Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE CHALK'S INTERNATIONAL AIRLINES, INC.
Serial No. 73/807,082
September 11, 1991
Hearing: June 25, 1991
Walter D. Hansen for applicant
Joan Leslie Bishop
Trademark Examining Attorney
Law Office 10
(Jean Logan, Managing Attorney)
Before Simms, Seeherman and Quinn
Members
Member
Chalk's International Airlines, Inc. (applicant), a Florida corporation, has appealed from the final refusal of the Trademark Examining Attorney to register the mark PARADISE ISLAND AIRLINES for the transportation of passengers and/or goods by air. [FN1] The Examining Attorney has refused registration under Section 2(e)(2) of the Act, 15 USC 1052(e)(2), on the basis that applicant's mark is primarily geographically descriptive of its air transportation services. [FN2]
We affirm.
In opposing the refusal, applicant argues that it is an air carrier which performs air transportation services not only between the United States and the Bahamas but also "between any two or more points in the 48 contiguous states." (Applicant's response of February 27, 1990, 2-3.) For example, applicant transports passengers and goods between La Guardia Airport in New York and the airport in Atlantic City, New Jersey. These passengers, according to applicant, do not associate applicant's services with the place named in applicant's mark--Paradise Island. Moreover, applicant's scheduled service to Paradise Island in the Bahamas is conducted on a round-trip basis primarily originating in Miami and to a lesser extent in Fort Lauderdale and Palm Beach, Florida. Because applicant does not perform "originating" air transportation services and does not have a hub in Paradise Island, applicant's services cannot be considered as emanating from Paradise Island, applicant argues. Paradise Island is, therefore, not a geographic location of applicant's transportation services.
These arguments are not well taken. The specimens of record reveal that applicant offers nonstop air transportation services direct to Paradise Island from a number of locations. Some luggage tags clearly show the destination of applicant's flights to be Paradise Island. In other words, applicant conducts daily flights to and from Paradise Island.
This record establishes that Paradise Island is an island in the Bahama Islands known, among other things, for its resorts and casinos. Where there is no genuine issue that the geographic significance of the term is its primary significance and where the geographic place is neither obscure nor remote, a public association of the goods or services with the place named in the mark may ordinarily be presumed from the fact that applicant's own goods or services come from that place. In re California Pizza Kitchen Inc., 10 USPQ2d 1704, 1705 (TTAB 1988) and In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982). Moreover, the fact that applicant renders its transportation services both on Paradise Island and elsewhere does not mean that the public would not associate applicant's services with Paradise Island. As we said in the California Pizza case, at 1706:
*2 It is the perception of the public as to the geographical significance of the mark which controls whether registration should be refused pursuant to Section 2(e)(2), not whether an applicant also renders the service or manufactures some of the goods outside of the geographical area named in the mark.
With respect to transportation services, except where those services may be performed in one area (for example, within the state of California), these services are necessarily performed in more than one geographic location. Because the primary significance of the term "PARADISE ISLAND" in applicant's mark is geographic and because applicant's services are performed at least in part on Paradise Island, there is a public association between applicant's services and the place named in applicant's mark. There can be no doubt that the words "PARADISE ISLAND" in applicant's mark tell the public something about applicant's services (that applicant's airline serves the market of Paradise Island) about which applicant's competitors also have a right to inform the public. As the Examining Attorney noted, it is not a coincidence that applicant selected "PARADISE ISLAND AIRLINES" to identify its air transportation services to and from Paradise Island. The addition of the generic and disclaimed word "AIRLINES" to applicant's mark cannot avoid the refusal. In re Cambridge Digital Systems, 1 USPQ2d 1659, 1662 (TTAB 1986).
Applicant's other arguments--that no competitor opposed its use of the name when its application was before the Department of Transportation, that the register contains other third-party marks with geographic significance (for example, TRANSWORLD AIRLINES, TRANSAMERICA and marks which may have been registered under Section 2(f) of the Act), and that other Board and court cases (In re Jacques Bernier, 894 F.2d 389, 13 USPQ2d 1725 (Fed.Cir.1990) ( "RODEO DRIVE") and In re Gale Hayman, 15 USPQ2d 1478 (TTAB 1990) ("SUNSET BOULEVARD")) compel a reversal--are without merit. Suffice it to say that each case must be decided upon its own merits and that cases decided because of a lack of evidence that the public would believe that the place named in the mark was the manufacturing location of certain goods are not especially helpful in determining the appropriate result in this case.
Decision: The refusal of registration is affirmed.
R. L. Simms
E. J. Seeherman
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 73/807,082, filed June 16, 1989, claiming use since March 25, 1989. Pursuant to request of the Office, applicant disclaimed the word "AIRLINES" apart from the mark as shown.
FN2. Applicant has made much of the fact that the Examining Attorney initially refused registration on the basis that applicant's mark was allegedly "geographically descriptive" rather than "primarily geographically descriptive." However, in view of applicant's statements at the oral hearing, we have no doubt that applicant was fully aware of the ground of refusal. Indeed, in applicant's first response to the Examining Attorney's refusal, 6, applicant's attorney was under no misapprehension as to the issue involved.
What is involved though is whether the mark is sufficiently geographically descriptive to be barred by Section 2(e)(2) of the Trademark Act, i.e., is it "primarily geographically descriptive"?