YOSEMITE BEER Geographically Descriptive for Goods from Eighty Miles Away

InIn re Spirits of New Merced, LLC, Serial No. 78710805 (December 12, 2007), the U.S. Trademark Trial and Appeal Board affirmed a refusal to register YOSEMITE BEER as being primarily geographically descriptive for alcoholic beer originating in Merced, California, 80 miles from Yosemite National Park.

In order for a mark to be considered primarily geographically descriptive, it must be shown that (1) the mark's primary significance is a generally known geographic location; and (2) that the relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate in the place named in the mark. As for the goods/place association, the Board noted that "Applicant's evidence and arguments in this regard are quite persuasive."

Early in the prosecution of its application, applicant took the position that Merced, "where the beer is brewed, is physically and historically linked to and associated with the nearby Yosemite National Park." (Response, April 3, 2006.) In addition, applicant submitted geographical information about Merced along with various promotional materials of the city to support this association, that is, "to confirm [Merced's] relationship and proximity to Yosemite National Park." (Response, March 10, 2006). . . .

The consumers for applicant's beer, including the residents of and visitors to Merced, would reasonably believe that the beer came from or near Yosemite and that there was some association or connection of the beer with Yosemite. Applicant argues that "it should not be penalized for its relative proximity to the Yosemite National Park." (Brief, p. 9.) However, the purpose of Section 2(e)(2) of the Act is not to punish a particular business for using a geographic name, but rather to leave geographic names free for all businesses operating in the same area to inform customers where their goods or services originate. See In re MCO Properties Inc., 38 USPQ2d 1154, 1156 (TTAB 1995). There is no question that "Yosemite" is a term that applicant's competitors in Merced are entitled to use to describe the geographic origin of their beer.

Under the circumstances, nothing more need be shown by the examining attorney in order to establish a goods/place association. See In re Opryland USA Inc., supra at 1413 (TTAB 1986) ("[I]n that the evidence shows a substantial part of appellant's commercial activities emanate from or are related to Nashville, Tennessee, and that city is not obscure or remote, it is unnecessary for the Examining Attorney to establish by other evidence that a services/place relationship exists between appellant's services and the city of that name.").

Even if, as applicant claims, the label on applicant's beer were to state that YOSEMITE BEER is produced in "Merced," the relationship of that city with Yosemite will cause the public to make a goods/place association of the beer with Yosemite. It would not be unreasonable for consumers to even assume, correctly or incorrectly, that applicant's beer is made from water drawn from the "clear streams" in the park, or perhaps from the river that flows from Yosemite into Merced.

The applicant also submitted nearly two hundred third-party registrations for marks that include the names of other National Parks (e.g., "Yellowstone" and "Rocky Mountain"), the names of rivers (e.g., "Snake River") to support its argument thatht the USPTO has "consistently found in permitting such marks to register that the public is not confused or deceived." However, the board was not convinced:

We point out that the issue under Section 2(e)(2) is not whether consumers will be "confused or deceived," but rather, as noted earlier, whether applicant has a right to exclude others from using the term to describe the geographic origin of their goods or services. Moreover, apart from the fact that applicant's generalizations about National Parks and the other types of places named in the third-party registrations are entirely unfounded, these registrations are
irrelevant to the question of whether commercial activity takes place in
Yosemite, or, for that matter, to any question concerning the registrability of
applicant's mark.

. . . Here, the evidence shows that both goods are offered and services are rendered in Yosemite National Park, and that the city where applicant is located actively fosters a connection between the city and Yosemite, such that for purposes of our analysis consumers would regard them as part of the same geographic area. In establishing a goods/place association between beer and Yosemite, the examining attorney need not show that the public would actually make the asserted association, i.e., that the public actually believes the beer is made in Yosemite National Park. See In re Nantucket Allserve Inc., 28 USPQ2d 1144, 1146 (TTAB 1993) ("even assuming for the sake of argument that the public does not believe that NANTUCKET NECTARS soft drinks are actually manufactured on Nantucket (and of course they are not), nevertheless, these goods originate from a company" that has a significant connection to Nantucket). Rather the examining attorney need only show, as she has done here, a "reasonable basis" for concluding that the public would make the goods/place association. In re Loew's Theatres, Inc., supra at 868. The facts that there are restaurants serving beverages in Yosemite and that applicant is located in or nearby the Yosemite region and promotes an association with Yosemite, establish a goods/place association of beer with Yosemite. Consumers would likely believe that applicant's beer had its origin in or was in some way connected to Yosemite.

Decision: The refusal to register under Section 2(e)(2) is affirmed.