IP Law Daily, TRADEMARK—TTAB: Refusal to register SOHO INK for tattoo ink and services affirmed due to geographical descriptiveness, (Mar 20, 2023)

By Linda Panszczyk, J.D.

The refusal to register SOHO INK for clothing would be set aside if the applicant disclaims SOHO.

The Trademark Trial and Appeal Board affirmed a Trademark Examining Attorney's refusal to register a proposed mark, SOHO INK, for tattoo ink in International Class 2, tattooing equipment, accessories, and supplies in International Class 8, and tattooing services, including body piercing, in International Class 44 because it found the mark to be primarily geographically descriptive of the identified goods and services. The examining attorney's refusal to register the Applicant’s mark for clothing in International Class 25 in the absence of a disclaimer of SOHO was also affirmed, though the Board indicated that this portion of the decision would be set aside if, within thirty 30 days of the mailing date of this decision, the Applicant submitted to the Board a proper disclaimer of SOHO (In re Ink Projects LLC, March 15, 2023, Lykos, A.).

Absent a showing of acquired distinctiveness, Section 2(e)(2) of the Trademark Act prohibits the registration of a mark on the Principal Register which, when used on or in connection with the goods or services of an applicant, is primarily geographically descriptive of them. The test for determining if a mark is primarily geographically descriptive is whether (1) the primary significance of the term in the mark is a generally known geographic location; (2) the goods or services originate in the place identified in the mark; and (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark. All three elements of this test must be satisfied, and, in this instance, they were, TTAB said.

Based on the identified goods and services, the relevant public consists of individuals seeking “tattooing services, body piercing services, permanent makeup services, and cosmetic tattooing services,” as well as related goods and collateral merchandise demonstrating a consumer’s affinity for the Applicant’s goods and services.

According to TTAB, the primary significance of the Applicant’s mark, SOHO INK, when considered as a whole, is a well-known geographic location, namely a neighborhood in New York City, that is not minor, obscure or remote; that the goods and services in International Classes 2, 8 and 44 are either sold or are rendered at Applicant’s location on Lafayette Street in SoHo; and that purchasers would make a goods/place association between Applicant’s goods and services and the place named in the mark. As a result, the Board affirmed the refusal under Section 2(e)(2).

Is the primary significance of “SoHo” in the mark SOHO INK a generally known geographic location? TTAB observed that the Applicant’s applied for mark, SOHO INK, is comprised of two distinct words. Under the first prong of the test, whether the mark’s primary significance is a generally known geographic location, a composite mark such as applicant’s proposed mark must be evaluated as a whole. A highly descriptive or generic wording does not convert a geographically descriptive term into a non-geographic term.

In support of the refusal, the Examining Attorney submitted a WIKIPEDIA entry for “SoHo, Manhattan” showing that SoHo is a well-known geographical designation for a neighborhood located in New York City. The Board found the Examining Attorney’s evidence that “SoHo” is a well-known geographic moniker for a neighborhood in New York City to be persuasive. The fact that WIKIPEDIA has a dedicated entry for SoHo as a neighborhood in Manhattan demonstrates that the primary meaning of “SoHo” is that of a geographic location and is recognized as such by the relevant public. If the most prominent meaning or significance of a mark is geographic for the goods and/or services in an application, the fact that the mark may have other meanings in other contexts does not alter its geographic significance in the context of the application. While SoHo may also connote fashion or a trendy area for artists, a neighborhood in London, or constitute an abbreviation for various entities, these other meanings do not detract from its primary significance to the relevant public in the U.S. as a neighborhood in New York City, TTAB observed.

A term can also be considered geographic even if it does not have exact geographic boundaries as is the case here, where the east and west boundaries of SoHo are disputed, though this disputed boundary does not alter TTAB's determination. Whether the Board considers Lafayette or Crosby Street as the eastern boundary, and the Hudson River or Sixth Avenue as the western boundary, does not alter the determination; any of these boundaries are acceptable lines of demarcation for SoHo. Further, the geographical significance of the designation “SoHo” is not diminished by the fact that, in the Applicant’s mark, it precedes the merely descriptive, if not generic, disclaimed word “ink," the Board added.

The Board found that the term INK in the Applicant’s mark SOHO INK is, at a minimum, highly descriptive of Applicant’s International Class 2, 8, and 44 goods and services. In accordance with our case law, the presence of the highly descriptive term INK in Applicant’s mark does not detract from the primary geographical significance of the mark as a whole. Since the primary significance of SOHO in the mark SOHO INK is a generally known geographic location, a neighborhood in New York City that is neither obscure nor remote, the first prong of establishing mere geographic descriptiveness is satisfied, said TTAB.

Do the International Class 2, 8, and 44 goods and services originate in SoHo? Under the second prong of the test, TTAB looked to whether the Applicant’s goods and services originate from, or are rendered in, SoHo. In response to the Trademark Examining Attorney's request, the Applicant confirmed that at least some of the Applicant’s Goods are, or will be, sold in the Applicant’s location at 285 Lafayette St in New York City and that tattooing services, body piercing services, permanent makeup services, and cosmetic tattooing services, are offered at the Applicant’s location on Lafayette Street.

Although TTAB acknowledged the disagreement from noted sources regarding the east/west boundaries of SoHo, this disagreement does not impact its analysis, it said, because a product that is produced or a service that is provided near the geographic place named in the applied-for mark is sufficient to support a finding that the goods and/or services originate in that geographic location. The second prong for establishing mere geographic descriptiveness was also satisfied.

Are purchasers likely to believe that the goods or services originate in SoHo? Lastly, TTAB considered the final prong, whether the relevant purchasers would make an association between the Applicant’s goods and services with the place identified in the mark. In situations where a geographic location is generally known and is neither obscure or remote, and the term’s geographic significance is its primary significance, and the goods or services do, in fact, originate from the named location, a goods/place association can be presumed, TTAB said.

In this instance, the record shows that “SoHo” is a generally known geographic designation, is neither obscure nor remote, and the term’s geographic significance is its primary significance. Here, the Board has already established that the Applicant’s business is located in the SoHo neighborhood of New York City on Lafayette Street. The Applicant also confirmed that its tattooing services, body piercing services, permanent makeup services, and cosmetic tattooing services, are or will be offered at the same address. Accordingly, a goods and services/place association may be presumed.

TTAB also indicated that, even if it was not able to invoke this presumption, there is sufficient evidence in the record showing that the relevant consumers would associate Applicant’s goods and services with SoHo. SoHo has a well-known reputation for its art galleries and as an artist colony, and tattooing has evolved into an art form for personal expression. Indeed, the Applicant touts its tattoo service providers on its website as “resident artists” with their own portfolios of work. As a result, consumers are likely to believe that the goods are or will be sold and services are or will be rendered in SoHo, thereby satisfying the third prong, TTAB ruled.

Disclaimer requirement–Class 25 goods. An examining attorney may require an applicant to disclaim an unregistrable component of a mark that is otherwise registrable. Absent a showing of acquired distinctiveness, terms which are primarily geographically descriptive are unregistrable under Trademark Act Section 2(e)(2), and, therefore, are subject to disclaimer if the mark is otherwise registrable. Failure to comply with a disclaimer requirement is grounds for refusal of registration.

According to the Board, SOHO, as used in the mark SOHO INK, in connection with the Applicant’s clothing items in International Class 25, is geographically descriptive. This is true because all three prongs of the test for evaluating geographically descriptive terms were satisfied. The fact that the goods consist of clothing does not alter the geographical significance of SOHO. The Board can presume a goods/place association because the Applicant confirmed, without any limitations as to international class, that some of its goods are or will be sold from its SoHo location. Even in the absence of this presumption, within the context of Applicant’s other goods and services in International Classes 2, 8, and 44, the clothing items consist of collateral merchandise demonstrating a consumer’s affinity for Applicant’s goods and services sold and rendered in SoHo. The refusal to register the Applicant’s mark in the absence of a disclaimer of SOHO for the goods identified in International Class 25 is affirmed. However, TTAB indicated that this portion of the decision will be set aside if, within 30 days of the mailing date of this decision, the Applicant submits to the Board a proper disclaimer of SOHO.

The Case is Serial No. 87856799.

Attorneys: Michael F. Snyder (Volpe and Koenig, PC) for Ink Projects LLC. Susan Leslie Dubois for the USPTO.

Companies: Ink Projects LLC

Cases: Trademark USPTO