Beth June Shaw

Trademark Trial and Appeal BoardAug 26, 2014

No. 85770708 (T.T.A.B. Aug. 26, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: August 26, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Shaw _____ Serial No. 85770708 _____ Thomas I. Rozsa of Rozsa Law Group LC for Beth June Shaw. Zachary B. Cromer, Trademark Examining Attorney, Law Office 104 (Chris Doninger, Managing Attorney). _____ Before Kuhlke, Bergsman and Adlin, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Beth June Shaw (“Applicant”) seeks registration of YOGAFITNESS, in standard characters, alleging a bona fide intention to use the mark in commerce for a “prerecorded series of video DVDs and tapes, audio tapes and motion picture films concerning health and fitness through the use of yoga and related exercise.”1 The Examining Attorney refused registration on the ground that Applicant’s mark is merely descriptive of the identified goods under Section 2(e)(1) of the Act. After the 1 Application Serial No. 85720234, filed September 4, 2012, under Section 1(b) of the Trademark Act. Serial No. 85770708 2 refusal became final, Applicant appealed and Applicant and the Examining Attorney filed briefs.2 While the only basis for the Examining Attorney’s refusal to register was mere descriptiveness, in the Final Office Action the Examining Attorney also issued an “advisory” that Applicant’s mark “appears to be generic” and “neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended.” Office Action of July 22, 2013. In her Appeal Brief, Applicant focuses more on this “advisory” than on the mere descriptiveness basis for the refusal to register. In fact, Applicant’s brief argues primarily that Applicant’s mark is entitled to registration on the Supplemental Register. However, the only issue in this appeal is whether Applicant’s mark is merely descriptive under Section 2(e)(1) of the Act and thus unentitled to the Principal Register registration sought in the application.3 A mark is deemed to be merely descriptive of goods, within the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods. In re Bayer 2 The evidence attached to Applicant’s and the Examining Attorney’s briefs is untimely. Trademark Rule. 2142(d). Accordingly, the Examining Attorney’s objection to Applicant’s new evidence is sustained, and neither that evidence nor the Examining Attorney’s new evidence has been given any consideration. 3 Applicant has not sought to amend her application to seek registration on the Supplemental Register, and it would be too late to do so now. Moreover, even if Applicant timely requested to amend her application, which she did not, registration on the Supplemental Register is only available to marks which are in use. 15 U.S.C. § 1091(a); Trademark Rule 2.47(a), (d) and (e). Here, Applicant filed her application based on an intent to use the mark rather than actual use, and there is no evidence that she has used her mark. In other words, even if requested, an amendment to seek registration on the Supplemental Register would be futile. Serial No. 85770708 3 Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007); and In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A mark need not immediately convey an idea of each and every specific feature of the applicant’s goods in order to be considered merely descriptive; rather, it is sufficient that the mark describes one significant attribute, function or property of the goods. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a mark is merely descriptive is determined not in the abstract, but in relation to the goods for which registration is sought, the context in which it is being used on or in connection with the goods, and the possible significance that the mark would have to the average purchaser of the goods because of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). When two or more merely descriptive terms are combined, the determination of whether the composite mark also has a merely descriptive significance turns on whether the combination of terms evokes a new and unique commercial impression. If each component retains its merely descriptive significance in relation to the goods, the combination results in a composite that is itself merely descriptive. See e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer software for managing a database of records that could include patents, and for tracking the status of the records by means of the Internet); In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB 2009) (BATTLECAM merely descriptive for computer game software); In re Serial No. 85770708 4 Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of real estate brokerage, real estate consultation and real estate listing services); In re Tower Tech Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive of commercial and industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use in developing and deploying application programs); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and information services in the food processing industry). Here, Applicant’s identification of goods makes clear that both terms comprising her alleged mark, “yoga” and “fitness,” are merely descriptive. In fact, Applicant’s video and audio recordings concern “… fitness through the use of yoga …” (emphasis supplied). See, In re Taylor & Francis (Publishers) Inc., 55 USPQ2d 1213, 1215 (TTAB 2000) (PSYCHOLOGY PRESS & Design found merely descriptive of nonfiction books in the field of psychology, in part because the applicant’s “identification of goods expressly states that the series of non-fiction books upon which applicant uses its mark are ‘in the field of psychology.’ The word PSYCHOLOGY therefore is merely descriptive of the subject matter of applicant’s books, as identified in the application ….”). We have not considered the terms “yoga” and “fitness” in the abstract. Instead, Applicant’s identification of goods reveals that YOGAFITNESS is merely descriptive in the context of the goods for which it is used, in this case prerecorded video DVDs and tapes, audio tapes and Serial No. 85770708 5 motion picture films. Furthermore, we take judicial notice that “yoga” is defined as “a system of exercises for attaining bodily or mental control and well-being,” and “fitness” is defined as “the quality or state of being fit,” i.e. “sound physically and mentally.” Merriam-Webster Dictionary.4 The evidence of record shows that “yoga” and “fitness” both retain their merely descriptive significance when used in the composite mark YOGAFITNESS for Applicant’s goods. Specifically, the following evidence concerns products offered by different sources: • A printout from the “bestbuy.com” website offers for sale a DVD entitled “Ultimate Body: Yoga Fitness” which provides a “full body yoga workout.” The synopsis for the DVD refers to it as a “comprehensive yoga fitness program ….” • A printout from the “barnesandnoble.com” website offers for sale a DVD entitled “Rave! Yoga Fitness.” The DVD’s overview indicates that it provides “an easy-to- follow yet challenging workout designed to increase flexibility, stamina, and range of motion while encouraging better posture and trimming the body in a fifteen-minute, full-posture yoga routine ….” Under the heading “Special Features,” the listing indicates that the DVD provides “Yoga Fitness for all Levels.” • Another printout from the “barnesandnoble.com” website offers for sale a DVD entitled “Lilias! Complete Yoga Fitness for Beginners.” One of the product’s “Special Features” is “Discover Yoga: A Guided meditation (audio only).” 4http://www.merriam-webster.com/dictionary/yoga,http://www.merriam- webster.com/dictionary/fitness and http://www.merriam-webster.com/dictionary/fit. The Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 85770708 6 • A printout from the “walmart.com” website offers for sale a DVD entitled “Yoga Fitness With Gwen Lawrence,” the cover of which states “burn calories while you tone and strengthen.” The publisher describes the DVD as follows: “Celebrity Yoga Coach Gwen Lawrence brings three unique yoga practices that blend traditional yoga with cutting edge training techniques … for body-altering results.” • A printout from the “valorebooks.com” website offers a VHS tape entitled “Yoga Fitness for Kids Ages 7-12.” • A printout of an “ebay.com” listing offers a VHS tape entitled “Bally Deluxe Yoga Fitness Exercise.” Office Actions of December 15, 2012 and July 22, 2013 (emphasis supplied). This evidence establishes that in the context of prerecorded video DVDs and tapes, “yoga fitness” refers to workout videos featuring yoga as a means to improve fitness. In fact, the evidence of record makes clear that “yoga fitness” is a term of art, or is at least so commonly used and understood by consumers that it is commonly included in the titles or subtitles of workout videos featuring yoga. In other words, here, “the mark as a whole, i.e., the combination of the individual parts,” in this case the words “yoga” and “fitness,” does not convey “any distinctive source-identifying impression contrary to the descriptiveness of the individual parts.” In re Oppedahl & Larson, 71 USPQ2d at 1372. Rather, from “the perspective of a prospective purchaser or user” of workout videos, “because … the combination of the terms does not result in a composite that alters the meaning of either of the elements,” and does not create a double entendre or incongruity, Serial No. 85770708 7 “refusal on the ground of descriptiveness is appropriate.” In re Petroglyph Games, at 1341. There is no evidence that Applicant’s compression of the words “yoga” and “fitness” into a single term without a space between the constituent words results in the alleged mark creating a commercial impression any different from YOGA FITNESS with a space between the constituent words. See, e.g., In re Carlson, 91 USPQ2d at 1200; In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1897 n. 2 (TTAB 2001) (“the compound term RUSSIANART is as merely descriptive as its constituent words, ‘Russian Art’”); In re Gagliardi Bros., Inc., 218 USPQ 181 (TTAB 1983) (BEEFLAKES merely descriptive of thinly sliced beef); In re Orleans Wines, Ltd. 196 USPQ 516 (TTAB 1977) (BREADSPRED merely descriptive of jellies and jams). Applicant’s arguments in support of registration are unavailing. First, to the extent that Applicant argues that its alleged mark should be registered on the Supplemental Register based on its own prior applications or registrations or those of third parties: (1) Applicant’s entitlement to a Supplemental Register registration is not at issue; (2) the argument is unsupported by any evidence of record; and (3) in any event, “[a]lthough the United States Patent and Trademark Office strives for consistency, each application must be examined on its own merits. Neither the Trademark Examining Attorney nor the Board is bound to approve for registration an Applicant’s mark based solely upon the registration of other assertedly similar marks for other goods or services having unique evidentiary records.” In re Serial No. 85770708 8 Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014); see also, In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“The Board must decide each case on its own merits … Even if some prior registrations had some characteristics similar to Nett Designs’ application, the PTO’s allowance of such prior registrations does not bind the Board or this court.”). Second, even if Applicant is correct that “[a]n individual seeing the mark YOGAFITNESS would not automatically assume that the mark relates to DVDs and CDs …,” it is settled that “[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.” In re Tower Tech, 64 USPQ2d at 1316-17 (TTAB 2002). Conclusion On this record, we have no doubt that consumers encountering YOGAFITNESS tapes and DVDs would immediately understand that Applicant’s prerecorded media products relate to health and fitness through the use of yoga. Decision: The refusal to register is affirmed.