when used in connection with airline services.27

In the crowded airline industry, he asserts, it is common for service marks to feature

similar terms that have the same connotation but are not legal equivalents, such as

Air China and China Airlines, or Air Japan and Japan Airlines, or US Air and

American Airlines. And Applicant’s exhibit G, a screenshot showing a list of country

25 Examining Attorney’s brief, 9 TTABVUE 9.
26 Id., 9 TTABVUE 11.
27 Id. 9 TTABVUE 11-12.

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Serial No. 79192386

abbreviations from a webpage about green, environmentally sustainable building

information, does not show how consumers will interpret “NZ” in connection with

airline services.28 Without evidence showing consumers will interpret “AIR NZ” as

the equivalent of “AIR NEW ZEALAND” in connection with airline services, he

concludes, it would be inappropriate to grant Applicant’s claim of acquired

distinctiveness based on its prior registration.29

In reply, Applicant notes: The Examining Attorney’s evidence adduced during the

course of examination was so “skimpy, trivial and lacking in relevance” that he

scarcely refers to it in his brief.30 The Examining Attorney does not dispute that the

services identified in the subject application are the same as or are related to those

in its prior registration.31 The evidence the Examining Attorney submitted from

AcronymFinder.com/NZ primarily defined “NZ” as New Zealand; and the remaining

definitions were irrelevant to U.S. airline passengers.32 Applicant’s Google® search

engine summaries have probative value, it contends, because they constitute evidence

of public exposure. See TMEP § 1208.03.33 The IATA airline code document states

that “IATA codes are an integral part of the travel industry, and essential for the

identification of an airline, its destinations and its traffic documents. They are also

28 Id. 9 TTABVUE 11.
29 Id., 9 TTABVUE 12-13.
30 Applicant’s reply brief, 10 TTABVUE 7.
31 Id., 10 TTABVUE 9.
32 Id., 10 TTABVUE 7-8.
33 Id., 10 TTABVUE 6.

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Serial No. 79192386

fundamental to the smooth running of hundreds of electronic applications which have

been built around these coding systems for passenger and cargo traffic purposes.”34

Furthermore, Applicant’s dictionary and acronym-defining evidence establish that

“NZ” has only one definition, “New Zealand,” in American English. Although this

evidence was not as voluminous as that presented in Nelson, Applicant maintains

that it has, on the whole, presented “extensive evidence” that the initialism means

the country name.35 The Examining Attorney’s assertion that similar airline names,

such as “Air China and China Airlines,” are common in the airline industry is not

supported by any evidence in his brief or his Office Actions, Applicant notes; and

unlike the Examining Attorney’s examples, AIR NZ has the same structure as AIR

NEW ZEALAND, with AIR preceding the country designation.36 For these reasons,

Applicant concludes, AIR NZ has acquired distinctiveness by virtue of its legal

equivalence with AIR NEW ZEALAND, its prior active registration.

C. Analysis

As discussed above, Trademark Rule 2.41(a)(1), 37 C.F.R. § 2.41(a)(1), provides

that the examining attorney may accept, as prima facie evidence of acquired

distinctiveness, ownership by the applicant of one or more active prior registrations

of the same mark on the Principal Register or under the Act of 1905. A proposed mark

is the “same mark” as a previously registered mark for the purpose of 37 C.F.R. §

34 Id., 10 TTABVUE 12, quoting from 7 TTABVUE 118.
35 Id., 10 TTABVUE 10.
36 Id., 10 TTABVUE 4.

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Serial No. 79192386

2.41(a)(1) if it is the “legal equivalent” of that mark. In re Dial-A-Mattress, 57

USPQ2d at 1812. “A mark is the legal equivalent of another if it creates the same,

continuing commercial impression such that the consumer would consider them both

the same mark.” Id.; see also In re Society of Health and Physical Educators, 127

USPQ2d at 1588. The goods or services identified in a prior registration must be

“sufficiently similar” to those in an application to be accepted as prima facie evidence

of distinctiveness. In re Olin, 124 USPQ2d at 1333-34.

Here, there is no dispute that the two marks are, or were, highly descriptive of

those services?airline services emanating from New Zealand. So the burden of

establishing acquired distinctiveness is commensurately high for Applicant. See

Grand Canyon W. Ranch v. Hualapai Tribe, 88 USPQ2d at 1507 (finding that

“GRAND CANYON WEST is highly descriptive of the identified services.

Consequently, applicant faces a heavy burden in establishing acquired

distinctiveness for the mark.”). Even so, Applicant’s prior registered mark, AIR NEW

ZEALAND, registered six years ago under Section 2(f), based on acquired

distinctiveness.37

There is also no dispute that Applicant’s prior registration and current application

recite essentially the same airline services, i.e., are “sufficiently similar.” The issue,

then, is whether consumers of those same airline services would view AIR NZ as

conveying the same, continuing commercial impression. We find that they would.

“[N]icknames and even abbreviations and maps of geographical areas and the name

37 Reg. No. 4148227, issued under Section 2(f), 15 U.S.C. § 1052(f),

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Serial No. 79192386

of the geographical area that they identify are, for purposes of registration, identical,

and … the same criteria for registration must necessarily apply thereto.” In re

Charles S. Loeb Pipes, Inc., 190 USPQ 238, 246 (TTAB 1975) (emphasis added); see

also In re Spirits of New Merced LLC, 85 USPQ2d 1614, 1617 (TTAB 2007) (“It is well

settled that a recognized nickname or other informal name for a geographic location

is considered the equivalent of the official or formal name for purposes of

determining registrability of the geographic term.”) (emphasis added).

The evidence adduced by both the Examining Attorney and Applicant establishes

that “NZ,” as used in connection with Applicant’s services, means New Zealand. While

the Examining Attorney’s evidence from AcronymFinder indicates other meanings in

other contexts (such as “neutral zone” for hockey games or “non-infarcted zone” in

medical settings)38 the connotation of an abbreviation is determined in the context of

its goods or services. See, e.g., In re Nelson, 97 USPQ2d at 1716. Here, Applicant’s

applied-for mark would be viewed by consumers in the context of airline services?for

example, airline advertisements, airline ticket counters, and airline baggage claim

areas?not in the other contexts cited by the Examining Attorney. “That a term may

have other meanings in different contexts is not controlling.” In re Franklin County

Historical Society, 104 USPQ2d 1085, 1087 (TTAB 2012). Applicant’s evidence about

the IATA NZ code designation does not, standing alone, show that NZ is displayed to

airline customers, but it does show that the use of NZ as an airline code is exclusive

to Applicant in the airline service industry. Applicant also submits seven definitions

38 Sept. 30, 2016 Office Action TSDR p. 11.

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Serial No. 79192386

from American English dictionaries indicating that “NZ” has only one definition: New

Zealand. The Examining Attorney questions the strength of this evidence, compared

with that in Nelson, but does not controvert Applicant’s dictionary evidence. Also as

in Nelson, the Examining Attorney questions the probative value of Applicant’s

citation to Google® search summaries for “NZ.” It is true that the use of search

summaries has less probative value than full web pages, which would show more

context, In re Thomas Nelson, 97 USPQ2d at 1715, but Applicant’s search summaries,

such as the one displayed above,39 display some content, and may be accorded limited

probative value, to the extent that they show that “NZ” means “New Zealand.”

Furthermore, the consuming public would perceive both of Applicant’s marks,

AIR NEW ZEALAND and AIR NZ, as a whole, in the context of airline services.

“The commercial impression of a trade-mark is derived from it as a whole, not from

its elements separated and considered in detail. For this reason, it should be

considered in its entirety ….” In re Dial-A-Mattress, 57 USPQ2d at 1811 (quoting

Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 545-46 (1920)).

Taken as a whole, AIR NZ retains the same structure as AIR NEW ZEALAND, a

structure consumers would tend to recognize and associate with Applicant. Cf.

Christian Broadcasting Network, Inc. v. ABS-CBN Int’l, 84 USPQ2d 1560, 1566

(TTAB 2007) (same structure of initials recognizable). The Examining Attorney and

Applicant dispute whether the term “AIR” in Applicant’s proposed mark is generic or

39 7 TTABVUE 20.

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Serial No. 79192386

descriptive of airline services.40 For our present purposes, however, the distinction

makes no difference, “because even generic and descriptive matter may contribute to

the commercial impression of a mark in certain circumstances.” See In re Society of

Health and Physical Educators, 127 USPQ2d at 1587. And a “generic term may be

included in the claim of acquired distinctiveness as long as an accompanying

disclaimer of the generic term is provided.” In re American Furniture Warehouse, 126

USPQ2d at 1407. “AIR” is disclaimed in Applicant’s current application, just as it was

in Applicant’s prior registration, but the consuming public is unaware of that

disclaimer. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1050

(Fed. Cir. 2018). And given the consuming public’s penchant for shortening place

names, see In re South Park Cigar Inc., 82 USPQ2d 1507, 1512 (TTAB 2007),

Applicant’s contraction of the country name NEW ZEALAND into the initialism NZ

neither adds nor subtracts anything to or from the origin-indicating significance of

AIR NEW ZEALAND. The relevant public would tend to view AIR NZ as a shorthand

version of the original mark. See In re Flex-O-Glass, Inc., 194 USPQ 203, 205-06

(TTAB 1977) (finding applicant entitled to rely on six year old registered mark in

support of claim of acquired distinctiveness; “It seems inescapable that persons

exposed to applicant’s registered mark since 1966 would, upon encountering the

instant mark when first used in 1972, be likely to accept it as the same mark or as

an inconsequential modification or modernization thereof. In other words, the marks

are, in effect, and would be recognized as one and the same mark.”).

40 Examining Attorney’s brief, 9 TTABVUE 7, Applicant’s brief, 7 TTABVUE 3.

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Serial No. 79192386

For these reasons, upon consideration of all of the relevant evidence and

arguments, including those we have not mentioned, we find that AIR NZ is the legal

equivalent of AIR NEW ZEALAND, and has acquired distinctiveness by virtue of

Applicant’s prior active registration of that mark. Because it has acquired

distinctiveness, the mark AIR NZ no longer causes the public to associate the services

with a particular place, but to associate them with a particular source: Applicant. See

In re Society of Health and Physical Educators, 127 USPQ2d at 1588-89.

Decision: The refusal to register Applicant’s mark AIR NZ under Section 2(e)(2)

of the Trademark Act on the ground that the mark is primarily geographically

descriptive is affirmed; the refusal on the ground that it has not acquired

distinctiveness under Section 2(f) is reversed. The application will be published for

opposition in due course.

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