Schering Aktien-gesellschaft

Trademark Trial and Appeal Board

Sep 4, 2002

No. 75732837 (T.T.A.B. Sep. 4, 2002)

Mailed:
September 4, 2002
Paper No. 15
DEB
United States Patent and Trademark Office
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Trademark Trial and Appeal Board
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In re Schering Aktiengesellschaft
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Serial No. 75/732,837
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Marilyn Matthes Brogan of Frommer Lawrence & Haug LLP for
Schering Aktiengesellschaft.

Kathryn Waters-Perez, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney).
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Before Seeherman, Hairston and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Schering Aktiengesellschaft seeks to register the
service mark WOMEN’S LIFE STAGES on the Principal Register
for “educational services, namely, providing classes,
seminars, conferences, workshops, and the like, in the
field of female health care,” in International Class 41.1
However, registration was refused pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1), on the

1 Application Serial No. 75/732,837, filed on June 21, 1999,
was based upon applicant’s claim of a bona fide intention to use
the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Serial No. 75/732,837
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ground that applicant’s mark is merely descriptive of its
recited services.
The case has been fully briefed, but applicant did not
request an oral hearing before this Board.
We reverse the refusal of registration.
The test for determining whether a mark is merely
descriptive is whether the involved term immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of the product
or service. In re Venture Lending Associates, 226 USPQ
285, 286 (TTAB 1985).
Applicant argues that:
… while the term WOMEN’S LIFE STAGES may be
linked generally to women’s issues and
concerns, it is submitted that WOMEN’S LIFE
STAGES is a vague and imprecise term with
alternative meanings that fails to convey
any specific or particular information about
Applicant’s educational services.

(Applicant’s reply brief, p. 3).
The Trademark Examining Attorney asserts that WOMEN’S
LIFE STAGES is merely descriptive because it describes a
feature, function or subject matter of applicant’s
services. In support of her position, the Trademark
Examining Attorney submitted definitions for “women,”
“life,” and “stage.” After examining these dictionary
entries, the Trademark Examining Attorney contends that
Serial No. 75/732,837
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these “… definitions make it clear that the applicant’s
mark describes a feature and function of the applicant’s
services, namely to provide consumers with education on the
subject matter of women’s health and the life changes
associated with women and their health at different periods
of time throughout their lives.” (Trademark Examining
Attorney’s appeal brief, p. 4).
By contrast, applicant argues that these dictionary
entries fail to show that the combined term has any meaning
as applied to applicant’s educational services.
In further support of her position, the Trademark
Examining Attorney attached to her Office action of August
23, 2000 seven excerpts2 drawn from the LEXIS/NEXIS database
containing a variety of uses of this exact phrase of three
words:
… potentially resolving the contradiction
between Kaplan’s view that teen mothers have
little or no social support and Holloway et
al.’s description of the socially rich
contexts of adult low-income mothers by
developing an explanatory framework of poor
women’s life stages. From very early on,
poor girls learn the roles of motherhood out
of necessity. Because poverty stretches
family resources so thin, even preadolescent
girls must take on a role Dodson terms “the
family worker,” assisting with childcare, …

2 Inasmuch as these sources included a periodical from
Singapore, one from Canada and a wire service story, we have
chosen to look at the excerpts from the four remaining NEXIS
sources.
Serial No. 75/732,837
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“No Stranger to Hard Times: Three Studies
of Women in Poverty, by Kate Kruckemeyer,”
Oral History Review 26/2, June 22, 1999.

About 150 women listened to Guy-Sheftall and
attended day-long workshops that included
the state of affirmative action, women’s
life stages and the experience of early
professional nurses in Miami…
“Feminists must embrace wider range of
women, speaker says,” Fort Lauderdale Sun
Sentinel, April 6, 1997.

“Stress and Women’s Life Stages” is the
topic for a free Women’s Educational Evening
at King of Glory Lutheran Church…
Indianapolis News, January 21, 1995.

… don’t have a variety of vigorous
psychological choices during their teen-age
years. The coming of age challenges and
experiences of young girls, is, I fear,
mostly unexplored territory. There seems to
be a huge hole in knowledge about the
adolescent span of women’s life stages.
Wisconsin State Journal, January 2, 1994.

Based upon our review of these four NEXIS stories, we
conclude that the term “women’s life stages” appears to
refer generally to passages in women’s lives rather than
referring specifically to health care or health care
education. As such, they do not support the position taken
by the Trademark Examining Attorney.
Then with the final Office action of June 5, 2001, the
Trademark Examining Attorney attempted to support her
position with a summary of the first twenty hits from her
Internet search using the Google search engine. However,
Serial No. 75/732,837
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we find that the majority of these excerpts do not use the
phrase in a manner relevant to applicant’s identified
services, of which multiple hits from a UNESCO Web site are
good examples:
Cultural changes in women's life-stages:
All over the world women’s lives are
changing. … We must therefore readjust
cultural codes so as to reflect the changing
lives of women and, particularly, the change
in their life-stages.
UNESCO - Society for International
Development, 1995.
http://firewall.unesco.org/culture/women/

Of the remaining Web sites, five excerpts contain
links or comprise direct references to Berlex Laboratories,
Inc., applicant’s subsidiary, whose use is the basis for
the instant application, to wit:
Women's Life Stages

Created by Berlex Laboratories, Inc. to
provide valuable information about key
issues in women's health. Berlex
specializes in Diagnostic Imaging, Female
Healthcare and Therapeutics for treatment of
life-threatening and disabling diseases.
From http://www.womans-clinic.com/links/

Furthermore, a single article from Natural Foods
Merchandiser accounts for three more hits, and this piece
in its entirety focuses on the national placement of
nutritional products within a marketing context. That
leaves only the May 2001 heading on “Hormone Replacement
Therapy” from the now-defunct Web site located at
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<> -- which brief hit does not even
show the three words of interest (“women’s life stages”)
used together.
After considering all of the evidence of record, we
agree with applicant that the applied-for term provides
only vague, indirect and imprecise information about its
health care educational services. We find that the
Trademark Examining Attorney has not established that, when
applied to applicant’s services, the term WOMEN’S LIFE
STAGES immediately describes, without conjecture or
speculation, a significant feature or function of
applicant’s health care educational services. We cannot
agree with the Trademark Examining Attorney that this term
possesses a “well understood and recognized meaning” in
connection with applicant’s services, with its attendant
focus on women’s reproductive status, hormones, etc.
Rather, the majority of the uses drawn from the NEXIS and
Internet excerpts focus generally on women’s experiences,
activities, jobs, demographics, etc., in a broad cultural
sense (viz. UNESCO quotation). Even if a prospective
client of applicant’s services, upon seeing WOMEN’S LIFE
STAGES, were immediately to think of “physical, mental or
spiritual experiences at certain periods of time [in the
lives of women] …” (the Trademark Examining Attorney’s
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language in her brief, building upon the separate
dictionary definitions), this does not make the mark merely
descriptive. Rather, we agree with applicant that the term
is still so vague or nebulous that, when used in
conjunction with the identified services, it does not
immediately convey information about a feature or
characteristic of the health care educational services.
Decision: The refusal to register under Section
2(e)(1) of the Act is reversed.