Robert Castro

Trademark Trial and Appeal Board

Aug 7, 2020

87435626 (T.T.A.B. Aug. 7, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 7, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Robert Castro
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Serial No. 87435626
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Mark C. Johnson of Johnson|Dalal
for Robert Castro.
Christine Martin, Trademark Examining Attorney, Law Office 104,
Zachary Cromer, Managing Attorney.
_____

Before Lykos, Larkin and English,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Robert Castro (“Applicant”) seeks to register the mark POSITIVE MENTAL
ATTITUDE in standard characters on the Principal Register for goods and services
ultimately identified as
“Educational materials, namely, printed books in the field
of providing sales methods, sales strategies, and sales
management techniques for increasing the sales of goods
or services for the sales industry” in International Class 16;
“Consulting for the sales industry, namely, consulting in
the field of sales methods, sales management, and sales
improvement for increasing the sales of goods or services
for the sales industry” in International Class 35; and
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“Education and entertainment services, namely,
motivational seminars in the field of providing sales
methods, sales strategies, and sales management
techniques for increasing the sales of goods or services for
the sales industry” in International Class 42.1
The Trademark Examining Attorney has refused registration under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the mark is
merely descriptive of Applicant’s identified goods and services.2 The appeal is fully
briefed. For the reasons set forth below, we affirm the refusal to register as to all
three classes.
I. Evidentiary Issues
Before discussing the merits of this appeal, we address evidentiary issues raised
in the briefs. Applicant in his main brief asserts that “the Examining Attorney
provides 5 links to internet evidence from websites which she purports demonstrate
use of [the phrase] positive mental attitude in connection with sales methods,” and
that “only 4 of the 5 links function.”3 Applicant further criticizes the probative value
of “3 of the 4 functional links” to blog posts because “Applicant does not seek to
register for creating blogging content.”4 Applicant urges the Board to find that his
proposed mark is not merely descriptive based solely on this one functional hyperlink

1 Application Serial No. 87435626, filed May 3, 2017, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
2 Following Applicant’s deletion of the International Class 25 goods in his April 19, 2019
Request for Reconsideration, the Examining Attorney withdrew a likelihood of confusion
refusal under Section 2(d) of the Trademark Act. See April 23, 2019 Denial of Applicant’s
Request for Reconsideration.
3 Applicant’s Brief, p. 8; 13 TTABVUE 9. See also Applicant’s Reply Brief, pp. 2-3; 16
TTABVUE 3-4.
4 Id.
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showing use of the phrase “positive mental attitude” in the sales industry. In
response, the Examining Attorney maintains that Applicant misrepresents the
content of the evidentiary record which includes printouts from 18 websites.
We agree that Applicant mischaracterizes the nature of the evidence the
Examining Attorney submitted to support the refusal. With certain provisos, the
Board accepts printouts obtained from Internet websites. In re I-Coat Co., 126
USPQ2d 1730, 1733 (TTAB 2018) (applying the Board’s decision in Safer Inc. v. OMS
Invs. Inc., 94 USPQ2d 1031 (TTAB 2010) to ex parte cases). Providing only a link,
however, is insufficient to make Internet materials of record. In re Change Wind
Corp., 123 USPQ2d 1453, 1462 n.8 (TTAB 2017). The Examining Attorney did not
provide mere links but rather printouts from various different websites, including
blog posts.5 Contrary to Applicant’s belief, the website printouts, not the links,
comprise the evidentiary record. It is this evidence that we have considered in making
our determination.
In addition, the Board does consider blog postings, taking into account their origin.
See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE § 1208.03 (2020).
Blogs hosted by nationally known enterprises or media outlets will have greater
probative value than blogs hosted by individuals insofar as we do not know the extent
of the reach to the public for individual postings. See In re Morrison & Foerster LLP,

5 See August 3, 2017, Office action, pp. 2-27; February 28, 2018, Final Office action, pp. 2-
164; April 23, 2019, Denial of Request for Reconsideration, pp. 2-39.
Citations to the prosecution history are to the USPTO’s Trademark Status & Document
Retrieval (“TSDR”) database.
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110 USPQ2d 1423, 1424 n.2 (TTAB 2014) (“These blog postings are from what appear
to be well-established media sources with national circulation and public exposure as
well as more obscure blogs for which we cannot ascertain the degree of exposure. As
such, we are aware that many of the blogs may simply reflect the perception of a
single author and not that of the general public.”). We have taken this into account
in rendering our opinion.6 See, e.g., In re Geller, 751 F.3d 1355, 110 USPQ2d 1867,
1870 (Fed. Cir. 2014) (the Board, in noting that “the probative value of the blog
comments … is less than that of the articles themselves due to the anonymity of the
authors,” did not err in concluding that such comments shed light on the meaning of
the term “Islamisation”).
II. Mere Descriptiveness
We turn our attention now to the substantive refusal before us. In the absence of
acquired distinctiveness, Section 2(e)(1) of the Trademark Act prohibits registration
of a mark on the Principal Register that, when used in connection with an applicant’s
goods or services, is merely descriptive of them. 15 U.S.C. § 1052(e)(1).7 “A term is
merely descriptive if it immediately conveys knowledge of a quality, feature, function,
or characteristic of the goods or services with which it is used.” In re Chamber of

6 We add that we have not considered evidence obtained from foreign websites or blogs. See,
e.g., blog sponsored by Corporate Coach Group based in the United Kingdom
(https://corporatecoachgroup.com/blog/positive-mental-attitude) submitted with April 23,
2019, Office action, pp. 4-8.
7 “No trademark by which the goods of the applicant may be distinguished from the goods of
others shall be refused registration on the principal register on account of its nature unless
it . . . (e) Consists of a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive …”
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Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012)
(quoting In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). See
also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015). The
determination of whether a mark is merely descriptive must be made in relation to
the goods or services for which registration is sought, not in the abstract. In re
Chamber of Commerce, 102 USPQ2d at 1219; In re Bayer, 82 USPQ2d at 1831. This
requires consideration of the context in which the mark is used or intended to be used
in connection with those goods or services, and the possible significance that the mark
would have to the average purchaser of the goods or services in the marketplace. In
re Chamber of Commerce, 102 USPQ2d at 1219; In re Bayer, 82 USPQ2d at 1831; In
re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987). In other
words, the question is not whether someone presented only with the mark could guess
the goods or services listed in the identification. Rather, the question is whether
someone who knows what the goods or services are will understand the mark to
convey information about them. See In re TriVita, 114 USPQ2d at 1575; DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757
(Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB
2002)).
Evidence that a term is merely descriptive to the relevant purchasing public “may
be obtained from any competent source, such as dictionaries, newspapers, or
surveys,” In re Bayer, 82 USPQ2d at 1831, as well as “labels, packages, or in
advertising material directed to the goods [or services].” In re Abcor Dev. Corp., 588
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F.2d 811, 200 USPQ 215, 218 (CCPA 1978). It may also be obtained from websites
and publications, and, in the case of a use-based application, an applicant’s own
specimen of use and any explanatory text included therein. In re N.C. Lottery, 866
F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017); In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1565 (Fed. Cir. 2001). In this particular case, the involved
application has been filed under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b), meaning that Applicant has yet to claim use in the United States.
Nonetheless, the Examining Attorney is not precluded from introducing excerpts
from Applicant’s own materials, website, or news articles as evidence of public
perception of the mark. In re Promo Ink, 78 USPQ2d 1301, 1303 (TTAB 2006)
(examining attorney may introduce evidence that applicant’s own literature supports
descriptiveness of term despite the fact that application based on intent-to-use under
Trademark Act Section 1(b)); cf. In re Omniome, Inc., 2020 USPQ2d 3222, *4 (TTAB
2019) (“Evidence that a term is merely descriptive . . . may come from an applicant’s
own usage other than that found on its labels, packaging or advertising materials.”) .
Applicant argues that his proposed mark POSITIVE MENTAL ATTITUDE does
not immediately convey any aspect of the identified goods or services and instead
should be deemed as an arbitrary designation, or at the very least, suggestive. As
Applicant maintains, consumers “cannot readily associate POSITIVE MENTAL
ATTITUDE with printed books, consulting, and seminars on the subject matter of
sales methods, sales strategies, and sales management techniques” because the
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phrase involves “an element of incongruity.”8 Applicant disagrees with the Examining
Attorney’s finding that consumers presented with Applicant’s mark in connection
with the identified goods and services would perceive the mark as merely descriptive.
As Applicant contends, his proposed mark “does not have a specific or generally
accepted meaning in the sales industry.”9 Rather, Applicant maintains that the mark
may refer to employee mental health.10
Applicant’s arguments are belied by the evidence of record . An arbitrary mark is
“a known word used in an unexpected or uncommon way.” Nautilus Grp., Inc. v. Icon
Health & Fitness, Inc., 372 F.3d 1330, 1340, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004).
See also TRADEMARK MANUAL OF EXAMINING PROCEDURE § 1209.01(a) (Oct. 2018)
(“Arbitrary marks comprise words that are in common linguistic use but, when used
to identify particular goods or services, do not suggest or describe a significant
ingredient, quality, or characteristic of the goods or services (e.g., APPLE for
computers; OLD CROW for whiskey).”). A mark is suggestive if it “requires
imagination, thought, and perception to arrive at the qualities or characteristics of
the [services].” In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987).
The record contains substantial evidence to show that Applicant’s proposed mark is
neither arbitrary nor suggestive, but rather merely descriptive, when considered in
relation to the goods and services identified in each class.

8 Applicant’s Brief, p. 7; 13 TTABVUE 8.
9 Applicant’s Reply Brief, p. 2; 16 TTABVUE 3.
10 Id. at 6; 16 TTABVUE 7.
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According to the record, “positive” is defined as “indicating, relating to, or
characterized by affirmation, addition, inclusion, or presence rather than negation,
withholding, or absence;” “mental” as “of or relating to the mind;” and “attitude” as
“a feeling or emotion toward a fact or state .”11 From a grammatical standpoint, as
used in Applicant’s applied-for mark POSITIVE MENTAL ATTITUDE, “mental”
denotes a type of “attitude” and the adjective “positive” modifies “mental attitude.”
The record further shows that “positive mental attitude” is a recognized
philosophy with origins dating back to the early twentieth century:
Positive mental attitude (PMA) is a concept first developed
and introduced in 1937 by Napoleon Hill in the book Think
and Grow Rich. The book never actually uses the term but
develops the importance of positive thinking as a principle
to success. Napoleon, along with W. Clement Stone,
founder of Combined Insurance, later wrote Success With
Positive Mental Attitude which defines positive mental
attitude as comprising the “plus” characteristics
symbolized by such words as faith, integrity, hope,
optimism, courage, initiative, generosity, tolerance, tact,
kindliness and good common sense.
Positive mental attitude is the philosophy that having an
optimistic disposition in every situation in one's life
attracts positive changes and increases achievement.
Adherents employ a state of mind that continues to seek,
find and execute ways to win, or find a desirable outcome,
regardless of the circumstances.12

11 See dictionary definitions from www.merriam-webster.com submitted with August 3,
2017, Office action, pp. 28-36.
12 Entry for “Positive mental attitude” from WIKIPEDIA at
https://en.wikipedia.org/wiki/Positive_mental_attitude submitted with August 3, 2017,
Office action, p. 11.
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Since its inception, the concept of “positive mental attitude” has evolved in the “self-
help” lexicon as a recognized tool for achieving personal success as well as mental and
physical health. See, e.g., excerpt from article posted on the online version of THE
CHICAGO TRIBUNE (“A positive mental attitude benefits health, longevity and quality
of life”).13
A “positive mental attitude” has also become a well-known tool used by authors
and motivational speakers in the field of sales:
[Postive mental attitude] is a main theme in most of the
inspirational writings which have influenced the sales
industry, in door-to-door sales and direct marketing
businesses. Self-help material along with self-talk help
employers to shape their employees to be more resilient to
failure and become more positive and energetic
salespeople.14
Consistent therewith, the record shows that it is not uncommon for the phrase
“positive mental attitude” to be used by others in the sales and corporate coaching
industry to designate a methodology, strategy and technique to help those working
in sales to achieve success:
An online article sponsored by BusinessBlogs entitled 7
Steps to A Positive Attitude and Better Sales states, “It
sounds simple, but it is harder to actually do, especially for
sales people. Developing and maintaining a positive

13 https://www.chicagotribune.com/real-estate/chi-primetime-pma-022611-story.html
submitted with August 3, 2017, Office action, pp. 23-17.
14 Entry for “Positive mental attitude” from WIKIPEDIA at
https://en.wikipedia.org/wiki/Positive_mental_attitude submitted with August 3, 2017,
Office action, p. 11 (with references to Dale Carnegie and Tony Robbins).
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mental attitude requires determining and controlling your
thoughts.”15
An online article sponsored by New to Sales entitled 7 Easy
Positive Mental Attitude Tips To Help You Succeed In Sales
offers advice on how to maintain a “positive mental
attitude” in order to excel in sales.16
An online article sponsored by Universal Course catalog
entitled The Mindset of a Great Salesperson: A Positive
Mental Attitude stating that “One of the most singular
contributors to success is a positive mental attitude” and
then offering advice on how to accomplish this.17
Thus, while the phrase “positive mental attitude” could, as Applicant contends, apply
to employee mental health issues, it also has a recognized meaning in the sales
industry as a technique for achieving professional success, and “[i]t is well settled
that so long as any of the meanings of a term is descriptive, the term may be
considered to be merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d
1584, 1590 (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).
Mere descriptiveness is analyzed vis-à-vis consumer perception of the applied-for
mark as it relates to the identified goods and services. According to the identification
in the application, the subject matter of Applicant’s educational books, consulting
services and motivational seminars is the same: “sales methods, sales strategies, and

15 https://www.businessblogshub.com/2012/11/7-steps-to-a-positive-attitude-better-sales/
submitted with February 28, 2018, Office Action, pp. 123-128. According to the website,
BusinessBlogs is “a popular online Hub for quality business articles. We publish unique
articles and share them with our social followers.” The blog therefore falls under the category
of professional development blogs directed to sales personnel, meaning that its probative
value is relatively strong.
16 https://newtosales.org/7-easy-positive-mental-attitude-tips-to-help-you-succeed-in-sales
submitted with February 28, 2018, Office action, pp. 132-145.
17 https://www.universalclass.com/articles/business/sales/the-mindset-of-a-great-
salesperson.htm submitted with February 28, 2018, Office action, pp. 151-164.
Serial No. 87435626
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sales management techniques for increasing the sales of goods or services for the
sales industry.” The dictionary definitions coupled with the evidence of third-party
use of the phrase “positive mental attitude” demonstrate that Applicant’s mark
denotes a sales technique that is the subject matter of Applicant’s printed books in
International Class 16, consulting services in International Class 35 and
motivational seminars in International Class 42. As such, we find that Applicant’s
proposed mark merely describes a feature of the identified goods and services.
Applicant also counters that his proposed mark is incongruous. Only where the
combination of descriptive terms creates a unitary mark with a unique, incongruous,
or otherwise nondescriptive meaning in relation to the goods and services is the
combined mark registrable. See, e.g., In re Colonial Stores Inc., 394 F.2d 549, 157
USPQ 382 (CCPA 1968) (SUGAR & SPICE held not merely descriptive of bakery
products). Given the nature of the goods and services which as identified are targeted
to the sales and corporate coaching industries, we are skeptical that prospective
consumers would attribute any other meanings to the mark POSITIVE MENTAL
ATTITUDE. Compare In re Tennis in the Round Inc., 199 USPQ 496, 498 (TTAB
1978) (TENNIS IN THE ROUND held not merely descriptive for providing tennis
facilities, the Board finding that the association of applicant’s marks with the phrase
“theater-in-the-round” created an incongruity because applicant’s tennis facilities are
not at all analogous to those used in a “theater-in-the-round”) with In re Mecca Grade
Growers, LLC, 125 USPQ2d 1950, 1955 (TTAB 2018) (MECHANICALLY FLOOR-
MALTED merely descriptive of malt for brewing and distilling and processing of
Serial No. 87435626
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agricultural grain). Again, the question of whether a proposed mark is merely
descriptive is not determined by asking whether one can guess, from the mark itself,
what the goods or services are, but rather by asking, when the mark is seen on or in
connection with the goods or services, whether it immediately conveys information
about their nature. In re MBNA Am. Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778,
1780 (Fed. Cir. 2003); In re Patent & Trademark Serv. Inc., 49 USPQ2d 1537, 1539
(TTAB 1998). No imagination or thought is required by prospective consumers to
discern the purpose of Applicant’s goods and services. To the contrary, Applicant’s
proposed mark immediately conveys, without conjecture or speculation, educational
books, consulting services and motivational seminars on the topic o f a recognized
methodology or technique for increasing sales.
In sum, we find Applicant’s standard character mark POSITIVE MENTAL
ATTITUDE to be merely descriptive of the identified goods and services and therefore
ineligible for registration on the Principal Register in the absence of a showing of
acquired distinctiveness. As explained in the seminal case of In re Abcor Dev. Corp.,
200 USPQ at 217:
The major reasons for not protecting such marks are: (1) to
prevent the owner of a mark from inhibiting competition in
the sale of particular [services]; and (2) to maintain
freedom of the public to use the language involved, thus
avoiding the possibility of harassing infringement suits by
the registrant against others who use the mark when
advertising or describing their own products.
Decision: The mere descriptiveness refusal to register Applicant’s mark under
Section 2(e)(1) of the Trademark Act is affirmed as to all three classes.