"Hot Springs National Park" within a geometric design.
The National Park Service objected to the registration.
The relevant statute as issue was section 2(e)(2) of the
Lanham Act which prohibits registration of a mark is merely
For the government as petitioner to establish
that respondent’s mark is primarily geographically descriptive,
it must show
-->that the mark is the name of a place known generally to the
-->that the public would make a goods/place
association, i.e., believe that the goods or services for
which the mark is registered originate in that place.
The TTAB framed the issue:
We must therefore determine
whether the primary significance of the mark, as a whole, is
a generally known geographic location. See In re Save
Venice New York Inc., 259 F.3d 1346, 1352, 59 USPQ2d 1778,
1782 (Fed. Cir. 2001).
The government lost:
We find, therefore, that petitioner has failed to
establish that the mark as a whole is the name of a place
known generally to the public. Rather, the evidence of
record supports a finding that only the disclaimed wording
in the mark is the name of a geographic location. Thus, the
disclaimed geographically descriptive wording HOT SPRINGS
NATIONAL PARK ARKANSAS in respondent’s mark is a separate
element from the inherently distinctive design. See
generally TMEP §1210.06(a).
And, of the bigger issue:
Because petitioner has failed to establish the first
element of its claim of geographic descriptiveness, namely,
that the mark as a whole is the name of a place known to the
public, we find that petitioner cannot prevail on its
pleaded ground for cancellation, and we need not consider
whether the public would make a goods/place association,
i.e., believe that the goods or services for which the mark
is registered originate in that place. Cf. In re Societe
Generale des Eaux Minerals de Vittel, S.A., 824 F.2d 957, 3
USPQ2d 1450 (Fed. Cir. 1987); and In re California Pizza
Kitchen, Inc., 10 USPQ2d 1704 (TTAB 1988).