Bhagavan Antle

Trademark Trial and Appeal Board

Jun 18, 2004

No. 75750471 (T.T.A.B. Jun. 18, 2004)

Mailed: June 18, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Bhagavan Antle
________
Serial No. 75750471
_______
B. Craig Killough of Barnwell Whaley Patterson & Helms, LLC
for Bhagavan Antle
Elizabeth J. Winter, Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney)
_______
Before Simms, Seeherman and Chapman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Bhagavan Antle, a U.S. citizen, has appealed from the
Trademark Examining Attorney's final refusal to register
the mark T.I.G.E.R.S. THE INSTITUTE OF GREATLY ENDANGERED
AND RARE SPECIES, in typed form, for services which were
amended to "educational services, namely conducting
demonstrations and exhibitions to educate and entertain the
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75750471
2
public about wildlife and the preservation of endangered
species."1
Registration has been refused pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1), on the
ground that applicant's mark is merely descriptive of his
identified services. Specifically, the Examining Attorney
contends that the mark immediately describes the principal
topics or subject matter of applicant's educational
services and the type of entity that provides the services.
"The services are offered by an institute in connection
with educational services featuring information on greatly
endangered and rare species, particularly tigers."
Examining Attorney's brief, p. 4 (emphasis in original).
The appeal has been fully briefed, but applicant did
not request an oral hearing.2
Throughout the course of the prosecution of the
application, and in his appeal briefs, applicant, through
his counsel, has made statements acknowledging the
descriptiveness of parts of his mark, viz.:
1 Application Serial No. 75750471 filed August 9, 1999, and
asserting a bona fide intent to use the mark in commerce.
2 After applicant filed his appeal brief, the Examining
Attorney, who had been newly assigned to handle the application,
requested remand in order to supplement the record and to issue a
new requirement (for additional information). When the appeal
was resumed, applicant filed a supplemental appeal brief.
Applicant also filed a reply brief.
Ser No. 75750471
3
Applicant submits that the words, or
some portion of the words, THE
INSTITUTE OF GREATLY ENDANGERED
SPECIES, which appear in the mark, are
descriptive of the Applicant's services
as set forth in the amended
identification of services. Applicant
will enter an appropriate disclaimer as
required by the Examining Attorney.
Response to first Office action, filed
June 12, 2000. (In that response,
applicant argued that it was the
T.I.G.E.R.S. portion of the mark that
is suggestive and not merely
descriptive.)
In a communication filed on June 12,
2000, the Applicant recognized that the
portion of the mark "THE INSTITUTE OF
GREATLY ENDANGERED AND RARE SPECIES" is
descriptive, and offered a disclaimer
of this wording.
Brief, p. 2.
...a consumer seeing the term
"T.I.G.E.R.S." would not, forthwith,
receive an immediate idea of the nature
of Applicant's services...without
resorting to the descriptive portion of
the mark from which the acronym is
formed.
Brief, p. 3.
In view of the Examining Attorney's
Office Action dated December 6, 2002,
which was entered after the filing of
Applicant's Appeal brief, the Applicant
abandons his argument that the
T.I.G.E.R.S. portion of his mark,
standing alone, is not descriptive of
Applicant's services.
Supplemental brief, p. 3.
In view of the materials submitted by
the Examiner since the Applicant
submitted his Appeal Brief, Applicant
does not dispute that tigers are a
Ser No. 75750471
4
featured animal on Applicant's website.
Supplemental brief, p. 3.
In view of the Examining Attorney's
focus that tigers are an endangered
species, Applicant agrees that the
terms "tiger" and "endangered" and/or
"species" may be subject to disclaimer.
Supplemental brief, p. 5, withdrawing
applicant's previous suggestion that
the term "The Institute Of Greatly
Endangered And Rare Species" should be
disclaimed.
As stated in the Applicant's
Supplemental Brief, the term
"Endangered Species" is a descriptive
term that is used by competitors...."
Reply brief, p. 2.
In his reply brief, applicant states that his
acknowledgement that "Institute of Greatly Endangered and
Rare Species" is merely descriptive was made in error.
However, it was not until applicant filed his supplemental
appeal brief, after the close of examination, that
applicant withdrew this admission. Normally, an Examining
Attorney would be entitled to rely on such an admission,
since the withdrawal was made at a point that the Examining
Attorney could no longer submit evidence to support her
position. Even if we do not consider this admission,
however, we find that, as discussed below, the record
supports a finding that THE INSTITUTE OF GREATLY ENDANGERED
AND RARE SPECIES, as well as the mark as a whole, is merely
descriptive of applicant's services.
Ser No. 75750471
5
In support of the refusal of registration, the
Examining Attorney has submitted, inter alia, dictionary
definitions of the words in the mark, NEXIS excerpts, and
third-party registrations showing disclaimers of the
relevant terms. For example, "institute" is defined, in
part, as "an organization founded to promote a cause"; "an
educational institution, especially one for the instruction
of technical subjects"; and "a usually short, intensive
workshop or seminar on a specific subject."3 The NEXIS
excerpts refer to institutes that deal with endangered
species, e.g.:
...you have a powerful tool for
preserving endangered species," she
says.
The institute is on about 1,200
acres...
"USA Today," December 14, 1999
***
...The Center for Biological Diversity
petitioned the federal government to
list white abalone as an endangered
species.
The institute—a collaboration of county
educators, a fish-farming business....
"Ventura County Star," May 8, 1999
***
3 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
Ser No. 75750471
6
...the Audubon Institute protects the
rare and endangered animals in their
care in the future.
"The Times-Picayune," February 16, 1999
***
...the Earth Island Institute, which
specializes in campaigns to save San
Francisco Bay seals, tropical Pacific
Ocean dolphins and endangered sea
turtles.
The institute's executive director....
"The Patriot Ledger," January 20, 1996
A mark is merely descriptive, and therefore prohibited
from registration by Section 2(e)(1) of the Trademark Act,
if it immediately conveys knowledge of the ingredients,
qualities or characteristics of the goods or services with
which it is used or is intended to be used. See In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). It
is not necessary that the mark describe every feature,
attribute, etc. It is sufficient if it describes a single,
significant quality, feature, function or the like. In re
Venture Lending Associates, 226 USPQ 285 (TTAB 1985). The
question is not decided in a vacuum but in relation to the
goods on which, or the services in connection with which,
the mark is used or is intended to be used. See In re
Abcor Development Corporation, 588 F.2d 811, 200 USPQ 215
(CCPA 1978).
Ser No. 75750471
7
Applicant's website materials and his brochure, both
of which have been made of record,4 show that applicant
provides education and training programs and features
exotic animals. In his website, applicant explains that by
his providing the website, "T.I.G.E.R.S. and you can start
helping endangered and exotic animals everywhere." The
website explains that T.I.G.E.R.S. offers "rare and exotic
species for all occasions" (to be used as animal actors).
"With T.I.G.E.R.S. you will observe and learn about many
rare and unique animals, in a new and completely different
way." Tigers are one of applicant's featured animals:
large photographs of tigers appear on the front of
applicant's brochure, as well as on the home page of his
website. The website invites viewers to "look at the tiger
information page to find out some cool facts about tigers
in general."
Applicant has admitted, and the evidence demonstrates,
that TIGERS is descriptive of a major feature of
applicant's services, i.e., that tigers are one of the
species which are the subject of applicant's educational
services. Applicant has also admitted, and his own
4 Although applicant filed his application pursuant to Section
1(b) of the Trademark Act, it appears that he is actually using
the mark in connection with his services.
Ser No. 75750471
8
identification makes clear, that endangered species is the
subject matter of his education and entertainment services.
Applicant's materials also show that his animals may be
referred to as "rare" species.
When the word TIGERS and the phrase THE INSTITUTE OF
GREATLY ENDANGERED AND RARE SPECIES is combined into
applicant's mark, T.I.G.E.R.S., THE INSTITUTE OF GREATLY
ENDANGERED AND RARE SPECIES, the mark as a whole remains
merely descriptive, immediately conveying to consumers that
applicant's education services consist of an institute
devoted to greatly endangered and rare species, and
featuring tigers. Applicant has asserted that there is
nothing in the record to suggest that "greatly endangered"
is a term that is in common descriptive use with regard to
educational services, or that "greatly endangered and rare
species" is in common descriptive use with regard to such
services. Although there is no evidence that others use
these specific phrases to refer to their services, such
evidence is not necessary to support a finding that a mark
is merely descriptive. The commonly understood meanings of
the words, when used in the phrase THE INSTITUTE OF GREATLY
ENDANGERED AND RARE SPECIES, immediately conveys to
Ser No. 75750471
9
consumers that applicant's services involve highly
endangered species and rare species.5
We also recognize that the word T.I.G.E.R.S. is an
acronym of THE INSTITUTE OF GREATLY ENDANGERED AND RARE
SPECIES, and that applicant has created the phrase in order
to form the acronym. However, this does not change the
merely descriptive significance of the mark. Just as a
mere misspelling does not add trademark significance to an
otherwise unregistrable merely descriptive term, see In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986), the
addition of periods between the letters of TIGERS does not
make this merely descriptive word into an inherently
distinctive one. Consumers will readily recognize
T.I.G.E.R.S. to be the equivalent of "tigers." In this
connection, we note the numerous third-party registrations
submitted by the Examining Attorney in which descriptive
words in which the letters are separated by periods,
including words which are used as acronyms in the marks,
were either disclaimed, or the marks were registered on the
Supplemental Register in recognition of their
descriptiveness. See, for example, Supplemental Register
5 Although we hardly think it necessary, we list here
definitions for "greatly" and "rare" that the Examining Attorney
made of record: "greatly"—"to a great extent or degree"; "rare"—
"seldom occurring or found: uncommon." Merriam-Webster
Dictionary, www.m-w.com/cgi-bin/dictionary.
Ser No. 75750471
10
registrations for C.A.R.S., CO. COSMETIC AUTO
RECONDITIONING SPECIALISTS, CO. for automotive
reconditioning, repair and maintenance (Reg. No. 2590064);
P.R.A.Y. for series of curriculum books dealing with
religious topics (Reg. No. 2497359); and K.I.D.S. for
publication of magazines (Reg. No. 2252090); and, on the
Principal Register, S.U.M.O. SUPER UNBELIEVABLE MASTERS OF
BATTLE for toy action figures featuring electronically
generated speech and special effects, registered with a
disclaimer of SUMO and SUPER (Reg. No. 2648520); and
CHILDREN LEARNING AWARENESS SAFETY & SELF-DEFENSE
C.L.A.S.S. and design, registered with a disclaimer of
CHILDREN LEARNING AWARENESS SAFETY AND SELF-DEFENSE CLASS
(Reg. No. 2540535).
Decision: The refusal of registration is affirmed.