Jack Groppel

Trademark Trial and Appeal Board

May 30, 2000

No. 74636932 (T.T.A.B. May. 30, 2000)

Paper No. 15
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 5/30/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Jack Groppel
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Serial No. 74/636,932
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Patrick R. Roche of Fay, Sharpe, Beall, Fagan, Minnich &
McKee for Jack Groppel.
Amos T. Matthews, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Cissel, Wendel and Holtzman, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On February 17, 1995, Jack Groppel applied to register
the mark "CORPORATE ATHLETE" on the Principal Register for
"educational services; namely, conducting seminars and
workshops in the field of executive personnel and support,"
in Class 41, and "counseling services in the field of
executive personnel development and sport science," in
Ser No. 636,932
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Class 42. Applicant claimed use of the mark in connection
with these services since September 1, 1990.
The Examining Attorney refused registration under
Section 2(e)(1) of the Lanham Act on the ground that
applicant’s mark merely describes the services set forth in
the application.
Applicant presented arguments that the mark is not
merely descriptive of its services, but rather, at most, is
suggestive of them.
The Examining Attorney was not persuaded, however, and
in the second Office Action the refusal to register was
made final. Attached to the final refusal were copies of a
dictionary definition of the word "athlete" as "one who is
trained or skilled in exercises, sports, or games requiring
physical strength, agility, or stamina." The same
dictionary defined "corporate" as "of or relating to a
corporation," and "corporation" as "a body formed and
authorized by law to act as a single person, although
constituted by one or more persons, and legally endowed
with various rights and duties including the capacity of
succession."
Also attached to the final refusal were a number of
excerpts from published articles, retrieved from the Nexis
database, wherein the term "corporate athlete" or its
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plural form is used. Although a great number of excerpts
were submitted with the Office Action, the following
examples were apparently deemed the most probative by the
Examining Attorney, because they were reiterated (in this
order and manner) in his brief:
Not even a strong wind with a nippy bite to it
stopped the corporate athletes or their families and
friends from having a good time.

When they weren’t hunkered under the company
tents near the barbecue pits, the people walked…
Las Vegas Business Press, April 3, 1995
… sway to describe waves of stress and recovery.
Chalices of 'carbobites,' or energy tablets, that sit
on the seminar tables reinforce the image.
The corporate athlete is stressed emotionally and
mentally. That's inescapable. The required recovery
is physical exercise. The front office equivalent of
the tennis match might unfold like this:
Fortune, November 28, 1994
… McEnroe, as well as the Chicago White Sox and
countless other top athletes, will present his program
on fitness for the corporate athlete in an installment
of Sports System's Multi-Faceted Sports-Talk series.
Business Wire, April 29, 1994
The course will follow the West River Drive,
beginning and ending at the Philadelphia Art Museum.
More than 2500 corporate athletes, representing more
than 122 companies, will compete…
PR Newswire, July 20, 1990
. … at least a decade. But the ski classic, which
begins Dec. 9 in Bear Valley, California, offers
corporate athletes and 18-event circuit that concludes
with national finals April 6 in Aspen, Colorado.
USA Today, Novemb3er 30, 1989
… California, to participate in the world
corporate games. This two-year-old event, planned as
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a quasi-Olympics for the corporate athlete, started
Saturday and continued through yesterday.
The New York Times, October 2, 1989
… Oct. 22 - Nov. 5, billed as the largest multi-
sport corporate event ever held, will feature more
than 10,000 corporate athletes competing in 20
sporting events around the Bay Area. Athletes will
represent about 1900 corporations from 23…
Business Wire, October 13, 1988
Although some of the above-referenced excerpts plainly
have no relevance to the issue before us in this appeal, it
is fair to summarize the entire body of Nexis evidence
submitted by the Examining Attorney as demonstrating that
the term sought to be registered is used in several
different ways. The largest category of these excerpts
show the term used in reference to athletes who compete in
athletic competitions on behalf of the corporations by whom
they are employed. Other examples show the term used to
draw an analogy between businessmen (and business women)
and athletes, with respect to the challenges and stresses,
both emotional and physical, required to succeed in the
competitive arenas of either business or sport.
Additionally, several of the excerpts appear to make
reference to applicant's own educational and consulting
services, while a few others, also not cited in the
Examining Attorney's appeal brief, appear to relate to
particularly successful athletes who are compared to
Ser No. 636,932
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corporations in terms of their collateral business
activities.
Applicant filed a timely notice of appeal from the
final refusal to register, along with a request for
reconsideration. The Examining Attorney declined to change
his position, so the appeal went forward. Both applicant
and the Examining Attorney filed briefs, and applicant
filed a reply brief, but applicant did not request an oral
hearing before the Board.
The only issue before us on appeal is whether the mark
"CORPORATE ATHLETE" is merely descriptive of the
educational services and counseling services specified in
the application, within the meaning of Section 2(e)(1) of
the Lanham Act. After careful consideration of the record
and arguments before us, we hold that the refusal to
register is not appropriate in this case.
The test for whether a trademark or service mark runs
afoul of Section 2(e)(1) of the Act is not seriously
disputed. A mark is unregistrable if it immediately and
forthwith describes a quality, characteristic, function,
feature, or purpose of the identified services. In Re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
As noted above, applicant’s services are set forth in
the application as "educational services; namely,
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conducting seminars and workshops in the field of executive
personnel and support," and "counseling services in the
field of executive personnel development and sports and
science." The specimen of record, which appears to be an
advertising brochure for applicant’s services, provides
additional insight into the programs and workshops offered
by applicant. This advertisement makes it clear that
applicant’s services do not relate to training athletes who
compete for corporations or to athletes whose business
activities resemble those of corporations. Instead,
applicant renders educational and counseling services
related to executive personnel. Applicant’s approach to
improving business performance is to analogize corporate
activity to athletic competition. Applicant provides an
executive training program wherein the following topics,
among others, are discussed: "Stress Management: Applying
Sport Strategies to Business"; "Time Management: The Key to
Productivity and Success"; "Peaking for That One Big
Business Moment"; "Communication Techniques: The Keys to
Success"; "Goal Setting For the Corporate Athlete"; and
"Building Teamwork: Effective Management Techniques."
Plainly, the term sought to be registered is not
merely descriptive of applicant’s services. It is
suggestive, in that the parallels between business
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competition and athletic competition are emphasized, but
the mark does not immediately convey, with any accuracy or
specificity, any characteristic or feature of the services
set forth in the application. Some thought process is
required to make the analogy between actual athletes and
people in business. This mental step makes the difference
in this case between a term which is merely descriptive of
the services and one which is only suggestive of them.
Another topic listed in applicant’s advertising is
"Training The Corporate Athlete," wherein the promotion of
"day-to-day enthusiasm" and "recognizing strengths and
weaknesses to reach peak levels of energy and productivity"
are discussed, along with the role of fitness and nutrition
in maintaining peak performance. Still other discussions
relate to the importance of fitness and nutrition in
relation to business and personal success.
The fact that health and fitness are discussed as part
of applicant’s educational and counseling services for
businesspeople does not make "CORPORATE ATHLETE" merely
descriptive of those services, even though "sport science"
is mentioned at the end of the recitation of services in
Class 42. Again, what makes this mark suggestive of these
services, rather than merely descriptive of them, is that
applicant’s educational and counseling services are based
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on an analysis of the parallels between athletic
competition and business, but the services do not involve
actual athletes who compete on behalf of corporations.
The Examining Attorney has not established that
"CORPORATE ATHLETE" immediately conveys information about a
feature, characteristic, quality, function, or purpose of
applicant’s educational and counseling services.
Accordingly, the refusal to register based on Section
2(e)(1) of the Lanham Act is reversed.
R. F. Cissel
H. R. Wendel
T. E. Holtzman
Administrative Trademark Judges
Trademark Trial & Appeal Board
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