Kabbalah Centre Int’l., Inc.

Trademark Trial and Appeal Board

Jul 30, 2001

No. 75376822 (T.T.A.B. Jul. 30, 2001)

7/30/01

Paper No. 24
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. 75/376,822
_______

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:

Research Centre of Kabbalah filed an application to
register THE KABBALAH CENTER and design, shown below, for
“educational services, namely, providing seminars and
courses on religion and spirituality.”1 The application and

1 Application Serial No. 75/376,822, filed October 21, 1997, and
asserting first use and first use in commerce on January 30,
1991.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/376,822
2
mark was subsequently assigned to Kabbalah Centre
International Incorporated.

In the first Office action the Examining Attorney
required that applicant disclaim exclusive rights to the
use of the words THE KABALLAH CENTRE. Applicant thereupon
submitted a statement that “The mark has become distinctive
of the services through the applicant’s substantially
exclusive and continuous use in commerce for at least the
five years immediately before the date of this statement.”
The Examining Attorney objected to the manner of the
Section 2(f) statement because the design portion of the
mark was deemed to be inherently distinctive. In response,
applicant submitted an amended claim of acquired
distinctiveness, stating “The ‘KABBALAH LEARNING CENTRE’
portion of the mark has become distinctive of the services
through the Applicant’s substantially exclusive and
continuous use in commerce for at least the five years
immediately before the date of this statement.” It should
be noted that this statement references THE KABBALAH
LEARNING CENTRE, but the only wording in the mark, which is
Ser. No. 75/376,822
3
the wording for which a disclaimer is required, is THE
KABBALAH CENTRE. It is clear from both applicant’s and the
Examining Attorney’s papers that the reference to THE
KABBALAH LEARNING CENTRE was a typographical error, and
that the Section 2(f) claim was made as to THE KABBALAH
CENTRE. The Office has treated the claim to refer to THE
KABBALAH CENTRE, as do we, and Office records reflect this.
The Examining Attorney has made final the requirement
for a disclaimer of the words THE KABBALAH CENTRE,
asserting that these words are generic for applicant’s
services. Moreover, the Examining Attorney asserts that
even if the words were not generic, applicant has not
established that they have acquired distinctiveness.
Applicant has appealed. The appeal has been fully
briefed, but an oral hearing was not requested.
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.
Ser. No. 75/376,822
4
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 of the
applied-for mark, but for goods rather than services, which
issued pursuant to Section 2(f) on January 2, 2001, and an
e-mail message to Mr. Nussbaum from Lisa Kessler dated
March 8, 2001 and reporting “February stats” “numbers for
the website.” Applicant explains that it submitted this
information with its brief because it was 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
Ser. No. 75/376,822
5
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
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 reference to “239,926
Pages” means--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
Ser. No. 75/376,822
6
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
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 KABBALAH CENTRE is a generic term for applicant’s
identified “educational services, namely, providing
Ser. No. 75/376,822
7
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, 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.
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
Ser. No. 75/376,822
8
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.
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

2 A New Dictionary of Religions, rev. ed. © 1995.
3 The latter three definitions are taken from The American
Heritage Dictionary of the English Language, 3d ed. © 1992.
Ser. No. 75/376,822
9
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: Celebs embrace Jewish
mysticism
The New Standard Jewish Encyclopedia
says Kabbalah is “The mystical
religious stream in Judaism .. (that)
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
Ser. No. 75/376,822
10
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.
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.
Ser. No. 75/376,822
11
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
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
Ser. No. 75/376,822
12
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.
“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.”
Ser. No. 75/376,822
13
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.
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 it 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

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. 75/376,822
14
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
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
Ser. No. 75/376,822
15
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
of proving that the term 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);

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;
Ser. No. 75/376,822
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 & DESIGN
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
religion and spirituality.”5

5 Registration No. 2,264,214.
Ser. No. 75/376,822
17
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.
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 applicannt’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
Ser. No. 75/376,822
18
and national advertising campaigns, but no actual
advertising figures are provided, nor is there any
indication of the numbers of any advertising materials
distributed. Looking at the “representative materials”
attached to Ms. Berg’s declaration showing how applicant’s
mark is displayed, two appear to be photocopies of flyers
advertising lectures in applicant’s New York establishment,
one on May 10, 1994 and the other on March 14 in an
unspecified year. We cannot ascertain from applicant’s
submissions whether its promotional efforts have been
minimal or far-reaching; obviously, the distribution of a
limited number of flyers on a local basis does not have
much impact in terms of proving acquired distinctiveness.
The other materials include the photocopies of what appears
to be packaging for two of applicant’s videotapes, but
although they show use of the mark on videotapes, they are
not evidence of use of the mark on the services at issue
herein. The remaining material may be pages photocopied
from a brochure; it is not perfectly clear to us what they
are. Even assuming they do represent a brochure promoting
applicant’s services, again we have been given no
information as to when, where or the extent to which it has
been distributed.
Ser. No. 75/376,822
19
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.
Decision: Although we find that THE KABBALAH CENTRE
is not generic for applicant’s identified services, we find
that it is merely descriptive and that applicant has not
met its burden of proving acquired distinctiveness.
Accordingly, the requirement for a disclaimer of THE
KABBALAH CENTRE is affirmed, and registration to applicant
is refused. If applicant submits the required disclaimer
within thirty days of the mailing date of this decision,
the decision will be set aside, and applicant’s mark will
be published for opposition.