Kabbalah Centre Int'l., Inc.

Trademark Trial and Appeal Board

Aug 3, 2001

No. 75376580 (T.T.A.B. Aug. 3, 2001)

8/3/01

Paper No. 27
EJS

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Kabbalah Centre International, Incorporated,
assignee of Research Centre of Kabbalah
________

Serial No. 75/376,580
_______

Peter E. Nussbaum of Wolff & Samson, P.A. for Kabbalah
Centre International, Incorporated, assignee of Research
Centre of Kabbalah

Kimberly Krehely, Senior Trademark Attorney, Law Office 107
(Thomas Lamone, Managing Attorney)
_______

Before Seeherman, Quinn and Bottorff, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Kabbalah Centre International, Inc., assignee of the
original applicant, Research Centre of Kabbalah, has
appealed the final refusal of the Trademark Examining
Attorney to register KABBALAH CENTRE for “educational
services, namely, providing seminars and courses in
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/376,580
2
religion and spirituality.”1 Applicant seeks registration
pursuant to the provisions of Section 2(f) of the Trademark
Act, 15 U.S.C. § 1052(f).
Registration has been refused pursuant to Sections 1,
2, 3 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052,
1053 and 1127, on the ground that the applied-for term is
incapable of identifying applicant’s services because it is
generic. The Examining Attorney has also asserted that,
even if THE KABBALAH CENTRE were found not to be generic,
it is descriptive and applicant has not shown that it has
acquired distinctiveness as a trademark.
The appeal has been fully briefed; an oral hearing was
not requested.
Much of the evidence and many of the arguments
submitted in this case are identical and/or very similar to
those in the appeal involving the requirement for a
disclaimer of THE KABBALAH CENTRE in In re Kabbalah Centre
International Incorporated, Serial No. 75/376,822 (TTAB
July 30, 2001). Accordingly, much of this opinion will
repeat the comments made in the previous decision.

1 Application Serial No. 75.376,580, filed October 21, 1997, and
asserting first use and first use in commerce on January 30,
1991.

Ser. No. 75/376,580
3
Preliminarily, we turn to objections raised by the
Examining Attorney and applicant. The Examining Attorney
has objected to the declaration of Peter Nussbaum attached
to applicant’s appeal brief, by which applicant attempts to
present additional evidence in the form of three exhibits.
The Examining Attorney also objects to the Board’s
consideration of a new argument and case citation made in
applicant’s brief which was not presented to the Examining
Attorney during examination.
With respect to the additional evidence, the first
exhibit is a copy of the assignment information regarding
the application. Such information is not considered new
evidence, and may be submitted at any time. Indeed, the
Office encourages the filing of such information. See
Rule 3.85, “The certificate of registration may be issued
to the assignee of the applicant … provided that the party
files a written request in the trademark application by the
time the application is being prepared for issuance of the
certificate of registration….” See also TBMP § 502.01.
The remaining exhibits are two registrations for the
mark THE KABBALAH CENTRE and lion design (the same mark
applied for in Application Serial No. 75/376,822) for goods
rather than services, which issued pursuant to Section 2(f)
on January 2, 2001, and an e-mail message to Mr. Nussbaum
Ser. No. 75/376,580
4
from Lisa Kessler dated March 8, 2001 and reporting
“numbers for the website” for February. Applicant explains
that it submitted these documents with its brief because
they were not available at the time applicant’s appeal was
filed.
Trademark Rule 2.142(d) provides that the record in
the application should be complete prior to the filing of
an appeal and that, after an appeal is filed, if the
applicant wishes to introduce additional evidence, it may
request the Board to suspend the appeal and to remand the
application for further examination. Applicant did not
follow the proper course, and we agree with the Examining
Attorney that it would not be appropriate to consider this
material now, at a point at which the Examining Attorney
has no opportunity to submit evidence in response.
Accordingly, Exhibits 2 and 3 have not been considered.
We should also point out that even if the material had
been properly made of record, it would not change our
decision herein. The registrations are for audio and video
tapes and for non-fiction books and newsletters and
magazines featuring or in the field of religion and
spirituality, and are specifically different from the
services identified in the present application. As for the
e-mail, aside from the fact that it is so cryptic that the
Ser. No. 75/376,580
5
information is unclear--e.g., it lists “Hits” and “Visits,”
but does not indicate the difference between them, and
there is no indication as to what the references to
“239,926 Pages” and “24,218 Unique Hosts” mean--there is no
authentication of the information. Mr. Nussbaum merely
states, in his declaration, that it is a true copy of a
portion of an e-mail correspondence he received from an
employee of applicant, but he has not made any statement as
to the accuracy of the information contained in the e-mail.
As for the Examining Attorney’s objection to the so-
called new argument raised by applicant in its brief, and
its citation of a case not cited during prosecution, that
objection is overruled. Trademark Rule 2.142(d) refers to
evidence in a case, not to argument or case citations.
In its reply brief, applicant, responding to the
Examining Attorney’s objection about the newly raised
argument, asserts in a footnote that the Examining Attorney
has presented new arguments, new evidence and a new ground
for refusal, and requests that the Board “exclude these
materials.” We find that the Examining Attorney has not
raised a new ground for refusal, but has merely augmented
her argument regarding the genericness claim with her
reference to de facto secondary meaning. Further, for the
reasons stated above with respect to the Examining
Ser. No. 75/376,580
6
Attorney’s objections to a newly-raised argument,
applicant’s objections are not well taken. Finally, with
respect to applicant’s assertion that the Examining
Attorney has submitted new evidence, no such evidence was
submitted with her brief. To the extent that the Examining
Attorney, in her brief, made certain statements of fact,
the probative value of those statements will depend on the
supporting evidence which is of record.
We turn first to the Examining Attorney’s assertion
that the applied-for term THE KABBALAH CENTRE is generic
for applicant’s identified “educational services, namely,
providing seminars and courses on religion and
spirituality.” In support of this claim, the Examining
Attorney has submitted definitions of the words “Kabbalah,”
“centre” and “center,” as well as articles or excerpts of
articles taken from the NEXIS data base, an article from
“USA Today,” and an excerpt from a book by Adin Steinsalz,
all of which include references to the word “kabbalah.”
The dictionary definitions are as follows:
Kabbalah
The ‘received tradition’ of Jewish
mysticism, particularly those forms of
mystical teachings which were developed
in the middle ages in south-west
Europe, and later on in the Galilean
city of Safed in Palestine. The main
text of the Kabbalah is the Zohar,
written down in 13th century Spain.
Ser. No. 75/376,580
7
Unlike esoteric Judaism the Kabbalah
teaches that the creation of the world
took place through a series of
emanations from the Godhead or Ein Sof.
These emanatory structures, the 10
sefirot are the inner constitution of
all reality as well as of the divine
manifestation. They represent a finely
balanced harmony enabling the flow of
divine energy to sustain humanity and
nature. Human sins affect this
harmony, disturbing it and allowing the
potential for evil within it to become
active. The Kabbalah reinterprets all
the main beliefs and rituals of Judaism
in terms of its esoteric theology,
which has pantheistic overtones. Its
powerful images appealed to mystics and
nonmystics alike. The most important
development of Zoharic ideas was the
Kabbalah of Isaac Luria (1534-72),
which introduced a strong messianic
element, and led to messianic movements
of a mystical type. [Internal
citations omitted]2

cabala or cabbala also kabala or
kabbala
1. Often Cabala. A body of mystical
teachings of rabbinical origin, often
based on an esoteric interpretation of
the Hebrew Scriptures.
2. A secret doctrine resembling these
teachings.

centre
Variant of center.

center
5.a. A place where a particular
activity or service is concentrated: a
medical center b. A point of origin, as
of influence, ideas, or actions: a
center of power; a center of unrest. C.

2 A New Dictionary of Religions, rev. ed. © 1995.
Ser. No. 75/376,580
8
An area of dense population: a
metropolitan center.3

The following statements come from the various
periodical excerpts:
Headline: Kabbalah for the Masses;
Judaic teachings turn mainstream

USA Today has even proclaimed that
Buddhism is out, and Kabbalah is in.
***
“Kabbalah is a wisdom not a religion,
so it doesn’t matter what religion you
consider yourself,” said Merlin, who
was raised Episcopalian.
“Sun-Sentinel” (Fort Lauderdale, FL),
March 15, 1998

Some Jewish singles are into the study
of Kabbalah Jewish mysticism a hot
trend and new way to meet. [sic]
“Daily News” (New York), February 11,
1998

Headline: Mysticism Craze of Celebs
Wends Way to Wilmette

Even so, Kabbalah in the Midwest has
flourished in relative obscurity,
studied mostly by serious scholars of
religion and philosophy. Entire
careers are spent poring over the main
text of the Kabbalah, a 2,000-year-old
tome also called the Zohar, or The Book
of Splendor.
“Chicago Tribune,” April 5, 1998

Headline: Celebs embrace Jewish
mysticism
The New Standard Jewish Encyclopedia
says Kabbalah is “The mystical
religious stream in Judaism .. (that)

3 The latter three definitions are taken from The American
Heritage Dictionary of the English Language, 3d ed. © 1992.
Ser. No. 75/376,580
9
seeks to explain the connection between
God and creation, the existence of good
and evil, and to show the road to
spiritual perfection.” It was shrouded
in mystery for centuries; now those of
every faith attend classes worldwide.
“USA Today,” September 20, 1996

There is no question that THE KABBALAH CENTRE is
descriptive of applicant’s educational services of
providing seminars and courses on religion and
spirituality. Applicant has stated that its educational
and religious services “relate to the study of jewish
mysticism and spirituality, referred to by some as
‘cabalistic study’ or as set forth in the dictionary
definition attached to the office action, as ‘cabala’,
‘cabbala’, ‘kabala’ or ‘kabbala.’ Response filed
August 16, 1999. Indeed, applicant has acknowledged the
descriptiveness of THE KABBALAH CENTRE by its claim of
Section 2(f) acquired distinctiveness.
However, the issue before us is not whether THE
KABBALAH CENTRE is merely descriptive, but whether it is
generic. To prove that a mark is generic, the Office may
not simply cite definitions and generic uses of the
constituent terms of a mark, but must consider the meaning
of the disputed phrase as a whole. In re Dial-A-Mattress
Operating Corporation, 240 F.3d 1341, 57 USPQ2d 1807 (Fed.
Ser. No. 75/376,580
10
Cir. 2001); In re The Am. Fertility Soc’y, 188 F.3d 1341,
51 USPQ2d 1832(Fed. Cir. 1999).
Thus, we turn to the evidence showing use of the
entire term “the kabbalah centre” or its equivalent
spelling, “the kabbalah center.” The Examining Attorney
asserts that there are five pieces of evidence showing
generic usage of the term “the Kabbalah center.” We will
examine each of them.
The article in the September 1, 1999 issue of “Tikkun”
magazine includes the phrase “Kabbalah centers” in quotes,
as follows:
Differing from the interest in Hasidism
that centered mostly around Chabad in
the preceding decades, this turn to
Kabbalah has rather little to do with
Jewish observance nor with nostalgia
for a romanticized shtetl past (a past
that many denizens of “Kabbalah
centers” in fact do not share).

The fact that the author placed the words “Kabbalah
centers” in quotes indicates that this is an unusual
phrase, and would not be regarded as a generic term.
The remaining four pieces of evidence cited by the
Examining Attorney relate to a single article, written by
Rachel Graves for the Associated Press. This article was
published in the “Calgary Herald” and in “The Commercial
Appeal” (Memphis, Tennessee). (The articles differ in that
Ser. No. 75/376,580
11
the Calgary paper uses the British spelling of “centre,”
while the Memphis paper spells it in the American fashion,
“center.”) Portions of the article follow:
Chambers, who was raised a Roman
Catholic, is director of the Karin
Kabbalah Center in Atlanta, whose
members practice a once-secret aspect
of Judaism called Kabbalah. Students
pray and practice meditation as the
route to self-understanding.

Kabbalah was popular in Europe in the
Middle Ages, when it was passed on to
Jewish men over 40 who were deemed to
have the maturity and pristine
spirituality to handle mysticism’s
power.

Its followers claim that, through
studying Jewish texts and achieving a
more intimate relationship with God,
Kabbalists can understand the hidden
meaning of the Torah and can call on
God to alter nature on their behalf.

Today, Kabbalah centers are popping up
throughout the United States, teaching
a hybrid version of this Jewish
mysticism with no restrictions on age,
gender or religion. Orthodox Jews
dismiss the trend as a New Age fraud.

At the Atlanta center, the mostly
Christian members will celebrate
Hanukkah—lighting candles and saying
Jewish prayers—in conjunction with
their Christmas Eve service, which also
incorporates meditation and faith
healing.
***
Rabbi Irving Greenberg, president of
the Jewish Life Network in New York,
said some of the centers are nothing
but New Age imitations of Kabbalah.
Ser. No. 75/376,580
12
“People knock off Gucci and Armani
because they’re in,” he says.

The Examining Attorney asserts that the owner of the
Karin Kabbalah Center is using “Kabbalah Center” as a
generic identifier in its trade name, and does not
recognize any trademark significance in the term. The
Examining Attorney also points to the article’s author’s
use of “Kabbalah centers” in a generic fashion in the
paragraph beginning with the word “Today.” Further the
Examining Attorney says that Rabbi Greenberg is quoted in
the article as saying “some of the centers are nothing but
New Age imitations of Kabbalah,” and from this she
concludes that “this implies ‘Kabbalah center’ is a generic
term and that Rabbi Greenberg is referring to other
Kabbalah centres in addition to those named in the
article.” Brief, p. 6.
There are certain problems with the conclusions the
Examining Attorney draws from the articles. First, the
quote from Rabbi Greenberg does not refer to “the centers.”
That language was used by the reporter. Nor, in view of
the statements by the Federal Circuit in Dial-A-Mattress
and American Fertility, could we conclude that even a
reference to “centers” would be evidence of generic usage
of the phrase KABBALAH CENTRE.
Ser. No. 75/376,580
13
Second, the reference to the Karin Kabbalah Center is
not evidence that “the owner of the Karin Kabbalah Centre
is using ‘Kabbalah Centre’ as a generic identifier within
their tradename [sic].” Brief, p. 5. A newspaper article
is not evidence of the statements made therein, and
therefore is not evidence that there is a Karin Kabbalah
Center in Atlanta.4 Even assuming that there is a Karin
Kabbalah Center in existence, the fact that its name
includes the phrase “Kabbalah Center” does not necessarily
show that “kabbalah center” is a generic identifier, or
that the owner of that trade name regards it as such. As
used in the article, the entire phrase “Karin Kabbalah
Center” appears as a trademark or trade name.
Although a newspaper article is not evidence of the
information contained therein, it can be used to show that
the public has been exposed to the statements made in the
article, such that if a term is used generically it is
possible to conclude that the public has come to view the
term as generic. In this case, however, we cannot deem the
public to have been exposed to the article which appeared
in the Canadian newspaper. Thus, only the article which

4 The hearsay problem which results in attempting to use a
newspaper article to prove the truth of the statements made in
the article is readily apparent in this case, with the different
spellings of the name Karin Kabbalah Centre/Center in otherwise
identical articles.
Ser. No. 75/376,580
14
appeared in the Memphis newspaper can be deemed to have
been exposed to consumers in the United States.
We agree with the Examining Attorney that the author
of the Memphis article used “kabbalah center” in a generic
fashion in the “Today” paragraph, and that her other
reference to “the centers” in connection with the Rabbi
Greenberg quote indicate the author’s belief that this is a
generic term.
However, we cannot consider this generic usage in just
one article appearing in a Memphis newspaper to be
sufficient to prove that the public understands THE
KABBALAH CENTRE to be a generic term for the educational
services identified in applicant’s application. See In re
Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141 (Fed. Cir. 1987). We hasten to add,
though, that on a different record, such as might be
adduced by a competitor in an opposition proceeding, we
might arrive at a different result. However, on the record
before us, and given that genericness must be shown by
clear evidence, we cannot conclude that THE KABBALAH CENTRE
is generic.
Having found that the Office has not met its burden in
proving that THE KABBALAH CENTRE is a generic term, we turn
to a consideration of whether applicant has met its burden
Ser. No. 75/376,580
15
of proving that the mark has acquired distinctiveness for
“educational services, namely, providing seminars and
courses on religion and spirituality.”
Applicant has submitted the declaration of Karen S.
Berg, the Secretary of Research Centre of Kabbalah, the
original applicant. The declaration includes the following
statements:
Applicant employs approximately 500
staff members, has 15 permanent
branches worldwide (7 of which are
located in the United States, and has
an additional 25 satellite facilities
throughout the world (including 13
located in the United States);5

Applicant distributes throughout the
United States and elsewhere throughout
the world numerous promotional,
marketing and advertising materials in
connection with its educational and
religious services;

Applicant has fulfilled its mission by
providing education and information
through classes, lectures, meetings,
and the dissemination of information
through books, magazines, brochures,
newspapers, video tapes, audio tapes
and the Internet to millions of people
in the United States and abroad;

5 In a footnote in its appeal brief applicant states that these
figures reflect the situation at the time the Berg declaration
was signed on December 28, 1998, and that today applicant has 21
permanent branches worldwide, of which 10 are located in the
United States, and 31 satellite facilities, of which 16 are
located in the United States. This information was not properly
made of record, and has not been considered; in any event, it
would not change our decision herein.
Ser. No. 75/376,580
16
Applicant has conducted annual
advertising campaigns continuously for
at least the past decade and has
expended substantial sums of money
publishing advertisements in national
publications such as The New York
Times, The Los Angeles Times, The
Jewish Journal, The Chicago Tribune and
many others;

Applicant has also expended substantial
sums of money conducting local
advertising campaigns in cities
throughout the United States and
elsewhere throughout the world;

Applicant has advertised its goods and
services provided and sold under the
mark THE KABBALAH CENTRE mark [sic]
through direct mail campaigns that have
reached millions of people.

In addition to Ms. Berg’s declaration, applicant has
shown that it has establishments in Las Vegas, Chicago and
Philadelphia, that the first two establishments are listed
on its website, and that a listing for a “Power of
Kabbalah” lecture at applicant’s Philadelphia location
appeared on the website for the “Philadelphia citypaper.”
Applicant also owns a registration for THE KABBALAH CENTRE,
issued under the provisions of Section 2(f), for a “series
of non-fiction books in the field of religion and
spirituality; newsletters and magazines in the field of
Ser. No. 75/376,580
17
religion and spirituality.”6
As noted above, the burden is on the applicant to
prove acquired distinctiveness. Moreover, the greater the
degree of descriptiveness a term has, the heavier the
burden to prove it has attained secondary meaning. Yamaha
International Corporation v Hoshino Gakki Co. Ltd., 840
F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988). In this case,
the burden on applicant is a heavy one. KABBALAH is the
name of the subject matter of applicant’s educational
services, and the term THE KABBALAH CENTRE immediately
tells consumers that applicant provides a place for the
study of this subject. In fact, in the brochure submitted
as a specimen in this application, applicant advertises a
lecture
At 8:00 p.m. In
The Kabbalah Centre

followed by an address and telephone number, thus
emphasizing that THE KABBALAH CENTRE is the name of the
place where its services are rendered.

6 Registration No. 2,264,214.
We note that in its brief applicant states that, in connection
with its Section 2(f) claim, it has provided, inter alia,
affidavits of officers of applicant and data regarding the
circulation and subscribers of applicant’s magazine. However,
only the December 28, 1998 affidavit of Karen Berg has been made
of record; further, the record in this application contains no
evidence as to the circulation and subscribers of applicant’s
magazine (or even any evidence as to how the mark may be used on
the magazine).
Ser. No. 75/376,580
18
After having reviewed the evidence of record, we find
that applicant has not met its burden of proving that the
highly descriptive term THE KABBALAH CENTRE has acquired
distinctiveness. Ms. Berg’s declaration, although it
mentions various promotional efforts, does not distinguish
between applicant’s efforts in the United States and
abroad. Obviously, applicant must demonstrate that its
mark has acquired distinctiveness in the United States, and
any distinctiveness the mark may have acquired in other
parts of the world will not support a Section 2(f) claim.
Moreover, the declaration is very vague as to the specifics
of applicant’s efforts. The statements are made that
applicant has expended “substantial sums of money” in local
and national advertising campaigns, but no actual
advertising figures are provided, nor is there any
indication of the numbers of any advertising materials
distributed. Thus, we cannot ascertain from applicant’s
submissions whether its promotional efforts have been
minimal or far-reaching.
Further, it is not clear whether applicant’s
advertising efforts are for its books and tapes or for its
educational services, and it is not clear whether the mark
THE KABBALAH CENTRE per se appears in its promotional
materials. Looking at the “representative materials”
Ser. No. 75/376,580
19
attached to Ms. Berg’s declaration showing how applicant’s
mark is displayed, two are photocopies of audiotapes which
bear the legend “© THE KABBALAH CENTRE” and two are
photocopies of videotapes which bear the trademark THE
KABBALAH CENTRE and lion design, with no reference to THE
KABBALAH CENTRE per se. Obviously even if THE KABALLAH
CENTRE were truly used as a mark on the audiotapes and
videotapes, such use would not be evidence of the use of
the mark in connection with the services at issue herein.
The remaining “representative material” is photocopies of
what may be a brochure, although it is not perfectly clear
to us what it is. In this material, the mark THE KABBALAH
CENTRE and lion design is featured, but the words THE
KABBALAH CENTRE are shown only as part of the phrase “The
Kabbalah Centre Vision: To reveal the Light of the Creator
of the world so every person can achieve complete
fulfillment.” On the same page there is a reference to
“The Kabbalah Learning Centre” as part of the sentence “The
Kabbalah Learning Centre endeavors in every thought, word
and deed to provide the wisdom of Kabbalah in the most
understandable of formats….”
Certainly if the examples which applicant has
submitted of its use of THE KABBALAH CENTRE are
representative of its promotional and marketing efforts,
Ser. No. 75/376,580
20
they are insufficient to show that the public has come to
recognize THE KABBALAH CENTRE per se as a mark for its
“educational services, namely, providing seminars and
courses on religion and spirituality.”
As for applicant’s registration for THE KABBALAH
CENTRE which registered under Section 2(f), that
registration is for books, newsletters and magazines, and
these goods are sufficiently different from the services
identified in this application that it cannot show that THE
KABBALAH CENTRE has acquired distinctiveness for
applicant’s services. Cf. In re Dial-A-Mattress Operating
Corp., supra.
Ser. No. 75/376,580
21

Decision: Although we find that THE KABBALAH CENTRE
is not generic for applicant’s identified services, the
refusal of registration on the ground that the mark is
merely descriptive, and has not been shown to have acquired
distinctiveness, is affirmed.7

7 It is noted that at one point during prosecution applicant
requested, as an alternative to registration on the Principal
Register, registration on the Supplemental Register. The
Examining Attorney refused registration on the Supplemental
Register on the basis that the applied-for term was incapable of
identifying applicant’s services and distinguishing them from
others, essentially because the Examining Attorney found that the
term was a generic name for the services. In its response to
that Office action applicant stated that it did not wish to
pursue registration of the mark on the Supplemental Register,
“but instead desires to proceed with its appeal of the refusal to
register the mark on the Principal Register.” In the following
Office action the Examining Attorney treated the alternative
amendment to the Supplemental Register as having been withdrawn.
In view thereof, the issue of the registrability of the mark
on the Supplemental Register is not part of this appeal. Should
applicant wish to obtain a Supplemental Registration, applicant
is advised that an application which has been considered and
decided on appeal, as this one has, will not be reopened except
for the entry of a disclaimer or upon order of the Commissioner.
See Trademark Rule 2.146(g). Accordingly, applicant’s recourse,
if it wishes to reopen the application for further consideration
of the amendment to the Supplemental Register, is to file a
petition to the Commissioner. This statement should not be read
as indicating that any such petition will be granted.