In re Nantucket Inc. , 677 F.2d 95 ( 1982 )

MARKEY, Chief Judge.

Nantucket, Inc. (Nantucket) appeals from a decision of the Trademark Trial and Appeal Board (board) affirming a refusal to register the mark NANTUCKET for men’s shirts on the ground that it is “primarily geographically deceptively misdescriptive.” In re Nantucket, Inc., 209 USPQ 868 (TTAB 1981). We reverse.

BACKGROUND

On March 13, 1978, Nantucket, based in North Carolina, filed application serial number 162,716 for registration of NANTUCKET for men’s shirts on the principal register in the Patent and Trademark Office (PTO), alleging a date of first use of February 2, 1978.

Refusal to register was based on § 2(e)(2) of the Lanham Act, 15 U.S.C. § 1052(e)(2), as interpreted by the board in In re Charles S. Loeb Pipes, Inc., 190 USPQ 238 (TTAB 1975), and in §§ 1208.02, 1208.05 and 1208.-06 of the Trademark Manual of Examining Procedure (TMEP).

Section 2(e)(2) provides:

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 or deceptively misdescriptive of them .... [Emphasis supplied.]

TMEP § 1208.02 indicates that a mark is primarily geographical, inter alia, if it “is the name of a place which has general renown to the public at large and which is a place from which goods and services are known to emanate as a result of commercial activity.”

The examiner, citing a dictionary definition of “Nantucket” as an island in the Atlantic Ocean south of Massachusetts, concluded that the mark NANTUCKET was either primarily geographically descriptive or primarily geographically deceptively misdescriptive, depending upon whether Nantucket’s shirts did or did not come from Nantucket Island.

Nantucket informed the PTO that its shirts “do not originate from Nantucket Island,” and insisted that the mark would not be understood by purchasers as representing that the shirts were produced there because the island has no market place significance vis-a-vis men’s shirts. Nantucket further asserted that the phrase “when applied to the goods of the applicant,” indicates a congressional intent that “descriptiveness” not be determined in a vacuum, but only in connection with the nature of an applicant’s goods. As applied to shirts, it was argued, NANTUCKET is arbitrary and nondescriptive, because there is no association in the public mind of men’s shirts with Nantucket Island.

The examiner’s final refusal was based on the view that, because the shirts did not come from Nantucket Island, NANTUCKET is “primarily geographically deceptively misdescriptive.”

Before the board, Nantucket relied upon a number of cases, of which In re Circus Ices, Inc., 158 USPQ 64 (TTAB 1968), is representative, for its asserted “public association” or “noted for” test. In that case, the board said:

The term “HAWAIIAN”, meaning of or pertaining to Hawaii or the Hawaiian Islands, possesses an obvious geographical connotation, but it does not necessarily follow therefrom that it is primarily geographically descriptive of applicant’s product within the meaning of Section 2(e).

In determining whether or not a geographical term is primarily geographically descriptive of a product, of primary consideration is whether or not there is an association in the public mind of the product with the particular geographical area, as for example perfumes and wines with France, potatoes with Idaho, rum with Puerto Rico, and beef with Argentina. Cf. National Lead Company v. Wolfe et al., 105 USPQ 462 (CA 9, 1955).

In the present case, it has not been made to appear that Hawaii or the Hawaiian Islands are noted for flavored-iee products or that the term “HAWAIIAN” is used by anyone to denote the geographical origin of such products.

On the record presented in this case, we are not persuaded that “HAWAIIAN” is either primarily geographically descriptive or deceptively misdescriptive as applied to applicant’s product. [Emphasis supplied.]

In affirming the refusal to register here, the board referred to In re Amerise, 160 USPQ 687 (TTAB 1969) and Charles S. Loeb Pipes, as setting criteria for determining registrability of geographic terms. In its opinion in this case, the board set forth a test based on those criteria:

(a) whether the term conveys to consumers primarily or immediately a geographical connotation, i.e., whether it conveys a readily recognizable geographical significance to the average consumer [if not, the mark is registrable]; (b) if so, whether the applicant’s goods or services do in fact come from the place so named [if they do, the term is primarily geographically descriptive; if they do not, it is primarily geographically deceptively misdescriptive]; and (c) if the term conveys primarily a geographical connotation and the goods or services of the applicant do not come from the place so named, whether the use of the term is calculated, by plan, design, or implication, to deceive the public as to the geographical origin of the goods bearing the mark [if so, the mark is deceptive and falls within the absolute prohibition of Section 2(a)].¹

Nantucket, 209 USPQ at 870. In referring to Amerise, the board viewed the “noted for” test, mentioned in Circus Ices, as relevant only to whether a geographic term is deceptive under § 2(a). Regarding § 2(e)(2), the board said:

[A]ny term which, when applied to the goods or services of the applicant, conveys to consumers primarily or immediately a geographical connotation is precluded from registration under Section 2(e)(2) notwithstanding the fact that the area or place named is not “noted for” goods or services of that type .... Accordingly, the case of In re Circus Ices, Inc., supra, and any other case in which we may have similarly relied upon the “public association” or “noted for” test as the means for determining registrability of a geographic term under Section 2(e)(2), is hereby overruled.

Id. at 871.

The board concluded that the “term ‘NANTUCKET’ has a readily recognizable geographic meaning, and ... no alternative non-geographic significance . .. and hence falls within the proscription of Section 2(e)(2).” Id.

ISSUE

Did the board err in refusing registration of NANTUCKET for shirts on the principal register in view of § 2(e)(2)?

OPINION

The Board’s Test

The board correctly notes that its test for registrability of geographic terms is “easy to administer” and “minimizes subjective determinations by eliminating any need to make unnecessary inquiry into the nebulous question of whether the public associates particular goods with a particular geographical area in applying Section 2(e)(2).” ² [Emphasis in original.] Ease-of-administration considerations aside, the board’s approach does raise the question of whether public association of goods with an area must be considered in applying § 2(e)(2). That question is one of first impression in this court. We answer in the affirmative.

The board’s test rests mechanistically on the one question of whether the mark is recognizable, at least to some large segment of the public, as the name of a geographical area. NANTUCKET is such. That ends the board’s test. Once it is found that the mark is the name of a known place, i.e., that it has “a readily recognizable geographic meaning,” the next question, whether applicant’s goods do or do not come from that place, becomes irrelevant under the board’s test, for if they do, the mark is “primarily geographically descriptive”; if they don’t, the mark is “primarily geographically deceptively misdeseriptive.” Either way, the result is the same, for the mark must be denied registration on the principal register unless resort can be had to § 2(f).³

The Statute

One flaw in the board’s test resides in its factoring out the nature of applicant’s goods, in contravention of § 2(e)(2)’s requirement that the mark be evaluated “when applied to the goods of the applicant,” and that registration be denied only when the mark is geographically descriptive or deceptively misdeseriptive “of them” (the goods).

Another flaw in the board’s test lies in its failure to give appropriate weight to the presence of “deceptively” in § 2(e)(2).⁴ If the goods do not originate in the geographic area denoted by the mark, the mark might in a vacuum be characterized as geographically misdeseriptive, but the statutory characterization required for denial of registration is “geographically deceptively misdescriptive.” [Emphasis supplied.] Before that statutory characterization may be properly applied, there must be a reasonable basis for believing that purchasers are likely to be deceived.⁵

Thus, the board’s test does not track the statute. Moreover, in rendering functionless the phrase “when applied to the goods of the applicant” and the word “deceptively,” the test violates a cardinal rule of statutory construction, i.e., that a legislature is presumed to have used no superfluous words. Platt v. Union Pacific R.R. Co., 99 U.S. 48, 58, 25 L.Ed. 424 (1878); Tabor v. Ulloa, 323 F.2d 823, 824 (CA 9 1963). “It is the duty of the court to give effect, if possible, to every clause and word of a statute.” Montclair v. Ramsdell, 107 U.S. 147, 152, 2 S.Ct. 391, 394, 27 L.Ed. 431 (1882); see United States v. Menasche, 348 U.S. 528, 538-39, 75 S.Ct. 513, 519-20, 99 L.Ed. 615 (1955).

Each part or section of a statute should be construed in connection with every other part or section so as to produce a harmonious whole. NLRB v. Lion Oil Co., 352 U.S. 282, 288-90, 77 S.Ct. 330, 333-34, 1 L.Ed.2d 331 (1957), and it is not proper to confine interpretation to the one section to be construed. Richards v. United States, 369 U.S. 1, 11, 82 S.Ct. 585, 591, 7 L.Ed.2d 492 (1962). These rules of statutory construction prohibit differing treatment of “deceptively misdeseriptive” in §§ 2(e)(1) and 2(e)(2).⁶ In In re Automatic Radio Mfg. Co., 56 CCPA 817, 822, 404 F.2d 1391, 1396, 160 USPQ 233, 236 (1969), this court, speaking of § 2(e)(1), said: “The proscription is not against misdescriptive terms unless they are deceptive. We do not think AUTOMATIC RADIO on an air conditioner, an ignition system, or antenna, is likely to deceive anyone.”

The board recognized in its opinion in this case that Section 5(b) of the Trademark Act of 1905 precluded registration of marks which were “merely a geographic name or term.” Sec. 5, 33 Stat. 725-26. Under that Act, a term appearing in an atlas or gazetteer would be refused registration. 1 J. McCarthy, Trademarks and Unfair Competition, § 14.11 at 509 (1973). The board then described the effect of the Lanham Act in narrow terms, saying: “[TJoday registration of a geographic name or term may not properly be refused if the geographic meaning is minor or obscure or if the term has an alternative non-geographic meaning.” Nantucket, 209 USPQ at 870. Presumably, the board would also view as registrable the name of an area totally devoid of commercial activity. TMEP 1208.02 instructs examiners to note whether goods (in general) “are known to emanate” from the area. Nothing in the Lanham Act, however, warrants the limitation placed on § 2(e)(2) by the board. Indeed, the board’s test, in its concentration on whether the mark is a place name, would resurrect most if not all of the pre-Lanham Act practice with respect to such terms.

Public Association

Geographic terms are merely a specific kind of potential trademark, subject to characterization as having a particular kind of descriptiveness or misdescriptiveness. Registration of marks that would be perceived by potential purchasers as describing or deceptively misdescribing the goods themselves may be denied under § 2(e)(1). Registration of marks that would be perceived by potential purchasers as describing or deceptively misdescribing the geographic origin of the goods may be denied under § 2(e)(2). In either case, the mark must be judged on the basis of its role in the marketplace.

As the courts have made plain, geographically deceptive misdescriptiveness cannot be determined without considering whether the public associates the goods with the place which the mark names. If the goods do not come from the place named, and the public makes no goods-place association, the public is not deceived and the mark is accordingly not geographically deceptively misdescriptive.

In World Carpets, Inc. v. Dick Littrell’s New World Carpets, 438 F.2d 482, 486, 168 USPQ 609, 612-13 (CA 5 1971), the court said: “[TJhe wording of the statute makes it plain that not all terms which are geographically suggestive are unregistrable. . . . Indeed, the statutory language declares nonregistrable only those words which are ‘primarily geographically descriptive.’ The word ‘primarily’ should not be overlooked, for it is not the intent of the federal statute to refuse registration of a mark where the geographic meaning is minor, obscure, remote, or unconnected with the goods.” [Emphasis added.] Thus, if there be no connection of the geographical meaning of the mark with the goods in the public mind, that is, if the mark is arbitrary when applied to the goods, registration should not be refused under § 2(e)(2).

In National Lead Co. v. Wolfe, 223 F.2d 195, 199, 105 USPQ 462, 465 (CA 9), cert. denied, 350 U.S. 883, 76 S.Ct. 135, 100 L.Ed. 778, 107 USPQ 362 (1955), the court held that neither DUTCH, nor DUTCH BOY, as applied to paint, was used “otherwise than in a fictitious, arbitrary and fanciful manner,” ⁷ and noted that “there is no likelihood that the use of the name ‘Dutch’ or ‘Dutch Boy’ in connection with the appellant’s goods would be understood by purchasers as representing that the goods or their constituent materials were produced or processed in Holland or that they are of the same distinctive kind or quality as those produced, processed or used in that place.”

In LaTouraine Coffee Co., Inc. v. Lorraine Coffee Co., Inc., 157 F.2d 115, 116-17, 70 USPQ 429, 431 (CA 2), cert. denied, 329 U.S. 771, 67 S.Ct. 189, 91 L.Ed. 663, 71 USPQ 328 (1946), the court noted that “courts have consistently held . . . that, when [a geographic term] is used in an ‘arbitrary’ or fictitious sense, it may be the subject of a valid trademark.”⁸ Writing after the Lanham Act had passed but before it became effective, the court referred to that Act: “This judicial construction has received legislative approbation.” Disposing of the contention that LaTOURAINE was “merely geographical” under the Trademark Act of 1905, (as the name of the ancient French province, Touraine), the court said the mark “neither has nor professes to have any relation to the source of its coffee, the place of manufacture, or the place of sale. It is an entirely arbitrary name.” ⁹

LaTouraine was followed in Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc., 93 USPQ 250, 254 (SDNY 1951), aff’d, 204 F.2d 223, 97 USPQ 246 (CA 2), cert. denied, 346 U.S. 827, 74 S.Ct. 46, 98 L.Ed. 351, 99 USPQ 491 (1953), wherein the mark was HYDE PARK for men’s suits. The trial court said: “Although the term ‘Hyde Park’ is a geographical name, nevertheless as used by the plaintiff it is not ‘merely geographical’. If it was used ... in an ‘arbitrary or fictitious sense’, it could be the subject of a valid registered trade mark .... The words ‘Hyde Park’ are used commercially to mean a product that is stylish or of high quality.” ¹⁰

More recently, LaTouraine was relied on in holding that BRITTANIA was arbitrary when applied to fashion jeans. Schoenfeld Industries, Inc. v. Foster Industries, Inc., No. 79 Civ. 4917 (SDNY Sept. 28, 1979). The court noted that the jeans did not originate in Brittany, a French province, that BRITTANIA was not likely to suggest that origin to a reasonable buyer, and that, because Brittany was not noted for fashion jeans, it was unlikely that a buyer would purchase BRITTANIA jeans on the assumption that they came from Brittany.¹¹

The Present Case

Section 2(e)(2) provides that registration shall not be refused unless the mark is primarily geographically deceptively misdescriptive of the goods. The only indication of record that NANTUCKET is primarily a geographical term resides in dictionary listings referring to Nantucket Island as a summer resort and former whaling center. There is no evidence of record to support a holding that the mark NANTUCKET as applied to men’s shirts is “deceptively misdescriptive.” There is no indication that the purchasing public would expect men’s shirts to have their origin in Nantucket when seen in the market place with NANTUCKET on them. Hence buyers are not likely to be deceived, and registration cannot be refused on the ground that the mark is “primarily geographically deceptively misdescriptive.”

Accordingly, the decision of the board is reversed.

REVERSED.

1 . Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a) provides in pertinent part: “No trademark . . . shall be refused registration . . . unless it—

(a) consists of or comprises immoral, deceptive, or scandalous matter . . . . ”

2 . The board’s desire to escape “subjective determinations” and inquiry “into the nebulous question of whether the public associates particular goods with a particular area” is understandable. The determinations and inquiry required in applying § 2(e)(2) do not differ in their essence, however, from those required in applying numerous other sections of the Lanham Act which involve an expectable public reaction to a mark or set of marks. Indeed, as the board noted, it has previously considered public association in applying a “noted for” test under § 2(a).

3 . Section 2(f) provides:

Except as expressly excluded in paragraphs (a), (b), (c), and (d) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. The Commissioner may accept as prima facie evidence that the mark has become distinctive, as applied to the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years next preceding the date of the filing of the application for its registration.

4 . Debate in the House concerning the word “deceptively” indicates that it is not mere surplusage, that its addition was intentional, not accidental, and that it has meaning. Proposed Bills to Provide for the Registration and Protection of Trade-Marks: Hearings on H.R. 102, H.R. 5461 and S. 895 Before the Subcomm. on Trade-Marks of the House Comm, on Patents, 77th Cong., 1st Sess. 84-86 (1941).

5 . Reasonable persons are unlikely to believe that bananas labeled ALASKA originated or were grown in Alaska. On the other hand, reasonable persons are quite likely to believe that salmon labeled ALASKA originated in the waters of that state. The board recognized this decisional parameter in its references to French wine, Idaho potatoes, etc., in Circus Ices, 158 USPQ at 64.

6 . At the Subcommittee Hearings, supra, n. 4, “deceptively” was inserted before “misdescriptive” in both sections. A witness at that hearing observed:

Now, ivory is descriptive only with respect to the tusks of the elephant. Ivory is descriptive only of ivory. When applied to soap it is perfectly registrable although it is misdescriptive. But the ivory for soap is certainly not descriptive of soap. It is misdescriptive of soap, but it is not deceptive. Hearings at 85.

7 . The board has similarly found geographic terms arbitrary and fanciful. In In re International Minerals & Chemical Corp., 147 USPQ 262 (TTAB 1965), the board stated:

Certainly the word “KENTUCKY” is geographic and if applicant were seeking registration of “KENTUCKY TURF” for turf, we would be compelled to rule that the mark is unregistrable. The applicant’s product is fertilizer and the mark does not signify that the fertilizer is manufactured in Kentucky or intended to be used or sold only in Kentucky. In its primary significance, “KENTUCKY TURF” does not signify fertilizer at all. The mark is but a fanciful indication of source and merely suggests a desired result from the use of the product (n b National Lead Company v. Wolfe et al., 105 USPQ 462 (CA 9, 1955), and Hamilton Shoe Company v. Wolf Brothers, 240 U.S. 251, 36 S.Ct. 269, 60 L.Ed. 629, wherein the marks “DUTCH BOY” for paints and “THE AMERICAN GIRL” for shoes were held, respectively, to be arbitrary and fanciful rather than geographically descriptive). [Emphasis added.]

In a footnote to its opinion in the present case, the board says its test here is “concerned solely with a single term or a unitary designation,” not with composite trademarks. Nantucket, 209 USPQ at 870. Yet the case relied upon as authority for the board’s test, Amerise, involved the composite mark ITALIAN MAIDE, and the case overruled by the board, Circus Ices, concerned the composite mark HAWAIIAN ICES. Determination of registrability in light of § 2(e)(2) should not depend on whether the mark is a unitary or composite mark.

8 . That arbitrary or fanciful geographic terms may serve as trademarks, and that public association is determinative of arbitrariness or fancifulness, is recognized in 3 Restatement of Torts, § 720, Comment d at 577-78 (1938):

Arbitrary or fanciful use. The reasons for the rule that geographical names cannot be trade-marks do not weigh heavily when the geographical name has obviously only an arbitrary or fanciful significance in connection with the goods upon which it is used. Thus Gibraltar may be a trade-mark for automobiles since there is no likelihood that such use of the name would lead purchasers to suppose that there is any particular relation between the automobiles and the geographical locations known by that name, or any likelihood that it would seriously interfere with the freedom of merchants at Gibraltar to use that name. Again, Ethiopian may be a proper trade-mark for ladies’ stockings; for, while suggestive of a certain color and sheen, it is only fancifully so and there is no likelihood that other merchants may have occasion properly to use the name Ethiopia on stockings since there is no factor of importance associating stockings with Ethiopia. Such is also the case of Pacific for bread or Arctic for refrigerators.

9 . See also Health Industries, Inc. v. European Health Spas, 489 F.Supp. 860, 868, 208 USPQ 605, 610 (D.S.Dak.1980). The court, citing LaTouraine, held EUROPEAN HEALTH SPAS arbitrary rather than geographic: “The term is being used by plaintiff primarily to convey romantic overtones, rather than primarily describe where the services originate.”

10 . Nantucket contends that the instant case is analogous to Hyde Park, arguing that as HYDE PARK was registrable for men’s suits because it was suggestive of stylishness or high quality, not of Hyde Park as a source of men’s suits, so also should NANTUCKET be registrable for shirts as suggestive of fashionable summer resort stylishness, not of Nantucket as the source of shirts.

11 . It does not appear to us that BRITTANIA has ever referred to Brittany. However, Britannia — the phonetic equivalent, of which the mark is a misspelling — has long been used to refer to Great Britain as in the phrase “Britannia rules the waves.”