Rubimed AG

Trademark Trial and Appeal Board

Dec 29, 2004

No. 76213128 (T.T.A.B. Dec. 29, 2004)

Mailed: December 29, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Rubimed AG, assignee of Dr. med. Reimar Banis1
________
Serial No. 76213128
_______
Julie A. Greenberg of Gifford, Krass, Groh, Sprinkle,
Anderson & Citkowski, P.C. for applicant.
Leslie L. Richards, Trademark Examining Attorney, Law
Office 106 (Mary I. Sparrow, Managing Attorney).
_______
Before Hairston, Chapman and Holtzman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On February 21, 2001, Dr. med. Reimar Banis filed an
application (now assigned) to register the mark
PSYCHOSOMATIC ENERGETICS on the Principal Register for
goods and services ultimately identified as follows:
“printed instructional, educational,
and teaching materials in the field of
naturopathy, empirical therapeutics and
1 The records of the Assignment Branch of the USPTO indicate that
the original applicant (an individual, citizen of Switzerland)
has assigned the application to Rubimed AG (a Swiss corporation).
Reel 2944 Frame 0825 and Reel 2975 Frame 0891.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76213128
2
holistic medicine” in International
Class 16; and
“medical services, namely, medical care
in the field of naturopathy, empirical
therapeutics and holistic medicine” in
International Class 42.
The application is based on applicant’s claimed date
of first use and first use in commerce of October 1998 for
both classes.
The Examining Attorney refused registration on the
ground that applicant’s mark, PSYCHOSOMATIC ENERGETICS, is
merely descriptive of applicant’s goods and services under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1).
When the refusal was made final, applicant appealed to
the Board. Both applicant and the Examining Attorney have
filed briefs. An oral hearing was requested by applicant,
but subsequent thereto, applicant withdrew its request for
an oral hearing.
The Examining Attorney contends that the proposed mark
merely describes the subject matter and a significant
feature of these goods (printed matter) and services
(medical services), specifically that these goods and
services involve the use of energetic medicine to treat
psychosomatic disorders; that each of the two words have a
readily understood meaning, and the combination of the two
Ser. No. 76213128
3
words does not create a unique mark with a separate, non-
descriptive meaning; and that neither imagination nor
mental gymnastics is needed to discern the nature of
applicant’s goods and services.
In support thereof, the Examining Attorney made of
record several dictionary definitions, including the
following:
(1) psychosomatic adjective 1. Of or
relating to a disorder having
physical symptoms but originating
from mental or emotional causes.
2. Relating to or concerned with
the influence of the mind on the
body, especially with respect to
disease: psychosomatic medicine.
The American Heritage Dictionary
(Third Edition 1992);
(2) energetics noun 1. The study of
the flow and transformation of
energy. 2. The flow and
transformation of energy within a
particular system.
The American Heritage Dictionary
(Third Edition 1992); and
(3) energetics That branch of science
which treats of [sic] the laws
governing the physical or
mechanical, in distinction from
the vital, forces, and which
comprehends the consideration and
general investigation of the whole
range of the forces concerned in
physical phenomena.
On-Line Medical Dictionary.
The Examining Attorney also made of record copies of
several excerpted stories retrieved from the Nexis
Ser. No. 76213128
4
database, examples of which are reproduced below, to show
that “energetics” or “energetic” or “energetic medicine” is
a field of the medical industry involving the study of
energy changes in relation to healing:
Headline: Hands For Healing: Is Touch
Therapy Real Or ‘Pseudoscience’?
Traditions more than 5,000 years old
have described a universal energy that
flows through centers in the human
spine and activates the life force.
The idea that an imbalance in the human
energetic system causes illness, and
that healing has an energetic
connection, is older than Hippocrates….
‘We need both systems –- mainstream
medicine and energetic methods of
healing,’ she said. …
“Kennebec Journal (Augusta, ME),”
October 6, 2002;
Headline: Briefly
…a retreat, will be held in four
sessions at the Notre Dame Spiritual
Center. The goal of the retreat is to
‘offer a holistic approach to spiritual
deepening through reflection, creative
expression and energetic healing,’
using a variety of art media,
meditation, scripture and the movements
of the Universe Story. … “Portland Pres
Herald,” October 5, 2002;
Headline: Healing the Whole Person
… Since then, Slater has done a great
deal of research and writing about
‘energetic healing.’ In 1998, she
opened a holistic nursing practice in
Clarksville… . “The Leaf-Chronicle
(Clarksville, TN),” July 16, 2002;
Headline: Weekend For Wise Women
… Other workshop topics include: yoga,
self-care in times of crisis,
Ser. No. 76213128
5
insightful aging, energetic healing,
past lives breath work and managing
stress. “The Miami Herald,” July 13,
2002;
Headline: Community Datebook
…moderated panel discussion with
audience interaction. Professions to
be represented include Naturopathy
(Jason Harmon), Tibetan Buddhist
medicine, with Ayurveda and Taoism, and
yoga (Deb Lachinski), chiropractic
(Rich Newman), Taoist healing/Oriental
energetic medicine (Shifu Warren
Pretlow), eastern philosophy (Josef
Princiotta), acupuncture (Kelly
Sandberg…. “Anchorage Daily News
(Alaska),” March 27, 2001;
Headline: Doctor Known For Holistic
Practices Dies at 46
… Sister-in-law Carol Parsow said Jay
was a dedicated doctor who preferred to
treat patients using holistic medicine,
which included acupuncture, and
energetic medicine. … “Omaha World
Herald (Nebraska),” January 12, 2001;
Headline: Phila. Region To Play Host
To Health Symposium…
… The session will involve authors who
have made a name for themselves on
varied medical topics, from energetics
to acupuncture and cancer screening. …
“The Philadelphia Inquirer,” January
28, 1998; and
Headline: Dog’s World: Acupuncture
Controversy Gets To the Point
… Acupuncture, homeopathy, herbalism,
are all part of a healing modality
called Energetic Medicine. Energetic
Medicine deals with energy fields, not
pathology. Pathology develops when
energy becomes unbalanced. … “The
Capital (Annapolis, MD,” March 12,
1997.
Ser. No. 76213128
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The Examining Attorney also refers to applicant’s
specimens of record (a one-page flyer and a brochure), as
well as printouts of a few pages from applicant’s website,
all to show that these terms have readily understood
meanings, including as used by applicant, and the
combination remains merely descriptive. See the examples
of applicant’s uses quoted below:
“A revolutionary new concept for the
exact measurement of the subtle human
energy field and the effective
treatment of emotional issues”
“• Diagnosis and therapy of the
psychosomatic condition
• Exact diagnosis of the disturbed
autonomic centers
• Localization of unconscious mental
conflicts”
“What is ‘Psychosomatic Energetics’?
The name of the method means that the
three parts [-] soul (psyche), body
(soma) and subtle energy (energetics)
have to work together in harmony in
order to maintain our health. …”
(Applicant’s website.)
“‘Psychosomatic Energetics’ is a new
method of treating illnesses in a
holistic way, considering both the body
and the soul as well as the vital
energies.”
“It is based on a combination of the
energy-medicine from the far East
(acupuncture, Yoga) with scientific
modern thinking.”
Ser. No. 76213128
7
“Psychosomatic Energetics gives you the
chance for the first time ever to
measure the subtle energy-field of the
body (Aura) very precisely.”
“It is the aim of any energetic healing
method to find out about losses of
vital energy and to rebalance it again,
like in acupuncture and homeopathy.”
“How can you explain psychosomatic
disorders?”:
(Applicant’s brochure, p. 2-3.)
“…this method…can measure the human
energy field so precisely and reliably—
that therapy and rapid healing are the
natural consequences.”
“To eliminate depression, anxiety,
chronic fatigue and other difficult
conditions through powerful Homeopathic
remedies…”
(Applicant’s flyer.)
Applicant argues that the two words together have no
readily understood meaning;2 that instead the phrase is
coined “to suggest the focus of applicant’s holistic
2 Applicant submitted dictionary definitions of the words
“energetics” and “psychosomatic” with its brief. We take
judicial notice thereof. See The University of Notre Dame du Lac
v. J.C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). See also,
TBMP §704.12 (2d ed. rev. 2004).
Applicant also submitted with its brief a copy of a Board
decision (In re I.P. International Inc.) marked “This disposition
is not citable as precedent of the TTAB.” We have not considered
the non-precedential decision in deciding this appeal. See In re
Caterpillar Inc., 43 USPQ2d 1335, 1337 (TTAB 1997); and General
Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, footnote 9
(TTAB 1992).
Ser. No. 76213128
8
spiritual/body therapies” (reconsideration request, p. 2);
that applicant does not use the words in their readily
understood manner; that applicant’s goods and services
relate to the “patient’s soul,” not to the
medical/psychiatric focus on the mind as the basis of
healing; that “applicant’s services are spiritual, not
medical, as construed by the Examiner” (reconsideration, p.
3); that this incongruity between the two words
(“psychosomatic” relating to mentally or emotionally based
physical symptoms and “energetics” relating to a branch of
science governed by the physical or mechanical –
applicant’s brief, p. 2) and the involved goods and
services makes the mark suggestive; that when viewed in its
entirety, the combination of these two words (one clinical
and one esoteric, according to applicant), is unique and is
a contradiction of terms; that the phrase is “intended to
suggest the focus of Applicant’s holistic spiritual/body
therapies” (brief, p. 3); that the words do not immediately
convey information about applicant’s goods and services,
which puts the “emphasis on utilizing the soul’s influence
in the healing” (reply brief, p. 2); and that doubt is
resolved in applicant’s favor.3
3 In its reply brief, p. 3, applicant asserts that the Examining
Attorney’s inclusion of “additional evidence” with the brief is
Ser. No. 76213128
9
We find that the phrase “psychosomatic energetics” is
merely descriptive of the subject matter of applicant’s
various printed materials in the field of naturopathy,
empirical therapeutics and holistic medicine; and that the
phrase is merely descriptive of a significant feature or
characteristic of applicant’s medical services in the field
of naturopathy, empirical therapeutics and holistic
medicine. The two words are English words with dictionary
definitions, which would be generally understood by the
relevant purchasers of the goods and services.
“Psychosomatic” is defined as relating to disorders which
have physical symptoms but mental or emotional causes, or
the more general definition of relating to the influence of
the mind on the body especially with respect to disease and
the dictionary even refers to “psychosomatic medicine.”
“Energetics” is clearly a type of medicine which considers
the whole range of forces concerned in physical phenomena.
(See the dictionary definition, several of the Nexis
excerpted stories, and applicant’s website pages and
specimens.) Thus, relevant consumers will readily
not appropriate and does not form part of the record. Applicant
is advised that the Examining Attorney’s quotes from Nexis
articles, statements from applicant’s website, and statements
from applicant’s specimens are all proper references to material
previously made of record herein. To the extent applicant
requests that the Board not consider this material, applicant’s
request is denied.
Ser. No. 76213128
10
understand that applicant’s goods and services focus on the
energetic healing method and the mind/body connection.
Applicant’s argument that it does not use the terms in
their ordinary meaning is not persuasive in light of the
uses on applicant’s specimens and applicant’s website.
Applicant’s argument, with regard to its services, that its
services are “spiritual, not medical” (applicant’s brief,
p. 7) is unpersuasive, particularly in light of the
identification of services “medical services, namely,
medical care in the field of … holistic medicine.”
Consumers will understand the phrase as meaning that
applicant’s goods and services involve the influence of the
mind on the body and how this changes the energy of the
body. That is, they will understand that applicant’s
method of treating patients and the printed materials about
how it treats patients involves a focus on energetics and
holistic medicine in dealing with psychosomatic disorders.
When we consider the mark PSYCHOSOMATIC ENERGETICS as
a whole, and in the context of applicant’s goods (various
printed materials in the field of inter alia, holistic
medicine) and applicant’s services (medical care in the
field of, inter alia, holistic medicine), we find that the
phrase immediately informs consumers that applicant’s goods
and services use or feature information about energetic
Ser. No. 76213128
11
medicine (energetics) to treat physical symptoms
originating from mental or emotional causes.
The combination of these English words does not create
an incongruous or unique mark. Rather, applicant’s mark,
PSYCHOSOMATIC ENERGETICS, when used on and in connection
with applicant’s identified goods and services, immediately
describes, without need of conjecture or speculation, the
essential feature, purpose or function of applicant’s goods
and services. No exercise of imagination or mental
processing or gathering of further information is required
in order for purchasers or prospective customers for
applicant’s goods and services to readily perceive the
merely descriptive significance of the phrase PSYCHOSOMATIC
ENERGETICS as it pertains to the identified goods and
services on which applicant uses the phrase. See In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In
re Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987); In re Polo International Inc., 51 USPQ2d
1061 (TTAB 1999); In re Intelligent Instrumentation Inc.,
40 USPQ2d 1792 (TTAB 1996); and In re Time Solutions, Inc.,
33 USPQ2d 1156 (TTAB 1994).
While evidence of descriptive use of the multiple
words together is generally persuasive that such a multiple
word mark is merely descriptive, there is no requirement
Ser. No. 76213128
12
that an Examining Attorney must obtain evidence of all the
words used together in order to make a prima facie showing
that a multiple word mark is merely descriptive.4 See In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001)(Court affirmed Board holding THE ULTIMATE BIKE RACK
merely descriptive and subject to disclaimer for carrying
racks for mounting on bicycles and accessories for bicycle
racks, namely attachments for expanding the carrying
capacity of a carrying rack.) See also, In re Shiva Corp.,
48 USPQ2d 1957 (TTAB 1998).
Finally, even if applicant was the first (and/or only)
entity to use the phrase “psychosomatic energetics” in
relation to printed materials and medical services, in the
field of inter alia, holistic medicine, such is not
dispositive where, as here, the phrase unquestionably
projects a merely descriptive connotation. See In re
Tekdyne Inc., 33 USPQ2d 1949, 1953 (TTAB 1994). See also,
2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §11:18 (4th ed. 2001).
Decision: The refusal to register on the ground that
the proposed mark is merely descriptive under Section
4 The issue here is not whether the phrase is generic for
applicant’s identified goods and/or services, but rather is
whether the phrase is merely descriptive in the context of
applicant’s goods and/or services.
Ser. No. 76213128
13
2(e)(1) of the Trademark Act is affirmed as to both
classes.