Consider this action of the USPTO relative to a trademark application filed by a car dealer in Malibu for Malibucars:
http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78473639
SECTION 2(E)(2) GEOGRAPHIC REFUSAL
The examining attorney refuses registration on the Principal Register because the mark is primarily geographically descriptive of the applicant’s goods/services. Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); TMEP §§1210.01(a) and 1210.04(b).
The attached evidence from www.bartleby.com shows that MALIBU is a city in southern California. The applicant is located in Malibu, California.
The primary significance of the term “MALIBU” is geographic, and applicant’s goods/services come from the geographical place named in the mark. Therefore, a public association of the goods/services with the place is presumed. In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); In re U.S. Cargo, Inc., 49 USPQ2d 1702 (TTAB 1998); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); In re Chalk’s International Airlines Inc., 21 USPQ2d 1637 (TTAB 1991); In re California Pizza Kitchen, 10 USPQ2d 1704 (TTAB 1989); In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982). TMEP §1210.04(b).
When the geographic significance of a term is its primary significance and the geographic place is neither obscure nor remote, the goods/place or services/place association will ordinarily be presumed from the fact that the applicant’s goods or services originate in the place named in the mark. In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001) (MINNESOTA CIGAR COMPANY primarily geographically descriptive of cigars); In re Chalk’s International Airlines Inc., 21 USPQ2d 1637 (TTAB 1991) (PARADISE ISLAND AIRLINES held primarily geographically descriptive of the transportation of passengers and goods by air); In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988) (CALIFORNIA PIZZA KITCHEN held primarily geographically descriptive of restaurant services).
The addition of a generic or merely descriptive term to a geographic term does not obviate a determination of geographic descriptiveness. See In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); In re Chalk’s International Airlines Inc., 21 USPQ2d 1637 (TTAB 1991); In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989); In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988); In re Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB 1986); In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986); In re Application of Handler Fenton Westerns, Inc. 214 USPQ 848 (TTAB 1982); TMEP §1210.07(a).
The applicant indicates in its identification of services that it is providing “Automobile Sales, online automobile sales via auction.” CAR is defined as “An automobile.”[1] The applicant is providing a sales setting and online auctions for cars. Use of the term CARS in the applicant’s mark merely describes or names the goods offered through the applicant’s services.
The applicant’s mark MALIBUCARS describes the geographic source of the services and the type of goods being offered through the services. Registration is refused in accordance with Section 2(e)(2) of the Trademark Act.
That was in addition to the refusal based on "MALIBU" being a Chevy mark.
Ron brings up a good point. Interestingly, UDRP panels have awarded domain names to car dealers of the form JoeBlowToyota.com and so forth, without ever touching on whether the dealers are themselves licensed to use the trademark of the car manufacturer in a domain name.
This introduces a certain ironic tension between those decisions that say:
"You can't sell IBM spare parts at IBMSpareParts.com"
and the decisions that say
"Joe Blow Toyota dealer is entitled to transfer of JoeBlowToyota.com"
Consistency is not a strong suit of your average UDRP panelist.
I'd want to know how many dealers of that brand are in Fresno.
Oddly, I just had a case in which a car dealer in Fresno tried to go after a first-name domain name, and we scared him so badly he withdrew the complaint.
What is it with car dealers in Fresno?
