Case: 22-1178 Document: 24 Page: 1 Filed: 06/10/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: A. ZETA S.R.L.,
Appellant
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2022-1178
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Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
88300086.
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Decided: June 10, 2022
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JOHN P. MURTAUGH, Pearne & Gordon LLP, Cleveland,
OH, for appellant.
THOMAS L. CASAGRANDE, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Katherine K. Vidal. Also represented by
CHRISTINA J. HIEBER, THOMAS W. KRAUSE, FARHEENA
YASMEEN RASHEED.
______________________
Before MOORE, Chief Judge, TARANTO and STARK, Circuit
Judges.
STARK, Circuit Judge.
Case: 22-1178 Document: 24 Page: 2 Filed: 06/10/2022
2 IN RE: A. ZETA S.R.L.
A. ZETA S.R.L. (“Zeta”) appeals the Trademark Trial
and Appeal Board’s (“Board”) decision affirming the trade-
mark examining attorney’s refusal to register the mark
PARMA COFFEE because it was primarily geographically
descriptive under
15 U.S.C. § 1052(e)(2). For the reasons
discussed below, we affirm the Board’s decision.
I
Zeta filed an application under
15 U.S.C. § 1051(b) to
register PARMA COFFEE for “Chocolate; Chocolate-based
beverages; Cocoa; Cocoa-based beverages; Coffee extracts;
Coffee and coffee substitutes; Honey; Honey substitutes;
Natural sweetener; Sugar; Tea; Tea extracts; Tea-based
beverages; Preparations for making coffee-based bever-
ages.” Joint Appendix (“J.A.”) 14-20.
The examining attorney issued an initial office action
preliminarily finding that the proposed mark was primar-
ily geographically descriptive of Parma, Italy and, there-
fore, refusing registration under
15 U.S.C. § 1052(e)(2).
The examining attorney requested a written response from
Zeta specifying “where the goods . . . will come from or will
originate.” J.A. 24.
In response, Zeta “confirm[ed] that the goods in ques-
tion are being developed in Parma, Italy.” J.A. 48. Never-
theless, Zeta argued that its mark was not primarily
geographically descriptive because third parties held exist-
ing U.S. trademark registrations for PARMA in connection
with various goods and services. 1
The examining attorney entered a final refusal because
the mark was primarily geographically descriptive. Zeta
appealed to the Board, which affirmed on the same basis.
1 Upon request, Zeta disclaimed exclusive rights in
the generic term COFFEE except in connection with the
full mark.
Case: 22-1178 Document: 24 Page: 3 Filed: 06/10/2022
IN RE: A. ZETA S.R.L. 3
Zeta timely appealed the Board’s decision. We have ju-
risdiction under
28 U.S.C. § 1295(a)(4)(B).
II
Whether a mark is primarily geographically descrip-
tive is a question of fact reviewed for substantial evidence.
See In re The Newbridge Cutlery Co.,
776 F.3d 854, 857
(Fed. Cir. 2015). Substantial evidence is “such relevant ev-
idence as a reasonable mind might accept as adequate to
support a conclusion.” Biestek v. Berryhill,
139 S. Ct. 1148,
1154 (2019) (internal quotation marks omitted). The
amount of evidence required is “not high,” although “more
than a mere scintilla” is needed.
Id. (internal quotation
marks omitted).
The Patent and Trademark Office (“PTO”) generally
must refuse registration of a mark that is primarily geo-
graphically descriptive. See
15 U.S.C. § 1052(e)(2). A mark
is primarily geographically descriptive if (1) “the mark
sought to be registered is the name of a place known gen-
erally to the public,” (2) “the source of the goods is the geo-
graphic region named in the mark,” and (3) “the public
would make a goods/place association, i.e., believe that the
goods for which the mark is sought to be registered origi-
nate in that place.” Newbridge, 776 F.3d at 860-61 (inter-
nal quotation marks omitted).
The record contains substantial evidence supporting
the Board’s conclusion that each of these requirements is
met. Parma is well-known to be a city in northern Italy,
see, e.g., J.A. 26-38, a fact Zeta has not challenged at any
point. Parma is the source of the goods, as Zeta itself stated
in response to the examining attorney’s inquiry. J.A. 24,
48. Where, as here, the geographic meaning of the term to
be registered is generally known, and the goods to be
marked originate from the place named in the mark, the
PTO may presume that the consuming public for the goods
will make a goods/place association. See Newbridge, 776
F.3d at 861 (noting potential propriety of such
Case: 22-1178 Document: 24 Page: 4 Filed: 06/10/2022
4 IN RE: A. ZETA S.R.L.
presumption). Nor does the record contain any persuasive
evidence to support a contrary conclusion about consumer
perception.
On appeal, Zeta argues that its goods do not originate
in Parma. It contends that coffee, tea, and cocoa do not
grow in Italy (and are known by the public not to be grown
in Italy), so the goods to be sold do not “originate” in Parma.
Zeta did not make this argument before the Board. J.A. 4
(“Applicant does not argue that the goods will not originate
from Parma, Italy.”). Accordingly, it is forfeited. See Piano
Factory Grp., Inc. v. Schiedmayer Celesta GmbH,
11 F.4th
1363, 1375 (Fed. Cir. 2021); see also In re Google Tech.
Holdings LLC,
980 F.3d 858, 862-64 (Fed. Cir. 2020).
While we might consider a position not raised before the
Board in exceptional circumstances, see Piano Factory, 11
F.4th at 1375, Zeta identifies no such circumstances – nor
even any explanation for its failure to present this argu-
ment to the Board. Moreover, if we were to consider this
argument, the record lacks any evidence to support it; mere
attorney argument cannot suffice. See, e.g., Whitserve,
LLC v. Computer Packages, Inc.,
694 F.3d 10, 23 (Fed. Cir.
2012).
Zeta further faults the Board’s decision for being incon-
sistent with numerous other occasions on which the PTO
has allowed Parma and other city names in existing trade-
mark registrations. The Board’s conclusion that Zeta’s
mark was primarily geographically descriptive is not un-
dermined by Zeta’s laundry list of existing U.S. trademark
registrations including Parma and other cities. Many of
these registrations are raised for the first time on appeal –
so Zeta forfeited any argument with respect to them. See
In re Google Tech., 980 F.3d at 862-64. The few registra-
tions that Zeta actually raised before the Board are of little
persuasive value and do not detract from the Board’s ulti-
mate conclusion. Each registration concerns a mark used
in a different context. See In re Nett Designs, Inc.,
236 F.3d
1339, 1342 (Fed. Cir. 2001) (finding little persuasive value
Case: 22-1178 Document: 24 Page: 5 Filed: 06/10/2022
IN RE: A. ZETA S.R.L. 5
in similar registrations, which do not bind Board or this
Court, since each mark must be reviewed on basis of appli-
cation at issue).
We have considered Zeta’s additional arguments and
find them unpersuasive. 2
III
For the foregoing reasons, we affirm the Board’s deci-
sion.
AFFIRMED
2 Although not argued as a basis for its appeal, we
recognize that Zeta amended its application to rely on its
foreign registration, pursuant to
15 U.S.C. § 1126(e).
Zeta’s foreign registration does not automatically result in
a U.S. trademark registration. See In re Rath,
402 F.3d
1207, 1214 (Fed. Cir. 2005). Zeta’s mark still had to meet
the requirements of U.S. law, including that it not be pri-
marily geographically descriptive. See
id.
