HWE, Inc.

Trademark Trial and Appeal Board

Oct 23, 1998

No. 74609202 (T.T.A.B. Oct. 23, 1998)

Paper No. 13
HRW
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB OCT. 23, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re HWE, Inc.
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Serial No. 74/609,202
_______
Michael A. Painter of Isaacman, Kaufman & Painter, P.C. for
applicant.
Barney L. Charlon, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney)
_______
Before Cissel, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
HWE, Inc. has filed an application to register the
mark TSUBO for “electro-mechanical massage apparatus”.
Although originally filed as an intent-to-use application,
the application was subsequently amended to allege use and
to seek registration on the Supplemental Register.
Registration has been finally refused under Section 23
of the Trademark Act on the ground that the matter sought
Ser No. 74/609,202
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to be registered is generic and, thus, incapable of
distinguishing applicant’s goods from those of others.1
Applicant and the Examining Attorney have filed
briefs, but no oral hearing was requested.
The Examining Attorney has submitted as evidence in
support of his refusal the materials accompanying the
letter of protest filed in connection with the case. In
particular, he points to excerpts from the book, Tsubo,
Vital Points for Oriental Therapy, which the Examining

1 The application was refused registration after the evidence
provided in a letter of protest was forwarded to the Examining
Attorney. While the initial refusal was based on Section
2(e)(1), after applicant amended its application to seek
registration on the Supplemental Register, the refusal was
restated as one under Sections 1, 2, and 45 on the ground that
the proposed mark did not function as a trademark. The refusal
was made final on this basis, although the Examining Attorney
also stated in the final refusal that the term TSUBO was deemed
“incapable of being perceived by purchasers as a source
indicator” and “the name of a device used in TSUBO therapy.” In
the Examining Attorney’s brief on appeal, the refusal was set
forth in terms of TSUBO being incapable of functioning as a mark.
While we believe that applicant was adequately put on notice of
the grounds for final refusal, we find the language used by the
Examining Attorney is his refusal of registration on the
Supplemental Register to be inappropriate. Whether or not a
proposed mark presently functions as a mark is not the standard
for registration on the Supplemental Register; it is whether the
matter submitted for registration has the capacity of
distinguishing applicant’s goods from those of others and of
serving, at some point, as a mark for applicant. It is true that
a refusal on the basis that the matter sought to be registered is
generic may be couched in terms of Sections 1, 2, and 45, but
such an analysis is applicable only to registration on the
Principal Register. On the Supplemental Register, the question
is capability, and the refusal should be stated in terms of the
specific reason that the matter cannot, rather than does not,
function as a mark. In this case, the reason is because the word
“Tsubo” is generic.
Ser No. 74/609,202
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Attorney has ascertained to be available in the United
States, even though it is a Japanese publication. In this
book, the term “Tsubo” is defined as the “points on the
human body...[which by] pressing, rubbing, or massaging
them...can relieve many symptoms of illness.” (Id. at 29).
“Tsubo therapy” is described as consisting of the
application of pressure to the appropriate “tsubo” for the
particular health problem involved. The remaining
publications submitted with the letter of protest contain
additional information with respect to the “Tsubo points”
and “Tsubo therapy”, including the use of massage equipment
in applying pressure to these points.2 The Examining
Attorney has also submitted excerpts from the Nexis
database describing “...therapists [who] concentrate on
various trigger points (tsubos) in order to release energy
(chi) and relax the nerves and muscles” (The Record, Aug.
9, 1993) and showing a listing for sale of a “Tsubo
massager” (The Independent, Dec. 9, 1995).
On the basis of this evidence, the Examining Attorney
considers the term “Tsubo” to refer to “the name of a part
of the body to which a particular form of massage is

2 Although the publications are in English, we have no assurance
that they are available in the United States and thus have placed
no determinative weight on the information found therein. This
information, however, appears to be no more than cumulative to
information found elsewhere by the Examining Attorney.
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applied, as well as to a device used to perform this type
of massage.” Thus, he takes the position that applicant’s
goods would be perceived by the relevant public as the name
of, or the generic term for, the types of massagers which
are designed for use in connection with the Tsubo points.
Applicant argues that the fact that the term “Tsubo”
is used in Oriental physical therapy to describe “trigger
points” is not sufficient to refuse registration on the
Supplemental Register. Applicant maintains that the only
issue is whether the term is capable of eventually serving
as a trademark, which applicant argues holds true for TSUBO
as used by applicant on its massage equipment.
Generic terms are by definition incapable of
indicating source and thus can never attain trademark
status. In re Merrill Lynch Pierce, Fenner, and Smith
Inc.,. 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987). The
critical issue in determining whether a term is generic is
whether the members of the relevant public primarily use or
understand the term sought to be registered to refer to the
genus of goods or services in question. H. Marvin Ginn
Corp. v. International Association of Fire Chiefs Inc., 782
F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
In a recent decision, the Board noted that, in making
a determination as to whether a term is generic in
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reference to the goods involved, consideration must be
given to the fact that a product may fall not only into a
broad category of goods, but also a narrower category
within this broad category. See In re Central Sprinkler
Co., ___USPQ2d___,(TTAB 1998) [ATTIC held to be generic
term for category of sprinklers for protection of attics].
In the present case, the broad category or genus into which
applicant’s goods fall is massage apparatus. But, at the
same time, there can be narrower categories within this
genus, directed to the particular type of massage or
therapy involved. The evidence of record is sufficient to
show that the term “Tsubo” is the name of such a type of
massage or therapy, and that it serves to designate not
only this type of massage or therapy, but also the
equipment used to perform the therapy. The evidence also
establishes that the relevant public, namely, persons
associated with the field of massage or physical therapy,
would recognize the term in this manner.
Furthermore, the fact that applicant seeks to register
only the adjective TSUBO for its apparatus and not the
complete name TSUBO GLOVE, as shown on its specimens, does
not avoid the issue of genericness. As pointed out in In
re Central Sprinkler Co., supra, an adjective, as well as a
noun, may be generic, when the adjective identifies a
Ser No. 74/609,202
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particular category. See also, In re Reckitt & Colman,
North America Inc., 18 USPQ2d 1389 (TTAB 1989)[PERMA PRESS
held generic for soil and stain removers]. Here, TSUBO in
itself names the type of massage or therapy for which
applicant’s apparatus is intended. Thus, the term is
generic for massage equipment in this category and cannot
serve to distinguish applicant’s goods from similar goods
of its competitors. Moreover, applicant has no right to
preclude competitors from freely using this generic term to
name their goods.
Accordingly, we find the term TSUBO to be generic and
incapable of distinguishing applicant’s goods from those of
others.
Decision: The refusal to register on the Supplemental
Register is affirmed.
R. F. Cissel
C. E. Walters
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board
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