In Re Compagnie Generale Maritime ( 1993 )

MICHEL, Circuit Judge.

Compagnie Generale Maritime (CGM) appeals from the September 28, 1990 decision of the Trademark Trial and Appeal Board (Board), In re Compagnie Generale Maritime, Nos. 584,002, 647,509, 647,512 & 789,-620 (TTAB September 28, 1990) (In re CGM), refusing registration for the mark FRENCH LINE for all of the myriad goods and services applied for by CGM. Because we hold that the Board’s subsidiary fact findings and resolutions of the questions of ultimate fact regarding geographic deseriptiveness and deceptive misdescriptiveness are not clearly erroneous, we affirm.

BACKGROUND

CGM, a French corporation, sought registrations, under section 44(e) of the Lanham Act (the “Act”), 15 U.S.C. § 1126(e) (1982),¹ of the mark FRENCH LINE in stylized design shown below:

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for a wide variety of goods and services in a multitude of classes covered by several applications, which were consolidated by the Board of CGM’s request.² The applications were based on French registrations and, in accordance with the statute as interpreted in Board precedent in effect at the time of application, no specimens or affidavits of actual use were required or were submitted therewith.³ The Examining Attorney for the Patent and Trademark Office (PTO) refused registration under section 2(e) of the Act, 15 U.S.C. § 1052(e), on the alternative grounds, as interpreted by the Board, that CGM’s mark was either merely descriptive or primarily geographically descriptive.

Before the Board, the Trademark Examining Attorney relied only on the primarily geographically descriptiveness ground, arguing that the primary significance of the words “FRENCH LINE” is geographical and a goods/place association exists or can be presumed to exist between the mark and the goods and services covered by the application. CGM, however, contended that its mark, FRENCH LINE, is not primarily geographically descriptive because the words “bring to mind applicant’s transatlantic luxury steamship passenger service and ‘applicant’s world famous fleet of trans[a]tlantic luxury ocean liners,’ ” In re CGM, slip op. at 6-7, even though CGM no longer owns or operates any luxury liners.

The Board recognized that in order to establish a prima facie case of primary geographic descriptiveness, the PTO “must establish that the public associates the goods with the place named in the mark,” id. at 8 (citing In re Jacques Bernier, Inc., 894 F.2d 389, 391, 13 USPQ2d 1725, 1726 (Fed.Cir.1990); In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA1982)), but need not show that the place is “well known” for the applied-for goods or services, id. (citing In re Nantucket, 677 F.2d at 101, 213 USPQ at 894-95 (Nies, J., concurring); In re Jack’s Hi-Grade Foods, 226 USPQ 1028, 1030 (TTAB1985)). The Board found that because France is “a major manufacturing and commercial nation,” id., the applied-for goods and services would be associated with the country. The Board further found that the words “FRENCH LINE” are primarily geographic. Thus, the Board found that a potential purchaser of goods or services under the mark “FRENCH LINE” would believe that the products or services came from France, rendering CGM’s mark primarily geographically descriptive if the goods and services actually come from France⁴ or primarily geographically deceptively misdes-criptive if the goods and services do not come from France.⁵

Furthermore, upon consideration of CGM’s other contentions on appeal, the Board similarly affirmed refusal of registration. The Board concluded that CGM proffered no evidence to support its contention that “purchasers may associate the mark with applicant’s former luxury passenger service rather than with the geographic source,” id. at 9 — CGM had provided no evidence with its application of any actual use or any public reaction thereto. The Board also determined that the mark was not registrable even with CGM’s disclaimer as to the words “French” and “Line” apart from the stylized mark because the stylization was minimal. Finally, the Board noted that, although CGM had submitted evidence that arguably might support a claim of distinctiveness, (1) the evidence did not “pertain to the specific goods and services covered by the[ ] applications,” and (2) CGM did not request registration under 15 U.S.C. § 1052(f), which provides an exception, when a mark “has become distinctive of the applicant’s goods in commerce,” to an otherwise proper refusal of registration under, inter alia, section 1052(e). In re CGM, slip op. at 6 n. 3. The Board did suggest that, in the future, CGM could possibly obtain registration of its mark by filing new applications showing that the mark has become distinctive for the applied-for goods and services. Based on all of these findings, the Board affirmed the refusal of registration for CGM’s mark.

ANALYSIS

We review the Board’s findings under the deferential clearly erroneous standard. Whether a mark is primarily geographically descriptive or deceptively misdescriptive is a question of fact. See In re Loew’s Theaters, Inc., 769 F.2d 764, 226 USPQ 865 (Fed.Cir.1985); cf. Towers v. Advent Software, Inc., 913 F.2d 942, 944, 16 USPQ2d 1039, 1040 (Fed.Cir.1990) (“Whether a mark is descriptive is a question of fact.”). Likewise, “the issue of acquired distinctiveness is a question of fact.” In re Loew’s, 769 F.2d at 769, 226 USPQ at 869. While we might perhaps have reached a different outcome with respect to some of the goods or services in question had we conducted de novo review, we cannot say that CGM has shown that the Board was clearly erroneous in its findings here.

For example, with regard to clothing, the Board took into account evidence presented by the Trademark Examining Attorney in the form of newspaper clippings discussing, inter alia, party dresses from France, children’s fashions from France, and French designer clothes, respectively, as “French line[s].” Moreover, the Board noted that the mark, “THE AMERICAN LINE,” for clothing was registered on the Supplemental Register. In addition, one clipping referred to a certain brand of cosmetics from France as a “French line of cosmetics.” On such bases, the Board found that the mark is primarily geographical. No clear error is seen in this determination.

We likewise hold that the Board did not clearly err in finding that “France, a major manufacturing and commercial nation, would be perceived as the source of the numerous goods and services listed in the applications if the mark is primarily geographical.” In re CGM, slip op. at 8. Certainly, all of the goods and services would either originate in France or should be considered as if they did because they are sold by a French company. The Board’s associational finding is not clearly erroneous.⁶

Because CGM provided no specimens of actual use of its mark or evidence on what associations purchasers made with respect to the mark, we hold that the Board did not clearly err in finding that CGM did not carry its burden of proof that its mark had become distinctive for any of the applied-for goods and services. In any event, CGM never sought registration based on distinctiveness.

In short, the Board’s decision rests entirely on findings or determinations of fact, none of which have been shown to be clearly erroneous. Therefore, the decision of the Board upholding the refusal of registration is

AFFIRMED.

1 . The Act was amended in 1988. This case, however, is governed by the previous version because CGM filed its applications prior to the amendments.

2 . The Board provided a representative list of these goods, services, and classes. See In re CGM, slip op. at 2 n. 1.

3 . In Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB1984), the Board held that regarding an application based on foreign registration under 15 U.S.C. § 1126(e), applicant need not meet the otherwise applicable statutory requirements regarding pri- or use of the mark. Crocker National Bank was governing case law at the time of CGM’s applications and still is today. At oral argument, Chief Judge Nies nevertheless requested the parties to submit supplemental briefs on the issue of whether CGM's applications should have been required to allege use.

This issue was not raised by any party, either before the Board or in briefing the appeal for argument before this court. The dissent, however, sees the issue as jurisdictional and therefore not subject to waiver. But we do not believe that this issue implicates Board jurisdiction.

The dissent relies on section 1 of the Act, implying that, under its terms, CGM's applications were void and therefore the Board would be precluded from exercising jurisdiction over the applications. Section 1, however, merely enumerates prerequisites for registration. It begins by saying that the owner of a mark "may register his trade-mark” and then lists how he must do so. 15 U.S.C. § 1051 (emphasis added). The list includes, among others, filing an application specifying various things, including use, paying fees, and following Patent and Trademark Office (PTO) rules. But nowhere does section 1 refer to the jurisdiction of the Board. Nowhere does it suggest that for want of any specification required for registration, the PTO may not examine the application. Rather, the clear inference is that for lack of such specifications or proof, the mark will not be registered. Thus, contrary to the dissent, there is no statutory bar to the Board's jurisdiction. Accordingly, where, as here, examination led to refusal to register, the applicant may appeal to the Board if it pays the prescribed fee, for it is dissatisfied with the examiner's decision. An adverse decision and payment of appeal fees are the only jurisdictional requirements for appeal to the Board. Id. § 1070.

Nor, contrary to the dissent’s suggestion, does section 1 deal with allegations required in an application before it may be considered. Rather, formal deficiencies in the application merely may bar registration.

In any event, under the controlling Board decision, CGM's application was not returnable because of an implied exemption from any use requirement under section 1. Such exemption necessarily arises from the statutory section on foreign registrations as construed by the Board in Crocker National Bank, a construction due great deference under Chevron U.S.A. Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837, 104 S.Ct. 2778, 81 L.Ed.2d 694 (1984).

Contrary to the dissent's suggestion, the issue here is not analogous to that presented in In re Dien, 680 F.2d 151, 214 USPQ 10 (CCPA1982), In re Bose, 687 F.2d 432, 215 USPQ 1 (CCPA1982), and Arctic Comer, Inc. v. United States, 845 F.2d 999 (Fed.Cir.1988), the only case authority cited by the dissent as directly supporting its conclusion of no jurisdiction. In In re Dien and In re Bose — both reissue cases' — it was not a faulty application that rendered the Board's decision merely advisory, but rather the nature of the procedure under which the examiner had reviewed the validity of appellant’s patent. The procedure prescribed by the reissue regulation then in effect, 37 C.F.R. § 1.175(a)(4) (1977), could not result in reissue, but only in a "preview” of what a reissue examination might find. Therefore, the court held that the Board's decision did not affect any existing legal rights of the appellant, and therefore the CCPA had no "case or controversy” to decide. Here, on the other hand, CGM applied for a registration under the statute and the Board issued a decision affecting the legal rights of appellant — CGM—it upheld the examiner's refusal to register CGM's mark. Arctic Comer was a government contracts case and, therefore, does not apply to the PTO— the agency at issue in this case. Furthermore, this court lacked jurisdiction in Arctic Comer because several events, including a submission of costs by the surety in that case, had to have occurred before appellant could claim any damages. At the time of the appeal in that case, the surety had not yet submitted its final payment request and, therefore, the Armed Services Board of Contract Appeals’ opinion regarding appellant's rights was merely advisory and did not constitute an appealable decision. Here, the Board’s decision directly affected appellant-CGM's rights and, therefore, was not merely advisory and constituted an appealable decision.

The question of whether an application makes an allowable request for registration is analogous to two common situations in civil litigation. First, it is similar to the question, under Fed. R.Civ.P. 12(b)(6), of whether a complaint states a claim upon which relief can be granted. And whether a complaint does so has been held to be a question on the merits and not on jurisdiction. Bell v. Hood, 327 U.S. 678, 682, 66 S.Ct. 773, 776, 90 L.Ed. 939 (1945). Second, it is comparable to the situations, governed by Fed.R.Civ.P. 10(a) and (b), where a pleading omits certain information or contains a defect in form, neither of which goes to the jurisdiction of the court. See 5 Charles A. Wright & Arthur R. Miller, Federal Practice and Procedure § 1321, at 726-27 (2d ed. 1990) (omission or defect in caption, in contravention of Fed.R.Civ.P. 10(a), is not determinative of the court's jurisdiction); 2A James W. Moore, Jo D. Lucas & George J. Grotheer, Jr., Moore's Federal Practice ¶ 10.03, at 10-16 to 10-17 (2d ed. 1992) (“Failure to separately state separate claims [per Fed.R.Civ.P. 10(b)] does not affect the jurisdiction of the court.”).

Therefore, because this issue neither is jurisdictional, nor was raised before the Board (or even here by the parties except upon request), we cannot properly reach the issue. Normal rules of waiver preclude our doing so. Further explanation of why the issue cannot be reached is contained in Judge Friedman’s concurrence.

4 . The Trademark Examining Attorney argued that all the goods and services should be deemed to come from France because CGM is a French corporation responsible for "the nature and quality of the goods produced by [its] licensees” in the United States. In re CGM, slip op. at 9.

5 . CGM represents that its goods do not come from France.

6 . The Board did not make separate findings for each and every item for which CGM applied, but rather treated all of the items en bloc. The dissent has not shown that the Board was required to treat them separately.