Friday, August 21, 2009

TTAB Tosses Out Bankrupt Opposition to "SECRETS OF THE MILLIONAIRE MIND"

Opposer Learning Annex was schooled by the TTAB in its opposition to registration of the mark SECRETS OF THE MILLIONAIRE MIND for tapes and CDs, various printed materials, and educational services relating to self-improvement and wealth accumulation: (A) Opposer neglected to prove its standing; (B) Opposer failed to establish that the subject mark is merely descriptive under Section 2(e)(1); and (C) Opposer wrongly asserted that the mark is unregistrable as the title of a single work, since "the application is based on intention to use the mark in commerce and this record does not establish that applicant will not use this proposed mark in connection with its International Class 9 goods on a series of creative works." Learning Annex Holdings, LLC v. True Power International, Ltd., Opposition No. 91168283 (July 27, 2009) [not precedential].

Standing: In a mere descriptiveness opposition, the opposer need only establish that it is a competitor of applicant. Opposer Learning Annex failed to clear that minimal hurdle. It alleged in its notice of opposition that it is a competitor of applicant, but True Power denied those allegations, leaving Opposer to its proof. Opposer introduced "no direct evidence, testimonial or otherwise, to establish that it is 'engaged in the sale of goods or educational services related to self-improvement and wealth accumulation' or in any other business for that matter."

Therefore, Learning Annex failed to establish its standing to bring this opposition. Nonetheless, the Board proceeded, for the sake of completeness, to address Opposer's claims.

Mere Descriptiveness: Learning Annex relied on dictionary definitions of "secret," "millionaire," and "mind" in contending that SECRETS OF THE MILLIONAIRE MIND "describes exactly what the applicant provides in its educational goods and services: the secrets of wealthy people."

Applicant, of course, argued that the mark is merely suggestive and that a multi-stage reasoning process is necessary to determine any specific attributes of its products and services.

The Board ruled that Learning Annex had failed to meet its burden to prove mere descriptiveness by a preponderance of the evidence. It found the meaning and significance of the mark to be "not so immediately and directly informative as to be merely descriptive."

The phrase SECRETS OF THE MILLIONAIRE MIND may be suggestive of the subject matter of the goods and services but there is something of an atmospheric quality to the phrase SECRETS OF THE MILLIONAIRE MIND that diminishes the immediacy of any information it imparts as to the goods and services. We add that there is no evidence in the record to support opposer’s allegations that the particular phrase or similar phrases are commonly used by third parties in the relevant industry.

Title of a Single Work: Learning Annex argued that "Applicant is seeking, through the 'backdoor,' to trademark the name of its best-selling book Secrets of the Millionaire Mind, authored by T. Harv Eker," and that the title of a single work is not registrable.

Applicant pointed out that its application is based on intent-to-use, and Applicant is therefore not foreclosed from developing another book in a series, or other goods and services as listed in the application. Moreover, Opposer ignored other identified goods and services like the cards, and the seminar.

Of course, the Board pointed out that "[t]he title of a single creative work is not registrable on either the Principal or Supplemental Register unless the title has been used on a series of creative works." Herbko Int'l v. Kappa Books, Inc., 64 USPQ2d 1375, 1378 (Fed. Cir. 2002). Books, sound recordings, DVDs, and audio CDs are usually single creative works.

The issue of whether a mark is the title of a single work is tied to the specimen of use. Here,
the "single work" claim would arguably apply only to the class 9 goods. But, as Applicant argued, this is an I-T-U application and the record did not establish that Applicant will not use the mark on a series of creative works.

Therefore this "single work" claim was also a loser.

TTABlog comment: On the same day as this decision, the Board affirmed a refusal to register the alleged mark CRITTERS FOR COMPANY for children's books on the ground that the phrase was merely the title of a single work. Applicant filed the application as an I-T-U, but when it filed its SOU, the Examining Attorney entered the "single work" refusal. In re Alphacritters, Inc., Serial No. 76573434 (July 27, 2009) [not precedential].

Text Copyright John L. Welch 2009.


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