Creation Power Limited

This Opinion is not a
Precedent of the TTAB

Mailed: June 19, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Creation Power Limited
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Serial Nos. 87229478 and 87229760
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Perry M. Fonseca of the Law Office of Perry M. Fonseca, PC,
for Creation Power Limited

Jill I. Prater, Trademark Examining Attorney, Law Office 119,
Brett J. Golden, Managing Attorney.

_____

Before Ritchie, Shaw, and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:

Creation Power Limited (“Applicant”) has filed two applications seeking

registration on the Principal Register of the proposed mark

(with COPENHAGEN disclaimed) for

tableware, namely, forks, knives, spoons, razors; hunting
knives in International Class 8; and
Serial Nos. 87229478 and 87229760

household or kitchen utensils and containers; glassware,
porcelain and earthenware not included in other classes in
International Class 21.1

The Trademark Examining Attorney has refused registration of Applicant’s

proposed mark under Section 2(e)(3) of the Trademark Act, 15 U.S.C. § 1052(e)(3), on

the ground that the mark, when used on or in connection with the goods of the

Applicant, is primarily geographically deceptively misdescriptive of them.

After the Trademark Examining Attorney made the refusal final, Applicant

appealed to this Board. We affirm the refusal to register as to both applications.2

I. Applicable Law

Under Section 2(e)(3) of the Trademark Act, a mark may not be registered on the

principal register if the mark, “when used on or in connection with the goods of the

applicant is primarily geographically deceptively misdescriptive of them.” 15 U.S.C.

§ 1052(e)(3). In re Miracle Tuesday, LLC, 695 F.3d 1339, 104 USPQ2d 1330, 1332

(Fed. Cir. 2012). A mark is primarily geographically deceptively misdescriptive, and

thus barred from registration, if:

1 Application Serial Nos. 87229478 and 87229760 were filed on November 8, 2016, based on
Applicant’s allegation of a bona fide intention to use the mark in commerce under Section
1(b) of the Trademark Act. In each application, the proposed mark is described as follows:
“The mark consists of ‘Toddler’ in bold lettering above a grayscale ‘COPENHAGEN’”. Color
is not claimed as a feature of the proposed mark.

Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
and orders on appeal are to the Board’s TTABVUE docket system.
2 We consolidate the appeals because they involve common issues of law and fact and the
records are substantially similar. See In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012)
(Board sua sponte consolidated two appeals); TRADEMARK TRIAL AND APPEAL BOARD MANUAL
OF PROCEDURE (TBMP) § 1214 (2018).

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Serial Nos. 87229478 and 87229760

1) The primary significance of the mark is a generally known geographic place;

2) The goods or services do not originate in the place identified in the mark;

3) Purchasers would be likely to believe that the goods or services originate in the

geographic place identified in the mark; and

4) The misrepresentation would be a material factor in a substantial portion of

the relevant consumers’ decision to buy the goods or use the services.

Id. (stating same requirements in three elements); In re Compania de Licores

Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012); TRADEMARK MANUAL OF

EXAMINING PROCEDURE (TMEP) § 1210.05(b) (Oct. 2018).

A. Primary Significance a Generally Known Place

Under the first element of the Section 2(e)(3) refusal, it is undisputed that the

primary significance of Applicant’s mark is that of a generally known geographic

location, Copenhagen. As the Examining Attorney points out, Copenhagen is

Denmark’s chief commercial, industrial, and cultural center.3 Applicant does not

dispute that Copenhagen is a generally known place.4 And there is no suggestion that

the addition of the word TODDLER or the stylization or design of the proposed mark

detracts from its primary geographical significance. See In re Consol. Specialty Rests.,

Inc., 71 USPQ2d 1921, 1927 (TTAB 2004) (“Neither the addition of the generic word

‘steakhouse’ nor the addition of the design feature (including a mountain) detracts

from the primary geographical significance of the mark [including the word

3 Examining Attorney’s brief, 6 TTABVUE 6 (citing, e.g., www.columbiagazetteer.org
7/26/2017, July 26, 2017 Office Action at 33-34).
4 Applicant’s brief, 4 TTABVUE 6.

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Serial Nos. 87229478 and 87229760

COLORADO].”). Hence, we find that the primary significance of the proposed mark

is a generally known geographic place.

B. The Goods do not Originate There

Applicant also concedes that its identified goods do not originate in Copenhagen,5

so the second element is satisfied, as well. See In re Premiere Distillery, LLC, 103

USPQ2d 1483, 1485 (TTAB 2012) (“[W]e first note that there is no dispute that the

goods [identified in application to register REAL RUSSIAN] do not emanate from

Russia.”).

C. Goods/Place Association

The third element inquires whether the proposed mark would be used in

connection with goods that purchasers are likely to believe are associated with the

geographic location in question. In re Save Venice New York, Inc., 259 F.3d 1346, 59

USPQ2d 1778, 1783 (Fed. Cir. 2001). The Examining Attorney need only show a

“reasonable predicate” for her conclusion that the purchasing public would be likely

to make the goods/place association, not an “actual” association in consumers’ minds.

In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1449 (Fed. Cir. 2015);

In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 868 (Fed. Cir.1985). Where,

as here, an application involves goods rather than services, “the goods-place

association often requires little more than a showing that the consumer identifies the

place as a known source of the product.” In re Les Halles De Paris J.V., 334 F.3d 1371,

67 USPQ2d 1539, 1541 (Fed. Cir. 2003) quoted in In re Miracle Tuesday, 104 USPQ2d

5 Id.

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Serial Nos. 87229478 and 87229760

at 1333. To establish a goods/place association, the examining attorney may provide

evidence such as excerpts from telephone directories, gazetteers, encyclopedias,

geographic dictionaries, the LexisNexis database, or the results of an Internet search.

In re Compania de Licores, 102 USPQ2d at 1847; see, e.g., In re Loew’s Theatres, 226

USPQ at 866 (gazetteer and dictionary showed that tobacco was a crop originating in

Durango, Mexico); TMEP § 1210.04.

In the present case, the identified goods are, essentially, tableware, such as forks

and spoons, cutlery, such as knives, and household or kitchen utensils and containers,

such as glassware, porcelain and earthenware. The Examining Attorney has adduced

evidence showing that Copenhagen is a known source of designer cutlery, tableware,

glassware, porcelain ware and dinnerware products?all of which are part of

Copenhagen’s broader reputation as a design capital. Harpers Bazaar describes

“Copenhagen as the city known for modern design….”6 According to other sources,

“Denmark and Copenhagen are famous for design and style,”7 “Copenhagen has a

booming and globally recognized design/architecture/fashion scene….”8 According to

the late Anthony Bourdain, “Copenhagen [is] not only the capital of the happiest

country on Earth ? officially ? but also probably the center of the designer goods

universe.” He further noted that “Copenhagen is rich with design-led stores selling

trendy lights, ingenious kitchenware, cheerful home furnishings and exquisite

6Harpers Bazaar Aug. 8, 2014, HarpersBazaar.com 7/26/2017, July 26, 2017 Office Action at
5.
7TheCopenhagenTales.com 5/14/2014, downloaded 7/26/2017, July 26, 2017 Office Action at
13.
8 UrbanLifeCopenhagen.weebly.com 7/26/2017, July 26, 2017 Office Action at 31.

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Serial Nos. 87229478 and 87229760

glass and ceramics.”9 One example he cites is Royal Copenhagen: “Founded in 1775,

this august company is best known for its classic blue and white hand-painted

dinnerware,”10 which the Columbia Gazetteer describes as “the celebrated

Copenhagen ware.”11 Architectural Digest reports that Copenhagen is:

long known as the Scandinavian epicenter of midcentury modernism.
Synonymous with high quality and minimalist silhouettes, Danish design
is, in fact, almost hard to avoid when navigating Copenhagen. Whether
you’re after vintage furniture or delicate contemporary ceramics, sleek
cutlery or innovative glassware, there are plenty of great Danish goods
to haul home straight from the source.12

We find the Examining Attorney’s evidence sufficient to establish prima facie, a

goods/place association. “If the Trademark Examiner establishes … a prima facie

case, an applicant may rebut this showing with evidence ‘that the public would not

actually believe the goods derive from the geographic location identified by the

mark.’” In re Newbridge Cutlery, 113 USPQ2d at 1449 (quoting In re Save Venice New

York, 59 USPQ2d at 1783). Applicant takes the position that:

In the instant case, as Applicant repeatedly related to the Examining
Attorney, “Copenhagen” as used in Applicant’s mark is a reference to the
“Copenhagen style,” not to the geographic location itself, but rather to the
well-known, world-wide “Copenhagen” or Nordic style of products.13

Applicant, however, did not adduce evidence in support of this contention until it

filed its appeal brief, to which it attached three exhibits?printouts from

9 “Visiting Copenhagen? 10 Things to know about Denmark,” CNN.com/travel/article/
Copenhagen-travel-bourdain-10-things/index.html 3/20/2017, downloaded 7/26/2017, July
26, 2017 Office Action at 23, 26-27 (emphasis added).
10 Id.
11 ColumbiaGazetteer.org 7/26/2017, July 26, 2017 Office Action at 33 (emphasis added).
12 ArchitecturalDigest.com 2/28/2018, Feb. 28, 2018 Office Action at 8 (emphasis added).
13 Applicant’s brief, 4 TTABVUE 6, Applicant’s July 6, 2017 Response to Office Action at 1.

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Serial Nos. 87229478 and 87229760

Pinterist.com, and from NordicKnives.com.14 The record in an application should be

complete prior to the filing of an appeal. Trademark Rule 2.142(d), 37 CFR § 2.142(d).

Exhibits attached to a brief that were not made of record during examination are

untimely, and will not be considered. Id. In re I-Coat Co., LLC, 126 USPQ2d 1730,

1734 (TTAB 2018); TBMP §§ 1203.02(e) and 1207.01; TMEP § 710.01 (Oct. 2018).

Consequently, even though no objection was raised, neither these exhibits nor any

new evidence attached to the Examining Attorney’s brief will be considered. We

hasten to add that even if they had been considered, they would not affect the

outcome.

Applicant’s position is legally insufficient, as well. In In re Wada, 194 F.3d 1297,

52 USPQ2d 1539 (Fed. Cir. 1999), the applicant advanced a similar argument:

Wada contends that consumers would not view the mark [NEW YORK
WAYS GALLERY] as identifying a place connected with the goods, but
rather would see the mark as evoking an aura of status or prestige. The
Board refuted Wada’s argument by pointing to evidence that New York is
a world renowned fashion center and is well-known as a place where goods
of this kind are designed, manufactured, or sold. … Thus, the Board
concluded that there is a goods/place association between the goods
identified in Wada’s application and New York. Once again, we see no
reason to disturb the Board’s factual findings on this issue.

Id. at 1541.

Here, as in In re Wada, the Examining Attorney has adduced evidence that

Copenhagen “is not an obscure geographical term and that it is known as a place

where the goods at issue here are designed, manufactured, and sold.” Id. at 1540.

14 4 TTABVUE 8-45.

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Serial Nos. 87229478 and 87229760

Absent evidence controverting this showing, we find that the goods/place association

has been established.

D. Material Factor

“The … final element of a Section 2(e)(3) refusal focuses on materiality and asks

‘whether a substantial portion of the relevant consumers is likely to be deceived’ by

the mark’s misrepresentation of a goods/place association.” In re Miracle Tuesday,

104 USPQ2d at 1334 (quoting In re Spirits Int’l N.V., 563 F.3d 1347, 90 USPQ2d

1489, 1493 (Fed. Cir. 2009)); see also In re Premiere Distillery, 103 USPQ2d at 1487;

In re Jonathan Drew, Inc., 97 USPQ2d 1640, 1644 (TTAB 2011) (finding KUBA

KUBA primarily geographically deceptively misdescriptive for cigars, tobacco, and

related products). As with the goods/place association, “[t]he Office must establish a

reasonable predicate that the misrepresentation of the geographic origin of the goods

would be a material factor in a significant portion of the relevant consumers’ decision

to purchase the goods.” In re Compania de Licores, 102 USPQ2d at 1850. “It is well

settled that evidence of what the relevant public understands a term to mean may be

shown not only by direct evidence, such as consumer testimony and surveys, but it

may also be inferred from indirect or circumstantial evidence, such as gazetteer

entries and third-party websites….” Id. (quoting In re Jonathan Drew, 97 USPQ2d at

1645-46). For goods, the Examining Attorney may raise an inference in favor of

materiality with evidence that the place is famous as a source of the goods at issue,

or that the goods are a principal product of that place. In re Compania de Licores, 102

USPQ2d at 1850. (evidence that the place is “famous,” “renowned,” well known,” or

“noted for” the goods, or that the goods are a “principal or traditional” product of that

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Serial Nos. 87229478 and 87229760

place may be useful to establish materiality.); In re Les Halles de Paris, 67 USPQ2d

at 1542.

In this case, Applicant’s position that “‘Copenhagen style’ is well-understood in

design”15 merely serves to underscore the materiality of the COPENHAGEN

designation. Consumers recognize a “Copenhagen Style” because Copenhagen is

globally recognized as a center of design. Here, the Examining Attorney has

established that Copenhagen has a “globally recognized design/architecture/fashion

scene,”16 and is “probably the center of the designer goods universe.”17 As the Board

put it in In re Wada, “Even if applicant had established an association between New

York and a particular style, such association would not be inconsistent with the

primary geographic significance of the mark, as the association may be made

precisely because of the primary significance of New York as a city in the United

States.” In re Wada, 48 USPQ2d 1689, 1691 n.5 (TTAB 1998) aff’d 52 USPQ2d 1539.

As in In re Miracle Tuesday, “the fact that Paris is famous for fashion and design

gives rise to an inference that a substantial portion of relevant customers would be

deceived into thinking the goods identified came from Paris. Miracle Tuesday points

to no evidence that would rebut this inference.” 104 USPQ2d at 1335.

This “style” argument has been raised by applicants in other appeals, and has

failed. See In re Calif. Innovations, Inc., 329 F.3d 1334, 66 USPQ2d 1853, 1858 (Fed.

15 Applicant’s brief, 4 TTABVUE 7.
16 UrbanLifeCopenhagen.weebly.com 7/26/2017, July 26, 2017 Office Action at 31.
17 “Visiting Copenhagen? 10 Things to know about Denmark,” CNN.com/travel/article/
Copenhagen-travel-bourdain-10-things/index.html 3/20/2017, downloaded 7/26/2017, July
26, 2017 Office Action at 23.

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Cir. 2003) (“Even if the public may associate California with a particular life-style,

the record supports the Board’s finding that the primary meaning [of CALIFORNIA

INNOVATIONS (and design)] remains focused on the state of California.”); In re

Premiere Distillery, 103 USPQ2d at 1484 (“Applicant’s alternative contention that

RUSSIAN simply connotes the ‘style’ of vodka (which if that were the case would have

prompted a refusal under Section 2(e)(1) based on mere descriptiveness) is not

supported by the record.”); In re Bacardi & Co. Ltd., 48 USPQ2d 1031, 1034 (TTAB

1997) (“[E]ven if applicant had established an association between HAVANA and a

particular lifestyle, such association would not contradict the primary geographic

significance of the term, as the association may be made precisely because of the

primary significance of HAVANA as a city in Cuba.”).

The Examining Attorney has thus established materiality, and Applicant has

failed to rebut the Examining Attorney’s record evidence. See In re Broyhill Furniture

Indus., Inc., 60 USPQ2d 1511, 1513 (TTAB 2001) (“There is no evidence, however,

which substantiates applicant’s assertions.”).

Because Applicant’s use of COPENHAGEN would be materially deceptive to

consumers, its disclaimer of that place name, which would not be apparent to those

consumers, does not suffice to overcome the Examining Attorney’s refusals. See In re

Wada, 52 USPQ2d at 1542 (“Primarily geographically deceptively misdescriptive

marks, like deceptive marks, mislead the public even with a disclaimer.”). “The

Trademark Board has held that a § 2(e)(3) rejection of a composite designation

containing a geographic term cannot be offset by a disclaimer of the geographic term.

The Board said that it would be contrary to the spirit and intent of the 1993 NAFTA

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Serial Nos. 87229478 and 87229760

amendments to allow registration of a geographically descriptive misdescriptive

mark merely upon the filing of a disclaimer with the PTO, an event of which the

public knows nothing.” 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION

§ 14:31 (5th ed. June 2019 update) (citing In re Wada, 48 USPQ2d at 1692).

II. Conclusion

For the above reasons, we find that the Examining Attorney has established that

Applicant’s proposed mark, as used in connection with the goods identified in both

applications, is primarily geographically deceptively misdescriptive under Section

2(e)(3).

Decision: The refusal to register Applicant’s proposed mark is

affirmed as to both applications.

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