TTAB Orders Cancellation of STORIES OF THE PROPHETS Registration, Finding it Merely Descriptive of Religious Books

Inter partes decisions involving mere descriptiveness are rather rare. Here the Board granted a petition for cancellation of a registration for the mark STORIES OF THE PROPHETS, finding it merely descriptive of "religious books." Applicant Noaha claimed acquired distinctiveness under Section 2(f), based only on its allegedly substantially exclusive use of the mark for more than five years (since 1980). However, the "overwhelming" evidence showed that its use was not substantially exclusive. Paramus Publishing, Inc. v. Noaha, Cancellation No. 92079706 (October 23, 2025) [not precedential] (Opinion by Judge David K. Heasley).

Statutory Standing: Although the petitioner did not claim proprietary rights in the phrase "stories of the prophets," its testimony established that it used the phrase in publications since 2009, including in a children's book entitled, "Stories of the Prophets in the Holy Qur’an.’" "Consequently, Petitioner’s interest in using 'Stories of the Prophets” is within the zone of interests protected by statute, and Petitioner has a reasonable belief in damage proximately caused by Respondent’s registration. Corcamore, 978 F.3d at 1303-05. It has established its entitlement to pursue cancellation."

The issue at hand was "whether Petitioner has disproven Respondent’s claim of acquired distinctiveness, thereby establishing that the registered mark is merely descriptive, and therefore unregistrable." In other words, since the registration is entitled to a presumption of validity, the petitioner has the initial burden to overcome that presumption. If it does so, the burden of production shifts to the registration, but the petitioner always bears the final burden of persuasion.

Petitioner’s vice president testified not only to petitioner’s “Stories of the Prophets” books, but declared that "I also personally know of various other publications that have used the phrase 'stories of the prophets' to publish similar books." He identified publications from 1927 and 2003. Two bookstore owners each testified that "[o]ur store carries a variety of publications, including many with the phrase ‘stories of the prophets."

Petitioner adds its Notice of Reliance, which contains, among other things, depictions of books published in 1963 and 1985 incorporating “Stories of the Prophets” in their titles; a Wikipedia article for “Qisas al-Anbiya,” translated to “stories of the prophets” to show how the public would understand the term; and YouTube playlists, one entitled “Stories of the Prophets” for 17 videos with a combined viewership of about 1.5 million, and the other, “Stories of the Prophets – Quran Stories”, consisting of over 250 videos with over 900,000 subscribers.

Petitioner also submitted the testimony of a scholar of Islamic history and thought, who attested that the term “Stories of the Prophets” (and its Arabic original 'Qisas al-Anbiya') "is a term that has a basis in the religion of Islam dating back to the origins of Islam in 6th Century Arabia and the revelation of the Qur’an."

The Board found that petitioner had made out a prima facie case of mere descriptiveness, shifting to respondent the burden of producing additional evidence or argument in defense of the registration.

Respondent, appearing pro se, offered no evidence, but raised several arguments in its Notice of Reliance, which the Board chose to consider anyway, even though the arguments "do not rise to the level of testimony." Respondent attempted to "tack its use to a centuries-old version of "Stories of the Prophets."[Why would tacking on an earlier use or proving first use matter anyway? -ed.]. The Board was unimpressed by respondent's argument.

In sum, the evidence adduced by Petitioner, coupled with Respondent’s admissions, overwhelmingly establish that Respondent’s use of STORIES OF THE PROPHETS on religious books has not been “substantially exclusive,” either at the time of registration [April 20, 2021] or thereafter. *** We find that Petitioner has met its ultimate burden of proving, by a preponderance of evidence, that Respondent’s designation STORIES OF THE PROPHETS has not acquired distinctiveness, and remains merely descriptive, as Respondent impliedly conceded during prosecution of its application.

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TTABlogger comment: Seems like a lot of time and effort was spent on Respondent's irrelevant claims regarding the original source of the stories. The issue was public perception at the time of registration or the time of trial.

Text Copyright John L. Welch 2025.