The Whole Child Learning Company, Inc.

Trademark Trial and Appeal Board

Jun 26, 2002

No. 75646333re (T.T.A.B. Jun. 26, 2002)

6/26/02

Paper No. 17
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Whole Child Learning Co., Inc.
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Serial No. 75/646,333

Request for Reconsideration

James C. Wray for The Whole Child Learning Company, Inc.

Brian Neville, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
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Before Cissel, Seeherman and Quinn, Administrative
Trademark Judges.

Opinion by Cissel, Administrative Trademark Judge:
On April 30, 2002, this panel of the Board issued a
decision affirming the refusal to register “THE WHOLE CHILD
LEARNING COMPANY” for “educational instructional services
in day care preschool and primary schools, namely providing
teachers, classes, materials and instruction and
interaction in the fields of kinesthetics, athletics, arts,
civics, mathematics, logic, critical thinking, problem
solving, spatial relations, time concepts, measurements,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
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linguistics, music, cooperation, social and interpersonal
skills and activities, motivation, phonics, reading, pre-
reading readiness, shape and color recognition, sequencing,
computer skills and use and care of computer equipment,” in
Class 41, based on Section 2(e)(1) of the Lanham Act.
On May 23, 2002, applicant timely filed a “Request for
Rehearing,” which we construe as a request for
reconsideration of our decision affirming the refusal to
register.
In its request, applicant states that the majority
relies heavily on the Examining Attorney’s evidence, but
that this evidence is insufficient to establish
descriptiveness of the mark in connection with applicant’s
services.
As pointed out in both the majority opinion and
Administrative Trademark Judge Seeherman’s concurring
opinion, however, applicant disclaimed “LEARNING COMPANY.”
This constitutes a concession of the term’s descriptiveness
in connection with the services specified in the
application. As both the majority opinion and the
concurring opinion explained, the evidence submitted by the
Examining Attorney shows that “WHOLE CHILD” is also merely
descriptive of these services because the term is used in
the education field to refer to aspects of child
Ser No. 75/646,333
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development that are outside of the usual parameters of
traditional school education. In fact, as stated in our
opinion, consistent with this, applicant offered to
disclaim “WHOLE CHILD” in its response to the first Office
Action. Moreover, as Administrative Trademark Judge
Seeherman points out in her opinion, applicant concedes in
its brief, at p. 4, that both terms are merely descriptive
of the services set forth in the application, but argues
that “the descriptiveness of the components is lost in the
combination of the terms.” As we stated in the majority
opinion, at p. 9, “[t]he issue before us thus boils down to
whether, when these two descriptive terms are combined, the
mark in its entirety does more than describe the services.”
We concluded that nothing in this record supports this
conclusion, and nothing in applicant’s request for
reconsideration persuades us otherwise. Applicant makes
the same argument, but still offers no logical explanation
or evidence in support of it.
Applicant argues that because the Examining Attorney
did not make of record examples of the use of the entire
five-word term by applicant’s competitors, its mark “is
unique and therefore registrable.” It is well settled that
a term may be held to be merely descriptive of the goods or
services recited in an application even if the applicant is
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4
the first and only one to adopt it. In re Hycon Mfg. Co.,
169 USPQ 622 (TTAB 1971). What is at issue is whether the
term sought to be registered conveys significant
information about the nature or characteristics of the
goods or services with which it is, or will be, used. Use
by others simply does not need to be established.
In summary, applicant has not shown that the decision
affirming the refusal to register was in error. Although
the majority and the concurring Administrative Trademark
Judge differed in their assessments of the evidence
submitted by the Examining Attorney on the issue of whether
“LEARNING COMPANY” is merely descriptive of the services
set forth in this application, the entire panel
acknowledged applicant’s concession on this point, and
agreed that the mark “THE WHOLE CHILD LEARNING COMPANY,”
when considered in its entirety in connection with these
services, is merely descriptive of them because it
describes features or characteristics of them, i.e., that
they are provided by a learning company and that they are
directed to the “whole child.” Accordingly, we stand by
our decision affirming the refusal to register under
Section 2(e)(1) of the Lanham Act.

Ser No. 75/646,333
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Seeherman, Administrative Trademark Judge, concurring:
For the reasons given in my concurring opinion, I
would affirm the refusal of registration. None of the
arguments made in applicant’s request for rehearing
persuades me that the request should be granted. In
particular, given the evidence of descriptiveness of THE
WHOLE CHILD, and applicant’s acknowledgement that LEARNING
COMPANY is merely descriptive, the combination of these
terms results in a phrase--THE WHOLE CHILD LEARNING
COMPANY--which is merely descriptive of the identified
services.