The Trademark Trial and Appeal Board (TTAB) recently affirmed the refusal of the application for registration of the mark THE MUNICH & Design (shown) for failure to disclaim the term MUNICH apart from the mark as a whole. In re Geskes, Serial No. 77911173 (T.T.A.B. Feb. 9, 2012) (not precedential).

The examining attorney maintained that the requested disclaimer was required because the term was geographically descriptive of the identified services, which included “advertising; forestry management services; insurance and consulting services; medical and veterinary services, and hygienic and beauty care for human beings.” The applicant, Christoph Geskes, admitted that the services would originate in Munich, Germany. The examining attorney took the position that the term MUNICH was primarily geographically descriptive of the services because (1) Munich is a well-known city, (2) the applicant’s services would originate there and (3) consumers were likely to make a service-place association between the mark and the city.

Rather than dispute this finding, Geskes argued that the combination of THE and MUNICH resulted in an incongruity. Specifically, he contended that “THE MUNICH is incongruous because in common usage the word the is a definite article that is not used before the names of cities.” The applicant analogized to prior cases in which two or more descriptive terms were combined in an incongruous fashion to create a unitary mark in which a disclaimer was not necessary (e.g., SNO-RAKE, URBAN SAFARI, FRANKWURST).

The TTAB concluded, however, that the definite article THE had no inherent source-indicating significance and that combining it with MUNICH did not create an incongruous term. Specifically, the Board found that the addition of THE (even in an usual or grammatically incorrect manner) to an otherwise geographically descriptive term like MUNICH did not change the mark into a nondescriptive term whose meaning would require a leap of imagination to decipher. The TTAB therefore affirmed the refusal to register based on the requirement for a disclaimer of MUNICH.


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© 2012 International Trademark Association