Krisa Performance, LLC, assignee of Timothy Ferriss

Trademark Trial and Appeal Board

Sep 26, 2013

No. 85511858 (T.T.A.B. Sep. 26, 2013)

Mailed: September 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Krisa Performance, LLC, assignee of Timothy Ferriss1
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Serial No. 85511858
Filed on January 9, 2012
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Patchen M. Haggerty of Dorsey & Whitney LLP for Krisa
Performance, LLC.

Janet Lee, Trademark Examining Attorney, Law Office 102
(Mitchell Front, Managing Attorney).
_______

Before Seeherman, Wellington and Lykos, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Timothy Ferriss filed an application to register PAGG
(in standard characters) as a trademark for “providing
information about nutritional benefits of dietary
supplements and nutrition” in International Class 44. The
application has since been assigned to Krisa Performance,

1 On April 16, 2013, after the commencement of this ex parte
appeal, an assignment of ownership of the application from
Timothy Ferriss to Krisa Performance, LLC was recorded with the
USPTO (at reel/frame 5007/0829). According to the papers filed
with the Office, the assignment was executed on December 28,
2012.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85511858
2
LLC (see footnote 1). Mr. Ferriss and Krisa Performance,
LLC are hereinafter interchangeably referred to as
“applicant.”
The application, as originally filed, sought
registration on the Principal Register, and was based on an
allegation of use in commerce, under Section 1(a) of the
Trademark Act. After the examining attorney issued a final
refusal of registration on the grounds that the applied-for
matter failed to function as a mark, and that it was merely
descriptive of the services, applicant filed a request for
reconsideration in which it amended the filing basis to
intent-to-use, under Section 1(b). Applicant subsequently
filed an amendment to allege use, with a new specimen,
asserting the mark was first used anywhere on December 14,
2010 and in commerce on February 8, 2013. Applicant also
amended the application to seek registration on the
Supplemental Register.
As a result of the amendment to the Supplemental
Register, the examining attorney withdrew the refusal on
the ground of mere descriptiveness, but maintained the
refusal of registration on the ground that the mark, as
Serial No. 85511858
3
used on the specimens of record, does not function as a
service mark.2
On the same day the Office action denying the request
for reconsideration issued, applicant filed this appeal.
Appeal briefs have been filed.3

2 Although the examining attorney cites to Sections 1, 2 and 45
of the Trademark Act in her brief, the appropriate statutory
basis for the refusal falls under Sections 23 and 45, 15 U.S.C.
§§ 1091 and 1127, because applicant seeks registration on the
Supplemental Register. See TMEP Section 1202 (April 2013). The
incorrect citation of the statutory basis does not have any
effect on this appeal because it is clear from the briefs that
applicant is aware of the substantive basis for the refusal.
3 The examining attorney's objection to materials attached to
applicant's appeal brief on the basis that they were not made of
record during prosecution of the involved application is
sustained. See Trademark Rule 2.142(d). See also In re Volvo Cars
of North America, Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1998); In
re Jump Designs LLC, 80 USPQ2d 1370, 1372 (TTAB 2006); and In re
District of Columbia, 101 USPQ2d 1588, 1591 (TTAB 2012).
Accordingly, these materials have not been considered.
Serial No. 85511858
4
The specimen originally submitted with the application
appears in relevant part as follows:

Serial No. 85511858
5
With its amendment to allege use, applicant submitted
a specimen that, again in relevant part, is depicted below:

The examining attorney contends that the original
specimen “shows the mark being used as a subtitle of a
chapter in a book” and the latter specimen merely shows the
mark being used “as a heading for a posting in applicant’s
blog, not as source of the information being provided.”
Brief, p. 4.
Serial No. 85511858
6
In its brief, applicant focuses on the latter specimen
and argues that:
[applicant or Mr. Ferriss] uses the PAGG mark in blog
posts on his personal blog on the topics of
information about the nutritional benefits of dietary
supplements and nutrition. In the subject specimen,
applicant provides information about a fat-loss
cocktail that comprised ephedrine, hydrochloride,
caffeine, and aspirin and the negative side effects he
experienced while taking these supplements. While
applicant does state that he created a stimulant-free
supplement he calls PAGG, he also provides the above
referenced information and states that he will be
writing about other options for reducing and
eliminating stimulant use in the coming months under
the PAGG mark.”

Brief, p. 3.

In response to applicant’s characterization of the
latter specimen, the examining attorney asserts that there
is “no substantiation for applicant’s claims that it uses
the mark to identify the source of the relevant information
services.” Brief, p. 6.
Sections 23 and 45 of the Trademark Act provide the
statutory basis for refusal to register subject matter on
the Supplemental Register. Specifically, Section 23 states
that in order for any matter to be registered on the
Supplemental Register it “must be capable of distinguishing
applicant’s goods or services” and Section 45 defines a
“service mark,” in pertinent part, as “identify[ing] and
distinguish[ing] the services of one person, including a
Serial No. 85511858
7
unique service, from the services of others and to indicate
the source of the services…”
Thus, the critical question in determining whether a
proposed mark, such as the term PAGG, is capable of
functioning as a trademark is the commercial impression it
makes on the relevant public (e.g., whether the term sought
to be registered would be perceived as a mark identifying
the source of the services or merely as an informational
phrase). In re Aerospace Optico, Inc., 78 USPQ2d 1861,
1862 (TTAB 2006) (“the mark must be used in such a manner
that it would be readily perceived as identifying the
specified goods [or services]. ... The mere fact that a
designation appears on the specimen of record does not make
it a trademark. ... A critical element in determining
whether matter sought to be registered as a trademark is
the impression the matter makes on the relevant public.”
(citations omitted)); In re Volvo Cars of North America
Inc., 46 USPQ2d 1455, 1459 (TTAB 1998); In re Remington
Products Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); In re
Morganroth, 208 USPQ 284, 287 (TTAB 1980). In this regard,
we look to the specimen to determine how consumers likely
would perceive the subject matter sought to be registered.
In re Aerospace Optico, Inc., 78 USPQ2d at 1862; In re The
Serial No. 85511858
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Signal Companies, Inc., 228 USPQ 956, 957 (TTAB 1986); In
re Wakefern Food Corp, 222 USPQ 76, 77 (TTAB 1984).
Based on our review of the specimens of record, we
agree with the examining attorney that PAGG is being used
merely as the title or heading for a entry in “The Blog of
Tim Ferriss” (or, with respect to the original specimen, as
a subheading of a chapter or section of the publication).
As to the blog site specimen, PAGG is being used to
describe a “stimulant-free supplement” and the supplement’s
inception is described under the title “PAGG.”4 Readers
will understand PAGG as identifying the subject matter of
the blog posting and not as identifying the source of any
information being provided via the blog. While it may be
inferred that PAGG is a proprietary supplement created by
Mr. Ferriss, it is not evident from the specimens before us
that PAGG is being used a source identifier for the
information services which are identified in the
application. Again, the blog merely touts the benefits of
a weight loss supplement named PAGG.
Decision: The refusal to register PAGG is affirmed.

4 While the issue was not raised in their briefs, we note that
applicant's use of the “TM” in the specimen does not obviate the
failure to function refusal or transform PAGG into a service
mark. In re Aerospace Optics Inc., 78 USPQ2d at 1864; In re
Brass-Craft Mfg. Co., 49 USPQ2d 1849, 1853 (TTAB 1998).