Roger Nierenberg

Trademark Trial and Appeal Board

Nov 10, 1998

No. 75152511 (T.T.A.B. Nov. 10, 1998)

Paper No. 14
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 10, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Roger Nierenberg
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Serial No. 75/152,511
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Ira C. Edell of Epstein, Edell & Retzer for Roger
Nierenberg
Steven R. Foster, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney)
_______
Before Seeherman, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Roger Nierenberg has applied to register THE MUSIC
PARADIGM as a service mark for “educational services,
namely, conducting classes, seminars, and workshops for
training executives, employees, and the like to improve
Ser No. 75/152,511
2
productivity and efficiency."1 Registration has been
refused by the Trademark Examining Attorney pursuant to
Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1),
on the ground that applicant’s mark is merely descriptive
of its services.
Applicant has appealed. Both applicant and the
Examining Attorney filed briefs, and applicant filed a
reply brief. An oral hearing was not requested.
It is the Examining Attorney’s position that THE MUSIC
PARADIGM describes a significant aspect of applicant’s
services, in that it “describes the manner in which the
services are provided, i.e., through the use of music as a
paradigm.” Brief, p. 2. In support of his position the
Examining Attorney has made of record dictionary
definitions showing “paradigm” as meaning “example,
pattern; esp: an outstandingly clear or typical example or
archetype”2 and “an example serving as a model; pattern.”3
He has also submitted the following three excerpts taken
from the NEXIS database:
…classical music concerts are perfect
business paradigms: “The CEO, as the
conductor, is in constant danger of

1 Application Serial No. 75/152,511, filed August 19, 1996 and
asserting first use on June 4, 1995 and first use in commerce on
July 26, 1995.
2 Webster’s New Collegiate Dictionary, © 1979.
3 Random House Unabridged Dictionary, 2d ed., © 1987.
Ser No. 75/152,511
3
being too authoritative, of forcing his
will on the players and sapping them of
creativity….”
“The Financial Times Limited,”
November 2, 1996;4
Body Play combines innovative touch
techniques and music and movement to
create a paradigm for social
interaction.
“The Tennessean,” September 2, 1995;
and
Headline: The paradigm of jazz;
improvising for customer satisfaction
in technical communication industry;
Customer Satisfaction: The Quest for
Quality
Body: Taking advantage of Professor
Rowland’s expertise in music, let’s
consider how the paradigm of a jazz
band can help with creating
communications that respond in the best
possible way to our customers.”
“Technical Communication,” May 1993.
The Examining Attorney also points to applicant’s own
specimens in an effort to show that applicant uses music as
a paradigm in connection with its educational services.
The specimen, which appears to be a promotional flyer,
includes the following statements:
The Music Paradigm is a powerful
interactive learning environment that
dramatizes issues of communication,
team work and leadership skills.
Participants are seated right in the
middle of a symphony orchestra, where
they not only see and hear, but also

4 The Examining Attorney has recognized that this article is
from a foreign publication, and thus its evidentiary value is
limited in terms of showing that the public has been exposed to
it.
Ser No. 75/152,511
4
feel the group dynamics of making music
together.
***
The Music Paradigm is a group
experience; your people participate all
together. They feel the energy and
power of the music. They watch the
musicians at close range, and
understand how effectively and quickly
musicians communicate.
It is well-established that a term is merely
descriptive if, as applied to the goods or services in
question, it describes an ingredient, quality,
characteristic, function, feature, composition, purpose,
attribute, use, etc. of such goods or services. See In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986) and
cases cited therein. Applicant asserts that a test for
determining whether a mark is merely descriptive is an
“imagination” test, by which “a consumer of the
goods/services, if confronted with the mark in question out
of context, must have at least some general recognition of
the nature of the goods/services without substantial
imagination, thought or perception.” Brief, p. 3.
Applicant has provided no case support for this assertion,
and his position is contradicted by the case law. As the
Board stated in In re Engineering Systems Corp., supra at
1076, “the question of whether a particular term is merely
descriptive must be determined not in the abstract, but in
Ser No. 75/152,511
5
relation to the goods or services for which registration is
sought, the context in which the mark is used, and the
significance that the mark is likely to have, because of
the manner in which it is used, to the average purchaser as
he encounters goods bearing the mark in the marketplace.”
See also, In re Abcor Development Corporation, 588 F.2d
811, 200 USPQ 215 (CCPA 1978).
Applicant has acknowledged that his services include
“immersing clients in an orchestral setting to permit
observation of the cooperation and leadership therein and
how it enhances productivity and efficiency.” Brief, p. 2.
We have no doubt that “orchestra paradigm” would be
descriptive of a characteristic of applicant’s services.
However, after carefully reviewing all the evidence which
is of record, we cannot say that THE MUSIC PARADIGM is
merely descriptive of applicant’s educational services
which include immersion in an orchestra to observe how an
orchestra makes music. The paradigm involved is that of an
orchestra working together to make music, not the making of
music per se. As applicant’s promotional material
explains, “The prototype of the modern organization is the
symphony orchestra. Each of the musicians in the orchestra
is a specialist, and a high-grade one. Yet by itself the
tuba doesn’t make music; only the orchestra can do that.”
Ser No. 75/152,511
6
Similarly, the relevant NEXIS excerpts relate to the
concept of a group of musicians, whether it be in a
classical music concert or a jazz band, being the paradigm,
not the music per se.5
There is a difference between an orchestra and music,
and although an orchestra makes music, we think the steps
that are required to reason from applicant’s THE MUSIC
PARADIGM to the characteristic of his services as involving
the example of an orchestra working together results in the
mark being suggestive and not merely descriptive. As has
often been recognized, there is but a thin line of
distinction between a suggestive and a merely descriptive
term, and it is often difficult to determine when a term
moves from the realm of suggestiveness into the sphere of
impermissible descriptiveness. In re Recovery, Inc., 196
USPQ 830 (TTAB 1977). In this case, we find that
applicant’s mark falls on the suggestive side of that line.

5 We do not agree with the Examining Attorney that the use of
the phrase “The paradigm of jazz” as a headline in the third
NEXIS excerpt, quoted above, shows that a particular style of
music, i.e., the music itself, can be a paradigm. By the very
nature of a headline, it may omit words and phrases; it is clear
from the text of the article submitted that the paradigm to which
the headline refers is that of a jazz band, not jazz music per
se.
Similarly, we do not find the second NEXIS article to be
persuasive that there is such a concept as a music paradigm.
That article only states that music is combined with touch
techniques and movement to create a paradigm for social
Ser No. 75/152,511
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interaction. It is not evidence of the descriptiveness of THE
MUSIC PARADIGM for applicant’s identified services.
Ser No. 75/152,511
8
Decision: The refusal of registration is reversed.
E. J. Seeherman
P. T. Hairston
B. A. Chapman
Administrative Trademark Judges
Trademark Trial and Appeal Board