Sweet Dreamzzz, Inc.

Trademark Trial and Appeal Board

Dec 2, 2014

No. 85769368 (T.T.A.B. Dec. 2, 2014)

This opinion is not a
Precedent of the TTAB

Mailed: December 2, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sweet Dreamzzz, Inc.
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Serial No. 85769368
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Mark A. Harper of Gifford, Krass, Sprinkle, Anderson & Citkowski,
for Sweet Dreamzzz, Inc.

Edward Nelson, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney).
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Before Quinn, Wolfson, and Masiello,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Sweet Dreamzzz, Inc. (“Applicant”) filed an application to register the mark
R.E.M. (in standard characters) for “educational services, namely, providing courses
of instruction and training in the field of sleep” in International Class 41.1
The Trademark Examining Attorney refused registration under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark,
when used in connection with Applicant’s services, is merely descriptive thereof.
When the refusal was made final, Applicant filed an appeal and a request for

1 Application Serial No. 85769368, filed November 1, 2012 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging first use anywhere and first use in commerce
on October 1, 2002.
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reconsideration. When the request was denied, the appeal resumed. Applicant and
the Examining Attorney filed briefs.
Applicant argues that its mark is just suggestive, and not merely descriptive.
More specifically, Applicant asserts that the letters R.E.M. comprising its mark
mean “Rest. Educate. Motivate.” rather than “rapid eye movement.” Applicant,
while conceding that the letters could immediately convey the idea of “rapid eye
movement” as a stage of sleep, contends that some imagination would be required to
reach the conclusion that the mark imparts information about educational services
in the field of sleep.
The Examining Attorney maintains that R.E.M. is a commonly understood
acronym that describes a stage of sleep, and is often measured or used as part of
sleep studies. That Applicant has attempted to create a different connotation for
R.E.M. does not mitigate the descriptiveness of the letters for Applicant’s services.
Rather, according to the Examining Attorney, the mark immediately describes the
essential character of the services, namely that the educational services feature
instruction and training in the field of sleep. The Examining Attorney submitted
dictionary definitions, and excerpts from third-party websites, including Wikipedia.
A mark is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function, purpose or use of the goods or
services. In re Chamber of Commerce of the United States of America, 675 F.3d
1297, 102 USPQ2d 1217 (Fed. Cir. 2012); In re Bayer AG, 488 F.3d 960, 82 USPQ2d
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1828 (TTAB 2007); In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). A mark need not immediately convey an idea of each and every
specific feature of the applicant’s goods or services in order to be considered merely
descriptive; rather, it is sufficient that the mark describes one significant attribute,
function or property of the goods or services. In re Patent & Trademark Services
Inc., 49 USPQ2d 1537 (TTAB 1998); In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982). Whether a mark is merely descriptive is determined not in the abstract, but
in relation to the goods or services for which registration is sought, the context in
which it is being used on or in connection with the goods or services, and the
possible significance that the mark would have to the average purchaser of the
goods or services because of the manner of its use. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). It is settled that “[t]he question is not whether
someone presented with only the mark could guess what the goods or services are.
Rather, the question is whether someone who knows what the goods or services are
will understand the mark to convey information about them.” In re Tower Tech Inc.,
64 USPQ2d 1314, 1316-17 (TTAB 2002).
The letters “REM” are an acronym for “rapid eye movement,” defined as “the
rapid, periodic, jerky movement of the eyes during certain stages of the sleep cycle
when dreaming takes place.” (). The
term “rapid eye movement sleep” is defined as follows:
Rapid eye movement sleep (REM) is the portion of sleep
when there are rapid eye movements (REMs). Dreams
occur during REM sleep. We typically have 3 to 5 periods
of REM sleep per night. They occur at intervals of 1-2
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hours and are quite variable in length. An episode of REM
sleep may last 5 minutes or over an hour. About 20% of
sleep is REM sleep. If you sleep 7-8 hours a night,
perhaps an hour and half of that time, 90 minutes, is
REM sleep.

REM sleep is characterized by a number of other features
including rapid, low-voltage brain waves detectable on the
electroencephalographic (EEG) recording, irregular
breathing and heart rate and involuntary muscle jerks.

By contrast, NREM (non-REM) sleep is dreamless sleep.
During NREM, the brain waves on the EEG are typically
slow and of high voltage, the breathing and heart rate are
slow and regular, the blood pressure is low, and the
sleeper is relatively still. NREM is divided into 4 stages of
increasing depth of sleep leading to REM sleep. About
80% of sleep is NREM sleep. If you sleep 7-8 hours a
night, all but maybe an hour and a half is spent in
dreamless NREM sleep.

()

(Definitions attached to Office action, 3/5/2013). In mammals, sleep is divided into
two broad types: rapid eye movement (REM sleep) and non-rapid eye movement
(NREM or non-REM sleep). “The function of REM sleep is uncertain but a lack of it
will impair the ability to learn complex tasks.” See “Rapid eye movement (REM)
sleep” and “Sleep” listings in Wikipedia. (Listings attached to Office actions,
9/30/2013 and 4/29/2014).
As shown by the evidence, the acronym REM has a commonly used and well
recognized meaning in the context of sleep. Applicant’s recitation of services reads
“educational services, namely, providing courses of instruction and training in the
field of sleep.” Because the recitation is broadly worded to indicate that the services
relate to the “field of sleep,” Applicant’s services include, by definition, educational
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services related to REM sleep. No imagination is required by a prospective
purchaser or user to discern that a purpose or feature of Applicant’s educational
services rendered under the mark R.E.M. is to provide courses of instruction and
training in the field of sleep, including REM sleep.
Decision: The refusal to register is affirmed.