Institute for Transfor-mation, LLC

Trademark Trial and Appeal BoardJan 30, 2002

No. 75789053 (T.T.A.B. Jan. 30, 2002)

1/30/02 Paper No. 11 CEW UNITED STATES PATENT AND TRADEMARK OFFICE ___________ Trademark Trial and Appeal Board ___________ In re Institute for Transformation, LLC ___________ Serial No. 75/789,053 ___________ Faye L. Tomlinson of Christensen O’Connor Johnson Kindness for Institute of Transformation, LLC. Catherine K. Krebs, Trademark Examining Attorney, Law Office 108 (David Shallant, Managing Attorney). ____________ Before Simms, Quinn and Walters, Administrative Trademark Judges. Opinion by Walters, Administrative Trademark Judge: Institute for Transformation, LLC has filed a trademark application to register the mark A LIBRARY FOR PERSONAL GROWTH for the goods and services identified below1: Computer software for behavioral assessment and prerecorded CD-ROM disks and prerecorded video tapes in the field of behavioral assessment, in International Class 9; 1 Serial No. 75/789,053, filed August 31, 1999, based on an allegation of a bona fide intention to use the mark in commerce in connection with the goods and services in each identified class. THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE T.T.A.B. Serial No. 75/789,053 2 Tutorials, namely, workbooks and books in the field of behavioral assessment, in International Class 16; and Educational services, namely, providing seminars, workshops, conferences, and instructional meetings related to behavioral assessment; in-training consultation services in the field of behavioral assessment; computer on- line global services, namely, providing a web site featuring instruction in the field of behavioral assessment, in International Class 41. The Trademark Examining Attorney has issued a final refusal to register, under Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1), on the ground that applicant’s mark is merely descriptive of its goods and services. 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. The Examining Attorney contends that applicant’s proposed mark “clearly describes a collection of items recorded in print or electronic form, for the purpose of personal growth, and this collection of items can be the subject of educational services, or can be provided in conjunction with educational services.” She states that “one of the major purposes of a library is the personal growth of the user or users,” and that applicant’s goods “as a group can be described as a library, and their Serial No. 75/789,053 3 purpose is to assist the user in achieving personal growth.” In support of her position, the Examining Attorney submitted dictionary definitions of the individual terms “personal,” “library,” and “growth”2; excerpts of articles retrieved from the LEXIS/NEXIS database; a list of results from an Internet search3; and copies of four third-party registrations.4 Following are examples of the excerpts of articles from the LEXIS/NEXIS database: 2 The individual terms are defined as follows: library – 1.a. A place in which literary and artistic materials, such as books, periodicals, newspapers, pamphlets, prints, records, and tapes, are kept for reading, reference, or lending. b. A collection of such materials, especially when systematically arranged. … 4. A collection of recorded data or tapes arranged for ease of use. [The American Heritage Dictionary of the English Language (3rd ed., 1992).] personal – 1. Of, relating to, or affecting a person; private. [Merriam-Webster’s Collegiate Dictionary (10th ed., 1993).] growth – 1. … b. The process of growing. c. Progressive development. [Merriam-Webster’s Collegiate Dictionary (10th ed., 1993).] 3 The list shows two uses of the term “personal growth” in brief descriptions by the Internet search engine of the search results. To more clearly establish exposure of the public to the term and to understand the meaning of the term in context, excerpts of text from actual Internet sites would be better evidence. 4 The following three registrations include the term “personal growth”: Reg. No. 1,823,476 for PERSONAL GROWTH NETWORK, for various services in the field of personal growth, and including a disclaimer of PERSONAL GROWTH; and Reg. No. 1,988,391 for CENTER FOR PERSONAL AND FAMILY GROWTH and Reg. No. 1,827,676 for MANAGING PERSONAL GROWTH, both registered under Section 2(f), and both in human services fields. Serial No. 75/789,053 4 Marti Eicholz – Kirkland educator and personal consultant on behavioral assessment and personal growth signs “Personal Relationships: The Art of Living Together.” [Seattle Post-Intelligencer, July 17, 1998.] What readers found disturbing about the Bowles and Gintis critique was that the values, norms and behaviors being inculcated into students through the schools appeared to be in conflict with the values associated with personal growth and development. [California Management Review, June 22, 1995.] This 90-item test consists of 10 subscales that assess the relationship …, personal growth …, and system maintenance and change … dimensions of a work environment. [Physical Therapy, April 1995.] The library’s vision statement, crafted in 1999, reads, “[GCPL] provides resources and services that inform, inspire, enrich and amaze – as we promote community and personal growth.” [Library Journal, June 15, 2000.] Yes, it was a passion for books that led Andrew Carnegie to establish thousands of public libraries that have nourished millions of Americans’ personal growth and ambition. [The Chronicle of Philanthropy, April 8, 1999.] Hagar is establishing a book and video library for associates to use for personal growth. [ASAP, October 1996.] Members attend monthly workshops, lectures and social events designed to spur professional and personal growth, from business seminars to book discussions. [The Kansas City Star, October 15, 2000.] Oprah Winfrey, shown here at a June seminar on personal growth, … . [Chicago Sun-Times, September 10, 2000.] Serial No. 75/789,053 5 It will start the weekend of Sept. 9 with a two- day seminar on personal growth and development … . [The News-Gazette, August 9, 2000.] Applicant contends that its mark is suggestive, rather than merely descriptive, because “an individual viewing the mark must use some imagination or thought to determine the nature of appellant’s goods and services”; that “personal growth” and “behavioral assessment” are not synonymous or necessarily linked; and that, regardless of the definitions of the individual terms, the mark as a whole is not merely descriptive. Applicant states that “[a]lthough a [behavioral] assessment may give an individual insight into his or her behavior and this in turn may increase the odds that personal growth will actually occur, such growth is not a fait accompli.” The test for determining whether a mark is merely descriptive is whether the involved term immediately conveys information concerning a quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, only that it Serial No. 75/789,053 6 describe a single, significant quality, feature, etc. In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-established that the determination of mere descriptiveness must be made not in the abstract or on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the mark is used, and the impact that it is likely to make on the average purchaser of such goods or services. In re Recovery, 196 USPQ 830 (TTAB 1977). Applicant’s goods, as described, are materials in a variety of media in the field of behavioral assessment. Applicant’s services are educational and consulting services, including web-site instruction, in the field of behavioral assessment. Certainly, applicant’s collection of materials, which it is reasonable to assume may be used in connection with the rendering of its services, constitutes a “library.” Further, the evidence indicates that people are accustomed to associating libraries as a source of information for personal growth. Finally, the evidence establishes that “behavioral assessment” is the name of a particular field of study; that “personal growth” is a very broad term representing a large spectrum of individual growth, particularly intellectual and emotional growth; and that “behavioral assessment” is Serial No. 75/789,053 7 related to, and/or is a means of measuring, “personal growth.” In the present case, it is our view that, when applied to applicant’s goods and services, the term “a library for personal growth” immediately describes, without conjecture or speculation, a significant feature or function of applicant’s goods and services, namely that its products in the field of behavioral assessment constitute “a library for personal growth,” and that its services in the same field pertain to personal growth and complement applicant’s library of materials. Nothing requires the exercise of imagination, cogitation, mental processing or gathering of further information in order for purchasers of and prospective customers for applicant’s services to readily perceive the merely descriptive significance of the proposed mark, A LIBRARY FOR PERSONAL GROWTH, as it pertains to applicant’s goods and services. Decision: The refusal under Section 2(e)(1) of the Act is affirmed.