Tanabe Tetsundo

Trademark Trial and Appeal Board

Oct 22, 2002

No. 76118122 (T.T.A.B. Oct. 22, 2002)

Mailed: October 22, 2002
Paper No. 13
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Tanabe Tetsundo
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Serial No. 76/118,122
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James C. Wray for Tanabe Tetsundo.
Daniel S. Brody, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney).
_______
Before Cissel, Hairston and Holtzman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Tanabe Tetsundo to
register SPORTS CHANBARA as a trademark on the Principal
Register for “teaching of arts, sports or knowledge
comprising teaching of short sword, teaching of long sword,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76/118,122
2
teaching of spear, teaching of halberd, teaching of stick
art and teaching of cane art.”1
Registration has been refused under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. §1052(e)(1), on the ground
that the mark, if used in connection with the identified
services, would be merely descriptive of them.
Both applicant and the Examining Attorney have filed
briefs, but an oral hearing was not requested.
It is the Examining Attorney’s position that the word
“SPORTS” is descriptive of the identified services because
applicant is teaching a sport, and that the term “CHANBARA”
is descriptive of the services because it describes the
sport being taught. Further, the Examining Attorney argues
that when the individual terms “SPORTS” and “CHANBARA” are
combined to form SPORTS CHANBARA, the combined term is
equally descriptive of the identified services. In support
of the refusal, the Examining Attorney made of record
excerpts of articles taken from the NEXIS data base and the
Internet which show that Chanbara is a type of sword
fighting and is a type of sport. Thus, the
1 Serial No. 76/118,122, filed August 25, 2000. The application
is based on applicant’s assertion of a bona fide intention to use
the mark in commerce. The translation of the term “CHANBARA” is
“sword battle.”
Ser No. 76/118,122
3
Examining Attorney argues that SPORTS CHANBARA is merely
descriptive of applicant’s services because “the mark
describes that applicant is teaching the sport of
Chanbara.” (Brief, p. 5).
Applicant, in urging reversal of the refusal to
register, argues that SPORTS CHANBARA is a “distinctive and
unique mark”, and that it does not have a “descriptive
meaning” as used in connection with the identified
services. Applicant maintains that there is nothing in the
mark SPORTS CHANBARA that even suggests that the services
involve the teaching of the sport of Chanbara. Further,
applicant argues that the evidence submitted by the
Examining Attorney is not probative of whether the applied-
for mark is merely descriptive because none of the excerpts
show use of the combined term SPORTS CHANBARA or discuss
applicant’s specific type of services, which involve the
teaching of Chanbara.2 Applicant also points out that he is
the owner of registrations in Japan and Australia for the
mark SPORTS CHANBARA, and U.S. Registration No. 2,049,723
2 Although the involved application was filed based on
applicant’s bona fide intention to use the mark, it appears from
the record that applicant has begun use of the mark.
Ser No. 76/118,122
4
for the mark SPORTS CHANBARA (SPORTS is disclaimed) for
“magazines, pamphlets, brochures, and books pertaining to
the sport of fencing.”
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act 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. See In Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). A term 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 enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term 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 term would
Ser No. 76/118,122
5
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). Thus, “[w]hether
consumers could guess what the product [or service] is from
consideration of the mark alone is not the test.” In re
American Greetings Corporation, 226 USPQ 365, 366 (TTAB
1985).
The evidence made of record by the Examining Attorney
is sufficient to demonstrate that the martial art of
chanbara is a sport involving sword fighting. We note in
this regard the following excerpts:
The name “chanbara” has a little different ring
to it than the names of its relatives karate,
judo and aikido. There’s another difference too,
in this fairly new form of martial art. In
chanbara, there is no body-to-body contact.
Descended from kenjutsu, the original “real”
sword fighting in Japan, and then kendo, fighting
with wooden swords, chanbara is a form of sword
fighting using foam-covered air cylinders.
(The Times-Picayune, January 23, 2000).
Chanbara is a type of martial arts based on the
Japanese technique of kendo, or stick fighting,
that uses foam equipment. A fast-paced sport that
draws from the ancient sword techniques of the
samurai warriors, chanbara has caught on in the
United States in the past 10 or 15 years,
according to instructor David Zaffuto.
(The Times-Picayune; April 9, 2000).
Chanbara is the fastest growing combative sport in
Japan and is now sweeping across America like wild
fire.
(http://www.chanbaratournament.com/).
Ser No. 76/118,122
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Chanbara is a new sport based on goshinjyuta, the
art of self-defense. Players fight an opponent
using air-filled swords made of cloth. The players
fight against each other just like kendo, Japanese
martial art fencing, with face masks on to protect
their faces.
(www.torii.army.mil/archives/2000/jan/07/sports/
storyo1.htm:)
Moreover, we note that the recitation of services in
the involved application states that applicant is teaching
“sports” which involve swords and the like. Thus, there is
no question that “SPORTS” or “SPORT” is descriptive of
applicant’s services.
With respect to the term “CHANBARA,” applicant
acknowledges that its services involve the teaching of
“chanbara.” Thus, “CHANBARA” is also descriptive of
applicant’s services because it is the name of the sport
that applicant teaches.
Further, the resulting combination SPORTS CHANBARA is
likewise merely descriptive when used in connection with
applicant’s services. As noted by applicant, it is
possible that two terms, which separately are merely
descriptive, may be combined into a composite term which is
not merely descriptive because the combination may result
in an incongruous or inventive new composite. However, as
the Board stated in In re Medical Disposables Co., 25
USPQ2d 1801, 1804 (TTAB 1992):
Ser No. 76/118,122
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[T]he mere act of combining does not in itself
render the resulting composite a registrable
trademark. Rather, it must be shown that in
combination the descriptiveness of the individual
words has been diminished, [such] that the
combination creates a term so incongruous or
unusual as to possess no definitive meaning or
significance other than that of an identifying
mark for the goods. (citation omitted).
This is not such a case. There is nothing
exceptionally unusual or incongruous about combining the
words “SPORTS” and “CHANBARA” into the mark SPORTS CHANBARA
where the composite is used in connection with teaching the
sport or sports of chanbara.
With respect to applicant’s assertion that SPORTS
CHANBARA is unique, it is well settled that the fact that
an applicant may be the first or only user of a term does
not justify registration where the only significance
projected by the term is merely descriptive, as we find to
be the case here. See In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018 (TTAB 1983).
Further, the fact that applicant owns registrations
for the mark in other countries is not determinative in
this case. In addition, it is well settled that in
determining the issue of mere descriptiveness, we are not
bound by the prior decisions of other Examining Attorneys.
Thus, the fact that applicant has registered the mark for
magazines and other publications is not controlling.
Ser No. 76/118,122
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Decision: The refusal to register under Section
2(e)(1) is affirmed.