Dan E. Rogers

Trademark Trial and Appeal Board

Oct 27, 1999

No. 75013108 (T.T.A.B. Oct. 27, 1999)

Paper No. 16
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 27, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Dan E. Rogers
___________
Serial No. 75/013,108
___________
Freling E. Baker of Baker and Maxham for applicant.
Mary E. Crawford, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
____________
Before Walters, Chapman and Wendel, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Dan E. Rogers has filed a trademark application to
register the mark GERSON for “providing medical treatment
for human illnesses by means of nutritionally based
therapy,” in International Class 42. The application,
filed October 31, 1995, is based on an allegation of a bona
fide intention to use the mark in commerce.
Serial No. 75/013,108
2
Procedural and Factual History
The Examining Attorney refused registration on the
ground that GERSON is primarily merely a surname, under
Section 2(e)(4) of the Trademark Act, 15 U.S.C. §
1052(e)(4). In support of her refusal, the Examining
Attorney submitted excerpts of listings for the surname
Gerson from the Phonedisc USA database.
In response, applicant, not disputing that GERSON is a
surname, stated that Dr. Max Gerson is the individual who
developed the nutritionally based therapy, known as the
Gerson Therapy, that is the subject of the medical services
identified in this application; that Dr. Gerson is
deceased; and that Dr. Gerson’s heirs assigned to applicant
the right to use the GERSON name.1 Applicant asserted a
claim of acquired distinctiveness under Section 2(f) of the
Act, 15 U.S.C. § 1052(f), by submitting his declaration of
continuous use of the mark for at least five years in
“international commerce.” Applicant acknowledged that the

1 While ownership of the applied-for mark in the United States is not an
issue before us, we note that applicant submitted no evidence regarding
the nature and scope of the assignment to him. In support of his claim
of acquired distinctiveness, applicant submitted evidence indicating
that there are several other entities that also use the GERSON name in
connection with goods and services the same as or related to
applicant’s identified services. However, we cannot discern from this
record the relationship between these entities and applicant. Thus, as
discussed in our decision, we have not considered the evidence of use
by these entities to inure to applicant’s benefit for purposes of our
consideration of acquired distinctiveness.
Serial No. 75/013,108
3
identified services are rendered in Mexico, and that he
does not render these services in the United States.
Applicant stated that approximately one third of the
patients treated at applicant’s facility in Mexico are from
the United States. Applicant indicated that he advertises
the services throughout the United States; and that he and
The Gerson Institute, a non-profit educational institute,
distribute publications about the Gerson Therapy in the
United States. He submitted copies of a biography of Dr.
Gerson and two brochures issued by The Gerson Institute
about the program in Mexico.
The Examining Attorney found applicant’s declaration
insufficient to establish acquired distinctiveness since
applicant has not alleged use of the mark in a type of
commerce regulable by Congress and applicant has not
submitted an amendment to allege use in the application.
In a request for reconsideration, applicant cited
Office policy permitting a Section 2(f) claim of acquired
distinctiveness in an intent-to-use application under
specified conditions. Trademark Manual of Examining
Procedure (TMEP), Section 1212.09. Regarding the
sufficiency of his claim, applicant stated that information
about the Gerson Therapy has been available for the past
several years via the Internet, and that the Gerson Therapy
Serial No. 75/013,108
4
“has received wide publicity throughout the world, as well
as throughout the U.S.A. as a result of publications
distributed by the applicant and by the formerly affiliated
The Gerson Institute, a U.S. non-profit educational
institute, and the presently affiliated Gerson Research
Organization, a U.S. public benefit scientific research
organization formed in 1993 to publish the results of the
Gerson therapy.” Applicant submitted copies of several
pages of a Gerson Institute publication entitled “Healing,”
printouts from The Max Gerson Memorial Cancer Center’s
Internet website, a copy of a video jacket about the Gerson
Therapy, and excerpts mentioning the Gerson Therapy from a
1976 report to NIH “prepared under the auspices of the
Workshop on Alternative Medicine” and from a report to the
101st Congress by the Office of Technology Assessment.
Applicant also submitted a declaration stating that he
has been “closely affiliated” with the Gerson Institute and
the Gerson Research Organization, both located in
California; that, since 1977, the mark GERSON has been
widely used in the U.S. in the promotion of the Gerson
Therapy and of applicant’s facility in Mexico, in the
publishing of therapy results, and in a bi-monthly
newsletter about the therapy; that, since 1977, the mark
GERSON has been widely used in the “promotion of and
Serial No. 75/013,108
5
conducting of conventions and seminars to educate health
care professionals regarding the Gerson therapy”; that, for
more than five years prior to applicant’s declaration, “the
mark GERSON has been used on newsletters, advertising
literature and other publications, tape recordings,
educational seminars and other services relating to medical
treatment”; and that the mark GERSON “has become
distinctive of printed publications, tape recordings,
educational seminars and Applicant’s services.”
The Examining Attorney acknowledged that Office policy
permits a claim of acquired distinctiveness in an intent-
to-use application under specified conditions, but she
rejected the sufficiency of applicant’s evidence. The
Examining Attorney finally refused registration, under
Section 2(e)(4) of the Trademark Act, 15 U.S.C. §
1052(e)(4), on the ground that applicant’s mark is
primarily merely a surname and applicant has not
established, under Section 2(f) of the Trademark Act, 15
U.S.C. § 1052(f), that his mark has acquired
distinctiveness in relation to other goods or services
that, in this intent-to-use application, will transfer to
applicant’s use of the mark in connection with the
identified services.
Serial No. 75/013,108
6
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
Issues
The issues before us are whether GERSON is primarily
merely a surname and, if so, whether applicant has
established acquired distinctiveness, under Section 2(f) of
the Act, of GERSON as a mark for the services identified in
this application.
Primarily Merely a Surname
We consider, first, whether GERSON is primarily merely
a surname.2 It is well established that the Office has the
burden of establishing a prima facie case that a term is
primarily merely a surname, and that the test for
determining whether a mark is primarily merely a surname is
the primary significance of the mark as a whole to the
purchasing public. In re BDH Two Inc., 26 USPQ2d 1556
(TTAB 1993) and cases cited therein. In this case, we find
that the Examining Attorney’s evidence and applicant’s
statements clearly establish that the public would regard

2 While applicant’s amendment to assert a claim under Section 2(f) is
essentially a concession that his mark is not inherently distinctive,
we nonetheless consider the question of whether the Examining Attorney
has established that GERSON is primarily merely a surname. See, In re
Leatherman Tool Group, Inc., 32 USPQ2d 1443 (TTAB 1994); and Section
1212.02(b) of the TMEP.
Serial No. 75/013,108
7
GERSON, when used in connection with the identified
services, as being primarily merely a surname. The
Examining Attorney’s evidence, including the fact that
GERSON has no meaning other than as a surname, establishes
the Examining Attorney’s prima facie case. Applicant does
not appear to dispute this conclusion and, in fact,
presents no evidence or argument in this regard.
Claim of Acquired Distinctiveness
We now turn to the issue that is the focus of
applicant’s argument in this case, namely, whether acquired
distinctiveness has been established for the mark GERSON in
connection with the services identified herein.
1. Establishing Acquired Distinctiveness in an
Intent-to-Use Application.
Section 1212.09 of the TMEP states that it is the
policy of the Office to accept a claim of acquired
distinctiveness in an intent-to-use application prior to
the filing of an amendment to allege use or a statement of
use, “provided the applicant can establish that, as a
result of the applicant’s use of the mark on other goods or
services, the mark has become distinctive of those other
goods or services and that this previously created
distinctiveness will transfer to the goods and services
specified in the application when the mark is used on or in
Serial No. 75/013,108
8
connection with them.”3 TMEP Section 1212.09(a). While the
basis for this policy is not stated, we note the language
of Section 2(f) of the Act, which states, in pertinent
part, “… nothing herein shall prevent the registration of a
mark used by the applicant which has become distinctive of
the applicant’s goods in commerce.” Neither the plain
language of the Act, nor the legislative history thereof,
precludes the filing of a claim of acquired
distinctiveness, under Section 2(f) of the Act, in an
intent-to-use application prior to the filing of an
amendment to allege use or a statement of use in the
application.
It is reasonable to assume that applicant’s burden of
proof to establish this claim is the same as in a use-based
application, namely, by a preponderance of the evidence.
Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d
1572, 6 USPQ2d 1001 (Fed. Cir. 1988).
Further, even though use of the applied-for mark in
connection with the goods or services identified in the

3 The Office’s initial policy guidelines implementing the Trademark Law
Revision Act, P.L. 100-667, 102 Stat. 3935, November 16, 1988,
prohibited the filing of a claim of acquired distinctiveness, under
Section 2(f) of the Act, in an intent-to-use application prior to the
filing of an amendment to allege use or a statement of use. [See
Examination Guide No. 3-89, October 11, 1989, and Examination Guide No.
1-90, March 21, 1990.] This policy was expressly changed by
Examination Guide No. 3-90, August 28, 1990, to permit the acceptance
of such filings, and this policy is reflected in the above-noted TMEP
section.
Serial No. 75/013,108
9
intent-to-use application has not been asserted, applicant
must establish that the mark has acquired distinctiveness
in connection with these goods or services. The required
showing is essentially twofold. First, applicant must
establish, through the appropriate submission, the acquired
distinctiveness of the same mark in connection with
specified other goods and/or services in connection with
which the mark is in use in commerce. All of the rules and
legal precedent pertaining to such a showing in a use-based
application are equally applicable in this context. See,
TMEP Section 1212.09 and TMEP sections referenced therein.
Second, applicant must establish, through submission of
relevant evidence rather than mere conjecture, a sufficient
relationship between the goods or services in connection
with which the mark has acquired distinctiveness and the
goods or services recited in the intent-to-use application
to warrant the conclusion that the previously created
distinctiveness will transfer to the goods or services in
the application upon use.
Because we have found no citable precedent on the
issue of establishing acquired distinctiveness of a mark in
an intent-to-use application, we look at the analogous
question of whether, and under what circumstances,

Serial No. 75/013,108
10
distinctiveness of a mark in use in commerce in connection
with certain goods or services transfers to the use of that
same mark in connection with other goods or services.
The case of Bausch & Lomb Inc. v. Leupold & Stevens
Inc., 6 USPQ2d 1475 (TTAB 1988), involved an application to
register a “gold ring” design in connection with telescopic
sights, rifle scopes, handgun scopes, binoculars and
spotting scopes. Opposer contended that the gold ring
device served only as ornamentation. Opposer conceded
that, by virtue of the evidence of record and applicant’s
prior registration for essentially the same mark for rifle
scopes, the gold ring design had acquired distinctiveness
in connection with rifle scopes and handgun scopes. But
opposer contended that the gold ring design had not
acquired distinctiveness in connection with binoculars and
spotting scopes. Applicant conceded that the gold ring
design was not inherently distinctive; and that applicant’s
limited use of the design in connection with binoculars and
spotting scopes was insufficient to establish acquired
distinctiveness for these goods. However, applicant asked
the Board to find that, because the gold ring design had
become distinctive of applicant’s rifle scopes and handgun
scopes, this goodwill and reputation transferred to
applicant’s new products which were sold to the same
Serial No. 75/013,108
11
customers as applicant’s rifle scopes and handgun scopes.
Citing Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401,
222 USPQ 939, 942 (Fed. Cir. 1984), and In re Loew’s
Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 869 (Fed. Cir.
1985), the Board concluded that “[w]hile applicant can rely
to some degree on the distinctiveness which its gold ring
device has achieved vis-à-vis rifle scopes and handgun
scopes to help demonstrate that the gold ring device has
become distinctive of applicant’s related products (i.e.,
binoculars and spotting scopes), applicant must
nevertheless present some direct evidence showing that its
gold ring device has become distinctive vis-à-vis
binoculars and spotting scopes.” The Board held that
“[a]pplicant has simply failed to carry [the] burden [of
establishing that the gold ring device has become
distinctive of applicant’s binoculars and spotting scopes]
in that it has presented no evidence demonstrating that the
public recognizes gold ring devices appearing on binoculars
or spotting scopes as indicating that these goods originate
with, are sponsored by or otherwise associated with
applicant.”
In the case of Levi Strauss & Co. v. Genesco, Inc.,
supra, Levi Strauss argued that its tab design could be
presumed to be distinctive for shoes based on Levi Strauss’
Serial No. 75/013,108
12
registration and use of the tab for pants and jeans. The
court, in affirming the Board’s grant of summary judgment
to Genesco, stated that “[t]he strength of the tab as a
trademark for pants might be relevant if there were
evidence establishing public awareness and transference of
its trademark function to related goods … and Levi’s mere
assertion of the possibility of such transference does not
raise a genuine issue of material fact.”
Similarly, in refusing to find that the geographically
descriptive term DURANGO had become distinctive for chewing
tobacco based solely on applicant’s prior registration of
DURANGO for cigars, the court, in In re Loew’s Theatres,
Inc., supra, stated that “the issue of acquired
distinctiveness is a question of fact,” and “[n]othing in
the statute provides a right ipso facto to register a mark
for additional goods when items are added to a company’s
line or substituted for other goods covered by a
registration.” See also, G.H. Mumm & Cie v. Desnoes &
Geddes Ltd., 917 F.2d 1292, 16 USPQ2d 1635, 1639 (Fed. Cir.
1990) (“We agree with the Board that Appellant Mumm’s mark
is a strong mark for sparkling wines. We do not extend
that view to other products such as beer – Mumm has neither
marketed a beer nor registered its mark for beer.”)
Serial No. 75/013,108
13
We find it reasonable to apply the principles
enunciated in these cases to the factual question of
whether the established distinctiveness of a mark in use in
commerce in connection with specified goods or services
will transfer to applicant’s use of that mark in connection
with the goods or services identified in an intent-to-use
application. Thus, we conclude that applicant must
establish, by appropriate evidence, the extent to which the
goods or services in the intent-to-use application are
related to the goods or services in connection with which
the mark is distinctive, and that there is a strong
likelihood that the mark’s established trademark function
will transfer to the related goods or services when use in
commerce occurs.4 Simply because the mark may not have been
used on or in connection with the goods or services
identified in the intent-to-use application, applicant is
not excused from the need to demonstrate this strong
likelihood of transference in order to establish acquired
distinctiveness of the mark in connection with the goods or
services with which applicant intends to use the mark.5

4 This analysis will vary depending on the facts in each case. We must
consider the degree of relationship between the goods and/or services
and the nature of the mark itself, for example, whether the matter is a
surname, as in the case before us, or whether it is ornamentation, as
in the cited Bausch & Lomb and Levi’s cases.
5 While establishing a likelihood of transference may be more difficult
than in a use-based application where evidence about purchaser
Serial No. 75/013,108
14
We note that Section 1212.09(a) of the TMEP includes
the following additional statement:
In the alternative, the applicant may establish
that due to the fame of the mark, the previously
created distinctiveness for otherwise unrelated
goods or services will transfer to the goods and
services in the application upon use.
This statement incorrectly states, essentially, that if a
mark is famous in connection with specified goods or
services, we can presume that the mark will acquire
distinctiveness in connection with unrelated goods or
services upon use. The mere fact that a mark is famous in
connection with certain goods or services does not
necessarily lead to the conclusion that, upon use,
distinctiveness will transfer to use of the mark in
connection with unrelated goods or services in an intent-
to-use application.6 The owner of a famous mark must still
establish a strong likelihood of transference of the

perception of applicant’s mark is more readily available because the
mark is in use in commerce, there are numerous ways such a showing
could be made, including, but not limited to, results of focus groups
and market surveys of prospective purchasers, and/or evidence regarding
practices in the relevant industry.
6 As stated in the context of a likelihood of confusion analysis, but
equally applicable herein, notwithstanding the fame of a mark, the
owner of a mark is not entitled to preclude the subsequent registration
of the same or similar mark in connection with any and all goods and
services including those completely unrelated to the trademark owner’s
goods. To do otherwise would be to bestow upon a trademark owner a
right in gross which is contrary to the recognized principle of
trademark law that ownership of a mark does not create a “monopoly”
therein. See, Amica Mutual Insurance Company v. R.H. Cosmetics Corp.,
204 USPQ 155 (TTAB 1979) and cases cited therein; Penthouse
International, Ltd. v. Dyn Electronics, Inc., 196 USPQ 251 (TTAB 1977).
Serial No. 75/013,108
15
trademark function to the goods or services identified in
the intent-to-use application. This factually-based
determination will still involve establishing some degree
of relationship between the goods or services for which the
mark is famous and the goods or services in the intent-to-
use application.
2. Applicant’s Claim of Acquired Distinctiveness.
Applying the standards enunciated herein, we begin by
looking at applicant’s claim of acquired distinctiveness in
connection with the goods and services upon which the term
GERSON has been used in commerce. The issue is whether
applicant’s use and promotion of the surname GERSON in
connection with these goods and services over a period of
time has been of such a nature and extent that the primary
significance of the term in the minds of the consuming
public is no longer primarily merely as a surname, but
rather as an indication of the source of such goods and
services. See, In re McDonald’s Corp., 230 USPQ 304 (TTAB
1986); and In re Advanced Spine Fixation Systems, Inc., 25
USPQ2d 1363 (TTAB 1992).
In this regard, applicant has submitted two
declarations and evidence regarding use of the term GERSON.
The first declaration, signed on November 8, 1996, attests

Serial No. 75/013,108
16
to applicant’s use of GERSON in “international commerce” in
connection with medical services offered in Mexico. This
declaration is insufficient to establish that GERSON has
acquired distinctiveness as applicant’s mark for the
obvious reason that it does not assert use of GERSON by
applicant in connection with any goods or services in a
type of commerce lawfully regulated by the U.S. Congress.
See, Section 45 of the Trademark Act, 15 U.S.C. § 1127.
Similarly, the second declaration, signed on December
3, 1997, is insufficient, alone, to establish the acquired
distinctiveness of GERSON as applicant’s trademark or
service mark due to the ambiguities contained therein.
First, it is difficult to discern from this second
declaration exactly what are the goods and services in
connection with which applicant has used the surname GERSON
in commerce. Second, applicant’s statements regarding
offering therapeutic services and publishing therapy
results outside the United States are not relevant to our
consideration. Additionally, applicant has made statements
in the declaration regarding promotional activities in the
United States for his therapy offered in Mexico. However,
the exact nature of the promotional activities is not clear
and, as discussed herein, much of the evidence in this
record, including promotional materials, appears to have
Serial No. 75/013,108
17
emanated from third-party sources. The record does not
establish the relationship between applicant and these
sources to permit us to conclude that these uses inure to
applicant’s benefit.
Applicant does state that through substantially
exclusive and continuous use in commerce for more than five
years, GERSON has become distinctive of applicant’s
“printed publications, tape recordings, educational
seminars and applicant’s services.” The declaration
contains additional statements indicating that applicant
has, since 1977, published a bi-monthly newsletter and
offered conventions and seminars throughout the United
States. Thus, it appears from this language that applicant
relies upon the use of GERSON in connection with printed
publications, tape recordings and educational seminars for
his claim of acquired distinctiveness.
However, while applicant specifies use of his mark in
commerce in this declaration, in view of applicant’s
statement in his prior declaration that his use is in
“international commerce” and his references in this second
declaration to use and promotional activities outside the
United States, it is not clear to us what activities have
been performed in this country. These internal
inconsistencies and ambiguities warrant the conclusion that
Serial No. 75/013,108
18
this declaration, alone, is insufficient to establish
acquired distinctiveness.
Consideration of the evidence in the record raises
additional questions about claims made in the second
declaration. In particular, applicant states in his
declaration that he is “closely affiliated” with two
organizations, the Gerson Institute and the Gerson Research
Organization, and that the mark GERSON is used in the
publishing of a bi-monthly newsletter and the conducting of
educational seminars and conventions. The publications
made of record by applicant, including a copy of a
newsletter, appear to originate with these organizations,
rather than with applicant. Further, one of these
publications from the Gerson Institute contains a reference
to a 1981 convention in San Diego, apparently sponsored by
the Gerson Institute. Applicant has provided insufficient
information about his relationship to these organizations
to warrant the conclusion that these organizations’ uses of
GERSON or “Gerson therapy” inure to applicant’s benefit.
Nor is there any evidence in the record from which to
conclude that there are other publications or educational
seminars clearly originating with, or sponsored by,
applicant upon which applicant’s claim of acquired
distinctiveness rests.
Serial No. 75/013,108
19
Similarly, to the extent that the term “tape
recordings” includes “videotapes,” the only evidence in the
record in this regard is a brief article about a videotape
and a photocopy of the videotape jacket cover indicating
the Gerson Institute as the copyright holder.
We find that applicant’s second declaration,
considered together with the evidence in the record, falls
far short of proving that GERSON has acquired
distinctiveness as applicant’s trademark and service mark
for printed publications, educational seminars, tape
recordings, or any other goods or services.7 Even if we
were to conclude that applicant’s declaration and evidence
clearly establish applicant’s use in commerce of the term
GERSON in connection with printed publications, tape
recordings and educational seminars, it is impossible to
determine whether applicant’s use as indicated translates
into substantial exposure of applicant’s goods and services
to relevant purchasers or substantial sales to a
significant percentage of the relevant market. The record

7 We note, further, that the excerpts submitted by applicant of U.S.
government reports refer to the “Gerson therapy,” which appears to be a
system for treatment of illness, but not to any of the goods or
services upon which applicant states he uses the term GERSON. This
evidence is not persuasive of applicant’s claim that GERSON has become
distinctive of applicant’s goods and services in connection with which
the term GERSON may be in use.
Serial No. 75/013,108
20
contains no evidence of consumer perception or information
linking applicant’s evidence with use in contexts that
would condition consumers to react to or recognize the
designation as an indication of applicant as the source of
such goods and services.
Thus, we conclude that applicant has not established
that the term GERSON has acquired distinctiveness as a mark
identifying applicant as the source of any goods or
services upon which the term may be in use in a type of
commerce which may be lawfully regulated by Congress.
Having reached this conclusion, it is unnecessary to
consider the relationship between the goods and services
upon which the mark has been used in commerce and the
services identified herein. Further, because applicant has
not established acquired distinctiveness of GERSON in
connection with goods and services upon which he has used
the mark in commerce, applicant clearly has not
demonstrated a strong likelihood of transference of any
trademark function in connection with those goods and
services to the intended services identified herein.
In conclusion, we find that GERSON is primarily merely
a surname and applicant has not established that GERSON has
acquired distinctiveness as a service mark in connection
with the services identified in this application.
Serial No. 75/013,108
21
Decision: The refusal to register on the ground that
the applied-for mark herein is primarily merely a surname,
under Section 2(e)(4) of the Trademark Act, and that
acquired distinctiveness thereof has not been established,
under Section 2(f) of the Trademark Act, is affirmed.
C. E. Walters
B. A. Chapman
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board