The Right Brain Trust, LLC

Trademark Trial and Appeal Board

Aug 6, 2002

No. 75757251 (T.T.A.B. Aug. 6, 2002)

Paper No. 12
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re The Right Brian Trust, LLC
________
Serial No. 75/757,251
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Lawrence Apolzon of Fross Zelnick Lehrman & Zissu, P.C. for
The Right Brain Trust, LLC.
J. Brett Golden, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______
Before Simms, Cissel and Quinn, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On July 21, 1999, applicant filed the above-identified
application to register “THE SENIORS CHANNEL” on the
Principal Register for “television, cable television and
radio broadcasting, and related services,” in Class 38; and
“television, cable television and radio programming;
syndication of television, cable television and radio
programs; and related services,” in Class 41. The
application was based on applicant’s assertion that it
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/757,251
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possessed a bona fide intention to use the mark in commerce
in connection with these services.
The Examining Attorney1 refused registration under
Section 2(e)(1) of the Lanham Act, 15 U.S.C. Section
1052(e)(1), on the ground that the proposed mark is merely
descriptive of the services with which applicant intends to
use it. He took the position that the mark merely
describes a characteristic or feature of applicant’s
services because the television and radio programs that
applicant intends to produce, syndicate and broadcast are
for senior citizens. Enclosed in support of the refusal to
register was a dictionary definition2 which shows that
“senior citizen” is a synonym for the word “senior.”
In addition to requiring applicant to amend the
recitation of services to be more definite and to disclaim
the word “CHANNEL” apart from the mark as shown, the
Examining Attorney specifically asked applicant whether it
intends to produce, syndicate and broadcast television and
radio programs for senior citizens.
1 Examining Attorney Golden is the third Examining Attorney who
has been assigned this application. He took over the case after
the Notice of Appeal had been filed and after the previous
Examining Attorney had denied applicant’s Request for
Reconsideration.
2 Merriam Webster’s Collegiate Dictionary, 10th edition (1999).
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Responsive to the first Office Action, applicant did
not provide the requested disclaimer or answer the
Examining Attorney’s question about whether applicant’s
programs would be intended for senior citizens, but did
amend the recitation of services to read as follows:
“television, cable television and radio broadcasting
services,” in Class 38; and “production of television,
cable television and radio programming; syndication of
television, cable television, and radio programs,” in Class
41. Applicant also amended the drawing to show the mark as
“THE SENIOR CHANNEL” instead of “THE SENIORS CHANNEL,” and
presented arguments on the issue of whether the proposed
mark is merely descriptive of the services set forth in the
application, as amended. Applicant took the position that
some degree of imagination or deliberation would be
required in order for someone to understand its mark in the
descriptive sense asserted by the Examining Attorney
because the word “SENIOR” has a number of meanings in
addition to the one relied upon by the Examining Attorney.
The Examining Attorney accepted the amendments to the
recitation of services and the drawing, but was not
persuaded by applicant’s arguments against the refusal to
register. Submitted in further support of the refusal were
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the following: another definition3 of “senior” as “a senior
citizen”; a definition of “channel” as “a specified
frequency band for the transmission and reception of
electromagnetic signals, as for television signals”;
excerpts from published articles, retrieved from the Nexis
automated database, wherein the term “senior” is used as an
adjective to indicate things related to senior citizens,
i.e., “senior bus,” “senior centers,” “senior living
facilities,” “senior suicides,” and “senior volunteers”;
twenty third-party registrations in Class 41 for marks
including the word “senior” for services relating to senior
citizens or elderly people wherein either the mark is
registered on the Principal Register under Section 2(f) or
with a disclaimer of “senior,” or the mark is registered on
the Supplemental Register.
The refusal to register under Section 2(e)(1) of a
Lanham Act was made final in the second Office Action.
Concurrently with a Notice of Appeal, applicant filed
a Request for Reconsideration. In support of its position
that the mark is not merely descriptive of the services
with which applicant intends to use the mark, applicant
3 From the American Heritage Dictionary of the English Language,
3rd edition (1992), Houghton Mifflin Co.
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included a copy of another dictionary listing4 for the word
“senior.” This one lists several different meanings for
the term, including “a person older than another”; a senior
fellow of a college at an English University; a student in
the year preceding graduation from a school of secondary or
higher level; and “a member of a program of the Girl Scouts
for girls in the ninth through twelfth grade in school.”
This dictionary also lists “senior citizen” as a synonym
for the word “senior.”
Also submitted with applicant’s Request for
Reconsideration were copies of third-party registration and
application information retrieved from the U.S. Patent and
Trademark Office’s Electronic Search System (TESS). This
information shows that “SENIORTV THE PROFITABLE
ALTERNATIVE” is registered5 for distribution of television
programming with no disclaimer of “SENIOR”; that “SENIORS
WITH ATTITUDE” has been published for opposition6 for
entertainment services in the nature of a television series
geared toward senior citizens without a disclaimer of
“SENIOR”; and that “SUDDENLY WE’RE SENIORS” has been
published for opposition7 for production and distribution of
4 Merriam Webster’s Collegiate Dictionary, 10th edition.
5 Reg. No. 2,151,972, issued on the Principal Register to Stellar
Private Cable System, Inc. on April 21, 1998.
6 S.N. 75/626,496; Notice of Allowance issued on March 7, 2000.
7 S.N. 75/934,270, published for opposition on July 3, 2001.
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a television program with no disclaimer of the word
“SENIORS.”
The Board instituted the appeal, but suspended action
on it and remanded the application to the Examining
Attorney for consideration of applicant’s Request for
Reconsideration.
The Examining Attorney denied applicant’s request that
the refusal to register be withdrawn. Attached to his
response were a number of third-party registrations for
broadcasting or entertainment services wherein the word
“CHANNEL” is either disclaimed or the mark is registered on
the Supplemental Register.
Applicant filed an appeal brief and requested an oral
argument before the Board. The Examining Attorney filed
his brief on appeal and applicant filed a reply brief.
Applicant then withdrew its request for an oral hearing.
Accordingly, we have resolved this appeal based on careful
consideration of the written record and arguments in light
of the relevant legal authority.
The sole issue before us in this appeal is whether the
mark “THE SENIOR CHANNEL” is merely descriptive, within the
meaning of Section 2(e)(1) of the Lanham Act, of
“television, cable television and radio broadcasting
services,” and “production of television, cable television
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and radio programming; syndication of television, cable
television, and radio programs.”
The test for determining whether a mark must be
refused registration under this section of the Act is well
settled. A mark is merely descriptive of the services with
which it is used, or is intended to be used, if it
immediately and forthwith conveys information concerning a
significant quality, characteristic, feature, function,
purpose or use of the services. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary for a term to describe all of the
properties or characteristics of the services in order for
it to be considered merely descriptive of them; rather, it
is sufficient if the term describes any significant
attribute or idea about them. Moreover, whether a term is
merely descriptive is determined not in the abstract, but
in relation to the services in connection with which
registration is sought, the context in which it is, or is
intended to be, used in connection with those services, and
the possible significance that the term would have to the
average purchaser of the services because of the manner of
its use. See: In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979). A mark is suggestive, rather than merely
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descriptive, if, when the services are encountered under
the mark, a multi-stage reasoning process, or the use of
imagination, thought or perception is required in order to
determine what attributes of the services the mark
identifies. In re Meyer-Beaton Corp., 223 USPQ 1347 (TTAB
1984). The Examining Attorney bears the burden of
establishing that a mark is unregistrable because it is
merely descriptive of the services within the meaning of
Section 2(e)(1) of the Act. In re Gyulay, supra.
In the case at hand, the Examining Attorney has met
his burden of establishing that the proposed mark is
unregistrable under Section 2(e)(1) of the Act. “THE
SENIOR CHANNEL” is merely descriptive of the television and
radio services listed in the application because it
immediately and forthwith conveys the significant fact that
the programming on applicant’s channel will be directed
toward seniors.
Applicant does not contend that the article “THE”
possesses any source-identifying significance, nor does
applicant argue that the word “CHANNEL” is not merely
descriptive of its services. In fact, applicant offered to
disclaim it apart from the mark as a whole. Applicant’s
argument centers on the word “SENIOR.”
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Notwithstanding applicant’s earlier failure to answer
the Examining Attorney’s question of whether the
programming is to be directed to senior citizens, applicant
conceded (at p.2 of its brief) that it is “…likely [that] a
significant portion of the programming will be of interest
to senior citizens….” Applicant goes on, however, to
contend that “it will be equally available and of interest
to viewers of all ages.” The later aspect of the services
is immaterial to our inquiry, however. Applicant does not
contend that the fact that its services will be directed to
seniors is not a significant characteristic of them.
In a similar sense, the fact that the word “senior”
has other meanings which are not descriptive in connection
with the services specified in the registration does not
make the proposed mark any less descriptive of these
services. As the Examining Attorney points out, his duty
is to consider the words sought to be registered in
connection with the services recited in the application,
rather than in the abstract. One need not be able to
correctly guess what the services are from consideration of
the mark alone. Descriptiveness within the meaning of the
Lanham Act must be determined by considering the mark in
connection with the recited services. Applicant’s brief
makes it clear that applicant’s broadcasts and programming
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will be of interest primarily to senior citizens. Just as
“THE WEATHER CHANNEL” was held merely descriptive of
transmitting television primarily concerned with the
dissemination of weather information8 and “ALL NEWS CHANNEL”
was held merely descriptive of television broadcasting and
production services wherein the news was the featured
subject matter,9 the mark applicant in the instant case
seeks to register, “THE SENIOR CHANNEL,” is merely
descriptive of applicant’s television and radio
broadcasting and programming, which applicant admits will
be, in significant part, concerned with seniors.
Finally, the third-party registration and application
information applicant made of record in the case at hand
does not persuade us to reach a different conclusion. It
is well settled that each application must be resolved on
its own record and merits, and that a merely descriptive
mark is not registrable just because other marks which
might appear also to be descriptive are on the register.
In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB
1977). In any event, the third-party registrations cited
by applicant do not appear to run afoul of Section 2(e)(1)
of the Act because the marks therein appear to be unitary
8 In re Weather Channel, Inc., 229 USPQ 854 (TTAB 1986).
9 In re Conus Communications Co., 23 USPQ2d 1717 (TTAB 1992).
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marks or slogans for which disclaimers or claims under
Section 2(f) would not be appropriate.
In summary, because “THE SENIOR CHANNEL” would
immediately and forthwith convey the fact that applicant’s
broadcasting and programming will be directed to senior
citizens, the proposed mark is merely descriptive within
the meaning of Section 2(e)(1) of the Lanham Act.
DECISION: The refusal to register is affirmed.