The Board rejected applicant's attempt to amend the drawing of the mark shown below to delete the words "SACRAMENTO CA," finding that such an amendment would be a material alteration of the mark as filed. However, the Board reversed a Section 2(e)(2) refusal of the original mark for beer because Oak Park of Sacramento, California, is too obscure a location. In re Oak Park Brewing Company, Inc., Serial No. 86329948 (February 14, 2016) [not precedential].
Material alteration: In an application under Section 1(b), an applicant may amend the drawing of the mark if "[t]he proposed amendment does not materially alter the mark." Rule 2.72(b)(2). The general test is whether the mark would have to be republished after the alteration. In short, the new and old versions must create the same commercial impression.
The evidence showed that there are several locations named "Oak Park" in the United States, including Oak Park, Illinois, known for the large collection of homes designed by Frank Lloyd Wright. It is also the birthplace of Ernest Hemingway and contains three homes of writer and Tarzan creator Edgar Rice Burroughs.
The Board concluded that removal of "SACRAMENTO CA" changes the commercial impression of the mark because it no longer refers to Oak Park of Sacramento, California, but may refer to another Oak Park. Or OAK PARK may simply be seen as an arbitrary designation of a park dominated by trees, with no geographical reference.
And so the Board affirmed the rejection of the proposed new drawing.
Geographical Descriptiveness The first prong of the Section 2(e)(2) test requires that the mark (or portion thereof) be a place generally known to the public. The USPTO's evidence showed that Oak Park is located within the Sacramento city limits. The population of Sacramento is about 400,000. Newspaper stories established "[a]t best" that a former mayor of Sacramento, who played in the NBA, grew up in Oak Park of Sacramento. [Can you name him?]
Considering the evidence as a whole, the Board was not persuaded that "Oak Park" identifies a geographic location generally known to the American purchasing public for beer. Oak Park in Sacramento is minor and obscure. At one time it was an important suburb of Sacramento, but fell into decline. Although Sacramento is not an insignificant city, nothing in the record indicated that the specific area of Oak Park has any significance outside of Sacramento. "At best, the record showed that one professional basketball player grew up there, a fact probably not generally known to the American beer-drinking public."
Because the USPTO failed to satisfy the first prong of the Section 2(e)(2) test, the Board reversed the refusal.