M.S.B.H. Alliance, LLCv.Kabbalah Centre International, Inc.

Trademark Trial and Appeal Board

Jul 29, 2013

No. 91201431 (T.T.A.B. Jul. 29, 2013)

Goodman

Mailed: July 29, 2013

Opposition No. 91201431

M.S.B.H. Alliance, LLC

v.

Kabbalah Centre
International, Inc.

Before Taylor, Bergsman, and Kuczma, Administrative
Trademark Judges.

By the Board:

Applicant Kabbalah Centre International, Inc., seeks
to register in standard character form KABBALAH RED STRING
for “Jewelry, namely, string that is tied around the wrist
of the user to form a bracelet” in International Class 14.1
Opposer, M.S.B.H. Alliance, LLC, has opposed registration
on the grounds that “Kabbalah red string” is generic, and
if not generic, “Kabbalah red string” is merely
descriptive.
Now before the Board is opposer’s motion for summary
judgment, filed, June 20, 2012, on the grounds for

1 Application Serial No. 85182847, filed November 22, 2010
under Section 1(a), claiming dates of first use and use in
commerce of March 19, 2004; RED STRING disclaimed.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451 THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Opposition No. 91201431

2
opposition, and applicant’s cross-motion for summary
judgment on the grounds for opposition and on the basis of
acquired distinctiveness, filed February 20, 2013.2 The
motions are fully briefed.
Opposer’s evidence on summary judgment consists of the
declaration of its counsel, Brad D. Rose, and accompanying
exhibits. Opposer’s evidence in reply and in response to
applicant’s cross-motion consists of the declaration of
opposer’s counsel, Nicole E. Kaplan, and accompanying
exhibits.
Applicant’s evidence in response to opposer’s motion
for summary judgment and on its cross-motion consists of
the declaration of Lisa D. Kessler, head of legal and
business affairs for applicant, and accompanying exhibits;
and the declaration of its counsel, Peter E. Nussbaum, and
accompanying exhibits. Applicant’s evidence on reply
consists of the second declaration of counsel Peter E.
Nussbaum, and accompanying exhibits.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine disputes of material
fact, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(a). A party moving

2 On June 27, 2012, the Board issued an order deferring the
briefing and consideration of the motion for summary judgment.
The Board then reset applicant’s time to respond to the motion
for summary judgment on January 23, 2013.
Opposition No. 91201431

3
for summary judgment has the burden of demonstrating the
absence of any genuine dispute of material fact. See
Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). On
summary judgment, the evidence must be viewed in a light
favorable to the non-moving party, and “all justifiable
inferences are to be drawn” in the nonmovant's favor. See
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993).
Genericness
A mark is a generic name if it refers to the class,
genus or category of goods and/or services on or in
connection with which it is used. See In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807,
1811 (Fed. Cir. 2001). The test for determining whether a
mark is generic involves a two-step inquiry. First, what
is the genus (category or class) of goods or services at
issue? Second, is the term sought to be registered
understood by the relevant public primarily to refer to
that genus (category or class) of goods or services?
H. Marvin Ginn Corp. v. International Association of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir.
1986).
With regard to the first part of the genericness
inquiry, the evidence of record establishes that there is
Opposition No. 91201431

4
no genuine dispute of material fact that the category or
class of goods is the wording used in the application to
identify the goods. See Magic Wand, Inc. v. RDB, Inc., 940
F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) citation
omitted (“… a proper genericness inquiry focuses on the
description of services [or goods] set forth in the
[application or] certificate of registration”). In this
case, the broad general category of goods is jewelry and
more particularly, bracelets.3
With regard to the second part of the inquiry,
neither party has identified the relevant public. The
“relevant public” for goods sold in the marketplace is
limited to actual or potential purchasers of the goods.
Magic Wand, 19 USPQ2d at 1552-53.
“Whether a term is generic is determined by actual
common usage.” In re Deutsche Airbus GmbH, 224 USPQ 611,
614 n. 12 (TTAB 1984). A finding of genericness requires
“a substantial showing . . . that the matter is in fact
generic” and that such showing “must be based on clear
evidence of generic use.” In re Merrill Lynch, Pierce,
Fenner, and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143
(Fed. Cir. 1997).

3 Applicant states in its brief on p. 14 “The only reasonable
definition of the subject genus of goods would be ‘bracelets’ or
‘red string bracelets.’” See also applicant’s identification of
goods, application Serial No. 85182847.
Opposition No. 91201431

5
Evidence of the relevant public's understanding of a
term may be obtained from any competent source including
consumer surveys, dictionary definitions, newspapers and
other publications. In re Northland Aluminum Products, 777
F.2d at 1559, 227 USPQ 961, 963 (Fed. Cir. 1985).
Opposer has provided evidence to show various
uses of the term “Kabbalah red string” on Internet websites
to support its assertion that the relevant public uses the
term “Kabbalah red string” in a generic manner. Web-based
information provides evidence of consumer perception of a
term. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1833 (Fed. Cir. 2007) (online sources are
probative of how a term would be perceived).
These exhibits include examples of use of “Kabbalah
red string” on third-party Internet websites (emphasis
added):
The Kabbalah Red String has been used for
centuries for protection from this ill will. . .
. You can have a Kabbalah Red String for just
pennies.” (Tolentino, J.C., How To Tie a Kabbalah
Red String, ehow.com).

The Kabbalah red string also has a strong
connection to Rachel, one of the matriarchs of
the Jewish religion. . . . The Kabbalah red
string itself is meant to be wrapped seven times
around the tomb where Rachel lies buried, before
being cut into several pieces, each one thus
becoming a Kabbalah red string bracelet. . . .”
(www.zoharebook.com).

Opposition No. 91201431

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In helping you achieve all your future plans, I
have a little solution, which is above
everything, fashionable – the kabbalah red string
or the kabbalah bracelet. (Ghintare, S., Is the
Kabbalah Red String or Bracelet The New Fashion
Trend of 2013? Why Are We Wearing It? January 5,
2013, http://thefashiontag.wordpress.com).

There are some serious stories about having the
famous Kabbalah Red String bracelet. . . . In the
market the said Kabbalah Red String bracelet can
be sold [sic] at least $15.00 a pop, that’s
pretty much expensive for a thin string. So let
me give you a hand on trying to make your own
Kabbalah Red String bracelets without spending
$15 bucks on it.
(Magcale, Jron, Make Your Own Kabbalah Red String
Bracelet, November 4, 2008, www.turks.us).

A Kabbalah red string bracelet has strung to it,
various good luck charms like Hamsa hand, Star of
David, coins in gold and silver with Kabbalistic
and Hebrew names of gods, Judaica charms, evil
eye stones and others . . . . (Baldwin, Errol,
Wear Kabbalah Red String bracelet to fulfill all
your dreams & aspirations. March 10, 2011,
republished at www.zimbio.com).

As of today many powerful and well-to-do people
throughout the world prefer wearing kabbalah red
string bracelets instead of precious stones and
gaudy jewelry. (Kabbalah Red String bracelets,
www.kabaltalisman.com).

Opposer’s evidence also includes use by applicant’s
competitors i.e., internet sellers providing competing
goods. “[T]he cases have recognized that competitor use is
evidence of genericness,” BellSouth Corp. v. DataNational
Corp., 60 F.3d 1565, 35 USPQ2d 1554, 1558 (Fed. Cir. 1995),
and that “evidence of competitors’ use of particular words
as the name of their goods [or services], is of course
Opposition No. 91201431

7
persuasive evidence that those words would be perceived by
purchasers as a generic designation for the goods [or
services.]” Phillip Morris Incorporated, et. al. v.
Williamson Tobacco Corporation, 230 USPQ 172, 176 (TTAB
1986).
The following examples of usage by Internet retailers
are illustrative (emphasis added):
www.jewelrythatsunique.com advertises Kabbalah
Red String Authentic Red String Bracelet for
Protection from Evil Eye.

www.amuletgifts.com states Kabbalah jewelry is
inspired by the well known Kabbalah Red String
which according to ancient tradition was wound
around the marker on Rachel’s grave seven times
and is worn to receive spiritual guidance and
blessings . . . . and advertises Four Names
Kabbalah Red String Bracelet.

www.israel-depot.com advertises Authentic Blessed
Kabbalah Red String Bracelet.

www.amazon.com advertises Kabbalah Red String
Bracelet with Hamsa Hand.

www.holyland-shop.com states What are the
Benefits of Wearing the Kabbalah Red String? and
advertises 5 (FIVE) KABBALAH RED STRINGS
(Bracelet).

www.androship.com advertises Kabbalah Red String
Hamsa Hand Silver Colour Bracelet.

www.kabbalahredbracelet.com advertises Kabbalah
Red String Bracelet with a Silver Chai and
Kabbalah Red String Bracelet with Silver Hamsa
with an engraved Eye, among others.

Opposition No. 91201431

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www.yourholylandstore.com advertises, among
others, Kabbalah Red String Love Bracelet,
Kabbalah Red String Macrame Bracelet . . .

www.luckycharmsusa.com states Kabbalah red string
bracelet is considered as a powerful talisman
against negative influences and energies. . . .
the Kabbalah red string bracelet posses unique
powers to avert envy, hatred . . . . We have
Kabbalah red string bracelet, Gold plated with
Hamsa, Kabbalah red string bracelet with sterling
name of God in Hebrew, Kabbalah red string
bracelet gold plated with blue lucky eye and red
lucky eye. . . . “

In this case, there is no genuine dispute of material
fact that opposer’s evidence establishes that the relevant
public perceives “Kabbalah red string” to be a type of
bracelet and not a source indicator and that parties
selling products that compete with applicant’s goods use
“Kabbalah red string” in a generic manner for bracelets.4
Applicant argues that KABBALAH RED STRING was adopted
as a trademark by applicant to be used in connection with
applicant’s bracelet. However, applicant's intent to
exclusively appropriate the terms “Kabbalah red string” as
its trademark is not at issue. The issue is whether
“Kabbalah red string” is recognized as a trademark for
bracelets by the relevant public, not by the company
seeking to register the mark.

4 Despite the capitalization of the initial letters in certain
examples, we find there is no genuine dispute that these uses are
generic.
Opposition No. 91201431

9
To raise a genuine dispute, applicant contends that
KABBALAH RED STRING is not generic since it has been using
the term for 9 years and opposer has provided no evidence
of use of the phrase by others prior to applicant’s first
use.
However, even if applicant was the first user of a
generic term or phrase, as it claims, that does not entitle
applicant to register such a term or phrase as a mark. See
In re National Shooting Sports Foundation, Inc., 219 USPQ
1019, 1020 (TTAB 1983). We further note that this is not a
case where there is a complete absence of competitor use
after 9 years of use by applicant. Cf. In re Trek 2000
International Ltd., 97 USPQ2d 1106, 1113 (TTAB 2010)
(“complete absence of competitor use after ten years of
these products being on the market tends to indicate that
THUMBDRIVE has not fully entered the public domain”).
Applicant also argues that there are other ways a
competitor or third party could refer to the sale of a red
string bracelet generically without using “Kabbalah red
string” as “[n]o third-party or competitor who was selling
a bracelet made from red string would have a substantial
need to use the wording ‘Kabbalah red string’ to describe
their product. . . .”
Opposition No. 91201431

10
While the competitive need to use a term may be
probative of whether the term is generic, the correct
inquiry is whether the relevant public would understand the
term to be generic. In re 1800Mattress.com IP LLC, 586
F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009). To the
extent competitor need is relevant, opposer’s evidence
shows that there is no dispute that competitors (i.e.,
those selling competing goods) use “Kabbalah red string” as
a generic term for the product, and have a competitive need
to do so.
Moreover, the fact that applicant identifies its goods
by a generic term where other generic terms are also
available to its competitors does not mean that applicant
can limit its competitor’s use of the term. See In re Sun
Oil Co., 426 F.2d 401, 165 USPQ 718, 719 (CCPA 1970) (Rich,
J., concurring)[“Because one merchandiser has latched onto
one of the descriptive terms does not mean it can force its
competitors to limit themselves to the use of the others,
which appellant, it seems to me is trying to do here. All
of the generic names for a product belong in the public
domain.”] (emphasis in original). In addition, although
other terms such as “red string bracelet” “red string
jewelry” “red bracelets” may be used to identify
applicant's type of product, it is well settled that there
Opposition No. 91201431

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can be more than one generic term to name a product.
Roselux Chemical Co., Inc. v. Parsons Ammonia Co., Inc.,
299 F.2d 855, 132 USPQ 627, 632 (CCPA 1962).
Applicant also argues, to raise a genuine dispute,
that opposer has not submitted “industry materials” or any
dictionary evidence that defines the term “Kabbalah red
string” as a “generic term for any goods.” However, the
lack of dictionary evidence of the term “Kabbalah red
string” is not dispositive of the issue of genericness.
Continental Airlines Inc. v. United Air Lines Inc., 53
USPQ2d 1385, 1393 (TTAB 1999)(“Although there is no
dictionary listing for the term “e-ticket” per se, this
fact is not dispositive of the issue. . . . A number of
generic terms are not found in dictionaries.”).
Applicant argues that the probative value of opposer’s
evidence is limited as “[t]here has been no testimony
submitted to demonstrate that this small sampling of
printouts demonstrate any actual use or sales of goods or
were taken from web sites which have actually been viewed
by consumers.”
We find applicant’s arguments against the probative
value of opposer’s evidence insufficient to raise a genuine
dispute. Online evidence is probative of public
perception, In re Bayer Aktiengesellschaft, 82 USPQ2d at
Opposition No. 91201431

12
1833, and the purchasers of applicant's goods are the
general public which may access the third-party retailers
through the Internet. With regard to applicant’s
contention that there is no evidence these third-party
websites have actually been viewed by consumers, in view of
the number of such sites, we find that applicant’s
arguments are unsupported and conclusory and fail to raise
a genuine dispute. Cf. In re Country Music Association,
Inc., 100 U.S.P.Q.2d 1824, 1830 (TTAB 2011)(comparative
obscurity of third-party Internet uses based on evidence of
website traffic raises doubt about whether relevant public
will perceive phrase as generic).
Applicant also argues that opposer “has not presented
sufficient evidence to rebut Applicant’s inference of
validity” as “extensive evidence of use” is required to
demonstrate the mark is generic and the evidence is
“limited at best.” However, there is no inference of
validity that attaches to an application to register a
mark.5 In any event, the evidence presented by opposer is

5 The parties were involved in a prior Opposition No. 91190172,
wherein applicant herein voluntarily surrendered its Registration
No. 3411334 for Kabbalah Red String for bracelets which was
subject to counterclaims by opposer herein for fraud and
genericness. In that case, the registration for Kabbalah Red
String was under Section 2(f) with a disclaimer of Red String.
Judgment was entered against applicant because the voluntary
surrender was without the written consent of counterclaim
plaintiff. In view of the cancellation, any Section 7(d)
Opposition No. 91201431

13
sufficiently probative to provide evidence of the context
of use, the exposure of the term in a generic manner to the
relevant public, and the meaning the public is likely to
associate with the term as a result of such use.
Applicant has also argued that its news article
submissions show that there is a mixed record on the
question of genericness and that the evidence submitted by
opposer “at best amounts to a few isolated examples” and
this “small sampling” fails to demonstrate the existence of
third-party use to support a determination that applicant’s
mark is generic.
Although applicant argues that there is no clear
evidence of genericness which raises a genuine dispute, we
do not find that opposer’s evidence of generic use is
offset by applicant’s evidence. The evidence provided by
applicant neither shows a significant amount of proper
trademark use nor recognition by third parties of
applicant’s proprietary claim to the term KABBALAH RED
STRING.
Although applicant’s packaging of its goods as
displayed on its website shows trademark use of KABBALAH

presumptions and the question of registrability of this
registration have been “destroyed” which “makes the question of
registrability ‘a new ball game’ which must be predicated on
current thought.” In re Hunter Publishing Company, 204 USPQ 957,
963 (TTAB 1979).

Opposition No. 91201431

14
RED STRING, much of applicant’s evidence relates to
articles about applicant or about Kabbalah generally. Most
of the articles show use of the term “Kabbalah” separate
from the term “red string.” The four articles from 2008-
2009 which show use of the term “Kabbalah red string
bracelet” show use in a generic manner (emphasis supplied):
. . . Madonna has jetted off to New York to have a
special Kabbalah red string bracelet tied to her
wrist.

He had been spotted looking all white for the service
and was wearing a trademark Kabbalah red string
bracelet.

But the must-have faith fashion accessory of the 2000s
was the Kabbalah red string bracelet.

He wears the Kabbalah red string around his left wrist
. . . .

Evidence of generic use by others and proper trademark
use by applicant does not necessarily create a mixed record
that would raise a dispute about genericness in view of the
wide use of the term “Kabbalah red string” in a generic
sense such that the relevant consumers perceive the primary
significance of the term as generic for bracelets.
Applicant further argues that the Office has approved
numerous applications that include the term “Kabbalah”
without a disclaimer or under Section 2(f).
However, the third-party registrations submitted by
applicant are of very limited probative value and fail to
Opposition No. 91201431

15
raise a genuine dispute. It is well-settled that neither
the Board nor our primary reviewing court is bound by prior
determinations by the USPTO and each case must be decided
on its own merits. See In Re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed Cir. 2011).
Finally, although applicant complains that opposer’s
evidence of third-party use is trading on applicant’s good
will and infringing on its rights, applicant has not
provided evidence of policing with respect to these third-
party websites so as to raise a genuine dispute.
In view of the foregoing, we conclude that applicant
has not raised a genuine dispute of material fact with
regard to the genericness of the designation “Kabbalah red
string.”6 Thus, and provided the matter below is resolved
in opposer’s favor, opposer appears to be entitled to
summary judgment in its favor on the issue of genericness.
Standing

In order to prevail in this proceeding, opposer must
establish not only a valid ground for opposition, in this
case that applicant's mark is generic, but also that it has

6 Our finding that “Kabbalah Red String” is generic subsumes a
finding that the term is merely descriptive. Indeed, “[t]he
generic name of a thing is in fact the ultimate in
descriptiveness.” H. Marvin Ginn, 228 USPQ at 530. Because we
find no genuine dispute as to the genericness of “Kabbalah red
string,” we need not consider the question of whether “Kabbalah
red string” has acquired distinctiveness.

Opposition No. 91201431

16
standing to oppose. Opposer has alleged in the notice of
opposition that it designs diamonds and diamond jewelry and
intends to sell diamonds and diamond jewelry packaged with
red string to reinforce Kabbalistic principles of its
diamonds and diamond jewelry. Opposer has also alleged
that it plans to market and describe its “red string tie-
ins” as “Kabbalah Red String.” Although these allegations
would establish opposer's standing if proven, opposer has
not yet introduced any evidence supporting these
allegations.
Accordingly, opposer is allowed until THIRTY DAYS from
the mailing date of this order to submit evidence
establishing that there is no genuine dispute as to any
material fact related to opposer's standing, and that it is
entitled to summary judgment on the issue of standing as a
matter of law.
Applicant is allowed until SIXTY DAYS from the mailing
date of this order to file a response to any evidence and
argument opposer submits, if applicant desires to do so.
In the event opposer's showing establishes its entitlement
to summary judgment on the issue of standing, the
opposition will be sustained. In the event opposer's
showing is insufficient, this case shall proceed to trial
on the issue of standing only. Sinclair Oil Corp. v.
Opposition No. 91201431

17
Kendrick, 85 USPQ2d 1032, 1037 (TTAB 2007) (setting forth
this procedure under analogous circumstances); Paramount
Pictures Corp. v. White, 31 USPQ2d 1768, 1776 (TTAB
1994)(same).
Proceedings herein remain otherwise suspended.