Maktab Tarighe Oveyssi Shah Maghsoudiv.International Association of Sufism

Trademark Trial and Appeal Board

Jun 3, 1999

No. 92023044 (T.T.A.B. Jun. 3, 1999)

Hearing: Paper No. 26
July 30, 1998 BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 3, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Maktab Tarighe Oveyssi Shah Maghsoudi
v.
International Association of Sufism
_____
Cancellation No. 23,044
_____
Joseph D. Lewis of Cleary, Komen & Lewis, LLP for Maktab
Tarighe Oveyssi Shah Maghsoudi.
Michael B. Newman of Buchman & O’Brien for International
Association of Sufism.
_____
Before Cissel, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Maktab Tarighe Oveyssi Shah Maghsoudi, a non-profit
corporation of California (hereinafter petitioner), has
filed a petition to cancel a registration issued to
International Association of Sufism (hereinafter respondent)
for the mark shown below
Cancellation No. 23044
2
for a “magazine.”1
Petitioner asserts as grounds for cancellation that
since long prior to respondent’s adoption of the term
“SUFISM” for magazines, petitioner has continuously
published and distributed in interstate commerce various
printed publications in the field of Sufism; that petitioner
has an equal or greater right to use the term “SUFISM” in
connection with publications, including magazines; that
respondent has never used the mark in the form it appears in
the registration; that respondent has abandoned the stylized
form of the mark as it appears in the registration; that the
registration is void ab initio because respondent was not
and is not an unincorporated association as asserted in the
application; and that respondent’s mark is merely
descriptive or generic when used in connection with
magazines.2
In its answer respondent has denied the salient

1 Registration No. 1,682,885, issued April 14, 1992, Section 8
affidavit accepted. The claimed date of first use and first use
in commerce is March 25, 1988. The registration issued under
Section 2(f) of the Trademark Act.
2 Regarding the grounds that respondent did not use the mark as
shown in the registration, that respondent abandoned the stylized
registered form of the mark, and that the registration is void
because respondent was not an unincorporated association as
stated in the application, petitioner did not offer any evidence
during trial or any argument in its brief on these issues.
Accordingly, we will not address them.
Cancellation No. 23044
3
allegations of the petition to cancel, and raised the
affirmative defense that “Registrant’s mark has become
distinctive through acquired secondary meaning and serves as
an indication of the source or origin of Registrant’s
goods.”
The record consists of the pleadings; the file of
respondent’s registration; the testimony, with exhibits, of
Karin Heissler, petitioner’s program assistant; the
testimony, with exhibits, of Sulayman S. Nyang, professor of
African studies in the Department of African Studies at
Howard University;3 petitioner’s notice of reliance on a
photocopy of the file of application Serial No. 74/368,720;
petitioner’s notice of reliance on (i) certain of
respondent’s answers to petitioner’s first set of
interrogatories, and (ii) a photocopy of a printed
publication entitled Sufism; and respondent’s notice of
reliance on (i) certain of respondent’s answers to
petitioner’s first set of interrogatories, (ii) a photocopy
of respondent’s request to correct its certificate of
registration4, (iii) photocopies of several issues of
respondent’s magazine, (iv) photocopies of several of
respondent’s advertisements, and (v) a photocopy of “the

3 Respondent did not attend the depositions of Karin Heissler or
Professor Sulayman Nyang.
4 On June 24, 1997, the Patent and Trademark Office acted on
respondent’s correction paper, amending Reg. No. 1,682,885 to
indicate that respondent is an incorporated association.
Cancellation No. 23044
4
uncorrected proof of a future book entitled Essential
Sufism. For rebuttal, petitioner submitted a notice of
reliance on (i) certain of respondent’s answers to
petitioner’s first set of interrogatories, (ii) photocopies
of various publications relating to “Sufism,” and (iii)
photocopies of various encyclopedias. Late in the case (at
the time of filing of petitioner’s reply brief) the parties
stipulated three documents into the record, specifically,
(i) a photocopy of a registration (No. 1,655,795) owned by
Nader Angha, dba Maktab Tarighe Oveyssi ShahMaghsoudi, (ii)
a photocopy of a petition to cancel filed by respondent
against Nader Angha’s Registration No. 1,652,335, and (iii)
a photocopy of a May 29, 1997 letter from respondent’s
attorney to petitioner’s attorney.
Both parties filed briefs on the case and were
represented by counsel at an oral hearing held before the
Board.
I. Preliminary Matters
At the outset, we note that petitioner did not
specifically plead that respondent’s mark had not acquired
distinctiveness, but it is clear that the issue was tried by
the implicit consent of the parties and argued in the
briefs. See Fed. R. Civ. P. 15(b); and TBMP §§322 and
Cancellation No. 23044
5
507.03(b). Accordingly, we deem petitioner’s pleading to be
amended to conform to the evidence.5
Next, we determine petitioner’s objections to two items
offered into evidence by respondent through a notice of
reliance. Specifically, petitioner objects to (i)
respondent’s answers to petitioner’s interrogatory Nos. 9,
15, and 21-25, and (ii) the title page, the publication
page, and the back cover page of an uncorrected proof of a
future book, titled Essential Sufism.
First, regarding respondent’s responses to petitioner’s
interrogatories, Trademark Rule 2.120(j)(5)requires that if
an inquiring party offers into evidence fewer than all of
the responding party’s answers to interrogatories, the
responding party may introduce by notice of reliance other
answers which should in fairness be considered. The rule
requires that the responding party support in writing why it
needs to rely on the additional discovery responses. In
this case respondent included no reason relating to fairness
in its notice of reliance. Later, in response to
petitioner’s objection, respondent merely commented that
petitioner offered fewer than all of respondent’s answers to

5 For the sake of clarity, we note that petitioner contends the
Board may order cancellation of the registration of the mark
SUFISM on any of four basises, namely, (i) that the term is
generic for the involved class of publications, (ii) that the
term is a generic religious term, (iii) that the term is merely
descriptive and lacked secondary meaning at the time of
registration, and (iv) that the term is merely descriptive and
presently lacks secondary meaning.
Cancellation No. 23044
6
petitioner’s interrogatories and “Respondent is introducing
into evidence the answers not offered by Petitioner, which
if absent would make Petitioner’s evidence incomplete and
misleading.” (Respondent’s brief, p. 2). Respondent
restated the rule but did not indicate with any specificity
why these particular answers should in fairness be
considered in this case. See Heaton Enterprises of Nevada
Inc. v. Lang, 7 USPQ2d 1842, footnote 5 (TTAB 1988); and
TBMP §710. Petitioner’s objection is well taken, and we
have therefore not considered this evidence.
Second, we consider respondent’s offer of an
uncorrected proof of a future book. Trademark Rule 2.122(e)
provides, in relevant part, for introduction by way of
notice of reliance on printed publications available to the
general public in libraries or of general circulation among
members of the public or a relevant segment of the public.
Respondent contends that it is not relying on the pages
offered for proof of the truth of the content, but for the
fact that there is a specific reference on the back cover to
respondent. However, respondent offered no authority for
such reliance. It is obvious that an uncorrected proof of a
future book is not a printed publication within the meaning
Cancellation No. 23044
7
of Trademark Rule 2.122(e). Petitioner’s objection is well
taken, and we have not considered this evidence.6
In summary, the Board has not considered respondent’s
answers to petitioner’s interrogatory Nos. 9, 15 and 21 -
25, or the uncorrected proof of the book Essential Sufism.
II. The Parties
Petitioner, whose name translates, in part, to “school
of Sufism”, is an international non-profit
religious/educational corporation, headquartered in San
Rafael, California. Petitioner teaches and practices Sufism
(the mysticism of Islam), through operating centers for the
study of Sufism throughout the United States and the world.
Petitioner is an Iranian Sufi order headed by Nadar Angha,
its 42nd holy teacher, and petitioner traces its lineage to
the advent of Islam in the seventh century A.D. Petitioner
publishes a variety of publications in the field of Sufism,
under titles such as Sufism, Sufism and Wisdom, Sufism and
Islam, Sufism and Peace, and Sufism and Knowledge.
Petitioner also offers cassette tapes such as “The Reality
of Religion-Sufism Inside Islam.” In addition, petitioner
offers programs in meditation, and it conducts community
welfare activities.

6 The Board notes that in petitioner’s rebuttal notice of
reliance, it offered into evidence the title page, the
Cancellation No. 23044
8
Respondent, established in 1983, is an international
non-profit association of various Sufi groups. Also located
in San Rafael, California, respondent is dedicated to the
promotion and advancement of Sufism, the “inner path” or
mystical branch of the Islam religion. Respondent publishes
a variety of books, newsletters and a quarterly journal7;
organizes an annual symposium on Sufism; and conducts
various educational classes, seminars, and courses.
III. The Record
Petitioner submitted several dictionary definitions of
the term “Sufism” including the following as examples:
(1) Term generally applied to mystical
currents in Islam. The word is derived from
suf (Arab., ‘wool’), pointing to the woolen
frocks of Middle Eastern ascetics; an
etymologically incorrect derivation is from
either safa (‘purity’) or from the Greek
sophos (‘wise’). The Harper Collins
Dictionary of Religion (1995);
(2) The mystical heart of Islam, Sufism
insists on total submission to Allah as the
road to ultimate truth. The word sufi
denotes a wearer of wool and indicates belief
in simplicity and poverty. The aim of the
Sufi is to be ‘in the world but not of it.’
There have been many different schools of
Sufism which have been attacked by Islamic
purists. Sufism has inspired poetry, music
and dance.” (Emphasis in original.) Body

publication page, and the table of contents of the published
version of the “uncorrected proof” book.
7 The quarterly journal is the magazine which is sold under the
title “SUFISM,” and is the subject of the registration which is
involved in this cancellation proceeding.
Cancellation No. 23044
9
Mind & Spirit A Dictionary of New Age Ideas,
People, Places, and Terms (1994);
(3) The doctrine of the Sufis8, which
has inspired a mass of symbolical religious
poetry. Funk & Wagnalls Standard Dictionary
of the English Language (1974);
(4) Sufi n. Muslim mystic--Su’fic
adj.; Su’fism n. The Oxford Desk Dictionary
(1995);
(5) A sect of Islamic mysticism,
dating from the eighth century A.D. and
developed chiefly in Persia. The American
Heritage Dictionary of the English Language
(1976); and
(6) Ascetic Islamic mysticism
originating in the 8th century and
developing esp. in Persia into a system of
elaborate symbolism of which the goal is
communion with the deity through
contemplation and ecstasy. Webster’s Third
New International Dictionary (1986).
In addition, the record includes several encyclopedia and
other reference works relating to “Sufism.” The following are
representative samples:
(1) Islam In North America: A
Sourcebook (1992) with a section titled
“Sufism in North America: A Bibliography
“Sufism--General Sources,” and with an
introductory paragraph stating “Of the
numerous books written on Sufism, these
introductory and survey texts were selected
because of their coverage of a variety of
different Sufi groups. There are literally
hundreds of Sufi orders which have been
formed across the Islamic world and as yet
no international guide to them has
appeared, though some excellent work has

8 The term “Sufi” is defined in this Funk & Wagnalls Standard
Dictionary as “A follower of a system of Moslem philosophical and
devotional mysticism, especially in Persia.”
Cancellation No. 23044
10
been done on the major Persian and Indian
orders.”;
(2) Eastern Definitions - A Short
Encyclopedia of Religions of the Orient
(1978) with a section on “Sufi, Sufism”;
(3) Encyclopedia of Mysticism and
Mystery Religions (1982) with a section on
“Sufism”;
(4) 1994 Resource Directory of Islam
in America with a section titled “Sufism-
Spirituality”;
(5) Encyclopedia of American
Religions (1996 fifth edition) listing a
chapter “Middle Eastern Family, Part II:
Islam, Zoroastrianism, and Baha’i--Includes
Islam, Sufism, Black Islam, Zoroastrianism,
Baha’i, The Druze; and
(6) The Concise Encyclopedia of Islam
(1989) with a listing for “Sufism.”
Through the testimony of Karin Heissler, petitioner’s
program assistant, petitioner put into the record copies of
some of its own publications, namely, Sufism, Sufism and
Wisdom, Sufism and Islam, Sufism and Peace, and Sufism and
Knowledge. These publications comprise a four-part lecture
series on Sufism. Petitioner’s brochure about its
organization is titled “Sufism The Way to Oneness.”
Karin Heissler also testified that she conducted a
search of the word “Sufism” at the Library of Congress and
she photocopied the cover, the title page and the Library of
Congress page of publications which included “Sufism” in the
title. Examples of these are Sufism An Account of the
Cancellation No. 23044
11
Mystics of Islam (1950) by A. J. Arberry; Sufism Its
Saints and Shrines (1970) by John A. Subhan; What is Sufism?
(1977) by Martin Lings; Sufism The Mystical Doctrines and
Methods of Islam (1976) by William Stoddart; Jalaluddin
Rumi: Songbird of Sufism (1980) by Roy c. DeLamotte; Sufism
Meaning, Knowledge, and Unity (1981) by Dr. Javad Nurbakhsh;
Talks on Sufism When You Hear Hoofbeats Think of a Zebra
(1987) by Shems Friedlander; Mystical Islam An Introduction
to Sufism (1989) by Julian Baldick; Contemporary Relevance
of Sufism (1993) by Syeda Saiyidain Hameed; Sufism The
Alchemy of the Heart (1993) by Dr. M. I. Waley; Sufism,
Mystics, and Saints in Modern Egypt (1995) by Valerie J.
Hoffman; and Sufism and Islamic Reform in Egypt (1996) by
Julian Johansen.
Ms. Heissler also testified that the Library of
Congress’ publication titled “Subject Headings” lists
“Sufism” as a main heading in the catalog system; and that
the “Subject Guide to Books in Print 1996 - 1997” lists
“Sufism” as a subject heading. Finally, she testified that
she searched the Internet under the word “Sufism” and
retrieved several references, including the following:
“Nimatullahi Sufi Order-principles and practices of the
Nimatullahi Sufi Order. Includes books on Sufism, the Sufi
magazine, poetry and music.”
Cancellation No. 23044
12
Petitioner also took the testimony of Sulayman S.
Nyang, professor of African studies in the Department of
African Studies at Howard University, as an expert on the
Islamic religion. He testified that “Sufism” and “Sufi” are
two forms of the same word in that one is a body of beliefs,
values and methods usually identified with Islam, while the
other is a person who practices the particular religion;
that the term “Sufism” does not describe any one particular
group or organization, but rather is a universal term and
there are “hundreds of different groups around the world who
will claim to be part of the intellectual, more or less,
morality and spiritual movement called ‘Sufism’” (dep. p.
13); and that usually each different Sufi order is named
after the founder of that particular order.
Further, he searched his personal library of over 5,000
books, locating numerous books and publications with the
word “Sufi” or “Sufism” in the title and/or the table of
contents, such as Sufi Thought and Action (1990) assembled
by Idries Shah, Tales from the Land of the Sufis (1994) by
Mojdeh Bayat and Mohammad Ali Jamnia (with chapters titled
“A Brief Look at the History of Sufism” and “Hallaj: The
First Martyr of Sufism”), A Sufi Saint of the Twentieth
Century (1961) by Martin Lings, Sufi Essays (1977) by Shyyed
Hossein Nasr (with chapters titled “Sufism and the
Integration of Man” and “The Spiritual States of Sufism”),
Cancellation No. 23044
13
What is Sufism? (1977) by Martin Lings (with chapters titled
“The Originality of Sufism,” “The Universality of Sufism”
and “Sufism throughout the Centuries”; Scholars, Saints, and
Sufis - Muslim Religious Institutions Since 1500 (1972)
edited by Nikki R. Keddie; and Sufi Mystics of the Niger
Desert (1990) by H. T. Norris.
Petitioner submitted evidence of numerous third-party
uses of the term through a notice of reliance on
publications such as, Sufism I (1981), Sufism II (1982),
Sufism III (1985), and The Psychology of Sufism (1992), all
by Dr. Javad Nurbakhsh; “Threshold - A Journal of Sufism”
published by the Threshold Society in Brattleboro, Vermont;
An Introduction to Sufism (1990) by Titus Burckhardt; Sufism
(1983) by Dr. Ronald Grisell (with the two major portions of
the book, as shown by the table of contents, titled “The
Theory, Practices and Origins of Sufism” and “The Centers of
Sufism: Past and Present”); and Essential Sufism (1997)
edited by James Fadiman and Robert Frager.
Respondent put into evidence (by means of a notice of
reliance) copies of its own publication and advertisements
of its magazine, including respondent’s catalog,
respondent’s web site, and programs from respondent’s annual
“Sufism Symposium.”
Cancellation No. 23044
14
IV. Genericness
Section 14(3) of the Trademark Act, 15 USC §1064(3),
permits cancellation if the “registered mark becomes the
generic name for the goods or services, or a portion
thereof, for which it is registered... A registered mark
shall not be deemed to be the generic name of the goods or
services solely because such mark is also used as a name of
or to identify a unique product or service. The primary
significance of the registered mark to the relevant public
rather than purchaser motivation shall be the test for
determining whether the registered mark has become the
generic name of goods or services on or in connection with
which it has been used.”
The test for determining whether a designation is
generic, as applied to the goods in the registration, turns
upon how the term is perceived by the relevant public. See
Loglan Institute Inc. v. Logical language Group, Inc., 962
F.2d 1038, 22 USPQ2d 1531 (Fed. Cir. 1992). Determining
whether an alleged mark is generic involves a two step
analysis: (1) What is the genus of the goods or services in
question? and (2) Is the term sought to be registered
understood by the relevant public primarily to refer to that
genus of goods or services? See H. Marvin Ginn Corporation
v. International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986); and In re Web
Cancellation No. 23044
15
Communications, 49 USPQ2d 1478 (TTAB 1998). In fact, in the
H. Marvin Ginn case, supra at 531-532, the Court refined the
above-stated test for determining the genericness of a
magazine title to be “First, what is the class of
publications or magazines at issue? Second, is the title
understood by the relevant public to refer primarily to that
class of magazines?”
Evidence of the public’s understanding of a particular
term may be obtained from any competent source, including
direct testimony of consumers, consumer surveys, listings in
dictionaries, trade journals, newspapers, and other
publications. See Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551 (Fed. Cir. 1991); In re Merrill, Lynch,
Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141
(Fed. Cir. 1987); and In re Northland Aluminum Products,
Inc., 777 F.2d 1566, 227 USPQ 961 (Fed. Cir. 1985). The
party asserting genericness must prove its claim by a
preponderance of the evidence. See Magic Wand Inc., supra,
at 1554.
The key consideration in determining genericness is the
relevant public’s understanding of the term. That is, do
the members of the relevant public understand or use the
term to sought to be protected to refer to the genus of
goods or services in question. In this case, the majority
of persons coming into contact with respondent’s publication
Cancellation No. 23044
16
will be adherents of Sufism. Thus, the relevant public here
consists of adherents of Sufism. See Stocker v. General
Conference Corp. of Seventh-day Adventists, 39 USPQ2d 1385,
at 1394 (TTAB 1996).9
Petitioner’s evidence of dictionary definitions,
encyclopedic excerpts, third-party publication titles (many
including chapters or sub headings with the term “Sufism”),
book catalog headings, and petitioner’s own use of the term
“Sufism” on its publications demonstrates that the term is a
reference to a particular class of publications. We note
also the testimony of petitioner’s expert witness, but we
acknowledge that the test is not the understanding of an
expert, but rather that of the relevant public.
In addition, in answering an interrogatory about the
subject matter of its magazine published under the mark
SUFISM, respondent answered as follows: “The subject matter
of the magazines sold by Respondent under Respondent’s mark
is Sufism, Islam, and various other subjects of spiritual,
religious and metaphysical significance.” (Respondent’s
answer to petitioner’s interrogatory No. 8). Respondent

9 We note that petitioner stated at page 9 of its brief that “The
relevant public in this case comprises adherents of Sufism.”
Respondent did not contest this statement, and appears to agree
because respondent made the following statements in its brief:
“The relevant public, the magazine’s readers, purchasers and
subscribers...” (page 6), “...Respondent’s quarterly journal or
magazine it publishes for its members, readers, purchasers and
subscribers..." (page 7), and “...Respondent’s publication is
directed to a relatively small and informed group of persons
interested in Sufism and related subjects...” (page 9).
Cancellation No. 23044
17
sponsors a Sufism symposium each year, and submitted the
programs from three such symposiums, which are titled as
follows: (i) “1995 Annual Sufism Symposium A Weekend of
Unity & Self Discovery,” (ii) “Third Annual Sufism Symposium
1996 Expressions of Beauty and Sufism,” and (iii) “Sufism
Symposium ’97 Sufism: An Old Tradition for A New World.”
Respondent’s web site includes click-on topic buttons
including “About Sufism” and “Annual Symposium.”
There is clear evidence showing the term “Sufism” used
as all or part of the names of other journal publications,
including “Threshold - A Journal of Sufism” from the
Threshold Society, and petitioner’s own works titled
“Sufism”, “Sufism and Knowledge”, “Sufism and Wisdom” and
“Sufism and Islam.” In addition, there is ample evidence of
many published works by third parties in which the title
consists in whole or in principal part of the term “Sufism.”
Moreover, the evidence establishes use of the term “Sufism”
on publications from the 1940s to the present day.
Based on this evidence, we find that the term “Sufism”
names a class of publications on “Sufism.” We also find
that the relevant public --the adherents of Sufism--
understands the term to refer to the publications. That is,
the primary significance to the relevant public of the term
“Sufism,” used in connection with publications, is that it
is a class of publications on the topic of Sufism. The
Cancellation No. 23044
18
members of the relevant public, i.e., the adherents of
Sufism, who would be interested in a magazine about “Sufism”
would understand the term to refer to the type of magazine,
and not to the source of the magazine. “Sufism” names a
class of publications devoted to the history, writings,
teachings, poetry, and other matters related to “Sufism.”
See Reese Publishing Company, Inc. v. Hampton International
Communications Inc. et al., 620 F.2d 7, 205 USPQ 585 (2nd
Cir. 1980)(holding VIDEO BUYER’S GUIDE to be generic for a
magazine).
Respondent’s reliance on the case of In re Waverly
Inc., 27 USPQ2d 1620 (TTAB 1993), does not persuade us that
we must reach a different result herein. The Waverly case
was an ex parte appeal of a refusal to register, and was
thus based on an ex parte record, where doubt on the issue
of genericness is resolved in favor of the applicant.
Further, in that case, the applicant had established 70
years of substantially exclusive and continuous use of the
term “MEDICINE” on a journal published periodically.
That situation is easily distinguished from the one
established by this inter partes record, where plaintiff’s
burden of proof is the preponderance of the evidence and
there is no resolution of doubt in respondent’s favor.
Also, here petitioner submitted ample evidence of the
meaning of the term “Sufism,” as well as evidence of
Cancellation No. 23044
19
petitioner’s own and numerous third-party uses of the term
“Sufism” on publications. Respondent has used the term only
a few years, and has submitted no evidence of consumer
recognition of the involved term as a trademark.
Based on the record before us, we hold the term
“Sufism” is generic for a class of publications.
Further, this record clearly establishes that the term
“Sufism” is a generic term for a set of beliefs and that it
should be available for use by all Sufi groups or orders.
However, we disagree with petitioner’s assertion that
pursuant to the Stocker case, supra, a separate, independent
ground for cancellation results when a term is the generic
name for a set of religious beliefs. The Stocker case
involved a petition to cancel registrations for, inter alia,
“religious books, magazines, pamphlets, newsletters,
brochures, encyclopedias, dictionaries, commentaries,
fliers, bulletins, yearbooks, booklets and bibles”;
“educational instruction services in academics at grade
school, high school and college level”; and “conducting
religious observances and missionary services.” Thus, in
that case, the question of the genericness of the term
SEVENTH-DAY ADVENTIST as the name of a set of religious
beliefs was determined, not in the abstract, but in
connection with the involved goods and services (and of
course, on the basis of the record presented by the
Cancellation No. 23044
20
parties). Conversely, in the case now before the Board,
respondent’s only involved goods are magazines. There is no
registration of the term “Sufism” for educational, religious
or missionary services before us.10
Petitioner’s interpretation of the Stocker case goes
well beyond the holding of that case. The Court of Appeals
for the Federal Circuit has clearly instructed that the
question of genericness is to be determined only in specific
relation to the involved goods or services. See H. Marvin
Ginn, supra. The grounds for cancellation are found in
Section 14 of the Trademark Act. The Stocker case does not
create an independent additional ground for cancellation
outside of the Trademark Act whenever an involved term is a
religious term, regardless of the nature of the involved
goods or services.
V. Descriptiveness / Acquired Distinctiveness
Having determined that the term “Sufism” is generic, we
necessarily find that the involved registration must be
cancelled. However, in the event it should be determined on
appeal that the term is not generic, and for completeness of
the record, we now consider petitioner’s second basis for

10 Respondent’s assertion that the question of whether a term is
generic must be evaluated in relation to the goods and/or
services is well taken (Brief, page 11), but we note that
respondent acknowledged the term “Sufism” “has some religious
resonance.” (Respondent’s brief, p. 11).
Cancellation No. 23044
21
its petition to cancel, namely that the term “Sufism” is
merely descriptive, and lacked acquired distinctiveness
either at the time of registration (April 1992) and/or
currently lacks acquired distinctiveness.
Section 2(e)(1) of the Trademark Act, 15 USC
§1052(e)(1), precludes registration of a mark on the
Principal Register if it merely descriptive of applicant’s
goods or services. In this case, respondent affirmatively
and clearly amended its application to seek registration
pursuant to a claim of acquired distinctiveness, and the
resulting registration issued under Section 2(f) of the
Trademark Act.11 By its actions respondent conceded that
its applied-for mark was merely descriptive. See Yamaha
International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
1572, 6 USPQ2d 1001 (Fed. Cir. 1988); and Congloleum
Corporation v. Armstrong Cork Company, 218 USPQ2d 528, 535
(TTAB 1983).
Thus, the only remaining issue before us (assuming the
term is not generic) is whether respondent’s asserted mark
had acquired secondary meaning at the time of registration
or has done so by now. See Neapco Inc. v. Dana Corp., 12
USPQ2d 1746 (TTAB 1989)(involving a petition to cancel a

11 In response to the Examining Attorney’s refusal to register on
the ground of mere descriptiveness, respondent submitted a
statement that “Applicant believes that the mark has become
distinctive of the Applicant’s goods in commerce and desires to
Cancellation No. 23044
22
registration not yet five years old based on mere
descriptiveness and lack of secondary meaning. In that
case, the Board stated that even when the petition to cancel
was being resolved, if the registered mark possessed
secondary meaning, the petitioner would nonetheless prevail
if it established that as of the time of registration the
mark had been merely descriptive and had been devoid of
secondary meaning.) See also, Kasco Corp. v. Southern Saw
Service Inc., 27 USPQ2d 1501 (TTAB 1993).
While petitioner bears the initial burden to establish
prima facie that respondent did not satisfy the acquired
distinctiveness requirement of Section 2(f), the ultimate
burden of persuasion under Section 2(f) on the issue of
acquired distinctiveness is on respondent. In the Yamaha
case, at 1006, supra, the Court stated as follows:
Yamaha strenuously asserts in its
brief on appeal that the ultimate burden
of persuasion under Section 2(f) on the
issue of acquired distinctiveness is on
Hoshino as applicant. We completely
agree. “The burden of proving secondary
meaning is on the party asserting it,
whether he is the plaintiff in an
infringement action or the applicant for
federal trademark registration.” 1
Gilson, Trademark Protection and Practice
§2.09, at 2-72 (1987). As one of our
predecessor courts stated in In re
Hollywood Brands, Inc., 214 F.2d 139,
140, 102 USPQ 294, 295 (CCPA 1954), when
reviewing the refusal of a registration
sought under Section 2(f), “[t]here is no

amend its application under Trademark Act Section 2(f), 15 U.S.C.
Section 1052(f).”
Cancellation No. 23044
23
doubt that Congress intended that the
burden of proof [under Section 2(f)]
should rest upon the applicant for
registration.”
The plaintiff must go forward with a prima facie case,
but once the plaintiff has established its prima facie case,
then the “final” burden, that of going forward with evidence
to overcome the plaintiff’s prima facie case and establish
acquired distinctiveness by at least a preponderance of the
evidence, is on the defendant. See the Yamaha case, at
1006-1007, supra. 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 the Yamaha case, at 1008, supra.
See also, 2 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition, § 15:28 (4th ed. 1999).
In order to acquire secondary meaning, the statutory
language in Section 2(f) requires that the mark must have
“become distinctive of the applicant’s goods in commerce.”
Respondent essentially contends as follows:
“Consequently, the sufficiency of
Respondent’s evidences should be evaluated,
not as Petitioner suggests in its brief
based on the individual quantities of sales
or promotional expenditures (Pet. Brief at
15), but on the effectiveness of the
evidence presented, taken as a whole. In
Cancellation No. 23044
24
other words, the whole being greater than
the sum of its parts should be considered,
especially in light of the overall effect.
As discussed above, respondent is able to
overcome any claim of genericness because
of the truly limited category of goods
Respondent has applied the mark to, namely,
magazines (as opposed to the far broader
category of religion or beliefs or
philosophy). For this very same reason,
and in view of the very small potential
audience for the magazines, the relatively
low levels of circulation, sales, and
advertising and promotional expenditures
have been sufficient, in this case, to
establish secondary meaning and
distinctiveness of the mark. In addition,
the absence, as mentioned above, of any
real competition in the field of magazine
publications primarily dedicated to the
subject matter of Sufism also tends to
lower the threshold for establishing
distinctiveness. In an uncrowded field
with a limited esoteric and interested
potential audience, far less advertising
and promotion is required than in a highly
competitive mainstream industry to the
(sic) to make a magazine title distinctive.
(Respondent’s brief, p. 16-17---Emphasis in
original).
Respondent’s argument about the whole being greater
than the sum of the parts is a bit metaphysical or abstract.
We must concern ourselves with a practical application of
trademark law relating to acquired distinctiveness of the
term. We agree that the issue is the achievement of
acquired distinctiveness, not the effort expended to do so.
But even if we accept respondent’s argument that its sales
and advertising numbers need not be large because it has a
very limited audience for its magazine, nonetheless
Cancellation No. 23044
25
respondent has not shown that even its small audience of
consumers perceives the term “Sufism” as respondent’s
trademark.
We consider first the question of the sufficiency of
respondent’s evidence supporting its claim of
distinctiveness as of the time of registration. The only
evidence in the record at the time of registration was that
filed by the then applicant in response to the Examining
Attorney’s refusal to register the mark. In a response
filed June 24, 1991, respondent’s attorney offered, in toto,
the following statement and evidence:
In support of Applicant’s amendment
[under Section 2(f)], Applicant would like the
Patent and Trademark Office to consider the
following:
a. Applicant has used the mark since
March 25, 1988 when the first issue of
Sufism was published and shipped in
interstate commerce.
b. Applicant has expended
approximately $5000 on advertising,
promotion, marketing, and distribution of
Sufism.
c. Sufism is distributed in
virtually every state of the United
States and throughout the world by
subscription and at bookstores and
newsstands. Sufism has eight
distributors in the United States.
d. Sufism’s current circulation is
approximately 5000 copies (including
average subscriptions of approximately
500 per issue).
Cancellation No. 23044
26
e. The total dollar sales volume has
averaged approximately $9000 per issue.
f. Sufism is promoted widely by (i)
advertisements in other publications in
the metaphysical field such as Book
People, Quest, Shaman’s Drum, Meditation,
Creation, Critique, and Common Ground and
(ii) distribution of brochures or flyers
at shows, fairs, expositions, or other
similar events. Samples of these
advertisements and flyers are enclosed.
Nine samples of advertisements and flyers were
submitted by respondent. The Examining Attorney accepted
this showing and approved the application for publication
under Section 2(f).
Respondent (as applicant) had submitted no affidavits
from officers or knowledgeable employees of respondent
association regarding its use of the term and the nature and
extent of such use. Respondent also had submitted no
affidavits from members of the purchasing public regarding
consumer perception of the term. Rather, respondent made of
record only the statement of respondent’s attorney that the
mark had been in use for three years, with $5000 spent on
“advertising, promotion, marketing and distribution”12; that
the magazine was sold worldwide with approximately $9000 in
sales per issue; and that the circulation of the magazine
was approximately 5000 copies per issue. None of the

12 Based on respondent’s attorney’s wording in his statement, we
must assume that the $5000 figure is the total for all three
years for all of the named functions.
Cancellation No. 23044
27
figures (sales, advertising and distribution costs, or
circulation) were specified to relate to the United States.
We find that this evidence is insufficient to establish that
the term “Sufism” had acquired distinctiveness under Section
2(f) of the Trademark Act at the time of registration in
April 1992.
We turn now to the question of respondent’s attempt to
show that the term has by now acquired distinctiveness.
Respondent’s submission during prosecution of the
application, plus respondent’s submission during trial of
copies of the front cover of several issues of its quarterly
magazine, as well as several advertisements of its magazine
dating from September 1988 through spring 1997, are simply
not sufficient. At trial, respondent submitted no evidence
of consumer recognition of the term “Sufism” as respondent’s
trademark for its magazine. Likewise, there is no testimony
from officers or other knowledgeable employees of respondent
regarding circulation or sales. The figures respondent made
of record during the ex parte prosecution of its then
application were general in nature and some were not even
specific to use of the involved term in the United States.
During this inter partes proceeding, respondent, in
answering petitioner’s interrogatories, (and as made of
record by petitioner), stated that it “does not have precise
numbers available but it estimates that average annual sales
Cancellation No. 23044
28
in dollars of the magazine sold in the United States is
$5200” (Answer to interrogatory No. 11); that it “does not
have precise numbers available but it estimates that average
annual advertising expense in dollars for the magazines is
$1500” (Answer to interrogatory No. 12-Petitioner’s
interrogatory included the limiting terminology “in the
United States”); that it “does not have precise numbers
available but it estimates that average circulation per
issue of the magazine is 625 copies” (Answer to
interrogatory No. 13--there was no limitation to the United
States in either the question or the answer, but we will
assume this number refers to the United States); and that it
“does not have precise numbers available, but it estimates
that average number of copies of magazines sold under
Respondent’s mark were distributed as follows: (a) by paid
subscription: 345, (b) other sales of copies: 185, and (c)
copies that were given away: 95” (Answer to interrogatory
No. 14--again there was no limitation to the United States
in either the question or the answer, but we will assume
these numbers refer to the United States).
Moreover, in this case, petitioner has submitted
significant evidence that numerous third-party publications
use the term “Sufism” as the title or part of the title
thereof. Many of them are dated prior to respondent’s
Cancellation No. 23044
29
claimed dates of first use and continue through to the
present.
Thus, on the record before us, it is clear that
purchasers continue to be confronted with numerous
independent third-party uses of the term “Sufism” as the
title of or part of the title of various publications, with
virtually no evidence that the public recognizes the term as
respondent’s trademark. Hence, respondent’s claim of
acquired distinctiveness cannot be successful because the
distinctiveness on which purchasers rely is lacking. See
Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ
939 (Fed. Cir. 1984).
Given the highly descriptive nature of “SUFISM” for a
magazine about Sufism, we would need to see a great deal
more evidence than respondent has submitted in this case in
order to find that the term has become distinctive as the
indicator of a single source for such a magazine. See In re
Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997); In re
Leatherman Tool Group Inc., 32 USPQ2d 1443 (TTAB 1994); In
re Medical Disposables Co., 25 USPQ2d 1801 (TTAB 1992); and
Flowers Industries Inc. v. Interstate Brands Corp., 5 USPQ2d
1580 (TTAB 1987).
In summary, we hold that the term “Sufism” is generic
for magazines, but even if the term is ultimately found not
generic, the term is merely descriptive with insufficient
Cancellation No. 23044
30
proof to establish acquired distinctiveness under Section
2(f).
Cancellation No. 23044
31
Decision: The petition to cancel is granted.
R. F. Cissel
P. T. Hairston
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board