Outlook Amusements, Inc.

Trademark Trial and Appeal BoardMay 31, 2012

No. 77314375 (T.T.A.B. May. 31, 2012)

Mailed: May 31, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Outlook Amusements, Inc. ________ Serial No. 77314375 _______ Carl A. Kukkonen, III and Ben L. Wagner of Mintz Levin Cohn Ferris Glovsky & Popeo, P.C. for Outlook Amusements, Inc. Raul Cordova, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney). _______ Before Quinn, Kuhlke, and Wolfson, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Outlook Amusements, Inc. has appealed from the final refusal of the trademark examining attorney to register the mark TEEN PSYCHIC (in standard characters) for, inter alia,1 Educational services, namely, conducting classes, seminars and workshops in the fields of media and entertainment; entertainment services, namely, 1 Application Serial No. 77314375, filed October 26, 2007 based on Section 1(b) of the Trademark Act (intent-to-use). The application also covers goods in International Classes 3, 6, 9, 14, 16, 18, 20, 21, 24, 25, 26, and 28. The refusal pertains only to classes 41 and 45. The term “PSYCHIC” has been disclaimed in Class 45. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 77314375 2 production and presentation of a television show concerning relationships, psychic readings and/or2 astrological forecasting; TV, movie, film and Internet content production and presentation services concerning relationships, psychic readings and/or astrological forecasting; production, presentation and rental of motion picture films; production, presentation, and rental of television and radio programs concerning relationships, psychic readings and/or astrological forecasting; production, presentation, and rental of sound and video recordings; providing entertainment information in the fields of live musical performances, singers and actors, and recorded music; production of entertainment shows and interactive programs for distribution via television, cable, satellite, audio, video media and Internet, cartridges, laser discs, computer discs and electronic means; production and provision of television shows and information in the field of entertainment for children and teenagers via communication and computer networks; amusement park and theme park services; presentation of live stage shows; presentation of live show performances; theater productions; entertainer services, namely, televised and movie appearances by a professional entertainer; entertainment, educational and information services, all the foregoing services being in the field of entertainment, including the aforesaid services being provided via an Internet web site; and the presentation and dissemination of entertainment information, including such services provided via an Internet website featuring information about celebrities entertainment services, namely, production and presentation of a show concerning relationships, psychic readings, and/or astrological forecasting via e-mail” in International Class 41; 2 We note that during prosecution of the application, applicant requested amendment of its services to substitute “and” wherever the wording “and/or” appears, but the request was not acted upon by the examining attorney. To facilitate this proceeding, the amendment has now been entered by the Board. Ser No. 77314375 3 Psychic and astrological reading services; entertainment services, namely, providing a website at which the general public can receive advice from an individual concerning relationships, psychic readings, and/or astrological forecasting, such advice being for entertainment purposes only” in International Class 45.3 THE RECORD The examining attorney has made of record dictionary definitions for “teen” and “psychic” from www.merriam- webster.com. The definition of “teen” is “a teenage person : TEENAGER.” The most relevant of the definitions of “psychic” is its usage as a noun meaning: “a person apparently sensitive to nonphysical forces.” The dictionary also indicates that “psychic” may be used as an adjective. In this context, it means: “sensitive to nonphysical or supernatural forces and influences : marked by extraordinary or mysterious sensitivity, perception, or understanding.” 3 In his final Office action, the examining attorney noted that the entertainment services listed in Class 45 (“entertainment services, namely providing a website at which the general public can receive advice from an individual concerning relationships, psychic readings, and/or astrological forecasting, such advice being for entertainment purposes only”) properly belong in International Class 41. Applicant has not objected to the change in classification of these services. Accordingly, the application has been amended to recite those entertainment services in International Class 41. The wording “and/or” has been amended to “and” as noted above. Ser No. 77314375 4 Applicant has made of record copies of printouts from the USPTO TARR database of the following two use-based third-party registrations: Reg. No. 3575624 for the mark PYSCHIC BARTENDER for “entertainment services, namely, providing metaphysical and psychic readings in retail and nightclub environments”4 and Reg. No. 1686827 for the mark PSYCHIC SINGERS for “entertainment services; namely, musical performances for children and adults” in International Class 41.5 Applicant also submitted copies of six third- party registrations that have been properly objected to by the examining attorney as untimely, because they were submitted for the first time with applicant’s brief. See Trademark Rule 2.142(d)(the record in the application should be complete prior to the filing of an appeal). We have not considered these six third- party registrations. DISCUSSION Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), prohibits the registration of a mark which is merely descriptive of the applicant’s goods or services. A term is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1), if it 4 Registered February 17, 2009. Disclaimer: “PSYCHIC.” Ser No. 77314375 5 forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). Whether a particular term is merely descriptive is determined in relation to the goods or services for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor, 200 USPQ at 218; In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the question is not whether someone presented only with the mark could guess the nature of the services listed in the recitation. Rather, the question is whether someone who knows what the services are will understand the mark to convey information about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). When two or more merely descriptive terms are combined, the determination of whether the composite mark also has a merely descriptive significance turns on the 5 Registered May 12, 1992; Section 8 (6-year) accepted & Section 15 acknowledged; combined Section 8 (10-year)/Section 9 filed (on 4/26/02 and on 5/19/07); renewed. Disclaimer: “SINGERS.” Ser No. 77314375 6 question of whether the combination of terms evokes a new and unique commercial impression. If each component retains its merely descriptive significance in relation to the goods or services, the combination results in a composite that is itself merely descriptive. See, In re Tower Tech, Inc., supra (SMARTTOWER merely descriptive of commercial and industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use in developing and deploying application programs); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of new information services in the food processing industry). “On the other hand, if one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive. [Internal citations omitted]… incongruity is a strong indication that a mark is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 196, 197 (TTAB 1978). See also, In re Shutts, 217 USPQ 363, 364-365 (TTAB 1983); In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980). Ser No. 77314375 7 The examining attorney’s position is essentially that the mark TEEN PSYCHIC merely describes a feature of applicant’s entertainment services because: Whether the show is used for relationships, astrology or psychic readings, the underlying primary element of the show remains the same, that is, a psychic teen using his ‘powers.’ … The combination of the terms, TEEN PSYCHIC, in applicant’s mark merely describes to viewers that applicant’s service consist[s] of television shows and adjunct services featur[ing] young adults with mystical special powers. Brief, unnumbered p. 6. Applicant argues that the descriptiveness refusal should be reversed for four reasons. First, applicant argues that “psychic work is an adult profession, and it is unusual and incongruent to suggest that a teenager engage in psychic work – there is no evidence otherwise,” citing In re Shutts, 217 USPQ 363 (TTAB 1983). Applicant’s Brief, p. 5. In Shutts, the Board held that the mark SNO-RAKE was not merely descriptive because it would be incongruous to describe shoveling snow as “raking” snow. Id. at 364. In the case at hand, however, the record does not evidence an incongruity. Even were the record to establish that “psychic work” is generally considered an adult profession, there is nothing incongruous about a television show or movie featuring a teenager engaging in psychic activities. Ser No. 77314375 8 In the realm of entertainment, moreover, character portrayals do not always remain within everyday, otherwise known, boundaries. Applicant’s second argument is that a disclaimer of the word “psychic” in Class 41 (along with the disclaimer already of record in Class 45) should have sufficed to resolve the descriptiveness refusal. Disclaimers are appropriate where an unregistrable component forms part of an otherwise registrable mark. Here, the mark in its entirety is merely descriptive of a television show or movie that features a teen psychic. A combination of descriptive terms remains merely descriptive if the individual descriptive character of these terms are not lost or obscured in the unitary term they create. See Hunt-Wesson Foods, Inc. v. Riceland Foods, Inc., 201 USPQ 881, 886 (TTAB 1079); In re Entenmann’s Inc., 15 USPQ2d 1750 (TTAB 1990). In this case, the juxtaposition of the merely descriptive terms comprising the mark does not convey a commercial impression that is different from that of the words taken separately. The combination of the terms TEEN PSYCHIC in applicant’s mark merely describes to viewers that applicant’s services feature a teenager with psychic powers. In Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). Thus, a disclaimer to either or both of the terms Ser No. 77314375 9 comprising the mark would not obviate the descriptiveness refusal when the mark is considered as a whole. Third, applicant argues that in the entertainment field, a mark which identifies a trait possessed by one of the main characters in the production is suggestive only of the nature of the production and is not merely descriptive thereof. In support, applicant has made of record two Principal register registrations for the marks PSYCHIC BARTENDER for psychic readings in nightclubs and PSYCHIC SINGERS for a singing group. While we may look to third- party registrations as we would a dictionary, to show how the Office has treated terms in a particular trade as having possible meanings or significance, these two registrations are insufficient to show that the term “psychic” has a commonly understood, non-descriptive, meaning in connection with entertainers. The term “psychic” is disclaimed in PSYCHIC BARTENDER, which supports a finding of descriptiveness of the term when used in association with psychic readings. The term “psychic” in PSYCHIC SINGERS appears to be arbitrary for the recited services, which do not include any reference to psychic abilities. Suffice it to say that each case must be decided on its own merits based on the evidence of record. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, Ser No. 77314375 10 1566 (Fed. Cir. 2001)(“Even if some prior registrations had some characteristics similar to [applicant’s] application, the PTO’s allowance of such prior registrations does not bind the board or this court.”). Finally, applicant argues that the refusal “mistakenly concludes that … all services listed in Classes 41 and 45 should be rejected.” In this regard, applicant contends that the descriptiveness refusal should not apply to all the Class 41 or Class 45 recited services.6 However, “it is a well settled legal principle that where a mark may be merely descriptive of one or more items of goods [or services] in an application but may be suggestive or even arbitrary as applied to other items, registration is properly refused if the subject matter for registration is descriptive of any of the goods [or services] for which registration is sought.” In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff’d, 10 USPQ2d 1879 (Fed. Cir. 1989); see also In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)(“Our predecessor court … has stated that registration should be refused if the mark is descriptive of any of the goods for which registration is sought”). 6 Inasmuch as the services in Class 45 are now limited to “psychic and astrological reading services,” we treat applicant’s argument as directed to the Class 41 services only. Ser No. 77314375 11 CONCLUSION We have carefully considered the entire record, including all arguments and evidence submitted by the applicant and the examining attorney. Based thereon, we find that the mark TEEN PSYCHIC, when used in connection with applicant’s educational, entertainment, entertainer, psychic and astrological reading services, immediately brings to mind, without conjecture or speculation, a significant characteristic or feature of the services, namely that they concern a teenager who either is, or purports to be, a psychic personality. Thus, the mark is merely descriptive within the meaning of Trademark Act § 2(e)(1). Decision: The refusals of registration in Classes 41 and 45 are affirmed.