M.S.B.H. Alliance, LLCv.Kabbalah Centre International, Inc.

Trademark Trial and Appeal BoardJul 29, 2013

No. 91201431 (T.T.A.B. Jul. 29, 2013)

Goodman Mailed: July 29, 2013 Opposition No. 91201431 M.S.B.H. Alliance, LLC v. Kabbalah Centre International, Inc. Before Taylor, Bergsman, and Kuczma, Administrative Trademark Judges. By the Board: Applicant Kabbalah Centre International, Inc., seeks to register in standard character form KABBALAH RED STRING for “Jewelry, namely, string that is tied around the wrist of the user to form a bracelet” in International Class 14.1 Opposer, M.S.B.H. Alliance, LLC, has opposed registration on the grounds that “Kabbalah red string” is generic, and if not generic, “Kabbalah red string” is merely descriptive. Now before the Board is opposer’s motion for summary judgment, filed, June 20, 2012, on the grounds for 1 Application Serial No. 85182847, filed November 22, 2010 under Section 1(a), claiming dates of first use and use in commerce of March 19, 2004; RED STRING disclaimed. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91201431 2 opposition, and applicant’s cross-motion for summary judgment on the grounds for opposition and on the basis of acquired distinctiveness, filed February 20, 2013.2 The motions are fully briefed. Opposer’s evidence on summary judgment consists of the declaration of its counsel, Brad D. Rose, and accompanying exhibits. Opposer’s evidence in reply and in response to applicant’s cross-motion consists of the declaration of opposer’s counsel, Nicole E. Kaplan, and accompanying exhibits. Applicant’s evidence in response to opposer’s motion for summary judgment and on its cross-motion consists of the declaration of Lisa D. Kessler, head of legal and business affairs for applicant, and accompanying exhibits; and the declaration of its counsel, Peter E. Nussbaum, and accompanying exhibits. Applicant’s evidence on reply consists of the second declaration of counsel Peter E. Nussbaum, and accompanying exhibits. Summary judgment is an appropriate method of disposing of cases in which there are no genuine disputes of material fact, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(a). A party moving 2 On June 27, 2012, the Board issued an order deferring the briefing and consideration of the motion for summary judgment. The Board then reset applicant’s time to respond to the motion for summary judgment on January 23, 2013. Opposition No. 91201431 3 for summary judgment has the burden of demonstrating the absence of any genuine dispute of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). On summary judgment, the evidence must be viewed in a light favorable to the non-moving party, and “all justifiable inferences are to be drawn” in the nonmovant's favor. See Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993). Genericness A mark is a generic name if it refers to the class, genus or category of goods and/or services on or in connection with which it is used. See In re Dial-A- Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001). The test for determining whether a mark is generic involves a two-step inquiry. First, what is the genus (category or class) of goods or services at issue? Second, is the term sought to be registered understood by the relevant public primarily to refer to that genus (category or class) of goods or services? H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986). With regard to the first part of the genericness inquiry, the evidence of record establishes that there is Opposition No. 91201431 4 no genuine dispute of material fact that the category or class of goods is the wording used in the application to identify the goods. See Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) citation omitted (“… a proper genericness inquiry focuses on the description of services [or goods] set forth in the [application or] certificate of registration”). In this case, the broad general category of goods is jewelry and more particularly, bracelets.3 With regard to the second part of the inquiry, neither party has identified the relevant public. The “relevant public” for goods sold in the marketplace is limited to actual or potential purchasers of the goods. Magic Wand, 19 USPQ2d at 1552-53. “Whether a term is generic is determined by actual common usage.” In re Deutsche Airbus GmbH, 224 USPQ 611, 614 n. 12 (TTAB 1984). A finding of genericness requires “a substantial showing . . . that the matter is in fact generic” and that such showing “must be based on clear evidence of generic use.” In re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1997). 3 Applicant states in its brief on p. 14 “The only reasonable definition of the subject genus of goods would be ‘bracelets’ or ‘red string bracelets.’” See also applicant’s identification of goods, application Serial No. 85182847. Opposition No. 91201431 5 Evidence of the relevant public's understanding of a term may be obtained from any competent source including consumer surveys, dictionary definitions, newspapers and other publications. In re Northland Aluminum Products, 777 F.2d at 1559, 227 USPQ 961, 963 (Fed. Cir. 1985). Opposer has provided evidence to show various uses of the term “Kabbalah red string” on Internet websites to support its assertion that the relevant public uses the term “Kabbalah red string” in a generic manner. Web-based information provides evidence of consumer perception of a term. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (online sources are probative of how a term would be perceived). These exhibits include examples of use of “Kabbalah red string” on third-party Internet websites (emphasis added): The Kabbalah Red String has been used for centuries for protection from this ill will. . . . You can have a Kabbalah Red String for just pennies.” (Tolentino, J.C., How To Tie a Kabbalah Red String, ehow.com). The Kabbalah red string also has a strong connection to Rachel, one of the matriarchs of the Jewish religion. . . . The Kabbalah red string itself is meant to be wrapped seven times around the tomb where Rachel lies buried, before being cut into several pieces, each one thus becoming a Kabbalah red string bracelet. . . .” (www.zoharebook.com). Opposition No. 91201431 6 In helping you achieve all your future plans, I have a little solution, which is above everything, fashionable – the kabbalah red string or the kabbalah bracelet. (Ghintare, S., Is the Kabbalah Red String or Bracelet The New Fashion Trend of 2013? Why Are We Wearing It? January 5, 2013, http://thefashiontag.wordpress.com). There are some serious stories about having the famous Kabbalah Red String bracelet. . . . In the market the said Kabbalah Red String bracelet can be sold [sic] at least $15.00 a pop, that’s pretty much expensive for a thin string. So let me give you a hand on trying to make your own Kabbalah Red String bracelets without spending $15 bucks on it. (Magcale, Jron, Make Your Own Kabbalah Red String Bracelet, November 4, 2008, www.turks.us). A Kabbalah red string bracelet has strung to it, various good luck charms like Hamsa hand, Star of David, coins in gold and silver with Kabbalistic and Hebrew names of gods, Judaica charms, evil eye stones and others . . . . (Baldwin, Errol, Wear Kabbalah Red String bracelet to fulfill all your dreams & aspirations. March 10, 2011, republished at www.zimbio.com). As of today many powerful and well-to-do people throughout the world prefer wearing kabbalah red string bracelets instead of precious stones and gaudy jewelry. (Kabbalah Red String bracelets, www.kabaltalisman.com). Opposer’s evidence also includes use by applicant’s competitors i.e., internet sellers providing competing goods. “[T]he cases have recognized that competitor use is evidence of genericness,” BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 35 USPQ2d 1554, 1558 (Fed. Cir. 1995), and that “evidence of competitors’ use of particular words as the name of their goods [or services], is of course Opposition No. 91201431 7 persuasive evidence that those words would be perceived by purchasers as a generic designation for the goods [or services.]” Phillip Morris Incorporated, et. al. v. Williamson Tobacco Corporation, 230 USPQ 172, 176 (TTAB 1986). The following examples of usage by Internet retailers are illustrative (emphasis added): www.jewelrythatsunique.com advertises Kabbalah Red String Authentic Red String Bracelet for Protection from Evil Eye. www.amuletgifts.com states Kabbalah jewelry is inspired by the well known Kabbalah Red String which according to ancient tradition was wound around the marker on Rachel’s grave seven times and is worn to receive spiritual guidance and blessings . . . . and advertises Four Names Kabbalah Red String Bracelet. www.israel-depot.com advertises Authentic Blessed Kabbalah Red String Bracelet. www.amazon.com advertises Kabbalah Red String Bracelet with Hamsa Hand. www.holyland-shop.com states What are the Benefits of Wearing the Kabbalah Red String? and advertises 5 (FIVE) KABBALAH RED STRINGS (Bracelet). www.androship.com advertises Kabbalah Red String Hamsa Hand Silver Colour Bracelet. www.kabbalahredbracelet.com advertises Kabbalah Red String Bracelet with a Silver Chai and Kabbalah Red String Bracelet with Silver Hamsa with an engraved Eye, among others. Opposition No. 91201431 8 www.yourholylandstore.com advertises, among others, Kabbalah Red String Love Bracelet, Kabbalah Red String Macrame Bracelet . . . www.luckycharmsusa.com states Kabbalah red string bracelet is considered as a powerful talisman against negative influences and energies. . . . the Kabbalah red string bracelet posses unique powers to avert envy, hatred . . . . We have Kabbalah red string bracelet, Gold plated with Hamsa, Kabbalah red string bracelet with sterling name of God in Hebrew, Kabbalah red string bracelet gold plated with blue lucky eye and red lucky eye. . . . “ In this case, there is no genuine dispute of material fact that opposer’s evidence establishes that the relevant public perceives “Kabbalah red string” to be a type of bracelet and not a source indicator and that parties selling products that compete with applicant’s goods use “Kabbalah red string” in a generic manner for bracelets.4 Applicant argues that KABBALAH RED STRING was adopted as a trademark by applicant to be used in connection with applicant’s bracelet. However, applicant's intent to exclusively appropriate the terms “Kabbalah red string” as its trademark is not at issue. The issue is whether “Kabbalah red string” is recognized as a trademark for bracelets by the relevant public, not by the company seeking to register the mark. 4 Despite the capitalization of the initial letters in certain examples, we find there is no genuine dispute that these uses are generic. Opposition No. 91201431 9 To raise a genuine dispute, applicant contends that KABBALAH RED STRING is not generic since it has been using the term for 9 years and opposer has provided no evidence of use of the phrase by others prior to applicant’s first use. However, even if applicant was the first user of a generic term or phrase, as it claims, that does not entitle applicant to register such a term or phrase as a mark. See In re National Shooting Sports Foundation, Inc., 219 USPQ 1019, 1020 (TTAB 1983). We further note that this is not a case where there is a complete absence of competitor use after 9 years of use by applicant. Cf. In re Trek 2000 International Ltd., 97 USPQ2d 1106, 1113 (TTAB 2010) (“complete absence of competitor use after ten years of these products being on the market tends to indicate that THUMBDRIVE has not fully entered the public domain”). Applicant also argues that there are other ways a competitor or third party could refer to the sale of a red string bracelet generically without using “Kabbalah red string” as “[n]o third-party or competitor who was selling a bracelet made from red string would have a substantial need to use the wording ‘Kabbalah red string’ to describe their product. . . .” Opposition No. 91201431 10 While the competitive need to use a term may be probative of whether the term is generic, the correct inquiry is whether the relevant public would understand the term to be generic. In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009). To the extent competitor need is relevant, opposer’s evidence shows that there is no dispute that competitors (i.e., those selling competing goods) use “Kabbalah red string” as a generic term for the product, and have a competitive need to do so. Moreover, the fact that applicant identifies its goods by a generic term where other generic terms are also available to its competitors does not mean that applicant can limit its competitor’s use of the term. See In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718, 719 (CCPA 1970) (Rich, J., concurring)[“Because one merchandiser has latched onto one of the descriptive terms does not mean it can force its competitors to limit themselves to the use of the others, which appellant, it seems to me is trying to do here. All of the generic names for a product belong in the public domain.”] (emphasis in original). In addition, although other terms such as “red string bracelet” “red string jewelry” “red bracelets” may be used to identify applicant's type of product, it is well settled that there Opposition No. 91201431 11 can be more than one generic term to name a product. Roselux Chemical Co., Inc. v. Parsons Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627, 632 (CCPA 1962). Applicant also argues, to raise a genuine dispute, that opposer has not submitted “industry materials” or any dictionary evidence that defines the term “Kabbalah red string” as a “generic term for any goods.” However, the lack of dictionary evidence of the term “Kabbalah red string” is not dispositive of the issue of genericness. Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385, 1393 (TTAB 1999)(“Although there is no dictionary listing for the term “e-ticket” per se, this fact is not dispositive of the issue. . . . A number of generic terms are not found in dictionaries.”). Applicant argues that the probative value of opposer’s evidence is limited as “[t]here has been no testimony submitted to demonstrate that this small sampling of printouts demonstrate any actual use or sales of goods or were taken from web sites which have actually been viewed by consumers.” We find applicant’s arguments against the probative value of opposer’s evidence insufficient to raise a genuine dispute. Online evidence is probative of public perception, In re Bayer Aktiengesellschaft, 82 USPQ2d at Opposition No. 91201431 12 1833, and the purchasers of applicant's goods are the general public which may access the third-party retailers through the Internet. With regard to applicant’s contention that there is no evidence these third-party websites have actually been viewed by consumers, in view of the number of such sites, we find that applicant’s arguments are unsupported and conclusory and fail to raise a genuine dispute. Cf. In re Country Music Association, Inc., 100 U.S.P.Q.2d 1824, 1830 (TTAB 2011)(comparative obscurity of third-party Internet uses based on evidence of website traffic raises doubt about whether relevant public will perceive phrase as generic). Applicant also argues that opposer “has not presented sufficient evidence to rebut Applicant’s inference of validity” as “extensive evidence of use” is required to demonstrate the mark is generic and the evidence is “limited at best.” However, there is no inference of validity that attaches to an application to register a mark.5 In any event, the evidence presented by opposer is 5 The parties were involved in a prior Opposition No. 91190172, wherein applicant herein voluntarily surrendered its Registration No. 3411334 for Kabbalah Red String for bracelets which was subject to counterclaims by opposer herein for fraud and genericness. In that case, the registration for Kabbalah Red String was under Section 2(f) with a disclaimer of Red String. Judgment was entered against applicant because the voluntary surrender was without the written consent of counterclaim plaintiff. In view of the cancellation, any Section 7(d) Opposition No. 91201431 13 sufficiently probative to provide evidence of the context of use, the exposure of the term in a generic manner to the relevant public, and the meaning the public is likely to associate with the term as a result of such use. Applicant has also argued that its news article submissions show that there is a mixed record on the question of genericness and that the evidence submitted by opposer “at best amounts to a few isolated examples” and this “small sampling” fails to demonstrate the existence of third-party use to support a determination that applicant’s mark is generic. Although applicant argues that there is no clear evidence of genericness which raises a genuine dispute, we do not find that opposer’s evidence of generic use is offset by applicant’s evidence. The evidence provided by applicant neither shows a significant amount of proper trademark use nor recognition by third parties of applicant’s proprietary claim to the term KABBALAH RED STRING. Although applicant’s packaging of its goods as displayed on its website shows trademark use of KABBALAH presumptions and the question of registrability of this registration have been “destroyed” which “makes the question of registrability ‘a new ball game’ which must be predicated on current thought.” In re Hunter Publishing Company, 204 USPQ 957, 963 (TTAB 1979). Opposition No. 91201431 14 RED STRING, much of applicant’s evidence relates to articles about applicant or about Kabbalah generally. Most of the articles show use of the term “Kabbalah” separate from the term “red string.” The four articles from 2008- 2009 which show use of the term “Kabbalah red string bracelet” show use in a generic manner (emphasis supplied): . . . Madonna has jetted off to New York to have a special Kabbalah red string bracelet tied to her wrist. He had been spotted looking all white for the service and was wearing a trademark Kabbalah red string bracelet. But the must-have faith fashion accessory of the 2000s was the Kabbalah red string bracelet. He wears the Kabbalah red string around his left wrist . . . . Evidence of generic use by others and proper trademark use by applicant does not necessarily create a mixed record that would raise a dispute about genericness in view of the wide use of the term “Kabbalah red string” in a generic sense such that the relevant consumers perceive the primary significance of the term as generic for bracelets. Applicant further argues that the Office has approved numerous applications that include the term “Kabbalah” without a disclaimer or under Section 2(f). However, the third-party registrations submitted by applicant are of very limited probative value and fail to Opposition No. 91201431 15 raise a genuine dispute. It is well-settled that neither the Board nor our primary reviewing court is bound by prior determinations by the USPTO and each case must be decided on its own merits. See In Re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed Cir. 2011). Finally, although applicant complains that opposer’s evidence of third-party use is trading on applicant’s good will and infringing on its rights, applicant has not provided evidence of policing with respect to these third- party websites so as to raise a genuine dispute. In view of the foregoing, we conclude that applicant has not raised a genuine dispute of material fact with regard to the genericness of the designation “Kabbalah red string.”6 Thus, and provided the matter below is resolved in opposer’s favor, opposer appears to be entitled to summary judgment in its favor on the issue of genericness. Standing In order to prevail in this proceeding, opposer must establish not only a valid ground for opposition, in this case that applicant's mark is generic, but also that it has 6 Our finding that “Kabbalah Red String” is generic subsumes a finding that the term is merely descriptive. Indeed, “[t]he generic name of a thing is in fact the ultimate in descriptiveness.” H. Marvin Ginn, 228 USPQ at 530. Because we find no genuine dispute as to the genericness of “Kabbalah red string,” we need not consider the question of whether “Kabbalah red string” has acquired distinctiveness. Opposition No. 91201431 16 standing to oppose. Opposer has alleged in the notice of opposition that it designs diamonds and diamond jewelry and intends to sell diamonds and diamond jewelry packaged with red string to reinforce Kabbalistic principles of its diamonds and diamond jewelry. Opposer has also alleged that it plans to market and describe its “red string tie- ins” as “Kabbalah Red String.” Although these allegations would establish opposer's standing if proven, opposer has not yet introduced any evidence supporting these allegations. Accordingly, opposer is allowed until THIRTY DAYS from the mailing date of this order to submit evidence establishing that there is no genuine dispute as to any material fact related to opposer's standing, and that it is entitled to summary judgment on the issue of standing as a matter of law. Applicant is allowed until SIXTY DAYS from the mailing date of this order to file a response to any evidence and argument opposer submits, if applicant desires to do so. In the event opposer's showing establishes its entitlement to summary judgment on the issue of standing, the opposition will be sustained. In the event opposer's showing is insufficient, this case shall proceed to trial on the issue of standing only. Sinclair Oil Corp. v. Opposition No. 91201431 17 Kendrick, 85 USPQ2d 1032, 1037 (TTAB 2007) (setting forth this procedure under analogous circumstances); Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1776 (TTAB 1994)(same). Proceedings herein remain otherwise suspended.