The Random Acts of Kindness Foundation

Trademark Trial and Appeal Board

Feb 15, 2019

No. 87245967 (T.T.A.B. Feb. 15, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 15, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re The Random Acts of Kindness Foundation
_____

Serial Nos. 87245967, 87245971, 87245973, and 872459751
_____

Katherine Keating, Abigail M. Cotton and Jill J. Chalmers of Bryan Cave Leighton
Paisner LLP for The Random Acts of Kindness Foundation.

Jacob Vigil, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.2
_____

Before Ritchie, Lykos, and Adlin,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On November 22, 2016, The Random Acts of Kindness Foundation (“Applicant”)
filed four applications under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a),
to register the following marks on the Principal Register:
Application Serial No. 87245967 for the mark

1 These appeals were consolidated on May 25, 2018. Citations to the record are to parent
application Serial No. 87245967 and refer to the downloadable .pdf version of the USPTO's
Trademark Status & Document Retrieval (“TSDR”) system. See, e.g., In re United Trademark
Holdings, Inc., 122 USPQ2d 1796, 1797 n.5 (TTAB 2017).
2 Managing Attorney Odette Bonnet has since retired from the USPTO.
Serial Nos. 87245967, 87245971, 87245973, and 87245975
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for “Downloadable educational course materials in the
fields of social and emotional learning, philanthropy,
citizenship, the promotion of public awareness of the need
to do good, and the promotion of ethical and character
values, to be a good citizen and to perform community
services, charitable activities and the doing of good deeds
for others; downloadable publications, namely, educational
activity sheets, worksheets, teacher and educator guides,
manuals, lesson plans, assessments, articles, written
supplemental educational materials and educational
booklets in the fields of social and emotional learning,
philanthropy, citizenship, the promotion of public
awareness of the need to do good, and the promotion of
ethical and character values, to be a good citizen and to
perform community services, charitable activities and the
doing of good deeds for others; downloadable posters and
book marks in the nature of downloadable images that may
be printed for use as posters and book marks” in
International Class 9;
Application Serial No. 87245971 for the mark

for “Printed educational course materials in the fields of
social and emotional learning, philanthropy, citizenship,
the promotion of public awareness of the need to do good,
and the promotion of ethical and character values, to be a
good citizen and to perform community services, charitable
activities and the doing of good deeds for others; printed
publications and materials, namely, educational activity
sheets, worksheets, teacher and educator guides, manuals,
lesson plans, assessments, articles, written supplemental
educational materials and educational booklets in the
fields of social and emotional learning, philanthropy,
citizenship, the promotion of public awareness of the need
Serial Nos. 87245967, 87245971, 87245973, and 87245975
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to do good, and the promotion of ethical and character
values, to be a good citizen and to perform community
services, charitable activities and the doing of good deeds
for others; posters, book marks, note cards, printed recipe
cards, stickers, decals, folders” in International Class 16;
Application Serial No. 87245973 for the mark

for “Providing a website featuring news and information
promoting the public awareness of good deeds for others;
association services, namely, organizing and administering
the formation of social and service clubs; association
services, namely, promoting the public awareness of doing
good deeds for others; charitable services, namely,
promoting public awareness of the need to do good deeds
for others; charitable services namely, namely, organizing
and conducting volunteer programs and community service
projects and club” in International Class 35; and
Application Serial No. 87245975 for the mark

for “Education and entertainment services, namely,
organizing events and assisting others with organizing
events instructing and encouraging the doing of kind acts
for others; education and entertainment services, namely,
organizing and conducting social entertainment, cultural
events and an ambassador program to encourage the doing
of kind acts for others; education services, namely,
providing courses, classes, seminars, lectures, workshops,
Serial Nos. 87245967, 87245971, 87245973, and 87245975
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conferences and instructions in the fields of social and
emotional learning, philanthropy, citizenship, the
promotion of public awareness of the need to do good, and
the promotion of ethical and character values, to be a good
citizen and to perform community services, charitable
activities and the doing of good deeds for others and
distribution of course material in connection therewith;
educational services, namely, providing online courses,
classes, seminars, lectures and workshops in the fields of
social and emotional learning, philanthropy, citizenship,
the promotion of public awareness of the need to do good,
and the promotion of ethical and character values, to be a
good citizen and to perform community services, charitable
activities and the doing of good deeds for others, and
distribution of course material in connection therewith;
educational and entertainment services, namely, providing
motivational and educational speakers in the fields of
social and emotional learning, philanthropy, citizenship,
the promotion of public awareness of the need to do good,
and the promotion of ethical and character values, to be a
good citizen and to perform community services, charitable
activities and the doing of good deeds for others;
educational services, namely, conducting informal on-line
programs in the fields of social and emotional learning,
philanthropy, citizenship, the promotion of public
awareness of the need to do good, and the promotion of
ethical and character values, to be a good citizen and to
perform community services, charitable activities and the
doing of good deeds for others, and printable materials
distributed therewith; educational services, namely,
developing supplemental educational materials for others
in the fields of social and emotional learning, philanthropy,
citizenship, the promotion of public awareness of the need
to do good, and the promotion of ethical and character
values, to be a good citizen and to perform community
services, charitable activities and the doing of good deeds
for others; educational services, namely, providing online
instruction in the fields of social and emotional learning,
philanthropy, citizenship, the promotion of public
awareness of the need to do good, and the promotion of
ethical and character values, to be a good citizen and to
perform community services, charitable activities and the
doing of good deeds for others; educational services,
namely, developing supplemental educational materials
Serial Nos. 87245967, 87245971, 87245973, and 87245975
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for teachers; entertainment services, namely, organizing
and conducting social entertainment and cultural events to
encourage the doing of kind acts for others; providing a
website featuring non-downloadable videos and
prerecorded digital media in the nature of audio and video
recordings in the fields of social and emotional learning,
philanthropy, citizenship, the promotion of public
awareness of the need to do good, and the promotion of
ethical and character values, to be a good citizen and to
perform community services, charitable activities and the
doing of good deeds for others” in International Class 41.3
Each of the marks was finally refused on the ground that the applied-for marks
fail to function as either a trademark or service mark under Sections 1, 2, 3, and 45
of the Trademark Act, 15 U.S.C. §§ 1051, 1052, 1053, 1127, because the wording
RANDOM ACTS OF KINDNESS is merely informational and constitutes a widely
used common slogan that does not indicate the source of Applicant’s goods and
services. Applicant appealed each of the refusals.
The appeal is fully briefed. We reverse.
The sole issue on appeal is whether RANDOM ACTS OF KINDNESS is merely a
widely-used informational message such that the applied-for marks fail to function
as trademarks or service marks under Sections 1, 2, 3, and 45 of the Trademark Act.
To be clear, the refusals are not based on how each mark is used on the specimens or
in relation to the particular goods and services identified in each application. Rather,
the refusals are based on the “inherent nature” of the phrase RANDOM ACTS OF
KINDNESS as so ubiquitously used as a message to refer to “the performing of good

3 On March 6, 2017, Examiner’s Amendments were issued to amend the identifications of
goods in Serial Nos. 87245967 and 87245971.
Serial Nos. 87245967, 87245971, 87245973, and 87245975
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deeds, charitable activities, and acts of compassion …” that it is devoid of any source
indicating significance.4
“The Trademark Act is not an act to register mere words, but rather to register
trademarks. Before there can be registration, there must be a trademark, and unless
words have been so used they cannot qualify.” In re Bose Corp., 546 F.2d 893, 192
USPQ 213, 215 (CCPA 1976). Terms and expressions that merely convey an
informational message are not registrable. See e.g., D.C. One Wholesaler, Inc. v.
Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) (the phrase I ♥ DC on apparel and other
souvenirs, whether displayed in a stacked or horizontal format would be not be
perceived by as a trademark but rather as “an expression of enthusiasm for the city
of Washington, DC.”); In re Eagle Crest, 96 USPQ2d 1227, 1232 (TTAB 2010) (ONCE
A MARINE, ALWAYS A MARINE would not be perceived as a trademark but rather
as an informational slogan “to express support, admiration or affiliation with the
Marines”); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998)
(DRIVE SAFELY not registrable because it would be perceived only as an everyday,
commonplace safety admonition and not as a trademark for “automobiles and
structural parts therefor”); In re Manco, Inc., 24 USPQ2d 1938, 1942 (TTAB 1992)
(THINK GREEN and design not registrable because it would be perceived only as an
informational slogan encouraging environmental awareness and not as a trademark
for weather stripping and paper products); In re Tilcon Warren, Inc., 221 USPQ 86
(TTAB 1984) (the phrase WATCH THAT CHILD for construction material would be

4 Examining Attorney’s Brief at 9 TTABVUE 8.
Serial Nos. 87245967, 87245971, 87245973, and 87245975
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perceived merely as an expression of general concern about child safety that does not
function as a mark). Use of a widely-used informational message in a traditionally
source-identifying manner does not overcome the informational nature of the wording
itself. See D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d at 1716 (stating that use
of I ♥ DC in a manner that is “conventional for the display of trademarks” is not
sufficient for the informational message to act as a source identifier). To be a mark,
the phrase must be used in a manner calculated to project to purchasers or potential
purchasers a single source or origin for the goods. In re Volvo Cars, 46 USPQ2d at
(TTAB 1998). “The critical inquiry in determining whether a designation functions as
a mark is how the designation would be perceived by the relevant public.” In re Eagle
Crest Inc., 96 USPQ2d at 1229; In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862
(TTAB 2006).
The Office takes the position that because the wording RANDOM ACTS OF
KINDNESS is incapable of designating the source of any goods or services, the
particular usage or placement of the wording on Applicant’s specimens does not
obviate the refusal. In support thereof, the Examining Attorney has submitted
excerpts from websites encouraging people to perform good deeds, charitable
activities, and acts of compassion as well as articles discussing altruism. We highlight
the following examples:
An online article posted on February 25, 2017 on the
website “Small Business Trends” entitled “50 Acts of
Serial Nos. 87245967, 87245971, 87245973, and 87245975
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Random Kindness Your Customers Will Love” by Anne
Pilon.5
An undated personal blog post for a family with the
surname Clark, called “Clarks Condensed,” entitled
“Random Acts of Kindness Ideas.”6
An online article posted on Buzzfeed on July 23, 2014
entitled “101 Easy Ideas for Random Acts of Kindness” by
Jessica Misener.7
An excerpt entitled “Random Acts of Kindness” on
Compassion Games website retrieved on September 27,
2017.8
Wonderopolis excerpt explaining the “unofficial holiday”
entitled “Random Acts of Kindness Day,” retrieved on
September 27, 2017.9
An online article entitled “102 Random Acts of Kindness –
Ideas to Inspire Kindness” by Brad Aronson on the blog
bradaronson.com retrieved on September 27, 2017.10
An online article sponsored by The Wayne Hills High
School Patriot Press entitled “Random Act of Kindness
Club Has Productive Year Planned,” by Joseph Mezza
dated September 26, 2017.11
An excerpt retrieved on September 27, 2017 from Random
Act’s website “At Random Acts, it’s our mission to conquer
the world one random act of kindness at a time.”12

5 March 27, 2017 Office Action, pp. 4-14.
6 March 27, 2017 Office Action, pp. 4-14.
7 September 28, 2017 Final Office Action, p. 5.
8 September 28, 2017 Final Office Action, p. 6.
9 September 28, 2017 Final Office Action, p. 7.
10 September 28, 2017 Final Office Action, p. 8.
11 September 28, 2017 Final Office Action, p. 9.
12 September 28, 2017 Final Office Action, p. 11.
Serial Nos. 87245967, 87245971, 87245973, and 87245975
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A post from the Berries blog dated February 1, 2017
entitled “53 Random Acts of Kindness.”13
An article posted on Lifehack dated July 3, 2017 entitled
“29 Ways to Carry Out Random Acts of Kindness Every
Day” by Arvin Devalia.14
An article posted on Popsugar dated June 30, 2017 entitled
“109 Random Acts of Kindness You Can Start Doing
Today” by Euna Park.15
Pinterest “Random Acts of Kindness Ideas” with 61 Pins
and 1.7k followers retrieved on September 27, 2017.16
A printout from Amazon offering for sale a book entitled
“Random Acts of Kindness Then and Now: The 20th
Anniversary of a Simple Idea That Changes Lives”
(paperback – February 1, 2013).17
Reader’s Digest article entitled “21 People Reveal the
Random Acts of Kindness That Changed Their Lives” by
Lindsay Tigar retrieved on September 27, 2017.18
The Examining Attorney further asserts that degree of stylization in each mark
is negligible, failing to create a commercial impression separate and apart from the
impression made by the wording itself. See In re Cordua Rests., Inc., 823 F.3d 594,
606, 118 USPQ2d 1632, 1639-40 (Fed. Cir. 2016); In re Northland Aluminum Prods.,
Inc., 777 F.2d 1556, 227 USPQ 961, 964 (Fed. Cir. 1985); In re Sadoru Grp. Ltd., 105
USPQ2d 1484, 1490 (TTAB 2012).

13 September 28, 2017 Final Office Action, p. 12.
14 September 28, 2017 Final Office Action, p. 13.
15 September 28, 2017 Final Office Action, p. 14.
16 September 28, 2017 Final Office Action, p. 15.
17 September 28, 2017 Final Office Action, p. 16.
18 September 28, 2017 Final Office Action, p. 17.
Serial Nos. 87245967, 87245971, 87245973, and 87245975
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Applicant counters that its previously registered marks, all on the Principal
Register, preclude a finding that the applied-for marks fail to function as marks:19
Registration No. 2999484 for the standard character mark
RANDOM ACTS OF KINDNESS for “Reading materials
and written communications, namely greeting cards, a
series of books instructing and encouraging the doing of
kind acts for others, posters and bookmarks” in
International Class 16; “Combined Declaration of Use and
Incontestability under Sections 8 & 15” accepted on April
16, 2012; Section 9 renewal accepted on November 2, 2015.
Registration No. 3009883 for the standard character mark
RANDOM ACTS OF KINDNESS for “Education and
entertainment services, namely organizing events and
assisting others with organizing events instructing and
encouraging the doing of kind acts for others” in
International Class 41; “Combined Declaration of Use and
Incontestability under Sections 8 & 15” accepted on May 1,
2012; Section 9 renewal accepted on November 2, 2015.
Registration No. 4042929 for the standard character mark
THE RANDOM ACTS OF KINDNESS FOUNDATION
(FOUNDATION disclaimed) for “Computer services,
namely, creating an on-line community for users to
participate in discussions about doing good deeds for
others, to offer suggestions about doing good deeds for
others, and to engage in social networking relating to doing
good deeds for others” in International Class 42, registered
on October 18, 2011; “Combined Declaration of Use and
Incontestability under Sections 8 & 15” accepted on July
13, 2017.
Registration No. 3916506 for the standard character mark
RANDOM ACTS OF KINDNESS FOUNDATION
(FOUNDATION disclaimed) for “Paper goods and printed
matter, namely, posters” in International Class 16,
registered on February 8, 2011; “Combined Declaration of

19 Applicant’s registrations showing current status and title were properly made of record
during prosecution. See September 26, 2017 Response to Office Action, pp. 46-114. We have
not considered Registration Nos. 3916504 and 3916505 which were cancelled on September
15, 2017 for failure to file a Section 8 declaration.
Serial Nos. 87245967, 87245971, 87245973, and 87245975
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Use and Incontestability under Sections 8 & 15” accepted
on March 31, 2017.
Registration No. 4119103 for the standard character mark
THE RANDOM ACTS OF KINDNESS FOUNDATION
(FOUNDATION disclaimed) for “Downloadable digital
media, namely, images in the nature of calendars, images
in the nature of printable book marks, images in the nature
of printable posters, [and images in the nature of printable
banners,] all provided via a global computer network;
[downloadable computer software for providing users with
information and reminders to do good deeds; downloadable
software in the nature of mobile applications for providing
users with information and reminders to do good deeds;]
video recordings featuring content related to doing good
deeds for others” in International Class 9, registered on
March 27, 2012; “Combined Declaration of Use and
Incontestability under Sections 8 & 15” accepted on July
13, 2017.
Registration No. 2999483 for the standard character mark
RANDOM ACTS OF KINDNESS WEEK (WEEK
disclaimed) for “Education and entertainment services,
namely organizing events and assisting others with
organizing events instructing and encouraging the doing of
kind acts for others” in International Class 41, registered
on September 27, 2005; “Combined Declaration of Use and
Incontestability under Sections 8 & 15” accepted on
October 19, 2011; renewed September 15, 2015.
Registration No. 5249686 for the mark

(FOUNDATION disclaimed) for “Downloadable
educational course materials in the fields of social and
emotional learning, philanthropy, citizenship, the
Serial Nos. 87245967, 87245971, 87245973, and 87245975
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promotion of public awareness of the need to do good, and
the promotion of ethical and character values, to be a good
citizen and to perform community services, charitable
activities and the doing of good deeds for others;
downloadable publications, namely, educational activity
sheets, worksheets, teacher and educator guides, manuals,
lesson plans, assessments, articles, written supplemental
educational materials and educational booklets in the
fields of social and emotional learning, philanthropy,
citizenship, the promotion of public awareness of the need
to do good, and the promotion of ethical and character
values, to be a good citizen and to perform community
services, charitable activities and the doing of good deeds
for others; downloadable posters and book marks in the
nature of downloadable images that may be printed for use
as posters and book marks” in International Class 9,
registered on July 25, 2017.
Registration No. 5249687 for the mark

(FOUNDATION disclaimed) for “Printed educational
course materials in the fields of social and emotional
learning, philanthropy, citizenship, the promotion of public
awareness of the need to do good, and the promotion of
ethical and character values, to be a good citizen and to
perform community services, charitable activities and the
doing of good deeds for others; printed publications and
materials, namely, educational activity sheets,
worksheets, teacher and educator guides, manuals, lesson
plans, assessments, articles, written supplemental
educational materials and educational booklets in the
fields of social and emotional learning, philanthropy,
citizenship, the promotion of public awareness of the need
to do good, and the promotion of ethical and character
values, to be a good citizen and to perform community
services, charitable activities and the doing of good deeds
for others; posters, book marks, note cards, printed recipe
cards, stickers, decals, folders” in International Class 16,
registered on July 25, 2017.
Registration No. 5249688 for the mark
Serial Nos. 87245967, 87245971, 87245973, and 87245975
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(FOUNDATION disclaimed) for “Printed educational
course materials in the fields of social and emotional
learning, philanthropy, citizenship, the promotion of public
awareness of the need to do good, and the promotion of
ethical and character values, to be a good citizen and to
perform community services, charitable activities and the
doing of good deeds for others; printed publications and
materials, namely, educational activity sheets,
worksheets, teacher and educator guides, manuals, lesson
plans, assessments, articles, written supplemental
educational materials and educational booklets in the
fields of social and emotional learning, philanthropy,
citizenship, the promotion of public awareness of the need
to do good, and the promotion of ethical and character
values, to be a good citizen and to perform community
services, charitable activities and the doing of good deeds
for others; posters, book marks, note cards, printed recipe
cards, stickers, decals, folders” in International Class 16,
registered on July 25, 2017.
Registration No. 5249689 for the mark

(FOUNDATION disclaimed) for “Providing a website
featuring news and information promoting the public
awareness of good deeds for others; association services,
namely, organizing and administering the formation of
Serial Nos. 87245967, 87245971, 87245973, and 87245975
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social and service clubs; association services, namely,
promoting the public awareness of doing good deeds for
others; charitable services, namely, promoting public
awareness of the need to do good deeds for others;
charitable services namely, organizing and conducting
volunteer programs and community service projects and
club” in International Class 35, registered on July 25, 2017.
Registration No. 5249690 for the mark

for “Education and entertainment services, namely,
organizing events and assisting others with organizing
events instructing and encouraging the doing of kind acts
for others; education and entertainment services, namely,
organizing and conducting social entertainment, cultural
events and an ambassador program to encourage the doing
of kind acts for others; education services, namely,
providing courses, classes, seminars, lectures, workshops,
conferences and instructions in the fields of social and
emotional learning, philanthropy, citizenship, the
promotion of public awareness of the need to do good, and
the promotion of ethical and character values, to be a good
citizen and to perform community services, charitable
activities and the doing of good deeds for others and
distribution of course material in connection therewith;
educational services, namely, providing online courses,
classes, seminars, lectures and workshops in the fields of
social and emotional learning, philanthropy, citizenship,
the promotion of public awareness of the need to do good,
and the promotion of ethical and character values, to be a
good citizen and to perform community services, charitable
activities and the doing of good deeds for others, and
distribution of course material in connection therewith;
educational and entertainment services, namely, providing
motivational and educational speakers in the fields of
Serial Nos. 87245967, 87245971, 87245973, and 87245975
- 15 -
social and emotional learning, philanthropy, citizenship,
the promotion of public awareness of the need to do good,
and the promotion of ethical and character values, to be a
good citizen and to perform community services, charitable
activities and the doing of good deeds for others;
educational services, namely, conducting informal on-line
programs in the fields of social and emotional learning,
philanthropy, citizenship, the promotion of public
awareness of the need to do good, and the promotion of
ethical and character values, to be a good citizen and to
perform community services, charitable activities and the
doing of good deeds for others, and printable materials
distributed therewith; educational services, namely,
developing supplemental educational materials for others
in the fields of social and emotional learning, philanthropy,
citizenship, the promotion of public awareness of the need
to do good, and the promotion of ethical and character
values, to be a good citizen and to perform community
services, charitable activities and the doing of good deeds
for others; educational services, namely, providing online
instruction in the fields of social and emotional learning,
philanthropy, citizenship, the promotion of public
awareness of the need to do good, and the promotion of
ethical and character values, to be a good citizen and to
perform community services, charitable activities and the
doing of good deeds for others; educational services,
namely, developing supplemental educational materials
for teachers; entertainment services, namely, organizing
and conducting social entertainment and cultural events to
encourage the doing of kind acts for others; providing a
website featuring non-downloadable videos and
prerecorded digital media in the nature of audio and video
recordings in the fields of social and emotional learning,
philanthropy, citizenship, the promotion of public
awareness of the need to do good, and the promotion of
ethical and character values, to be a good citizen and to
perform community services, charitable activities and the
doing of good deeds for others” in International Class 41,
registered on July 25, 2017.
The Examining Attorney in turn relies on In re Nett Designs, Inc., 236 F. 3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001) for the often-cited principle that each case
must be decided on its own facts and that the Board is not bound by prior decisions
Serial Nos. 87245967, 87245971, 87245973, and 87245975
- 16 -
involving different records. See also In re Cordua Rests., Inc., 118 USPQ2d at 1635
(“The PTO is required to examine all trademark applications for compliance with
each and every eligibility requirement . . . even if the PTO earlier mistakenly
registered a similar or identical mark suffering the same defect.”).
While it is true that trademark rights are not static, see In re Morton-Norwich
Prods., Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982), we are faced with a unique
situation. Each of Applicant’s prior registrations issued on the Principal Register
meaning that they are entitled to following presumption under Trademark Act
Section 7(b), 15 U.S.C. § 1057(b):20
Certificate as prima facie evidence. A certificate of
registration of a mark upon the principal register provided
by this chapter shall be prima facie evidence of the validity
of the registered mark and of the registration of the mark,
of the owner’s ownership of the mark, and of the owner’s
exclusive right to use the registered mark in commerce on
or in connection with the goods or services specified in the
certificate, subject to any conditions or limitations stated
in the certificate.
Applicant has eleven registrations which are either comprised of or incorporate the
same wording at issue here, in either standard character or stylized format. Six of
these registrations are over five years old, and the remaining five issued from
applications filed on the same day as the four applications at issue in this appeal.

20 By contrast, the registration at issue in the consolidated opposition/cancellation proceeding
in D.C. One Wholesaler, Inc. v. Chien, was registered on the Supplemental Register and as
such, was not entitled to any of the Section 7(b) presumptions. 120 USPQ2d at 1713 n. 12
(“…Respondent's registered mark is not entitled to the presumption of validity established
by Trademark Act Section 7(b), 15 U.S.C. § 1057(b), because Respondent's mark is registered
on the Supplemental Register. The Section 7(b) presumption is, by its terms, limited to marks
registered on the Principal Register.”).
Serial Nos. 87245967, 87245971, 87245973, and 87245975
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None of Applicant’s previously registered marks comprised in part of the phrase
RANDOM ACTS OF KINDNESS include a disclaimer of the phrase. The Examining
Attorney’s refusals thus constitute a departure from the Office’s prior position.
There is no evidence, or even argument, to suggest that the alleged incapability of
this phrase to identify source could not have been discerned at the time any of the
prior registrations were examined. The same types of evidence the Examining
Attorney now relies on was previously available. Furthermore, the Office offers no
reason for its inconsistent treatment of the five registrations which recently issued
that were filed on the same day as the four applications before us. In light of these
unusual circumstances, we are compelled to reverse the Examining Attorney’s
refusals. To find otherwise would result in inconsistent examination.
Decision: The refusals to register Applicant’s marks are reversed.