Lanny Bassham

Trademark Trial and Appeal Board

Feb 20, 2001

No. 75606101 (T.T.A.B. Feb. 20, 2001)

2/20/01 Paper No. 11
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Lanny Bassham, dba Mental Management Systems
________
Serial No. 75/606,101
_______
Lawrence A. Maxham of Baker & Maxham for Lanny Bassham, dba
Mental Management Systems.
Zhaleh S. Delaney, Trademark Examining Attorney, Law Office
101 (Jerry Price, Managing Attorney).
_______
Before Hanak, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Lanny Bassham, dba Mental Management Systems has filed
an application to register the mark MENTAL MANAGEMENT on
the Principal Register for “educational services, namely,
conducting classes, seminars, conferences, and workshops in
the field of personal performance enhancement in
preparation for competition” in International Class 41; and
“counseling in the field of personal performance
enhancement in preparation for competition” in
International Class 42. The application was filed on
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/606101
2
December 11, 1998, based on applicant’s claimed dates of
first use and first use in commerce for both classes of
January 1976.
In the first Office action, the Examining Attorney,
inter alia, refused registration under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. §1052(e)(1), on the grounds
that (i) the mark MENTAL MANAGEMENT is generic of
applicant’s services, and (ii) when used in connection with
applicant’s identified services, is merely descriptive of
them. Following consideration of applicant’s response
thereto, the Examining Attorney made both refusals to
register final.
In support of her refusals, the Examining Attorney had
submitted dictionary definitions of the word “mental” and
“management”; several excerpted stories from the Nexis
database referring to “mental management” or “mental
control”1; and several pages from different websites,
1 We note that many of the Nexis excerpts were repetitive or were
not pertinent as explained below. In this case, some of the
excerpted stories indicate uses of the searched words “mental
management” or “mental control” in relation to unrelated matters
such as, “environ-mental management,” and the escape artist
Houdini. Thus, those are of limited probative value in relation
to applicant’s educational and counseling services. Others are
from wire services, and thus are of limited probative value in
assessing the reaction of the public to the term applicant seeks
to register because evidence from a proprietary news service is
not presumed to have circulated among the general public; and
some of the excerpted stories appeared in foreign publications
(e.g., New Zealand, Australia), and are of limited probative
Ser. No. 75/606101
3
including applicant’s; as well as relying on applicant’s
specimens of record.
Applicant timely appealed. Both applicant and the
Examining Attorney have filed briefs. Applicant did not
request an oral hearing.
In his brief on appeal, applicant framed the issue
before the Board as “The main question for determination by
the Board is whether a mark, the rights to which have been
long established by continuous use, can be destroyed by
casual misuse by careless journalists more than 20 years
later.” (p. 2) Applicant did not mention the genericness
refusal, but argued that the mark is suggestive, and also
specifically argued as follows:
“I. Even assuming that MENTAL
MANAGEMENT could have been deemed to be
descriptive in 1976, the mark had
acquired secondary meaning long before
the present application was filed due
to more than two decades of exclusive
use” (p. 3); and
“V. The effect of secondary meaning.
Where there is undisputed proof of
secondary meaning, some courts do not
even inquire whether or not the mark
was originally descriptive. (McCarthy
11:25, page 11-48). Here there is
value because it cannot be assumed that foreign uses had any
material impact on the perceptions of the public in the United
States. See In re Manco Inc., 24 USPQ2d 1938 (TTAB 1992); and In
re Men’s International Professional Tennis Council, 1 USPQ2d 1917
(TTAB 1986). In addition, some of the excerpts were printouts of
identical stories.
Ser. No. 75/606101
4
indeed undisputed proof of secondary
meaning.” (p. 8)
Applicant then pointed out his use of the mark since
1976 (supported by applicant’s declaration), and “seven
statements by unrelated third parties” evidencing
applicant’s long use and recognition of the mark by the
consuming public.
In her brief on appeal (p. 14), the Examining Attorney
withdrew the refusal based on genericness. It is not
clear, but it appears that the Examining Attorney did not
consider applicant’s arguments or evidence regarding
acquired distinctiveness, explaining that applicant raised
this for the first time in his appeal brief, and that
applicant never made a “formal” and “proper” Section 2(f)
claim.2 To whatever extent she did consider the evidence,
she apparently found it insufficient because she stated
2 There is no requirement in the Trademark Act, the Trademark
Rules of Practice or the TMEP that applicant must file a “formal”
request for registration under Section 2(f). See In re Advanced
Spine Fixation Systems Inc., 25 USPQ2d 1363, footnote 3 (TTAB
1992); In re Advanced Spine Fixation Systems Inc., 25 USPQ2d
1367, 1369 (TTAB 1992); and In re DeSoto, Inc., 172 USPQ 497
(TTAB 1972). In the case now before us, the Examining Attorney
specifically stated in both the first Office action and the Final
Office action that she could not recommend an amendment to
proceed under Section 2(f). The seven signed letters from the
public and applicant’s declaration regarding his use of the mark
since 1976 were submitted prior to applicant’s appeal; and
applicant was clearly asserting a claim of distinctiveness in his
brief.
Ser. No. 75/606101
5
applicant does not have exclusive use3 of the terms “mental
management.”
In his reply brief (p. 3), applicant stated that “As
to the 2(f) showing which was abundantly made, Applicant
hereby formally requests registration under Section 2(f) of
the Act.” (Emphasis in original.) Applicant did not
present his request for registration under Section 2(f) as
an alternative position. Moreover, we find a fair and
reasonable reading of his overall brief and reply brief
substantiate that applicant’s request is not an alternative
request, but rather is a straightforward request to
register his mark pursuant to Section 2(f) of the Trademark
Act.
In view of applicant’s request for registration under
Section 2(f) of the Trademark Act, we need not reach the
descriptiveness issue in this case. We will determine the
sufficiency of applicant’s evidence to establish a prima
facie showing that his mark has acquired distinctiveness.
See In re Capital Formation Counselors, Inc., 219 USPQ 916
(TTAB 1983).
Applicant has the burden of establishing a prima facie
case that his mark has become distinctive. See Yamaha
3 Section 2(f) of the Trademark Act refers to use which is
“substantially exclusive.”
Ser. No. 75/606101
6
International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988). There is no
specific rule as to the exact amount or type of evidence
necessary at a minimum to prove acquired distinctiveness,
but generally, the more descriptive the term, the greater
the evidentiary burden to establish acquired
distinctiveness. See In re Bongrain International
(American) Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir.
1990); and Yamaha, supra at 1008. See also, 2 J. McCarthy,
McCarthy on Trademarks and Unfair Competition, §15:28 (4th
ed. 2000). Therefore, the amount of evidence required to
establish acquired distinctiveness of applicant’s mark
depends on the nature of his mark.
It has long been acknowledged that there is often a
very narrow line between terms which are merely descriptive4
and those which are suggestive, and the borderline between
the two is hardly a clear one. See In re Atavio Inc., 25
4 It is well settled that “a term is descriptive if it forthwith
conveys an immediate idea of the ingredients, qualities or
characteristics of the goods [or services]” (emphasis added).
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978). Moreover, the immediate idea must be conveyed with
a “degree of particularity.” In re TMS Corporation of the
Americas, 200 USPQ 57, 59 (TTAB 1978); and In re Entenmann’s
Inc., 15 USPQ2d 1750, 1751 (TTAB 1990), aff’d, unpub’d, Fed. Cir.
February 13, 1991. Whereas, a mark is suggestive if imagination,
thought or perception is required to reach a conclusion on the
nature of the goods or services. See In re Quik-Print Copy Shop,
Inc., 616 F.2d 523, 205 USPQ2d 505 (CCPA 1980).
Ser. No. 75/606101
7
USPQ2d 1361 (TTAB 1992). Because we believe on this ex-
parte record, that the applied-for mark is on this thin
line of demarcation between suggestive and merely
descriptive, the kind and amount of evidence necessary for
applicant to establish a prima facie showing of acquired
distinctiveness is lessened.
In the case before us there is only minimal evidence
of third-party uses of the words “mental management,” and
from the third-party uses of record, it is clear that the
words “mental management” may refer to various things
related to the mind, including mental stress, mental
control or mental problems, etc. Moreover, applicant has
established over twenty years of use of his mark for his
identified services, and he submitted seven individualized
letters from people who have purchased and utilized his
services, all of them attesting to, inter alia, their
recognition of applicant’s mark, MENTAL MANAGEMENT, as
referring specifically and only to applicant, Lanny
Bassham. One of the seven customers had first attended one
of applicant’s seminars in 1977.
In view of the nature of this mark, we find
applicant’s evidence demonstrates, at least prima facie,
that these words have become distinctive of applicant’s
services.
Ser. No. 75/606101
8
Finally, and in accordance with precedent, we must
resolve any reasonable doubt in favor of applicant in these
kinds of cases. See In re Merrill, Lynch, Pierce, Fenner,
and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1144 (Fed.
Cir. 1987).
Decision: The refusal to register the mark under
Section 2(e)(1) is reversed in view of applicant’s prima
facie showing of acquired distinctiveness, and the
application will proceed to publication with a notation of
applicant’s claim of acquired distinctiveness under Section
2(f).