Gallup, Inc.

Trademark Trial and Appeal Board

Jan 6, 2004

No. 76188427 (T.T.A.B. Jan. 6, 2004)

Mailed: January 6, 2004
Hearing: Paper No. 21
October 15, 2003 BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Gallup, Inc.
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Serial No. 76188426
Serial No. 76188427
_______
Jay H. Begler and Janel Calliham of Buchanan Ingersoll for
Gallup, Inc.
Hellen M. Bryan-Johnson, Trademark Examining Attorney, Law
Office 114 (Margaret Le, Managing Attorney).
_______
Before Chapman, Bucher and Bottorff, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
The two applications involved herein were filed on
January 2, 2001 by Gallup, Inc. (a Nebraska corporation) to
register on the Principal Register the marks EMPATHY
(application Serial No. 76188426) and DISCIPLINE
(application Serial No. 76188427), both for “providing a
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. Nos. 76188426 & 76188427
2
personal analysis of an individual’s inherent strengths
over an interactive website on a global computer network”
in International Class 42. Applicant asserts a bona fide
intention to use the mark in commerce in both applications.
The Examining Attorney has refused registration in
each application under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. §1052(e)(1), on the ground that applicant’s
mark (EMPATHY or DISCIPLINE), when used in connection with
applicant’s services, is merely descriptive thereof.
When the refusal to register was made final, applicant
appealed in each application. Both applicant and the
Examining Attorney have filed briefs. In view of the
common questions of law and fact which are involved in
these two applications, and in the interests of judicial
economy, we have consolidated the applications for purposes
of the oral hearing and this final decision. An oral
hearing was held before the Board on October 15, 2003.
With regard to the issue of mere descriptiveness, it
is the Examining Attorney’s position that the terms EMPATHY
and DISCIPLINE are each “merely descriptive of an online
service which analyzes an individual’s personal strengths,
because it describes one of the individual strengths that
the service could identify a prospective client possesses”
(brief, p. 1); that the words EMPATHY or DISCIPLINE each
Ser. Nos. 76188426 & 76188427
3
describe one of the “inherent strengths” which applicant’s
service is designed to identify in prospective customers;
that other meanings for these words are not relevant in the
context of applicant’s services; and that consumers need
not go through a multi-step process to understand the
descriptive nature of these words in relation to
applicant’s services.
In support of the descriptiveness refusals, the
Examining Attorney has made of record in these cases the
following definitions from The American Heritage Dictionary
(Third Edition 1992):
(1) empathy noun 1. Identification
with and understanding of
another’s situation, feelings, and
motives…;
(2) discipline noun 1. Training
expected to produce a specific
character or pattern of behavior,
especially training that produces
moral or mental improvement…;
(3) trait noun 1. A distinguishing
feature, as of a person’s
character…; and
(4) characteristic noun 1. A feature
that helps to identify, tell
apart, or describe recognizably; a
distinguishing mark or trait…,
adjective Being a feature that
helps to distinguish a person or
thing; distinctive….
Ser. Nos. 76188426 & 76188427
4
In addition, the Examining Attorney submitted the
following dictionary definition from Merriam-Webster’s
Collegiate Dictionary (Tenth Edition):
strength n. … 4 b. a strong
attribute or inherent asset.
The Examining Attorney also submitted photocopies of
several excerpted stories retrieved from the Nexis database
to show that consumers understand the words EMPATHY or
DISCIPLINE refer to recognized characteristics, traits or
strengths. Examples of these excerpted stories are
reproduced below (emphasis added):
Headline: Miami’s Coker, Morris, Clark
Lead By Example
…“The best trait a coach can have is
empathy. You have to understand that
there are going to be differences
between you and your players, but you
have to respect those differences.”
“The Miami Herald,” January 30, 2002;
Headline: Ponder, Enjoy ‘Qualities of
Life’
…Today in the IN Life Section, you can
see his project “Qualities of Life.”
Shin found and photographed people who
exemplify characteristics such as
generosity, honor and empathy… . “The
Spokesman-Review (Spokane, WA),”
December 25, 2001;
Headline: Ephrata Welcomes Regal
Visitor; Miss America Angela Perez
Baraquio Urging Character Education
…Starting with 59 traits suggested by
the group, the list was winnowed down
to the 12 deemed most important. The
traits selected were respect,
Ser. Nos. 76188426 & 76188427
5
integrity, responsibility, self-
discipline, positive attitude, self-
control, compassion, cooperation,
accountability, perseverance, altruism
and empathy. … “Intelligencer Journal
(Lancaster, PA),” February 12, 2001;
Headline: Stanley and Dorothy Frank
Named Philanthropists of the Year
…established the Dorothy and Stanley
Frank Family Fellows Program at
Guilford, which identifies and supports
young people who aspire to a career in
business or industry, who have an
interest and commitment to traditional
American values and the economic
system, and who have the personal
characteristics of discipline,
integrity, creativity and initiative… .
“News & Record (Greensboro, NC),”
November 23, 1997;
Headline: SAT Not a Predictor of
Success
…Many educators are convinced that
standardized-test scores cannot by
themselves reflect the wide range of
abilities or accomplishments of any
applicant. Nor can these measures
forecast a person’s promise or success
excluding a host of other personal
characteristics such as drive,
discipline and self-confidence… . “San
Antonio Express News,” October 4, 1997;
and
Headline: Latino Young Adults Hold the
Future
…According to a poll of these young
marchers conducted by Hispanic Link
News Service, they overwhelming believe
they will succeed in life through
personal characteristics like self-
confidence, compassion, discipline,
ambition, open-mindedness, civic
mindedness and perseverance.
Ser. Nos. 76188426 & 76188427
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“Albuquerque Journal,” October 19,
1996.
Applicant urges reversal arguing that the marks
EMPATHY and DISCIPLINE are suggestive as it requires some
degree of imagination to connect the words with applicant’s
services; that the Examining Attorney has not submitted any
dictionary definition of either the word “EMPATHY” or the
word “DISCIPLINE” which specifies the services applicant
offers; that the dictionary definitions of each word
include other meanings; that consumers must engage in a
multi-step reasoning process to understand that “EMPATHY”
or “DISCIPLINE” refers to an inherent strength as part of
applicant’s analysis; that there is no evidence of any
competitor’s use of the words for similar services; that
competitors would remain free to use the words in a “non-
trademark manner” (brief, p. 8); and that doubt is to be
resolved in applicant’s favor.
The test for determining whether a mark is merely
descriptive is whether the word or phrase immediately
conveys information concerning a significant quality,
characteristic, function, ingredient, attribute or feature
of the product or service in connection with which it is
used or is intended to be used. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978);
Ser. Nos. 76188426 & 76188427
7
In re Eden Foods Inc. 24 USPQ2d 1757 (TTAB 1992); and In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). A mark does
not have to describe every quality, characteristic,
function, ingredient, attribute or feature of the goods or
services in order to be found merely descriptive; it is
sufficient for the purpose if the mark describes a single
significant quality, feature, function, etc. thereof.
Further, it is well-established that the determination
of mere descriptiveness must be made not in the abstract or
on the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the word or phrase is being used or is intended to be
used on or in connection with those goods or services, and
the impact that it is likely to make on the average
purchaser of such goods or services. See In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); and In
re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).
Consequently, “[w]hether consumers could guess what the
product [or service] is from consideration of the mark
alone is not the test.” In re American Greetings Corp.,
226 USPQ 365, 366 (TTAB 1985). Rather, the question is
whether someone who knows what the goods or services are
will understand the word or phrase to convey information
Ser. Nos. 76188426 & 76188427
8
about them. See In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990).
We agree with the Examining Attorney that the asserted
marks, EMPATHY and DISCIPLINE, each immediately describes a
significant characteristic or feature of the services on
which applicant intends to use its marks. The dictionary
listings for the words “empathy” and “discipline” establish
their meanings in the English language. The Nexis evidence
shows that these words are often used to describe positive
characteristics or traits (or inherent strengths) of
individuals. Consumers would understand these two words in
their normally understood meanings relating to
characteristics or traits or strengths in the context of
applicant’s providing a personal analysis of an
individual’s strengths through an interactive website. See
In re Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d
1859 (Fed. Cir. 1987); In re Quik-Print Copy Shop, Inc.,
616 F.2d 523, 205 USPQ 505 (CCPA 1980); In re State
Chemical Manufacturing Co., 225 USPQ 687 (TTAB 1985); and
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982).
Each word (EMPATHY or DISCIPLINE) is commonly used to
describe those strengths in individuals. Thus, the plain
meaning of these words, when used in relation to
applicant’s services, “providing a personal analysis of an
Ser. Nos. 76188426 & 76188427
9
individual’s inherent strengths over an interactive website
on a global computer network,” immediately conveys that
EMPATHY or DISCIPLINE are each characteristics which
applicant’s service could identify as an individual’s
strengths. Simply put, the stated function of applicant’s
services, as identified, is to identify a person’s inherent
strengths and these two words identify two such strengths.
The fact that the words may have other meanings in other
contexts does not negate the descriptive meaning of the
words in relation to applicant’s online personal analysis
services.
Moreover, when the Examining Attorney required
information regarding applicant’s services and how the
marks may be used in a service mark manner, applicant
stated in each application that the “mark is not in use as
a trademark [sic-service mark], however, the word is used
in a program, Gallup Strengths Finder, which evaluates
certain inherent strengths” (Supplemental response, filed
August 12, 2002); and applicant enclosed materials
therewith. Applicant’s materials clearly show that the
trademark/service mark thereon is “Strengths Finder The
Gallup Organization”; and the three-page document lists
numerous “themes,” each named by a single word such as
Ser. Nos. 76188426 & 76188427
10
“Achiever,” “Analytical,” “Arranger,” “Command,”
“Discipline,” “Empathy,” “Focus,” “Learner,” and “Relator.”
Applicant’s own use of the words “Empathy” and
“Discipline” in these materials adds credence to our
finding that purchasers and prospective purchasers of
applicant’s online personal analysis of individual
strengths, upon consideration of the words “empathy” or
“discipline” used in connection therewith, will immediately
know a significant feature of its service, i.e., that
empathy and discipline are possible individual inherent
strengths. Such purchasers or prospective purchasers will
not need to engage in even the slightest degree of
cogitation or reasoning to understand the significance of
these words when used in conjunction with the service. See
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.
1987); In re Omaha National Corporation, supra; In re
Intelligent Instrumentation Inc., 40 USPQ2d 1792 (TTAB
1996); and In re Time Solutions, Inc., 33 USPQ2d 1156 (TTAB
1994).
Inasmuch as the record establishes that each of these
words, EMPATHY and DISCIPLINE, unquestionably projects a
merely descriptive connotation with regard to applicant’s
online personal analysis service, we believe that
competitors have a competitive need to use these terms.
Ser. Nos. 76188426 & 76188427
11
See In re Tekdyne Inc., 33 USPQ2d 1949, 1953 (TTAB 1994);
and 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §11:18 (4th ed. 2001).
Decision: The refusal to register under Section
2(e)(1) is affirmed in both applications.1
1 It is clear from the materials submitted by applicant (and as
acknowledged by applicant) that the two words involved herein are
not currently being used as a service mark to indicate the source
of applicant’s services. If applicant ultimately prevails on the
merely descriptive issue on appeal on the records in these
applications, and if applicant eventually files a Statement of
Use in either application, the Examining Attorney would be free
to consider the issues of whether or not the word(s) are used as
service marks, and whether or not the word(s) are merely
descriptive based on applicant’s use of the word(s) on any
specimen(s).