Michele A. Olsen

Trademark Trial and Appeal Board

Feb 5, 2004

No. 76169360 (T.T.A.B. Feb. 5, 2004)

Mailed: 2/5/2004
Paper No. 17
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Michele A. Olsen
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Serial No. 76169360
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Lynn A. Sullivan and Seth A. Rose of Leydig, Voit & Mayer,
Ltd. For Michele A. Olsen.
Elizabeth A. Hughitt, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney).
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Before Simms, Seeherman and Bottorff, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Michele A. Olsen has appealed from the final refusal
of the Trademark Examining Attorney to register ENERGY
ARCHITECTURE CREATING ENVIRONMENTS TO EMPOWER PEOPLE for
"architectural design services for business and consumers,
namely preparation and analysis of interior and exterior
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76169360
2
designs of space using energy point information."1
Applicant has disclaimed exclusive rights to the word
ARCHITECTURE apart from the mark. However, the Examining
Attorney has made final a requirement that applicant
disclaim not just the word ARCHITECTURE, but the phrase
ENERGY ARCHITECTURE, and because applicant has not complied
with that requirement, the Examining Attorney has refused
registration.
Applicant and the Examining Attorney have filed
briefs; applicant did not request an oral hearing.
Section 6(a) of the Trademark Act, 15 U.S.C. 1056(a),
provides, in part, that the Director may require the
applicant to disclaim an unregistrable component of a mark
otherwise registrable. Section 2(e)(1), 15 U.S.C.
1052(e)(1), prohibits the registration of a mark which,
when used on or in connection with the goods of the
applicant, is merely descriptive of them. Section 3, 15
U.S.C. 1053), makes these provisions applicable to the
registration of service marks.
A mark is merely descriptive, and therefore
unregistrable under Section 2(e)(1), if it forthwith
conveys information concerning any significant ingredient,
1 Application Serial No. 76169360, filed November 22, 2000, and
asserting a bona fide intention to use the mark in commerce.
Ser No. 76169360
3
quality, characteristic, feature, function, purpose,
subject matter or use of the goods or services. See, e.g.,
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)
and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
215, 217-18 (CCPA 1978). Whether a term is merely
descriptive is determined not in the abstract but in
relation to the goods or services for which registration is
sought, the context in which it is being used or is
intended to be used on or in connection with those goods or
services and the significance that the term would have to
the average purchaser of the goods or services because of
the manner of such use. See In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979).
Applicant has acknowledged that she "offers
architectural design services that utilize the discipline
of feng shui," brief, p. 8, and that feng shui is "the
heart of Applicant's services." Brief, p. 3. It is the
Examining Attorney's position that the word ENERGY is
merely descriptive of applicant's services because "energy"
is the primary characteristic of feng shui architecture.
In support of this position, she points to the fact that
applicant's own identification of services, "architectural
design services for business and consumers, namely
preparation and analysis of interior and exterior designs
Ser No. 76169360
4
of space using energy point information," describes "energy
point information" as a central feature of the services.
The Examining Attorney has also made of record numerous
articles and excerpts taken from the NEXIS data base and
from the Internet, including the following:
Feng shui (pronounced "fung schway")
instructs that buildings should be
designed in harmony with nature. Feng
shui practitioners believe that a
building's architecture, location, and
interior design should be carefully
planned to produce a balanced flow of
cosmic energy, or ch'i (pronounced
"chee").
"The Boston Globe," February 24, 2002
...feng shui, the 6,000-year-old
Chinese art of arranging the
environment to maximize positive
energy.
"Pittsburgh Post-Gazette," August 17,
2002
While the chic believe that Feng Shui
is moving furniture around to make your
living area appear bigger, the more
traditional definition of the ancient
art is "maximizing positive energy
through architecture."
"The Boston Herald," June 2, 2001
Bernie Berenson, a graduate of the Feng
Shui Institute of America, will teach
the techniques of placement in
architecture, interior design and
common sense. She will explain the
five basic elements of feng shui, the
importance of balance and the need to
create ways for energy to flow through
your home or garden.
"The Tennessean," April 17, 2002
Ser No. 76169360
5
Graphic: PHOTOS...FENG SHUI AT WORK: in
the new offices of Yoshino Architects
in Boca Raton, designed according to
feng shui principles, a bell designed
by world-renowned visionary architect
Paolo Soleri is placed by the front
door to optimize energy and
productivity.
"Sun-Sentinel" (Fort Lauderdale),
January 7, 2002
Take feng shui. A friend of mine, an
architect, went to Hong Kong recently
to take feng shui lessons. Why? Since
many of his clients believe in this art
of geomancy, he has to seriously study
the chi, the flow of cosmic energy as
perceived by Taoist priests, in order
to build suburban houses that suit many
of his buyers.
"Los Angeles Times," August 26, 2001
Bender's architecture subscribes to a
very different aesthetic, based in feng
shui and other Eastern theories. Even
a short conversation with him leads
quickly to holistic notions of "chi"
energy and "architecture as "healing."
"The Oregonian," August 15, 2001
The couple, who based the design [of
their home] on a house they had lived
in briefly in Wales, hired a feng shui
master to "ensure the balance of energy
was right" before getting the architect
to draw the plans."
"Dayton Daily News," June 22, 2001
Ms. Burnett, who is certified in feng
shui, says the ancient Chinese study of
energy and architecture is growing in
popularity as well, and that
contributes to homeowners' interest in
water.
"The Washington Times," June 13, 2001
Ser No. 76169360
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Wonder what feng shui is? Based on a
belief in patterns of yin and yang
found in Chinese dualistic philosophy,
it's the 4000-year-old practice of
specifically positioning objects—
graves, buildings, furniture—to
positively affect the life flow of
energy (chi or qi) in one's
surroundings, thereby promoting health,
wealth, and happiness.
"Miami New Times," April 5, 2001
Designed by a Yale-trained architect
who is a master in feng shui (the
ancient Chinese art of arranging a room
to direct and harness its energy), it
is an element, yet warm mixture....
"Newsday," (New York), June 27, 2000
Using the ancient Chinese science feng
shui, Pildis says, she can help clients
open the flow of energy, or chi, by
taking away, adding and moving things
in a room. The feng shui principles of
design, ecology, architecture and
mysticism, she says, create a peaceful
atmosphere.
"The Hartford Courant," June 19, 2000
We have no doubt that the word ENERGY, and the phrase
ENERGY ARCHITECTURE, would immediately convey to consumers
of applicant's architectural design services of preparation
and analysis of interior and exterior designs of space
using energy point information, information about a
significant characteristic of those services, namely, that
the architectural services use information about energy.
Further, because applicant's architectural services are
based on the principles of feng shui, and energy flow is a
Ser No. 76169360
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major feature of that practice, consumers who view
applicant's mark in the context of her services will
immediately understand the descriptive significance of the
words ENERGY ARCHITECTURE.
Applicant has argued that ENERGY ARCHITECTURE is
suggestive because it has multiple possible connotations to
the average purchaser of architectural design services.
Much of this argument is based on the fact that the
Examining Attorney who originally examined applicant's
application took the position that "energy architecture" is
a term various companies use "to describe a type of
alternative architecture style used in many buildings and
structures to improve energy efficiency." September 26,
2002 Office action.2 It appears to us that the prior
Examining Attorney took a very formulaic approach to the
question of descriptiveness, and merely submitted excerpts
from the NEXIS data base in which the terms "energy" and
2 The application was assigned to the present Examining Attorney
after applicant filed her appeal brief and this Examining
Attorney determined that the proper reason for requiring the
disclaimer was not that "energy architecture" was a type of
architecture, but that it was descriptive of architecture using
principles of feng shui. Therefore, she requested that the
application be remanded to her so that she could submit evidence
supporting this reasoning. In accordance with Board policy that
such requests be granted when an application is assigned to a new
attorney, the application was remanded to the Examining Attorney.
Applicant subsequently filed a supplemental brief addressing the
new arguments and evidence and, as allowed in the Board order,
submitted responsive evidence.
Ser No. 76169360
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"architecture" appeared within a few words of each other,
without regard to the meaning of the sentence. Thus, most
of the excerpts refer not to "energy architecture", but to
"low energy architecture" or "alternative energy
architecture."3 We do not regard the evidence or arguments
of the prior Examining Attorney as persuasive that "energy
architecture" is an alternative for the terms "low-energy
architecture" or "alternative energy architecture" and,
more importantly, we do not think the relevant consuming
public would regard "energy architecture" as having such a
meaning. Thus, we do not find that "energy architecture"
has multiple meanings when used in connection with
applicant's feng shui-based architectural design services
of preparing and analyzing interior and exterior designs of
space using energy point information.
Applicant also argues that energy is not the key
feature of feng shui, noting that the Merriam-Webster
OnLine Dictionary definition of "feng shui" does not refer
to the word or the concept of energy: "a Chinese geomantic
practice in which a structure or site is chosen or
configured so as to harmonize with the spiritual forces
3 The Examining Attorney even submitted articles in which
"energy" is used in an artistic sense, e.g., "beauty is the
binding energy of architecture."
Ser No. 76169360
9
that inhabit it; also: auspicious orientation, placement,
or arrangement as determined by feng shui." Although
"energy" is not specifically mentioned in this definition,
it is clear from the evidence submitted by the Examining
Attorney that the purpose of feng shui is to place
buildings and objects within those buildings with a focus
on spiritual energy. More importantly, the evidence
establishes that in the minds of the consuming public,
energy is a central concept of feng shui.
Applicant also asserts that even if the separate
elements ENERGY and ARCHITECTURE "can separately be defined
as having something to do with the nature of the
Applicant's services," supp. brief, p. 5, the combination
ENERGY ARCHITECTURE is not descriptive. However, we do not
find that the term ENERGY ARCHITECTURE creates a new
meaning in which the descriptiveness of the individual
words is lost, in the manner of SUGAR & SPICE for bakery
products, which conveys not only that the bakery products
contain these ingredients, but also evokes the nursery
rhyme. See In re Colonial Stores, Inc., 394 F.2d 549, 157
USPQ 382 (CCPA 1968). In the context of the applicant's
services, consumers would recognize only the meaning that
applicant provides architecture services with respect to
energy point information.
Ser No. 76169360
10
Finally, applicant contends that there is no evidence
of any third-party registrations in which the term "energy
architecture" appears in the identification of goods and
services, nor are there any registrations in which ENERGY
ARCHITECTURE is disclaimed. With respect to the former
point, there is no indication as to how many, if any,
third-party registrations there are for specialized
services of the type offered by applicant, and therefore
the fact that applicant was unable to find the term "energy
architecture" listed in an identification of goods is not
particularly probative. As for applicant's second point,
because merely descriptive terms are not registrable, the
fact that businesses have not adopted an unregistrable
element as part of their marks is not persuasive that such
an element is not merely descriptive. We note that
applicant is not contending that marks that include the
words ENERGY ARCHITECTURE have been registered without a
disclaimer.
Decision: The requirement for a disclaimer of ENERGY
ARCHITECTURE is affirmed. However, if applicant submits
the required disclaimer within thirty days, the application
will proceed to publication.