Edmund Burke

Trademark Trial and Appeal Board

Mar 30, 2004

No. 75614118 (T.T.A.B. Mar. 30, 2004)

Mailed: 30 MAR 2004
Paper No. 20
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Edmund Burke
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Serial No. 75614118
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Ezra Sutton, Esq. for Edmund Burke.
Steven R. Berk, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______
Before Chapman, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On December 31, 1998, Edmund Burke (applicant) applied
to register the mark shown below on the Principal Register:
for “books, pamphlets, and brochures related to a
nutritional system and nutritional and dietary supplements
for improving muscle performance and speeding muscle
recovery” in International Class 16.
The application (Serial No. 75614118) was based on
applicant’s assertion of a bona fide intention to use the
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 75614118
2
mark in commerce. Applicant’s mark was published for
opposition on November 9, 1999. A Notice of Allowance was
issued on February 1, 2000. On August 1, 2000, applicant
filed a Statement of Use alleging that it had used the mark
on the goods anywhere and in commerce at least as early as
January 1, 1999. The Statement of Use included the
specimen shown below:
Ser No. 75614118
3
The examining attorney1 then refused to register
applicant’s term because it fails to function as a mark
under the provisions of Sections 1, 2, and 45 of the
Trademark Act. 15 U.S.C. §§ 1051, 1052, and 1127. After
the examining attorney made the refusal final, applicant
filed a notice of appeal.
Discussion
“The question whether the subject matter of an
application for registration functions as a mark is
determined by examining the specimens along with any other
relevant material submitted by applicant during prosecution
of the application.” In re The Signal Companies, Inc., 228
USPQ 956, 957 (TTAB 1986).
An important function of specimens in a trademark
application is, manifestly, to enable the PTO to
verify the statements made in the application
regarding trademark use. In this regard, the manner
in which an applicant has employed the asserted mark,
as evidenced by the specimens of record, must be
carefully considered in determining whether the
asserted mark has been used as a trademark with
respect to the goods named in the application.
In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 216
(CCPA 1976) (emphasis in original, footnote omitted).
In this case, the specimens consist of the front and
back cover of a book. The title of the book is “Optimal
1 The present examining attorney was not the original examining
attorney in this case.
Ser No. 75614118
4
Muscle Recovery – Your Guide to Achieving Peak Physical
Performance.” The author is identified as Edmund R. Burke,
PhD. Above the title, in smaller letters, is the legend
“Using The Breakthrough R4 System To Restore, Protect &
Rebuild Muscles During And After Exercise.” The back cover
contains several paragraphs about the book and the author.
The most relevant material is set out below.
Get ready to revolutionize your training program with
Optimal Muscle Recovery. You know that it takes hard
work and dedication to achieve peak physical
performance. But all too often, your efforts are
rewarded with sore, fatigued muscles that just aren’t
up to the challenge of strenuous exercise. Now, in
this landmark book, sports scientist Dr. Edmund Burke
will show you how to get the most out of your workouts
by taking advantage of the one factor that athletes
consistently neglect – recovery. Because your muscles
adapt to exercise and grow stronger in the interval
between exercise sessions, your ability to perform at
a high level day after day is limited by how well your
body recovers and repairs muscle tissues after
strenuous training. The key to maximizing recovery is
to consume the right nutrients in the right
proportions to ensure your muscles’ health and to
improve performance. The breakthrough R4 System
provides athletes with simple, practical guidelines to
achieve this goal.
Based on the latest research on muscle performance and
recovery, the R4 System goes beyond enhancing
performance with sports drinks and energy bars… The R4
System is an innovative approach to training…
After reviewing the applicant’s specimens, the
examining attorney concluded that “[a]t most, the use of R4
provides informational matter about the contents of the
book and nothing more. No consumer would see the R4 as an
Ser No. 75614118
5
indicator of source.” Examining Attorney’s Brief at 5. In
response, applicant argues that “[c]onsumers who view the R4
mark understand that the mark is being used to distinguish
[applicant’s] goods from those manufactured or sold by
others.” Applicant’s Brief at 3 (emphasis in original).
“The Trademark Act is not an act to register words
but to register trademarks. Before there can be
registrability, there must be a trademark (or a service
mark) and, unless words have been so used, they cannot
qualify for registration. Words are not registrable merely
because they do not happen to be descriptive of the goods
or services with which they are associated.” In re
Standard Oil Co., 275 F.2d 945, 125 USPQ 227, 229 (CCPA
1960) (emphasis in original). “[N]ot every word or
combination of words which appears on an entity's goods
functions as a trademark.” In re Volvo Cars of North
America Inc., 46 USPQ2d 1455, 1459 (TTAB 1998).
Thus, merely because an applicant’s term appears on
specimens for the goods or services, this does not mean
that the term itself is used as a trademark or service mark
or that purchasers would perceive the term as a mark.
Bose, 192 USPQ at 216 (SYNCOM used on instruction sheets
did not function as a trademark for loudspeaker systems.
“[I]t is quite apparent that, in the specimens of record,
Ser No. 75614118
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only INTERAUDIO identifies the loudspeaker systems for
high-fidelity music reproduction as originating with
appellant and distinguishes such goods from those
manufactured and sold by others. The mark SYNCOM merely
relates to a speaker-testing computer”); In re Compagnie
Air France, 265 F.2d 938, 121 USPQ 460, 461 (CCPA 1959)
(“Nothing in the advertisement pertaining to the ‘SKY-ROOM’
identifies the air transportation service of appellant and
there is no other evidence which reveals that the public
considers ‘SKY-ROOM’ as an identifying mark of this
airline”). In addition, inasmuch as the specimens in this
case are the covers of books, it is interesting to note
that the Federal Circuit has long held that “this court’s
case law prohibits proprietary rights for single book
titles.” Herbko International Inc. v. Kappa Books Inc.,
308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002). See
also In re Cooper, 254 F.2d 611, 117 USPQ 396 (CCPA 1958).
Both applicant and the examining attorney refer to the
case of In re Big Stone Canning Co., 169 USPQ 815 (TTAB
1971). In that case, the board found that the term FLASH
COOK refers to the method of processing vegetables rather
than as a trademark for the cooked vegetables. Applicant
argues that his mark refers to a system while the Big Stone
case involved a process, and therefore, the case is
Ser No. 75614118
7
distinguishable. However, the case does not stand for the
point that terms that identify processes are not
registrable. Instead, the case demonstrates that merely
using a term on the specimens does not mean that it
necessarily serves as a trademark for the goods. Here, the
examining attorney did not refuse registration because
applicant’s term cannot serve as both a name of a system
and as a trademark for goods. Applicant’s mark was refused
registration because the specimens do not show that the
term is used as a trademark for the goods applicant has
identified in his application.
When we view applicant’s specimens of record, the term
R4 does not identify the source of the books. The term
always appears in sentences such as “Using the breakthrough
R4 System to restore, protect & rebuild muscles” and “the R4
System goes beyond enhancing performance with sports
drinks.” There is no evidence that prospective purchasers
would read these sentences or slogans and arrive at the
conclusion that applicant’s term is a trademark for books,
pamphlets, and brochures. The term R4 refers to a system to
enhance peak physical performance that is the subject of a
book entitled Optimal Muscle Recovery. Even the title of
the book, if it is the title of a single work, would not
function as a trademark, and applicant’s term, which is
Ser No. 75614118
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embedded in other informational material, would appear to
be viewed as referring to the subject matter of the book
rather than as a trademark for the goods.
Substitute “Specimen”
On May 20, 2002, along with its appeal brief,
applicant submitted an amendment, which it requested to be
construed as a request for reconsideration. On November
11, 2000, the prior examining attorney had invited
applicant to submit substitute specimens showing use as a
service mark.2 However, applicant acknowledges that almost
one year later, the examining attorney offered to
reconsider the refusal if applicant submitted a substitute
specimen showing use as a trademark. Applicant’s Amendment
at 1. Despite the examining attorney’s clarification,
applicant submitted what it claims is a “printout of his
web page showing promotion of the sale of his book and
using the R4 mark. This is clearly a proper service mark.”
Amendment at 2 (emphasis in original).3
In the order forwarding the appeal brief and amendment
to the examining attorney, the board noted that inasmuch
2 The current examining attorney “believes this to be an error.
The prior examining attorney likely meant ‘trademark’ not
‘service mark’ in this action.” Examining Attorney’s Brief at 7.
3 There were two pages from a website attached to the amendment.
We will discuss the more significant page. The second page
merely adds that the book will be available March 1, 1999, and
lists the stores that will sell the book.
Ser No. 75614118
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“as the time for filing a request for reconsideration
expired on March 12, 2002, such amendment will be construed
as a communication.” Order dated June 17, 2002 at 1 n.1.4
In his appeal brief, the examining attorney objects to
this additional specimen on the ground that it was untimely
submitted. We agree. “The record in the application
should be complete prior to the filing of an appeal. The
Trademark Trial and Appeal Board will ordinarily not
consider additional evidence filed with the Board by the
appellant or by the examiner after the appeal is filed.”
37 CFR § 2.142(d). Applicant’s “amendment,” filed after
the time to request reconsideration of the examining
attorney’s final refusal, is untimely. Applicant’s
amendment filed in 2002 apparently was motivated by an
Office action in 2000 that invited the applicant to submit
substitute specimens to show use as a service mark.
However, even applicant acknowledges that subsequently the
examining attorney clarified this statement to refer to
substitute specimens showing trademark use. In any event,
applicant could have submitted this amendment much earlier.
It is now too late. Accord In re Central Sprinkler Co., 49
4 The examining attorney’s brief was filed on August 9, 2002.
Subsequently, the file in this case was apparently lost. We
regret the delay in processing this appeal.
Ser No. 75614118
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USPQ2d 1194, 1195 n.2 (TTAB 1998) (“Although in its brief
applicant suggested a suspension and remand to allow the
Examining Attorney to consider the additional
registrations, it is clear that this evidence could have
been submitted much earlier in the prosecution”).
In addition to objecting to the “amendment” as
untimely, the examining attorney also discussed the new
evidence on the merits. For the sake of completeness, we
add that the page from the website merely advertises
applicant’s book for sale. It contains a picture of the
front cover of the book that is same as the specimen of
record. In addition, it contains a statement similar to
the legend on applicant’s book cover, i.e., “Dr. Burke
shows you how to achieve peak muscle performance using the
breakthrough R4 System to restore, protect and rebuild
muscles during and after exercise.” At the bottom of the
page is a notation that indicates that “R4™ System is a
trademark of Edmund Burke.” The examining attorney points
out that “applicant has shown no services whatsoever. The
applicant is simply advertising the book through online
means.” Examining Attorney’s Brief at 7. The mere
advertising or promotion of one’s own goods is not a
separate service. In re Dr. Pepper Co., 836 F.2d 508, 5
USPQ2d 1207, 1210 (Fed. Cir. 1987) (“[E]ven though a given
Ser No. 75614118
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term may function as both a trademark and a service mark,
the service must constitute more than mere promotion and
advertising of one's own goods”). The substitute specimens
offer nothing new other than the fact that applicant
advertises his Optimal Muscle Recovery book and he uses a
notation indicating that he believes the term R4 is his
trademark. As indicated above, merely advertising one’s
own goods is not a separate service, and the “[u]se of the
letters "TM" on a product does not make unregistrable
matter into a trademark.” In re Remington Products Inc., 3
USPQ2d 1714, 1715 (TTAB 1987). Thus, even if applicant’s
substitute specimen were properly of record, we agree with
the examining attorney that it would not demonstrate that
applicant’s term functions as a trademark.
Conclusion
In this case, the term R4 is used to refer to a method
to achieve peak physical performance. The evidence does
not demonstrate that it functions as a mark to identify and
distinguish applicant’s books, pamphlets, and brochures
from those of others.
Decision: The refusal to register the applied-for
term on the ground that it does not function as a mark is
affirmed.