Brain State Technologies, L.L.C.

Trademark Trial and Appeal Board

Jan 21, 2009

No. 77092018 (T.T.A.B. Jan. 21, 2009)

Hearing: Mailed:
December 10, 2008 January 21, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Brain State Technologies, L.L.C.
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Serial No. 77092018
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Farley I. Weiss and Mark H. Weiss of Weiss & Moy, P.C. for
Brain State Technologies, L.L.C.

Angela Gaw, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Kuhlke, Walsh and Bergsman, Administrative Trademark
Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Brain State Technologies, L.L.C. (“applicant”) filed a
use-based application to register the mark BRAIN STATE
CONDITIONING, in standard character format, for services
ultimately identified as “training services in the field of
neurofeedback,” in Class 41. Applicant disclaimed the
exclusive right to use the words “Brain” and
“Conditioning.”
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(e)(1) of the Trademark Act
of 1946, 15 U.S.C. §1052(e)(1), on the ground that
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77092018
2
applicant’s mark is merely descriptive. According to the
Examining Attorney, “[b]ecause the Applicant’s services
measure the present condition of the user’s brainwave
activity or a fluctuating situation due to an external
stimulus, the term [BRAIN STATE CONDITIONING] is merely
descriptive of neurofeedback services.”1
To support the descriptiveness refusal, the Examining
Attorney submitted the following evidence:
1. The “Nuerofeedback” entry from the Reference.com
website derived from Wikipedia. “Neurofeedback”
or “neurotherapy” presents the user with realtime
feedback of brainwave activity to enable the user
to control his/her brainwave activity.

2. An abstract of article by Richard Brown entitled
“What is a Brain State” published in
Philosophical Psychology (2006) retrieved from
the ASSC Publications website
(http://eprints.assc.calthtech.edu). The
relevance of this article is that it used the
term “Brain States” as a unitary term and as a
term of art referring to the relationship between
the mind and brain. “[B]rain states are patterns
of synchronous neural firing, which reflects the
electrical face of the brain.”

3. An excerpt from an article entitled “Brain state
and contrast sensitivity in the awake visual
thalamus” published in the Nature Neuroscience
website (nature.com) on September 10, 2006. This
article also used the term “Brain State” as a
unitary term in concluding that “[n]eural
responses to visual stimuli depend on both the
nature of stimulus and brain state.”

4. An abstract of an article by Martin Bohner and S.
Hui entitled “Brain state in a convex body”

1 Examining Attorney’s Brief, unnumbered page 3.
Serial No. 77092018
3
retrieved from the Scholars’ Mine Research
Repository website at the University of Missouri-
Rolla (http://scholarsmine.umr.edu). The
abstract discusses the study of the brain-state-
in-a-box model. For our purposes, the importance
of this abstract is that “brain state” is a
unitary term.

5. An abstract from an article by Marc Salucci,
Ph.D, entitled “Is Consciousness a Brain State?”
(swif.uniba.it).2 “Brain state” is used a unitary
term to describe mental states.

6. An article about “Identity Theory” in The
Internet Encyclopedia of Philosophy (iep.utm.edu)
discussing “brain states” in terms of “the
relationship between mind and body.” “Brain
state” is used as a unitary term of art to
explain that every mental state has a unique
brain state. A person who works in this field is
referred to as a “brain-state theorist.”

7. An excerpt from an article entitled “Brain state
and body position. A time-lapse video study of
sleep” published in General Psychiatry (1982)
(http://archpsyc.ama-assn.org). The excerpt only
references the term “brain state” in the title.
Even so, it is used as a unitary term.

8. The abstract from Patent No. 6488617 entitled
“Method and device for producing a desired brain
state.”

9. The abstract from Patent No. 4545388 entitled
“Self-normed brain state monitoring.” This
patent is for “a method and apparatus for
monitoring the brain states of a patient during a
medical procedure.”

10. The entry for “altered states of consciousness”
from The Skeptics Dictionary (htpp://skepdic.com)
has the following definition of “altered states
of consciousness” incorporating “brain state”:

2 While the article is in Italian, the abstract is in English.
We find that the article is admissible because it would be
available to practitioners in the field of neurofeedback.
Serial No. 77092018
4
An altered state of consciousness
is a state of consciousness that
differs significantly from
baseline or normal consciousness
often identified with a brain
state that differs significantly
from the brain state at baseline
or normal consciousness.

On the other hand, applicant contends that the
Examining Attorney did not meet her burden of proving that
BRAIN STATE CONDITIONING is merely descriptive because her
evidence was in the nature of scholarly works and,
therefore, they do not show how the relevant purchasing
public would perceive BRAIN STATE CONDITIONING.
[S]imply hearing the word “state” used
with the words “brain” and
“conditioning” does not immediately
project to the relevant purchasing
public an idea of Applicant’s services,
except that such services involve the
brain.3

In addition, “[t]he word ‘state’ is an amorphous word
having various meanings. For example, this word may refer
to a geographic region, such as the state of New York.”4
The essence of applicant’s argument is that
applicant’s mark is comprised of the three words “brain,”
“state,” and “conditioning”; and that while the words
“brain” and “conditioning” are descriptive, the word

3 Applicant’s Brief, p. 8.
4 Id.
Serial No. 77092018
5
“state,” in and of itself, does not convey any information
regarding the nature of applicant’s services.5
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the products and services
it identifies. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1009 (Fed. Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the goods and
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 Development Corp., 588
F.2d 811, 200 USPQ 215, 218 (CCPA 1978); 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 what the products and services are.
Rather, the question is whether someone who knows the
products and services 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).

5 Applicant’s Reply Brief, p. 5.
Serial No. 77092018
6
“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.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (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).
Accordingly, we start our analysis of the
registrability of BRAIN STATE CONDITIONING by inquiring
whether that term describes a characteristic, quality,
function or purpose of “training services in the field of
neurofeedback,” not whether we can guess what the services
are by looking at the mark. Contrary to applicant’s
contention, the word “state” does not form a commercial
impression separate and apart from the term “brain state.”
“Brain state” is a unitary term referring to the
relationship between the patient’s brain, mental state, and
physical and mental health. A patient seeking
neurofeedback training knows that he/she is seeking to
control their mental state to achieve better and more
efficient control of their mental state. Accordingly, the
relevant purchasers will not go through the mental process
of parsing the term BRAIN STATE into its component parts,
Serial No. 77092018
7
but will regard it as a unitary term. Thus, a patient
seeking neurofeedback training is going to perceive the
mark BRAIN STATE CONDITIONING as directly imparting the
information that the services involve “conditioning” (i.e.,
modifying)6 their “brain state” (i.e., mental state).7
Applicant’s substitute specimen corroborates our
finding. The text of the advertisement reads, in relevant
part, as follows:
Brain State Conditioning™ is a method
of balancing and harmonizing the brain.

In view of the foregoing, we find that the term BRAIN
STATE CONDITIONING when used in connection with “training
services in the field of neurofeedback” is merely
descriptive.
Decision: The refusal to register is affirmed.

6 The Random House Dictionary of the English Language
(Unabridged) p. 426 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
7 Even if BRAIN STATE CONDITIONING is descriptive only to those
in the field, and not the average consumer, such a finding of
descriptiveness is sufficient to support a finding that the mark
is unregistrable under Section 2(e)(1) of the Trademark Act of
1946. In re Randall and Hustedt, 226 USPQ 1031, 1032 (TTAB
1985); Exxon Corp. v. Motorgas Oil & Refining Corp., 219 USPQ
440, 443-445 (TTAB 1983).