The Trademark Trial and Appeal Board (“TTAB”) recently affirmed the USPTO’s refusal to register the mark PHILADELPHIA’S CHEESESTEAK as applied for by Philly favorite Campo’s Deli. The rejection comes under Section 2(d) of the Trademark Act for being confusingly similar to several other marks and under Section 2(e)(2) of the Act for being geographically descriptive.
In its rejection under Section 2(d), the TTAB cited the registered marks PHILADELPHIA CHEESESTEAK CO. and THE ORIGINAL PHILADELPHIA CHEESESTEAK CO., both of which were registered by The Original Philadelphia Cheesesteak Co. under the class of “prepared foods, namely, meat.” While Campo’s filed its application under the class of “sandwiches; sandwiches, namely, cheesesteaks,” the Board found that these types of goods same channels of trade to the same classes of consumers and that sandwiches and meat are so closely related that one may contain the other. Because the types of goods are so similar and because the marks are so similar in apearance, the Board upheld the Examiner’s refusal to register the mark.
Continuing its analysis, the Board also rejected the application under Section 2(e)(2) of the Act as being geographically descriptive based on the fact that Campo’s is located in Philadelphia. Campo’s argued that the mark actually designates a style of cheesesteak popular in Philadelphia as opposed to designating that a particular sandwich physically originates from the city. While the TTAB is likely less troubled by this implicit assertion that Campo’s is the preeminent cheesesteak producer of Philadelphia than the numerous other delis in the city who make similar claims, it does not overcome the Board’s initial presumption of the association of the goods and the place.
Thus, the PHILADELPHIA’S CHEESESTEAK mark was both too similar to other marks already registered and was also too descriptive of the applicant’s location to be granted. Applicants should take note and create more unique marks that at most suggest, not describe, a location.
To view the TTAB’s opinion in full, please visit: http://ttabvue.uspto.gov/ttabvue/ttabvue-77768687-EXA-19.pdf.