Nikken, Inc.

Trademark Trial and Appeal Board

Jul 17, 2007

No. 76573402 (T.T.A.B. Jul. 17, 2007)

Mailed:
July 17, 2007
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Nikken, Inc.
________

Serial No. 76573402
_______

Jeffrey A. Babener of Babener and Associates for Nikken,
Inc.

Barney L. Charlon, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Bucher, Rogers and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Nikken, Inc. seeks registration on the Principal
Register of the mark KENZEN WELLNESS for goods identified
in the application as “dietary supplements” in
International Class 5.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation under Section 2(e)(1) of the

1 Application Serial No. 76573402 was filed on January 28,
2004 based upon Applicant’s allegation of a bona fide intention
to use the mark in commerce.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76573402
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Trademark Act based upon the ground that the mark is merely
descriptive when considered in relation to Applicant’s
identified goods, i.e., that the term “Kenzen Wellness”
immediately informs potential purchasers about the nature
and quality of Applicant’s dietary supplements.
Applicant and the Trademark Examining Attorney have
fully briefed the issues involved in this appeal.
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it
immediately conveys information of a significant
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services with which it is
used or is intended to be used. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978)
[GASBADGE merely descriptive of a “gas monitoring badge”].
See also In re MBNA America Bank N. A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003) [MONTANA SERIES and
PHILADELPHIA CARD merely descriptive of “credit card
services.” The Court found that a “mark is merely
descriptive if the ultimate consumers immediately associate
it with a quality or characteristic of the product or
service.”]. The foreign equivalent of a merely descriptive
Serial No. 76573402
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English word is not registrable under Section
2(e)(1) because it too is considered merely
descriptive. In re Oriental Daily News, Inc.,
230 USPQ 637 (TTAB 1986) [the transliteration of
these Chinese characters is a merely descriptive
ORIENTAL DAILY NEWS. Hence, the ultimate question
before us is whether the term KENZEN WELLNESS conveys
information about a significant feature or characteristic
of Applicant’s goods with the immediacy and particularity
required by the Trademark Act.
We turn then to the various dictionary entries that
have been made part of this record:
Results for 'kenzen'
Japanese English
kenzen health (an), soundness, wholesome 2

kenkō, n. health
kenzen (na), adj. 1. healthy. 2. active
healthy, adj. 1. kenkō (na) (vigorous)
wholesome, adj. 1. kenzen (na) (morally good) 3

kenzen na sound
health, n. kenkō; healthful kenkō ni yoi; healthy
kenkō na4

2 http://www.freedict.com/onldict/onldict.php as attached to
First Office Action of September 3, 2004.

3 RANDOM HOUSE JAPANESE-ENGLISH, ENGLISH-JAPANESE DICTIONARY.

4 WEBSTER’S NEW WORLD JAPANESE DICTIONARY, POCKET EDITION.
Serial No. 76573402
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In arguing for registrability, Applicant contends that
the word “kenzen” has multiple translations from the
Japanese language. Applicant argues from the record that
the word “kenzen” is an adjective meaning “wholesome,
sound” that is applied to much broader concepts than the
human body and its state of physical health or well-being.
Part of the concept of wholesomeness or
soundness includes healthiness, and this is
not in dispute, but there are many other
concepts and connotations attached to this
Japanese word. That there are many
different meanings attached to “KENZEN” is
borne out by the definition attached to the
Examining Attorney’s Brief. This entry sets
out multiple meanings and variations
including:

“health of (Japanese) economy … sound
finance; a balanced budget … healthy,
sound; wholesome … healthy literature
…, healthy (wholesome) reading … a
clean wholesome story … wholesome ideas
…, sturdy (hard) common sense … a
wholesome moving picture for children …
sound development … sound judgment … a
sound investment …, be sound minded …,
a man of sound body and mind.”

Applicant’s reply brief at 1 – 2. Thus, Applicant argues,
there is a measure of vagueness and ambiguity to this broad
conceptual term, such that the composite mark suggests a
wholesome and safe product used to maintain health and
wellness, but does not merely describe a dietary supplement
Serial No. 76573402
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product. Applicant points out that any resulting doubt
about this issue should be resolved in its favor.
In any case involving issues of foreign equivalents,
whether in the context of making a determination of
likelihood of confusion5 or mere descriptiveness,6 the
exactness of the translation equivalency is a key question.
Reviewing all of the definitions in the record,
including those put into the record by the Trademark
Examining Attorney, it seems as if the Japanese term
“kenkō na” is quite close to the translation for “healthy”
in the physical sense, while “kenzen” or “kenzen na” have a
broader sense of “soundness,” “wholesomeness,” “morally
good,” etc. Hence, accepting that a correct translation of
the Japanese language word “kenzen” is best captured by the
combination of the English-language terms “healthy,”
“sound” and “wholesome,” on this record, we find that our
doubts about the exactness of the translation equivalency
for the term “Kenzen” into “physically healthy” must be
resolved in Applicant’s favor.

5 In re Sarkli, 721 F.2d 353, 220 USPQ 111 (Fed. Cir. 1983)
[REPECHAGE is not the equivalent of “second chance”].

6 In re Atavio Inc., 25 USPQ2d 1361 (TTAB 1992) [Spanish term
ATAVIO is highly suggestive for fashion jewelry given that it is
an inclusive word referring to individual’s overall attire;
however, it is not merely descriptive of particular goods
involved in this case].
Serial No. 76573402
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Furthermore, even if we found ourselves in agreement
with the Trademark Examining Attorney that the precise
translation of the Japanese word “kenzen” were quite
clearly “physically healthy,” it is not clear to us that
the involved composite mark would necessarily be found to
be merely descriptive. “Kenzen” is a Japanese word
immediately preceding “Wellness,” an English language word:
This situation is different from that where
we are presented with a mark consisting
entirely of foreign word components. Here
only one of the two components is foreign.
Translation of an entire compound word mark
is more likely to take place in the
marketplace than is the translation of only
part of the mark.

A crucial aspect of our analysis of this
case is consideration of the needs of
applicant’s competitors to use the term
sought to be registered. As stated in In re
Abcor Development Corp., 577 F.2d 811, 200
USPQ 215 (CCPA 1978), the major reasons for
not protecting marks which are merely
descriptive of the goods with which they are
used are “to prevent the owner of a mark
from inhibiting competition in the sale of
particular goods” and “to maintain freedom
of the public to use the language involved,
thus avoiding the possibility of harrassing
[sic] infringement suits by the registrant
against others who use the mark when
advertising or describing their own
products.” Competitors in applicant’s field
of goods have every right to use the generic
name for their goods. They have no need,
other than to trade on the good will of
applicant, to use the complete trademark
adopted and used by applicant. There is
nothing in the record which even remotely
Serial No. 76573402
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suggests that competitors have used or would
need to use the term “LE CASE” to describe
their goods.

In re Universal Package Corporation, 222 USPQ 344, 347
(TTAB 1984) [LE CASE (with the word “Case” disclaimed) is not
merely descriptive for “jewelry boxes and gift boxes not
made of precious metal”]; see also In re Sweet Victory,
Inc. 228 USPQ 959 (TTAB 1986) [ not merely
descriptive for ice creams, sherbets, frozen yogurts and
nondairy frozen desserts, namely, fruit ices, yogurt
substitute and tofu]; and French Transit Ltd. v. Modern
Coupon Systems Inc., 818 F.Supp 635, 29 USPQ2d 1626
(S.D.N.Y. 1993) [finding that the doctrine of foreign
equivalents is inapplicable inasmuch as plaintiff’s mark,
LE CRYSTAL NATUREL, is a combination of foreign and English
language words, and citing to 1 J. Thomas McCarthy,
TRADEMARKS AND UNFAIR COMPETITION, § 11.14 at 464-66 (2d ed. 1984)
as well as Universal Package Corporation, 222 USPQ at 347].
For all these reasons, we find that the applied-for
matter is not merely descriptive of Applicant’s dietary
supplements.
Decision: We do not find the mark as a whole to be
merely descriptive. However, inasmuch as the word
“Wellness” has been shown to be merely descriptive, and
Serial No. 76573402
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stands as a separate component in the mark as a whole, the
mark is not registrable without a disclaimer of the word
“Wellness” under Section 6(a) of the Act. See Universal
Package Corporation, 222 USPQ at 347. Accordingly,
applicant is allowed thirty days from the date of this
decision in which to submit a disclaimer, failing which the
refusal to register will be affirmed. Cf. 37 C.F.R.
§ 2.142(g). If applicant submits an appropriately worded
disclaimer, namely: “No claim is made to the exclusive
right to use the word ‘Wellness’ apart from the mark as
shown,” the refusal to register will be reversed and the
application will be forwarded to the Trademark Examining
Attorney to place in condition for publication for
opposition under Section 12(a) of the Act.