Monday, February 09, 2009

TTAB No-Brainer? "BRAIN STATE CONDITIONING" Merely Descriptive of Neurofeedback Training

The Board wasted little brainpower in affirming a Section 2(e)(1) refusal to register the mark BRAIN STATE CONDITIONING, finding it merely descriptive of "training services in the field of neurofeedback." In re Brain State Technologies, L.L.C., Serial No. 77092018 (January 21, 2008) [not precedential].

Examining Attorney Angela Gaw relied on various technical articles, two patents, and several dictionary entries in maintaining that "[b]ecause the Applicant's services measure the present condition of the user's brainwave activity or a fluctuating situation due to an external stimulus, the term [BRAIN STATE CONDITIONING] is merely descriptive of neurofeedback services."

Applicant Brain State Technologies contended that the PTO's evidence "was in the nature of scholarly works" and so did not show how relevant purchasers would perceive the phrase. Applicant asserted that the word "state" has various meaning, and "may refer to a geographic region, such as the state of New York." [TTABlog comment: New York is the "brain state"? That's not the anatomical reference that Bostonians make.] According to Applicant, the word "state" does not convey any information regarding the services.

The Board one again pointed out that a mark is not to be viewed in the abstract when being evaluated for mere descriptiveness: "In other words, the question is not whether someone presented only with the mark could guess what the products and services are. Rather, the question is whether someone who knows the products and services will understand the mark to convey information about them."

It ruled that word "state" does not provide a commercial impression separate from the unitary term "brain state."

[A] patient seeking neurofeedback training is going to perceive the mark BRAIN STATE CONDITIONING as directly imparting the information that the services involve “conditioning” (i.e., modifying) their “brain state” (i.e., mental state).

Therefore, the Board found BRAIN STATE CONDITIONING to be merely descriptive of Applicant's services, and it affirmed the refusal to register.

Text Copyright John L. Welch 2009.


At 8:15 PM, Blogger roberthaido said...

I am curious about Brain State Technologies use of TM after Brain State Conditioning on their website. Am I missing something?
I was interested in establishing whether Brain State Technologies is entited to use TM after their other branded names..

At 8:11 PM, Blogger John L. Welch said...

The TM symbol does not mean the mark is registered. BST is entitled to use TM if it wants to. Anyone can use TM anytime, since it merely means that the entity claims to have rights in the mark. Again, it doesn not mean the mark is registered.

As to BST's "other branded names," I don't know what that phrase means. Again, BST can use TM whenever it wants.


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