George Alan Stibbard

Trademark Trial and Appeal Board

Jun 8, 2004

No. 76236247 (T.T.A.B. Jun. 8, 2004)

Mailed:
8 June 2004
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re George Alan Stibbard
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Serial No. 76236247
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Faye L. Tomlinson of Christensen O’Connor Johnson Kindness
PLLC for George Alan Stibbard.
Lourdes D. Ayala, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney).
_______
Before Seeherman, Hohein, and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On April 5, 2001, George Alan Stibbard (applicant)
applied to register the mark PSYCHOLOGICAL SELF-DEFENSE (in
typed form) on the Principal Register for services in
International Class 41 ultimately identified as:
Educational classes, seminars and workshops presented
live and online relating to philosophy, study and
science of the subconscious existence and the
distribution of course materials, pre-recorded audio-
visual materials, namely, video cassettes, videotapes,
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 76236247
2
compact discs, CD-ROM’s, DVD’s featuring information
on philosophy, study and science for the subconscious
existence, software for training, teaching, counseling
and study relating to philosophy, study and science of
the subconscious existence and course materials in
connection therewith; therapy, counseling and personal
development services relating to philosophy, study and
science and of the subconscious existence and
distribution of course materials in connection
therewith, training of individuals to become licensed
practitioners in the filed of philosophy, study and
science of the subconscious existence and the
distribution of course materials in connection
therewith.1
The application has been amended to disclaim the term
“psychological.”
The examining attorney2 refused to register the mark on
the ground that the mark, when used in association with the
services, is merely descriptive. 15 U.S.C. § 1052(e)(1).
The examining attorney’s position is that the “language
‘psychological self-defense’ is used commonly in the
industry and the applicant’s educational services are
likely to include information on psychological self-
defense.” Office Action dated June 5, 2002 at 2.
Applicant maintains that there is “a multi-stage reasoning
process here … because in the self-defense industry
physical self-defense techniques predominate[;] a program
including educational classes, seminars, and workshops
1 Serial No. 76236247 is based on applicant’s allegation of a
bona fide intention to use the mark in commerce.
2 The current examining attorney was not the original examining
attorney in this case.
Ser. No. 76236247
3
accompanied by training materials on the philosophy, study,
and science of the subconscious existence is not readily
conveyed by Appellant’s mark.” Applicant’s Brief at 4.
After the examining attorney made the refusal final,
applicant appealed to this board.
We affirm.
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics
of the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 217 (CCPA 1978). See also In re Nett
Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001). Courts have long held that to be “merely
descriptive,” a term need only describe a single
significant quality or property of the goods. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987); Meehanite Metal Corp. v. International Nickel Co.,
262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959). We look at
the mark in relation to the goods or services, and not in
the abstract, when we consider whether the mark is merely
descriptive. Abcor, 200 USPQ at 218.
The examining attorney has submitted numerous
examples of the use of the term “psychological self-
Ser. No. 76236247
4
defense.” Several examples include the use of the term in
association with courses or classes.
The classes are designed to teach participants basic
physical, verbal and psychological self-defense
skills.
Herald-Sun (Durham, NC), June 5, 2000.
… other seminars at the Garrahy courthouse on
“handling difficult people” that ran from March 16 to
March 23, 1987, and “psychological self-defense[”]
that ran from May 18 to June 4, 1987.
Providence Journal-Bulletin, April 3, 1996.
But there is a gimlet-eyed group out there, many of
them academics, who practice and teach a form of
“psychological self-defense”…
Christian Science Monitor, December 19, 1991.
“You live with it and you tell yourself nothing is
going to happen almost as psychological self defense”
said Francis. “If you live in fear of it, it can
turn you into a pool of putty.”
Boston Globe, October 19, 1989.
Psychological self-defense: self-help strategies for
the physically challenged.
Independent Living, May 1989.
“I think the judge was eminently correct in his
decision. I think psychological self-defense should
be a defense in New York State.” Saltzman said.
Newsday, March 14, 1991.
Unable to handle the trauma, the personality splits
into alter egos as a form of psychological self-
defense.
Palm Beach Post, April 6, 1999.
Yet many healthcare workers, perhaps in psychological
self-defense, believe that accidents could never
happen to them.
Modern Healthcare, July 5, 1999.
Ser. No. 76236247
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Applicant argues that the excerpts “use the phrase
descriptively to refer to a basic technique or intentional,
conscious approach to potentially damaging situations,” but
that his term “is not used in the manner generally set
forth in the articles.” Applicant’s Brief at 4. The term
“psychological self-defense,” however, is used in these
excerpts to describe types of learned and subconscious
psychological self-defense techniques. Some excerpts
describe training for individuals to develop psychological
self-defense techniques while other excerpts indicate that
some “psychological self-defense” mechanisms are apparently
subconscious behavior (“Unable to handle trauma, the
personality splits into alter egos as a form of
psychological self-defense” and “many healthcare workers,
perhaps in psychological self-defense, believe that
accidents could never happen to them”).
Applicant’s services include “classes, seminars and
workshops … relating to [the] philosophy, study and
science of the subconscious existence.” As identified,
such courses and classes on the study of the subconscious
are broad enough to encompass the study of “psychological
self-defense” in areas such as the mechanisms of the
subconscious in handling trauma or dealing with dangerous
occupational situations. The fact that applicant’s
Ser. No. 76236247
6
services could also include other areas of studies of the
subconscious is not critical because if a term is
descriptive of any significant feature of applicant’s
services, the term is merely descriptive. See In re Andes
Candies Inc., 478 F.2d 1264, 178 USPQ 156, 157 (CCPA 1973)
(“A mark is ‘merely descriptive’ under Sec. 2(e)(1) if it
merely describes a characteristic (flavor) of the goods
(candy)”).
Applicant also argues that no competitors are using
the term PSYCHOLOGICAL SELF-DEFENSE for applicant’s exact
services. Certainly, the record indicates that others are
using the term in the area of consciously developing
psychological self-defense techniques. However, even if
applicant were the only user of the term for its specific
services, that would not establish that it is not merely
descriptive. In re Tekdyne Inc., 33 USPQ2d 1949, 1953
(TTAB 1994) (“The fact that applicant will, or intends to
be, the first and/or only entity to use the term "MICRO-
RETRACTOR" for surgical clamps is not dispositive where, as
here, such term unequivocally projects a merely descriptive
connotation”). Here, there is evidence that applicant did
not originate the term “psychological self-defense” and
others use the term in the area of psychology. The fact
that applicant’s classes on the study of the subconscious
Ser. No. 76236247
7
would not be identical to some of those referenced in the
articles does not warrant a finding that applicant’s term
is suggestive. When prospective users of applicant’s
services encounter the term, they will immediately know
that applicant’s classes involve the study of the mind’s
self-defense mechanisms and the use of the subconscious to
create methods to defend oneself.
With its appeal brief, applicant lists four
registration numbers along with the registration date, the
mark, and the identifications of goods or services.3
Applicant argues that the “marks were all allowed and
received federal registration, based on the suggestive
relationship of the phrase to the goods or services.” We
note that one registration is for the mark SELF DEFENSE for
vitamins, which goods are clearly different from
applicant’s services. Two registrations (No. 1,773,507 and
No. 1,866,034) are cancelled. “[A] canceled registration
does not provide constructive notice of anything.” Action
Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563,
3 While normally registrations submitted during an appeal would
not be considered (37 CFR 2.142(d)), inasmuch as the examining
attorney has discussed the registrations and not objected to
them, we will consider them. Applicant’s brief asserts that
these registrations were attached to the brief. There are no
registrations attached to the brief in the application file.
Inasmuch as the attachments are apparently USPTO registrations,
we will refer to the USPTO’s electronic version of those records.
Ser. No. 76236247
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10 USPQ2d 1307, 1309 (Fed. Cir. 1989). In addition, these
two registrations as well as the remaining registration
(No. 2,146,883) are either registered on the Supplemental
Register or the term “self-defense” has been disclaimed in
the registration. Rather than supporting applicant’s
argument that the term “self defense” is suggestive, if
anything, they point toward the descriptiveness of the
term. Finally, even if they were evidence that supported
applicant’s argument, the Federal Circuit has noted that
the fact that applicant can point to other registrations
that have “some characteristics similar to [this]
application, … does not bind the Board or this court.” In
re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001).
In this case, we do not have any doubts that the term
PSYCHOLOGICAL SELF-DEFENSE is merely descriptive when used
in association with applicant’s identified services
involving the philosophy, study, and science of the
subconscious existence.
Decision: The examining attorney’s refusal to
register the term PSYCHOLOGICAL SELF-DEFENSE on the ground
that the term is merely descriptive of the involved
services is affirmed.