Red Flags Fly, Inc.

This Opinion is Not a
Precedent of the TTAB

Oral Hearing: October 4, 2018 Mailed: December 20, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Red Flags Fly, Inc.
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Serial No. 87104371
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Jill M. Pietrini and Susan Hwang of Sheppard Mullin Richter & Hampton LLP
for Red Flags Fly, Inc.

Morgan L. Meyers, Trademark Examining Attorney, Law Office 117,
Travis Wheatley, Acting Managing Attorney.

_____

Before Lykos, Hightower, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

Red Flags Fly, Inc. (“Applicant”), a California corporation with an address in Los

Angeles, has filed an application to register the mark displayed below on the Principal

Register for “clothing, namely, aprons, bandanas, beach cover-ups, bolo ties,

cardigans, culottes, do rags, dresses, infantwear, jackets, jeans, jerseys, leggings,

lingerie, loungewear, neckwear, overalls, overcoats, pants, ponchos, rainwear, robes,

sarongs, sashes, scarves, shawls, shirts, shorts, skirts, skiwear, sleepwear, socks, surf

wear, suspenders, sweat bands, sweaters, sweatpants, sweatshirts, swimwear, tank
Serial No. 87104371

tops, track pants, t-shirts, undergarments, and vests, belts; footwear; and headwear”

in International Class 25.1

Registration has been finally refused in light of Applicant’s failure to comply with

the Trademark Examining Attorney’s requirement to disclaim ANAHEIM pursuant

to Trademark Act Section 6(a), 15 U.S.C. § 1056(a), on the ground that the term is

primarily geographically descriptive of the identified goods. When the refusal was

made final, Applicant appealed and requested reconsideration. The Trademark

Examining Attorney maintained the refusal to register and denied the request for

reconsideration. Thereafter, the appeal was resumed and is now fully briefed. An oral

hearing on this appeal was held on October 4, 2018. For the reasons set forth below,

we reverse the refusal to register.

An examining attorney may require an applicant to disclaim an unregistrable

component of a mark otherwise registrable. Trademark Act Section 6(a), 15 U.S.C.

§ 1056(a). A “disclaimer” is a statement that an applicant does not claim exclusive

rights to an unregistrable component of a mark:

[A] disclaimer of a component of a composite mark amounts
merely to a statement that, in so far as that particular
registration is concerned, no rights are being asserted in

1Application Serial No. 87104371, filed July 14, 2016, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.

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Serial No. 87104371

the disclaimed component standing alone, but rights are
asserted in the composite; and the particular registration
represents only such rights as flow from the use of the
composite mark.

Sprague Electric Co. v. Erie Resistor Corp., 101 USPQ 486, 486-87 (Comm’r Pats.

1954). Absent a showing of acquired distinctiveness, terms which are primarily

geographically descriptive are unregistrable under Trademark Act Section 2(e)(2), 15

U.S.C. § 1052(e)(2),2 and, therefore, are subject to disclaimer if the mark is otherwise

registrable. Failure to comply with a disclaimer requirement is grounds for refusal of

registration. In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir.

1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re

National Presto Indus. Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Indus.

Inc., 157 USPQ 114 (TTAB 1968).

A term is primarily geographically descriptive if

(1) the primary significance of the term in the mark is a
generally known geographic location;

(2) the goods or services originate in the place identified in
the mark; and

(3) purchasers would be likely to believe that the goods or
services originate in the geographic place identified in the
mark.

2 Section 2(e)(2) of the Trademark Act reads in relevant part:
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—
(e) Consists of a mark which . . . (2) when applied to the goods of the applicant
is primarily geographically descriptive …

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Serial No. 87104371

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

re Jacques Bernier Inc., 894 F.2d 389, 13 USPQ2d 1725 (Fed. Cir. 1990); In re Societe

General des Eaux Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir.

1987); In re Hollywood Lawyers Online, 110 USPQ2d 1852 (TTAB 2014); In re Spirits

of New Merced LLC, 85 USPQ2d 1614, 1616 (TTAB 2007). In instances where a

geographic location is generally known, and the term’s geographic significance is its

primary significance, and the goods or services do, in fact, originate from the named

location, a goods/place association can be presumed. Newbridge Cutlery Co., 13

USPQ2d at 1449 (citations omitted). All three elements of this test must be satisfied.

Based on our review of the record, we find that at a minimum the second prong of

the test has not been met. As noted above, Applicant is located in Los Angeles,

California. There is nothing in the record to establish that Applicant’s identified

goods will originate from Anaheim, California, the geographic location identified in

Applicant’s mark. Because the application was filed under Section 1(b), we have no

specimen to assist us in this inquiry. Under these circumstances, the proper

procedure for the Examining Attorney to follow is to either (1) contact the applicant

to ascertain the origin of the goods and make a note to the file, or (2) issue an

information request under Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b). As explained

more fully in TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) Section

1210.03 (“Geographic Origin of the Goods or Services”) (Oct. 2018):

If it is unclear where the goods/services originate or will
originate because the applicant does not come from the
place named in the mark, and the record does not indicate
whether the goods/services originate in that place, and

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Serial No. 87104371

misdescriptiveness would not be material to the decision to
purchase the goods/services, the examining attorney must
do the following:

(1) If (a) the entire mark would be geographically
misdescriptive, or a portion of the mark would be
geographically descriptive (making disclaimer an option),
(b) there are no other substantive refusals (making an
examiner’s amendment an option), and (c) the application
could be put into condition for publication by examiner’s
amendment (see TMEP §707), to expedite prosecution, the
examining attorney must: Attempt to contact the applicant
to determine whether the goods/services originate in the
place named and, if so, to obtain authorization for a
disclaimer and for any other amendments that would put
the application in condition for approval for publication.

If the applicant states that the goods/services do not
originate in the place named, the examining attorney must
so indicate by entering a Note to the File in the record,
enter any amendments necessary to put the application in
condition for approval, and approve the mark for
publication.

(2) If the examining attorney is unable to reach the
applicant or cannot obtain authorization for an examiner’s
amendment, or if the applicant indicates that they do not
know where the goods/services will originate, or if an Office
action is otherwise necessary to make substantive refusals
or requirements that cannot be satisfied by examiner’s
amendment, the examining attorney must proceed as
follows: Issue an information request under 37 C.F.R.
§2.61(b), asking where the goods/services originate. This
written request is made to ensure the completeness of the
record. The examining attorney may also issue a refusal
under §2(e)(2) as geographically descriptive (or a
requirement for a disclaimer, if appropriate), based on the
presumption that the goods/services come from the place
named in the mark; and issue any other relevant refusals
and requirements.

We see no note to the file memorializing contact with Applicant. In addition, the

Examining Attorney’s failure to issue an information request asking where the goods

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Serial No. 87104371

will originate creates an ambiguity as to a critical element of the test for

geographically descriptive terms. For this reason, the Examining Attorney’s refusal

to register Applicant’s mark in the absence of a disclaimer of the term ANAHEIM

necessarily fails.

Furthermore, even assuming that the record had shown otherwise, we find that

the juxtaposition of ANAHEIM with HILLBILLIES creates an incongruity rendering

Applicant’s mark unitary. As noted above, the third prong of the test for geographic

descriptiveness requires prospective consumers to make a goods/place association. If

purchasers would not, upon seeing the mark, conclude that it imparts information

about the geographical origin of the goods, the mark is arbitrary. In re Sharky’s Dry

Goods, 23 USPQ2d 1061, 1062 (TTAB 1992) (citing In re House of Windsor, Inc., 221

USPQ 53, 55 (TTAB 1983)). The record shows that “Anaheim” is “a city outside Los

Angeles, in Southern California. It’s home to the Disneyland Resort, a massive

complex of family-friendly, Disney-themed rides, restaurants, hotels and shops.”3

According to MacMillan Dictionary, “hillbilly” is defined as “someone who lives in the

countryside, especially someone who is not well educated.”4 Consumers are well

aware that Anaheim is not “the countryside,” and therefore likely to perceive

Applicant’s mark as a sardonic reference to the city’s populace and sprawling highly

3“Quick Facts” about Anaheim, California from www.googlemaps.com attached to the June
1, 2017 Final Office Action; TSDR p. 5. References to the TSDR database are to the
downloadable .pdf format.
4www.macmillandictionary.com/dictionary/american/hillbilly attached to the December 4,
2017 Request for Reconsideration; TSDR p. 37.

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Serial No. 87104371

developed landscape. The intricate gothic stylization of the lettering in the mark

creates another point of irony.

In re Sharky’s Dry Goods, 23 USPQ2d 1061, 1062-63 (TTAB 1992), presents a

similar situation. In that case, the Board reversed the Sections 2(e)(2) and 2(a)

refusals of PARIS BEACH CLUB for clothing based on the following logic:

In this case, Paris is certainly not an obscure or remote
geographical term, it being the well-known capital of
France. However, the mark in question is not the word
“Paris” per se; it is PARIS BEACH CLUB. Paris, of course,
is not located on an ocean or lake, and does not have a
beach. The juxtaposition of Paris with Beach Club results
in an incongruous phrase, such that purchasers will view
PARIS BEACH CLUB as a humorous mark, with the word
“Paris” in the mark being a facetious rather than a
geographic reference, a take-off on the fact that the city of
Paris is known for haute couture. It is Paris’ connection
with high fashion that is intrinsic to the satire, and makes
this take-off on the cachet associated therewith work. See,
In re Jacques Bernier Inc., supra, in which the Court
pointed out instances in which the goods/place association
is not the “primary” meaning a geographic mark connotes,
but instead suggests that a product is stylish or of high
quality, e.g., HYDE PARK for clothing and FIFTH
AVENUE for a car.

The same reasoning applies with equal force here where the combination of the two

words “Anaheim” and “hillbillies,” in a formal gothic-style lettering, projects a

satirical meaning. As such, the requisite goods/place association has not been met.

See id. at 1063.

In sum, we do not find ANAHEIM as presented in the stylized mark ANAHEIM

HILLBILLIES primarily geographically descriptive of the identified goods.

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Serial No. 87104371

Decision: The refusal to register Applicant’s mark in the absence of a disclaimer

of ANAHEIM is reversed.

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