Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE NANTUCKET ALLSERVE, INC.
Serial No. 74/079,172
August 11, 1993
Hearing: April 27, 1993
Patrick J. Coyne and Dawnmarie D. Sanok of Collier, Shannon, Rill and Scott for applicant.
Carolyn C. Gray
Trademark Examining Attorney
Law Office 14
(R. Ellsworth Williams, Managing Attorney)
Before Rice, Seeherman and Hanak
Members
Member
Nantucket Allserve, Inc. (applicant) seeks to register NANTUCKET NECTARS in typed capital letters for soft drinks. Applicant claimed that it first used this mark on July 1, 1990. Furthermore, applicant disclaimed exclusive rights to the word NECTARS.
The Examining Attorney refused registration pursuant to Section 2(e)(2) of the Lanham Trademark Act [15 USC 1052(e)(2) ] on the basis that NANTUCKET NECTARS is primarily geographically descriptive of the goods of the applicant.
When the refusal was made final, applicant appealed to this Board. Applicant and the Examining Attorney filed briefs, and were present at an oral hearing held on April 27, 1993.
The facts of this case are not in serious dispute. The "origin" of applicant's soft drinks sold under the mark NANTUCKET NECTARS is described in paragraphs 2 and 3 of the declaration of Thomas W. Scott, applicant's president:
2. Applicant maintains an office on the Island of Nantucket. This office serves as our corporate headquarters and center for research and development. Applicant's [soft drink] products are not produced on Nantucket.
3. The goods manufactured by applicant in conjunction with the NANTUCKET NECTARS are manufactured in Worcester, Massachusetts. Further, the ingredients for applicant's fruit juice i.e. products sold in conjunction with the NANTUCKET NECTARS mark, water, lemons, apples, peaches, etc., do not come from Nantucket. For example, the oranges come from Indian River, Florida. The term "Nantucket" is arbitrary as used in conjunction with applicant's juice products.
Applicant also made of record an article from the July 19, 1990 edition of The Inquirer and Mirror, Nantucket, Massachusetts. This article is entitled "Selling Nantucket: It's all in the name" and reads, in pertinent part, as follows:
The name Nantucket probably has its greatest appeal with businesses on the island, with owners capitalizing on their profitable location.
Tom Scott [applicant's president] and Tom First manufacture a line of fruit juices with a drawing of the famous island on the label. Their store is on Straight Wharf and the product is called Nantucket Nectars--not because the fruits come exclusively from the island, but because the partners live here and appreciate its history.
Finally, applicant made of record excerpts from a number of travel books such as Insight Guides New England, New England Travel Guide and Fodor's 92 New England. These guides make it clear that Nantucket is a popular and well-known vacation spot.
*2 The test for determining whether a mark sought to be registered is "primarily geographically descriptive" pursuant to Section 2(e)(2) is set forth in In re Societe Generale, 824 F.2d 957, 3 USPQ2d 1450, 1452 (Fed.Cir.1987):
As the Board clearly realized, a first principle derivable from those cases [In re Loew's Theaters, Inc., 769 F.2d 764, 226 USPQ 865 (Fed.Cir.1985) and In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889 (CCPA 1982) ] is that a prima facie case of unregistrability cannot be made out simply by evidence showing that the mark sought to be registered is the name of a place known generally to the public; it is also necessary to show that the public would make a goods/place association, i.e., believe that the goods for which the mark is sought to be registered originate in that place. To hold such a belief, it is necessary, of course, that the purchasers perceive the mark as a place name and this is where the question of obscurity or remoteness comes to the fore.
In the present case, there can be no dispute, based on the travel guides made of record by the applicant, that Nantucket is the name of a place and that it is known generally to the American public. Unlike the small French town of Vittel discussed in Societe Generale, Nantucket is not obscure or remote to the American public.
Hence, we come to the second half of the test set forth in Societe Generale, namely, whether "the public would make a goods/place association, i.e., believe that the goods for which the mark is sought to be registered originate in that place." 3 USPQ2d at 1452. As applicant correctly notes, the goods in question are "applicant's soft drink products--the goods in conjunction with which the mark [NANTUCKET NECTARS] is used." (Applicant's reply brief page 5, emphasis added). We believe that applicant's labels for its NANTUCKET NECTARS soft drinks, which applicant submitted as specimens, would cause the consuming public to make a goods/place association. These labels bear the mark NANTUCKET NECTARS above a picture of Nantucket Town, and contain, among other things, the following statements:
Born on the Faraway Isle, Nantucket Nectars [TM] were created during the long winter months of 1990. Their flavor embodies the wholesome quality of the Island whose name they bear....
Distributed by Nantucket Nectars
A Division of Allserve Inc.
Straight Wharf, Nantucket, MA 02554
Applicant's labels do not mention any other geographic location such as, for example, Worcester, Massachusetts. In this regard, it should be noted that "Nantucket" is the Indian word for "Faraway Isle." See Insight Guides New England ("An Indian word meaning 'that faraway island,' Nantucket is not too far away for the thousands of people who visit each year by ferry and airplane.") See also New England Travel Guide.
*3 We think that individuals seeing applicant's labels on applicant's soft drinks would make a goods/place association between applicant's product and Nantucket, and would assume that applicant's soft drinks have their origin on Nantucket. Indeed, the labels state that applicant's soft drinks were "born on the Faraway Isle." While it is true that applicant's NANTUCKET NECTARS soft drinks are manufactured in Worcester, Massachusetts, applicant's corporate headquarters and, perhaps more importantly, applicant's center for research and development are located on Nantucket. (Scott declaration paragraphs 2 and 3). Thus, a principal origin, if not the principal origin, of applicant's products is Nantucket.
Applicant also argues that NANTUCKET NECTARS "does not designate the geographic source of the products. Rather, the clear weight of the evidence supports that the mark NANTUCKET for soft drinks--like NANTUCKET or HYDE PARK for clothing--designates a quality product." See applicant's reply brief page 3 citing In re Jacques Bernier Inc., 894 F.2d 389, 13 USPQ2d 1725, 1727 (Fed.Cir.1990). However, in Jacques Bernier (the RODEO DRIVE case), the court stated that nothing "suggests that the consuming public would believe that Rodeo Drive was the place of manufacture or production of the perfume ... [and further that] there is no evidence that [applicant's] perfume is sold on Rodeo Drive." 13 USPQ2d at 1727. In contrast to the Jacques Bernier case, applicant's own labels clearly suggest to the consuming public that NANTUCKET NECTARS not only are formulated on Nantucket, but in addition, are manufactured on Nantucket. As previously noted, the only geographic location indicated on the labels is Nantucket, Massachusetts. Moreover, the article submitted by applicant ("Selling Nantucket: It's all in the name") suggests not only that NANTUCKET NECTARS soft drinks are sold at applicant's store on Straight Wharf in Nantucket, but also that at least some of the fruits utilized to manufacture the product come from Nantucket ("... the product is called Nantucket Nectars-- not because the fruits come exclusively from the island ...") (emphasis added).
Finally, we do not need to disagree with applicant's assertion that Nantucket has an "upscale connotation" (applicant's brief page 10) and that "Nantucket's quaint size and unique notoriety for sun, surf, and historic homes are inconsistent with visions of industrial complexes churning out bottled soft-drink products." (Applicant's brief pages 8-9). However, while the public may not believe that major soft drink companies would locate large bottling facilities on the Island of Nantucket, this does not mean that the consuming public--upon seeing applicant's own labels for its upscale NANTUCKET NECTARS soft drinks--would also believe that this specialized soft drink product does not come from Nantucket. Moreover, 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 its headquarters and, more importantly, its research and development center on Nantucket.
*4 Decision: The refusal to register is affirmed.
J.E. Rice
E.J. Seeherman
E.W. Hanak
Members, Trademark Trial and Appeal Board