BRAINY-BRAWN.COM, INC.

Trademark Trial and Appeal Board

Jun 26, 2002

No. 75823864 (T.T.A.B. Jun. 26, 2002)

6/26/02 Paper No. 18
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re BRAINYBRAWN.COM, INC.
________

Serial No. 75/823,864
_______

Myron Amer of Myron Amer, P.C. for BRAINYBRAWN.COM, INC.

Verna Beth Ririe, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Hohein and Rogers, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

BRAINYBRAWN.COM, INC. has filed an application to
register the mark "BRAINYBRAWN" for services identified by
amendment as "educational services, namely, conducting classes,
seminars, conferences and workshops in the field of mind, body
and soul health considerations."1

1 Ser. No. 75/823,864, which was filed on October 15, 1999, on the
basis of an allegation of a bona fide intention to use such mark in
commerce. A statement of use, alleging a date of first use anywhere
and in commerce of October 30, 2000, subsequently was filed on
November 6, 2000.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/823,864
2
Registration has been finally refused on the ground
that the specimen of use is unacceptable because it fails to
show the mark "BRAINYBRAWN" used or displayed in the sale or
advertising of the services recited in the application as
amended. Sections 1(a)(1), 3 and 45 of the Trademark Act, 15
U.S.C. §§1051, 1053 and 1127; Trademark Rules 2.56(a) and
2.88(b)(2); and TMEP Section 1301.04. Specifically, the
Examining Attorney maintains in her final refusal that "the
specimen must show the mark in reference to the particular
services identified" and that, in this case, because "[t]he
specimen submitted does not mention or refer to any ...
educational services," applicant is required to "submit a
specimen that shows use of the mark for the services identified
in the application," namely, "conducting classes, seminars,
conferences and workshops in the field of mind, body and soul
health considerations."
In addition, registration has been finally refused on
the basis that the declaration submitted with the statement of
use is unacceptable "because the declarant has not signed it."
In particular, the Examining Attorney asserts that while "the
declaration statements are allegedly made by Naresh Belwal"
(applicant's president), "the declaration is signed by Myron
Amer" (applicant's attorney). The Examining Attorney,
therefore, made final a "requirement that the applicant submit a
Ser. No. 75/823,864
3
substitute declaration" signed by "[t]he party making the
declaration."
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusals to
register.
Turning first to the refusal on the ground that the
specimen of use filed with the statement of use does not show
use of the mark "BRAINYBRAWN" in connection with the educational
services recited in the amended application, we note that such
specimen consists of a print-out of what appears to be the
homepage of applicant's website. The specimen features the term
"BRAINYBRAWN," located in the upper left-hand corner of the page
underneath a circular logo formed from three crescents, used in
connection with references to "Breaking News" and "Recent Health
Topics" on the subject of "Alternative Medicine" and includes
advertising of "Featured Products" available through applicant's
"online store." Appearing near the bottom of the page is the
instruction "Contact Us 1-877-920-6430," which is followed by
the statement: "Information presented at BrainyBrawn is for
educational purposes only; statements about products and health
conditions have not been evaluated by the U.S. Food & Drug
Administration."
Whether a mark has been used for a particular service
or services is a question of fact which is determined on the
Ser. No. 75/823,864
4
basis of the specimen or specimens of use submitted in
connection with the application. See, e.g., In re Advertising &
Marketing Development Inc., 821 F.2d 614, 2 USPQ2d 2010, 2015
(Fed. Cir. 1987) and TMEP Section 1301.04. Applicant "contends
that the statement that information presented at applicant's
BrainyBrawn web site is for EDUCATIONAL SERVICES cannot be any
more of a direct showing of the mark to the services"
(capitalization in original). Applicant also argues that:
On a somewhat indirect showing, but a
sufficient showing nevertheless, is the
instruction on the specimen "Contact [U]s 1-
877-920-6430" in the proximity of the text
titled "Breaking News" and "Recent Health
Topics".

The instruction sets in motion, at the
least, a phone conference, and the
recitation of applicant's services is
"...conducting... conferences...in the field
of mind, body and soul health
considerations."

Applicant insists, in view thereof, that the telephone number
appearing on its webpage is not included, as the Examining
Attorney maintains, merely as a "contact number." Instead,
applicant urges with respect to calls to such number that, "if
applicant answers these calls, doesn't the oral exchange between
callers and applicant qualify as a 'conference', and [if so]
wouldn't such conferences be of the 'Breaking News' and 'Recent
Health Topics' recited in the specimen"? Applicant accordingly
asserts that "the specimen advertises the services that
Ser. No. 75/823,864
5
applicant recites that it renders and, to any reader of the
specimen, a fair reading is that applicant provides the
educational services recited." Notably, however, applicant
offers no explanation as to how the specimen specifically
demonstrates use of the mark "BRAINYBRAWN" in connection with
the other educational services for which it seeks registration,
namely, the conducting of classes, seminars and workshops in the
field of mind, body and soul health considerations.
We agree with the Examining Attorney that the specimen
fails to show use of such mark for the services recited in the
application. As the Examining Attorney accurately and
persuasively observes in her brief:
[T]here is no reference [in the specimen] to
any educational services in the form of
classes, seminars, conferences or workshops
being conducted by the applicant. The only
reference to "educational" is at the bottom
of the page where, below a reference to a
telephone contact number the specimen
contains the statement that "[i]nformation
presented at BrainyBrawn is for educational
purposes only."

The specimen of use submitted by the
applicant shows use of the mark in
connection with a website that facilitates
on-line retail store services of health
products and provides information on topics
related to health. The specimens do not
show use of the mark in connection with any
"classes, seminars, conferences or
workshops."

....

Ser. No. 75/823,864
6
The specimen merely indicates that the
applicant offers news and information on
health topics and products. The specimen's
reference to "educational" is not to suggest
the applicant offers "educational services,"
but rather is used as a disclaimer that the
information presented on the applicant's web
site is for educational purposes only as it
has not been evaluated by the U.S. Food &
Drug Administration. There is no
representation the applicant offers
"educational services." The specimen
provides no evidence of any groups,
meetings, instructors, or schedules
incidental to educational services. There
is no information regarding enrollment for
any classes, seminars, conferences or
workshops. There is no advertising of any
such classes, seminars, conferences or
workshops.

Moreover, with respect to applicant's remaining
contention that any oral exchange resulting from telephone calls
to the contact number listed on applicant's webpage amount to an
educational "conference," we concur with the Examining Attorney,
as further noted in her brief, that:
The specimen does not support such a reading
of the significance of a telephone contact
number. The reference to the telephone
number is merely given as a "contact"
number. The applicant makes no
representation that a customer or client
will have the opportunity to "conference"
with an individual regarding the recited
health topics.

A service mark specimen must show use
of the mark in the sale or advertising of
the services. 37 C.F.R. 2.56(b)(2). The
specimen submitted by the applicant makes no
reference to a class, seminar, conference or
workshop. These are the particular
Ser. No. 75/823,864
7
educational services for which the applicant
has applied to ... [register] its proposed
mark and these are the services for which
use must be shown on a specimen of use.

Accordingly, the refusal on the ground that the specimen does
not evidence use of the "BRAINYBRAWN" mark in connection with
the services recited in the application is well taken.
As to the other issue in this appeal, the declaration
in question states in its entirety that:
NARESH BELWAL declares: That he is
President of applicant corporation and has
authorized Myron Amer, as attorney, to
execute this declaration on behalf of said
corporation; that Naresh Belwal believes
said corporation to be the owner of the
service mark sought to be registered and
entitled to use the mark in commerce; that
to the best of his knowledge and belief, no
other person, firm, corporation or
association has the right to use said mark
in commerce, either in the identical form or
in such near resemblance thereto as may be
likely, when applied to the services of such
other person, to cause confusion, or to
cause mistake, or to deceive; that the mark
was first used in advertising in intrastate
and interstate commerce at least as early as
October 30, 2000, and is still in use in
such commerce; that the mark is used for
"Educational services, namely, conducting
classes, seminars, conferences and workshops
in the field of mind, body and soul health
considerations", there being submitted
herewith a specimen showing the manner in
which the mark is used; that all statements
made herein of his own knowledge are true
and that all statements made on information
and belief are believed to be true; and
further, that these statements were made
with the knowledge that willful false
statements and the like so made are
Ser. No. 75/823,864
8
punishable by fine or imprisonment, or both,
under Section 1001 of Title 18 of the United
States Code and that such willful false
statements may jeopardize the validity of
the application or document or any
registration resulting therefrom.

The declaration is signed on behalf of "BRAINYBRAWN.COM, INC."
by "MYRON AMER, as Attorney." Mr. Amer was appointed by
applicant's president as applicant's attorney in the power of
attorney executed as part of the application as originally
filed.2
Applicant, while incorrectly citing Trademark Rule
2.76(b)(1) (which pertains to requirements for a complete
amendment to allege use) rather than Trademark Rule 2.88(b)(1)
(which governs requirements for a complete statement of use),3
argues that, as stated in the declaration, its attorney, Myron
Amer, was given authority by applicant's president, Naresh
Belwal, to execute the declaration on behalf of applicant. In
particular, applicant contends that "Naresh Belwal as
applicant's president is the logical fact witness to provide the
declaration statements subject to the sanctions of Section 1001
of 18 U.S. Code, but ... the actual signing has been properly

2 Such power of attorney appoints Mr. Amer "to prosecute this
application, to transact all business in connection therewith, and to
receive the Certificate."

3 It is nonetheless pointed out that in substance the two provisions
are essentially identical, with the only difference being that the
former makes reference to the "application" while the latter refers to
the "notice of allowance."
Ser. No. 75/823,864
9
delegated to Myron Amer." As to the Examining Attorney's
contention that the person identified as the declarant must also
sign the declaration (or conversely, the person who signs the
declaration must be the declarant), applicant asserts that:
The dilemma this presents is that Myron
Amer, although given the authority[,] is not
conversant with the facts so that he can
sign off as a fact witness. Nor is it good
practice for an attorney of record to also
function as a fact witness. Certainly if
the registration is subsequently involved in
litigation, Myron Amer could not be both the
litigation attorney and also a trial fact
witness.

The Examining Attorney, on the other hand, correctly
recognizes in her brief that, "in lieu of a verified statement
to support an application or statement of use, an applicant may
submit a declaration signed by a person who is properly
authorized to sign on behalf of the applicant" and that such a
person can include "an attorney who has an actual or implied
written or verbal power of attorney to sign on behalf of the
applicant." She maintains, however, that it is still a "basic
principle that a 'declaration' must be signed by a 'declarant,'
meaning the person who makes the statement. See, e.g., Federal
Rule of Evidence 801(b)."
According to the Examining Attorney, the declaration
submitted with applicant's statement of use is unacceptable
because (footnotes omitted):
Ser. No. 75/823,864
10
The applicant's attorney herein
attempts to sign a declaration for which he
makes no statement. Rather, he is relying
on a statement made by "Naresh Belwal." If
the declaration is made by Naresh Belwal,
then it must be signed by Naresh Belwal. In
the alternative, the applicant was advised
that an attorney with the proper power of
attorney from the applicant may provide such
a statement. However, the attorney must
make the statement as required by the ...
[Trademark Rules of Practice]. There is no
provision to relieve an attorney declarant
from the basic principles of being a
"declarant." Pursuant to Trademark ...
[Rule] 2.33, an attorney may be properly
authorized to sign on behalf of an
applicant. However, Trademark ... [Rule]
2.20 requires that the person who signs the
declaration ("the undersigned") make this
declaration.

The declaration statements allegedly
made by Naresh Belwal are not supported by
Mr. Belwal's signature. The declaration is
therefore insufficient as a verified
declaration under Trademark ... [Rules] 2.20
and 2.33. Inasmuch as Trademark ... [Rule]
2.88(e) requires a signed statement and
verification or declaration within the
statutory period for filing the statement of
use, the refusal to register ... should be
maintained.

We concur with the Examining Attorney that the
declaration submitted by applicant with its statement of use is
unacceptable because it has not been signed by the declarant.
Trademark Rule 2.88(b)(1) provides that a complete statement of
use must include:
A statement that is signed and verified
(sworn to) or supported by a declaration
under §2.20 by a person properly authorized
Ser. No. 75/823,864
11
to sign on behalf of the applicant (see
§2.33(a)) that:
(i) The applicant believes it is the
owner of the mark; and
(ii) The mark is in use in commerce,
specifying the date of the applicant's first
use of the mark in commerce, and those goods
or services specified in the notice of
allowance on or in connection with which the
applicant uses the mark in commerce.

Trademark Rule 2.33(a), entitled "Verified statement," requires
that:
The application must include a
statement that is signed and verified (sworn
to) or supported by a declaration under
§2.20 by a person properly authorized to
sign on behalf of the applicant. A person
who is properly authorized to sign on behalf
of the applicant is:
(1) a person with legal authority to
bind the applicant; or
(2) a person with firsthand knowledge
of the facts and actual or implied authority
to act on behalf of the applicant; or
(3) an attorney as defined in §10.1(c)
of this chapter who has an actual or implied
written or verbal power of attorney from the
applicant.

Trademark Rule 2.20, which relates to "Declarations in lieu of
oaths," states that:
Instead of an oath, affidavit,
verification, or sworn statement, the
language of 28 U.S.C. 1746, or the following
language, may be used:

The undersigned being warned that
willful false statements and the like
are punishable by fine or imprisonment,
or both, under 18 U.S.C. 1001, and that
such willful false statements and the
like may jeopardize the validity of the
Ser. No. 75/823,864
12
application or document or any
registration resulting therefrom,
declares that all statements made of
his/her knowledge are true; and all
statements made on information and
belief are believed to be true.

As indicated in TMEP Section 804.04 (italics in
original):
Effective October 30, 1999, the
Trademark Act does not specify the
appropriate person to sign on behalf of an
applicant. The definition of a "person
properly authorized to sign on behalf of an
applicant" is set forth in 37 C.F.R.
§2.33(a). This definition applies to
applications for registration, amendments to
allege use, statements of use, .... 37
C.F.R. §§ 2.76(b)(1), 2.88(b)(1) .... It
also applies to declarations supporting ...
use of substitute specimens ....

....

The broad definition of a "person
properly authorized to sign on behalf of an
applicant under 37 C.F.R. §2.33(a) applies
only to verifications of facts by the
applicant and designations of domestic
representatives. It does not apply to
powers of attorney, revocations of powers of
attorney, responses to Office actions, or
consent agreements.

The above rules, along with the quoted section of the
TMEP, clearly contemplate that the declarant and the signer of
the declaration must be the same person. Thus, while Trademark
Rule 2.33(a) provides that an attorney may qualify as "[a]
person who is properly authorized to sign on behalf of the
applicant," if an attorney executes a statement of use on behalf
Ser. No. 75/823,864
13
of an applicant so as to meet the requirements of Trademark Rule
2.88(b)(1) that the statement be "signed and verified (sworn to)
or supported by a declaration under §2.20 by a person properly
authorized to sign on behalf of the applicant," then the
attorney must also be the person who, under such rule, is the
declarant who states that (i) the applicant believes it is the
owner of the mark and (ii) the mark is in use in commerce,
specifying the date of the applicant's first use of the mark in
commerce, and those goods or services specified in the notice of
allowance on or in connection with which the applicant uses the
mark in commerce. Specifically, in the case of a statement of
use which is supported by a declaration under Trademark Rule
2.20, it is the person who signs such declaration who, as
properly noted by the Examining Attorney, constitutes the
"undersigned" under such rule and who "declares that all
statements made of his/her knowledge are true; and all
statements made on information and belief are believed to be
true." Consequently, if the declaration accompanying the
statement of use is signed by an attorney, then it is the
attorney who additionally must be the declarant and make the
averments required by Trademark Rule 2.88(b)(1); plainly, an
attorney may not verify statements if the attorney has no
personal knowledge, which is the case herein as applicant's
attorney candidly admits.
Ser. No. 75/823,864
14
Accordingly, because the declarant, which as set forth
in the statement of use furnished by applicant is its president
rather than its attorney, has not properly signed the
declaration submitted in support of applicant's statement of
use, the refusal to register is well taken.
Decision: The refusals to register are affirmed.