Nikken, Inc.

Trademark Trial and Appeal Board

Jan 14, 2008

No. 76573402re (T.T.A.B. Jan. 14, 2008)

Mailed:
January 14, 2008
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Nikken, Inc.
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Serial No. 76573402
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on Request for Reconsideration
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Jeffrey A. Babener of Babener and Associates, and
Mitchell A. Goldstein, for Nikken, Inc.

Barney L. Charlon, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
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Before Bucher, Rogers and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
The Trademark Examining Attorney, citing to In re
Ferrero S.p.A., 22 USPQ2d 1800 (TTAB 1992), has requested
reconsideration of the Board’s decision of July 17, 2007,
reversing the Trademark Examining Attorney’s refusal to
register the mark KENZEN WELLNESS for goods identified in
the application as “dietary supplements” in International
Class 5. In that decision, we found the mark as a whole
not to be merely descriptive under Section 2(e)(1) of the
Lanham Act, 15 U.S.C. § 1052(e)(1).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76573402
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The Trademark Examining Attorney criticizes the Board
for relying on a foreshortened version of a Japanese
dictionary entry drawn from applicant’s reply brief rather
than the full text version of that entry placed into the
record by the Trademark Examining Attorney. In summary,
the earlier opinion consisted of two alternative holdings:
(1) that the English language translation of the Japanese
term “Kenzen” is somewhat imprecise as applied to these
goods, and alternatively, (2) that the mixture of the two
languages in the composite mark did not clearly result in a
merely descriptive composite, and any doubt as to whether
the composite is merely descriptive must be resolved in
applicant’s favor.
In response to the request for reconsideration,
applicant argues that the Examining Attorney is merely
rehashing previously-made arguments, and that due to the
multiple translations and usages of the word “Kenzen,” this
composite mark does not merely describe a dietary
supplement product. Rather, applicant argues that due to
the vagueness and ambiguity of the term “Kenzen” within the
composite mark, the applied-for mark suggests a wholesome
and safe product used to maintain health and wellness.
Complying with our earlier opinion, applicant has agreed to
disclaim the descriptive term “Wellness” apart from the
Serial No. 76573402
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mark as shown. However, as noted in our earlier decision,
the ultimate question before us is whether the composite
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.
In the face of the Trademark Examining Attorney’s
request for reconsideration, we review the record again to
determine if we erred in reaching our earlier decision.
See TBMP § 543 (2d ed. rev. 2004).1
The record contains various translations of the term
“kenzen.” This caused us to express doubts about whether
this composite mark would convey to consumers having a
knowledge of the Japanese language an immediate connotation
of a descriptive nature, or whether they would need to
employ at least some degree of mental gymnastics or
cogitation to discern meaning in the composite. See In re
Atavio Inc., 25 USPQ2d 1361 (TTAB 1992) [Spanish term ATAVIO
is not merely descriptive of fashion jewelry given that it

1 It was technically an error on our part, which we regret,
to quote a foreshortened version of a Japanese dictionary entry
drawn from applicant’s reply brief rather than the full text
version placed into the record by the Trademark Examining
Attorney. However, this was not outcome determinative for our
earlier decision, and we do not find that applicant’s cropping of
the dictionary entry, though unwarranted and unwise, rises to the
level of fraudulent behavior.

Serial No. 76573402
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is an overly-inclusive word (~‘adornment’) referring to an
individual’s overall attire]; and In re Pan Tex Hotel
Corporation, 190 USPQ 109 (TTAB 1976) [while LA POSADA may be
literally translated as “the inn,” the various dictionary
definitions showing that the term “carries the added
implication of a home or dwelling” made it clear that the
designation had a “connotative flavor” slightly different
from that of the English-language words “the inn”].
Similarly, while we accept that “kenzen” may be
literally translated as “health of body and mind,” we find
that it has a “connotative flavor” of “soundness” which is
broader and slightly different from that of the English-
language word “health.” We therefore still have doubt
about whether a relevant consumer would, without pause for
cogitation, perceive the mark as meaning merely “health /
wellness,” or might well conclude that it simply suggests a
wholesome dietary product. We resolve such doubt, as we
did in our earlier decision, in applicant’s favor.
Decision: Accordingly, we deny the Trademark
Examining Attorney’s request for reconsideration, and this
application should be approved for publication with a
disclaimer of the word “Wellness.”