Vaad L’Hafotzas Sichos, Inc.v.Kehot Publication Society, a division of Merkos L’Inyonei Chinuch, Inc.

Trademark Trial and Appeal Board

Aug 30, 2010

No. 91156051 (T.T.A.B. Aug. 30, 2010)

Hearing: Mailed:
April 20, 2010 August 30, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Vaad L’Hafotzas Sichos, Inc.

v.

Kehot Publication Society, a division of Merkos L’Inyonei
Chinuch, Inc.
_____

Opposition No. 91156051
to application Serial No. 76314502
filed on September 19, 2001
_____

David M. Levy and Daniel Zohny of Robinson Brog Leinwand
Greene Genovese & Gluck P.C. for Vaad L’Hafotzas Sichos,
Inc.

Arthur J. Greenbaum, J Christopher Jensen, Kieran G. Doyle
and Jane Shih of Cowan, Liebowitz & Latman, P.C. for Kehot
Publication Society, a division of Merkos L’Inyonei Chinuch,
Inc.
______

Before Seeherman, Grendel and Cataldo, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Kehot Publication Society, a division of Merkos
L’Inyonei Chinuch Inc., has applied to register the mark
shown below, (hereafter the KEHOT logo),
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91156051
2

for “books, magazines, charts, maps, and photographs on a
variety of aspects of Jewish life.”1 The application
contains the following translation statement:
The mark is in the form of a badge
design, incorporating Hebrew words, the
transliteration of which is as follows -
the upper part of the design
incorporates the Hebrew words "hotzoas
seforim", which, in English, means
"publication society". Below that are
the Hebrew words "karnei hod torah",
which, in English, means "torah is a
majestic crown". In the center of the
design are the Hebrew letters "K H T",
which are the initial letters of the
Hebrew words set forth above, ie "karnei
hod torah". (This combination of the
three Hebrew letters is pronounced
"kehot"). At the bottom of the design is
the word "Lubavitch", which indicates
that applicant is the official
publishing house of the Lubavitch
organization, of which Merkos L'Inyonei
Chinuch, Inc. is the educational arm.

Applicant has disclaimed exclusive rights to “the Hebrew
characters translating to "Hotzoas Seforim" and "Lubavitch."
Vaad L’Hafotzas Sichos Inc. has opposed the

1 Application Serial No. 76314502, filed September 19, 2001,
claiming first use and first use in commerce in 1942.
Opposition No. 91156051
3
registration of this mark,2 alleging that since 1976 it has
been involved in the publication of various items which it
has labeled with the mark for which applicant seeks
registration; that the mark that applicant seeks to register
is used by parties independent of and unaffiliated with
applicant, and the mark does not function to identify goods
as originating with applicant; applicant’s mark includes
Hebrew words which are incorrectly translated in the
application and which are merely descriptive of the goods to
which they may be applied; the overall mark is merely
descriptive and generic in that it has become a common and
generic form used by various entities to describe
publications and their content as having certain religious
characteristics or being in accordance with “the religious
principles of the Orthodox Jewish faith, the Lubavitch
movement and/or its leader Rabbi Menachem Mendel Schneerson”
¶ 4; that applicant is not the true party in interest and
the application is in fact made on behalf of a purported
religious corporation or group first created or formed in
1994, and that with respect to this actual applicant,

2 Two other entities also opposed registration: Otsar Sifrei
Lubavitch Inc. (Op. 91156049) and Vaad Hanochas Hatmimim (Op.
91156050). The Board ordered the consolidation of the three
oppositions on September 30, 2003. On May 8, 2004 the Board
dismissed Opposition No. 91156050 with prejudice in view of the
opposer’s withdrawal of the opposition with prejudice, and on
August 1, 2005 Opposition No. 156049 was dismissed with prejudice
as a result of that opposer’s withdrawal of the opposition with
prejudice.

Opposition No. 91156051
4
“opposer’s use of the mark has priority and may not be
interfered with by the applicant by way of the registration
sought in the application…” § 5. In its answer applicant
has denied the allegations of the notice of opposition,
except that it has admitted that “opposer has published
books bearing Applicant’s mark without authorization.” ¶ 1.
Opposer has taken various positions as to the grounds
for its opposition. In its brief it states that it brought
the opposition on the grounds that the mark does not
function to identify goods as exclusively created, published
or originating with the applicant and that the overall mark
is generic. However, the headings in the argument section
of the brief say that registration should be denied based on
First Amendment considerations; that applicant is not the
source of works published under the KEHOT logo; and that
applicant abandoned any rights it might have had (by
allowing unauthorized third-party use). Opposer also argued
that applicant does not have proper standing to prosecute
the application on behalf of the Kehot Publication Society.
At the oral hearing held in this proceeding opposer’s
attorney stated that opposer was not pursuing the grounds of
genericness or descriptiveness, and that it was pursuing
only two grounds: that the First Amendment bars applicant
from obtaining the registration, and that applicant is not
the owner of the mark. In its brief opposer claimed that
Opposition No. 91156051
5
applicant lacks standing,3 but at the oral hearing opposer
made clear that its arguments regarding applicant’s lack of
standing were, in effect, that applicant is not the owner of
the mark. Therefore, we treat any other grounds that may
have been asserted or to have been argued in the briefs to
have been waived. Opposer also claims that this dispute
between the parties should be decided not by the Board, but
by the Beth Din of Crown Heights; a Beth Din is a Jewish
religious court.
The record includes, by operation of the rules, the
pleadings and the file of the opposed application; the
testimony, with exhibits, of opposer’s witnesses Rabbi Yosef
Shagalov, Rabbi Zalman Chanin and Rabbi Yaakov Chazan, and
the rebuttal testimony of Rabbi Chanin and Rabbi Chazan; and
the testimony, with exhibits, of applicant’s witnesses Rabbi
Shalom Dovber Levine and Rabbi Yehuda Krinsky. Opposer has
also submitted, under notice of reliance, certain articles,
and a paper filed in a civil action between applicant herein
(as plaintiff) and Mendel Scharf.4 Applicant has submitted,
under notice of reliance, papers filed in a civil action

3 Standing, of course, is a threshold requirement that the
opposer, not the applicant, must establish, as it requires the
opposer to show that it has a reasonable belief that it will be
damaged by the issuance of the registration. Section 13 of the
Trademark Act.
4 Although the articles are properly of record as printed
publications, they cannot be used to prove the truth of the
statements therein. See Safer Inc. v. OMS Investments Inc., 94
USPQ2d 1031, n. 14 (TTAB 2010).

Opposition No. 91156051
6
brought by applicant herein against John Does 1 through 25
and Mendel Scharf; a complaint and consent judgment filed in
a civil action between applicant and Otsar Sifrei Lubavitch,
Inc.; excerpts from certain printed publications; and, by
stipulation of the parties, the declaration of Rabbi Levine
and the minutes of an October 7, 1942 meeting of applicant’s
board of directors. The parties are in agreement as to what
is of record; see description of the record at pages 5-7 of
opposer’s brief and pages 8-10 of applicant’s brief.
The proceeding has been fully briefed,5 and both
parties were represented by counsel at the oral hearing held
before the Board.
Background
In order to understand the issues and arguments, some
background information is necessary. As applicant states in
its brief, p. 6, with which opposer concurs, reply brief,
p. 1, “The parties to this dispute are part of the Chabad-

5 In its reply brief opposer, for the first time, raises the
claim that the testimony of applicant’s two witnesses “is highly
suspect” and should be substantially discounted, p. 13, and that
Rabbi Krinsky’s testimony should be discredited as self-serving.
p. 18. Opposer has two bases for this claim: alleged
inconsistencies in the witnesses’ testimony as to certain factual
statements, and that the witnesses did not have personal
knowledge as to all the matters about which they had testified.
Such arguments should have been raised in opposer’s trial brief,
at a point that applicant had an opportunity to respond to them.
In any event, in assessing the probative value of any witness’s
testimony, whether that testimony is on behalf of the opposer or
the applicant, we have considered the basis for the witness’s
knowledge and any self-interest of the witness in the outcome of
the proceeding, and have accorded their testimony the appropriate
weight.
Opposition No. 91156051
7
Lubavitch Chasidic movement,” which involves a particular
sect of Orthodox Jews. The Lubavitch movement is a
Chassidic movement that was founded in the 1700s in Russia.
Levine, p. 7. The terms “Lubavitch” and “Chabad” are both
used to refer to this particular Chassidic movement;
“Lubavitch” refers to the city which was the center of the
movement for over 100 years, and “Chabad” is an acronym for
the principles upon which the movement is based. The
Lubavitch movement has been headquartered in the United
States for the last 70 years, with its primary office in the
Crown Heights section of Brooklyn, New York, although there
are 4000 Chabad centers located throughout the United States
and the world. Levine, p. 16.
The various leaders of this movement are referred to by
the title of “Rebbe.” There have been seven rebbes since
the movement began, generally with a son succeeding his
father, although the most recent rebbe, Menachem Mendel
Schneerson, (referred to hereafter as “Rebbe”) is the son-
in-law of Joseph Isaac Schneersohn (hereafter the “Previous
Rebbe”).6 All of these leaders are revered; their writings

6 Many of the exhibits are in Hebrew and the testimony involves
many Hebrew names and words, and there are some inconsistencies
in the way they have been transliterated. For example, the
Rebbe’s name is spelled in some of the transcripts as
“Schneersohn” (which is the spelling of the Previous Rebbe’s
name), although on official documents it appears as “Schneerson,”
while the Previous Rebbe’s name is sometimes shown with the
English given names and sometimes with a transliteration of the
Hebrew (Yosef Yitzchak). The fact that there are variations in
the spellings does not affect the clarity of the evidence, but in
Opposition No. 91156051
8
continue to be printed and reprinted, and their oral
discourses are written down and published. In particular,
the Rebbe is viewed by his followers as a highly spiritual
and holy person and, according to applicant’s witness Rabbi
Krinsky, if anyone has “any connection with Lubavitch, their
allegiance to the Rebbe is without limit.” p. 64.7
The Previous Rebbe came to the United States in 1940,
and the Lubavitch movement relocated its headquarters to
Brooklyn. Several Lubavitch organizations were set up in
New York at that time. Agudas Chasidei Chabad (“Agudas”)
was incorporated in 1940, and acted as something of an
umbrella organization for Chabad; Merkos L’Inyonei Chinuch,
Inc. (“Merkos”), the applicant herein, was incorporated in
1942, to act as the movement’s educational arm, the name
translates as Center for Jewish Education; and Machne Israel
was incorporated in 1943, its primary purpose is social

order to avoid any confusion in this opinion we have chosen to
use a consistent spelling for these various names and words
except when they are part of a quote.
7 We quote the following interchange in the testimony of
opposer’s witness Rabbi Shagalov, pp. 36-37, as illustrative of
the Rebbe’s authority, and the witness’s incredulity at the
thought of questioning that authority:
Q: Did you make any objection to the Rebbe or the Rebbe’s
secretaries about this at the time?
A: Did I make any –if I understand your question correctly, I as
a Chassid of the Rebbe made any objection to what the Rebbe has
approved? Is that the---
Q: Yes. I think we both know the answer, but I would like you
to just say it.
A: Is that the---
Q: That’s the question.
A: I objected to the Rebbe, you are asking me if I ever objected
to the Rebbe?
Q: Yes.
Opposition No. 91156051
9
services. Kehot Publishing Society (Kehot) was created in
1941, but was never incorporated. Levine, pp. 16-17. Until
the death of the Previous Rebbe in 1950, he was the
president of Agudas, Machne and Merkos, and the Rebbe was
the chairman of their executive boards. After the passing
of the Previous Rebbe, the Rebbe became not only the
spiritual leader of the Lubavitch Chassidic movement
throughout the world, but in effect was the CEO of all of
the Lubavitch organizations, and the president of the three
corporations.
The Rebbe passed away in 1994. The witnesses use the
term Gimmel Tammuz to refer to date of the Rebbe’s passing.
Since Gimmel Tammuz there has been no new Chabad rebbe.
Jurisdiction
Because jurisdiction is a threshold matter, we first
consider opposer’s claim that jurisdiction is an issue.
Opposer cannot seriously contend that this board does not
have jurisdiction to hear an opposition proceeding. Opposer
brought this proceeding before the board, thereby
acknowledging the board’s power to adjudicate it. Moreover,
Section 13 of the Trademark Act, 15 U.S.C. § 1063,
explicitly states that an opposition proceeding, such as the
one before us, may be brought in the Patent and Trademark

A: For sure not.
Opposition No. 91156051
10
Office, and Section 17(a), 15 U.S.C. § 1067(a), states that
the board is to determine the rights to registration.
Opposer’s claims regarding jurisdiction do not involve
the board’s inherent authority to decide this action, but
rest on its contention that the Rebbe issued a mandate that
all intramural disputes of a religious nature must be
decided by the Beth Din of Crown Heights. Opposer is
apparently asserting that applicant must have this matter
settled by what is essentially alternative dispute
resolution because the Rebbe, as president of applicant,
bound applicant to do so. Opposer bases its position not on
any specific directive by the Rebbe that any dispute over
the KEHOT logo or the trademarks used by Kehot must be
determined by a Beth Din, but on the Rebbe’s statements in
such contexts as whether his followers must follow the
directive of the Crown Heights Beth Din that a fast must be
observed, or whether the members of the Crown Heights Beth
Din must, as a sign of respect, be given a particular honor
in synagogue services.
We agree with applicant that by bringing this
opposition before the Board opposer has waived its right to
seek alternative dispute resolution through the Beth Din.
Moreover, opposer never asserted in its notice of opposition
a claim that applicant was required to submit this matter to
a Beth Din for resolution, nor can this issue be said to
Opposition No. 91156051
11
have been tried as applicant objected to testimony and
documents identified during trial regarding the Crown
Heights Beth Din. In fact, although applicant argued in its
trial brief that the issue of jurisdiction was not tried, in
its reply brief opposer did not contest this argument or
respond to it in any way. Opposer cannot bring an action
before this board, engage in a full trial before this board,
and at virtually the end of the proceeding argue that this
board has no jurisdiction to hear its claim. By its actions
opposer has waived any right it might have had to claim that
the parties had agreed to have their conflict adjudicated by
the Beth Din.
Standing
There is no dispute that opposer has standing to bring
this action. Applicant has acknowledged that opposer has
published works using the KEHOT logo, although it asserts
that the use of the logo was essentially under license.
Whatever the arrangement by which opposer used the logo, its
use shows that it has a real interest in this proceeding,
and is not a mere intermeddler. See Lipton Industries, Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA
1982).
First Amendment Ground
Opposer appears to claim that permitting applicant to
register the KEHOT logo mark would violate the First
Opposition No. 91156051
12
Amendment prohibition that “Congress shall make no law
respecting an establishment of religion, or prohibiting the
free exercise thereof.” Some of the arguments made in
connection with this point of opposer’s brief appear to
relate to the jurisdiction of this Board and opposer’s claim
that this is a matter that should be decided by the Beth
Din. We have already discussed our jurisdiction herein.
Opposer also argues that control over the KEHOT logo is part
of a broader theological conflict between the parties. To
the extent that opposer’s arguments in its brief set forth a
cognizable claim before this board, we find that this issue
was not pleaded or tried. Specifically, opposer did not
assert First Amendment considerations as a basis for its
opposition, nor was such an issue tried by consent of the
parties; applicant objected to testimony and exhibits
relating to the doctrinal controversy. Further, although
applicant pointed out in its trial brief that this issue was
not pleaded or tried, in its reply brief opposer did not
contradict applicant’s position, and in fact made no
response whatsoever to applicant’s argument. Because we
find that the issue of whether the applicability of First
Amendment considerations to the registration of the KEHOT
logo was neither pleaded nor tried, we have given this claim
no consideration.8

8 As a general comment, there is clear precedent that this board
Opposition No. 91156051
13
Ownership of the Logo
The record shows that the Kehot Publication Society was
formed in October 1941, and the KEHOT logo was first used at
that time. At the beginning Agudas, Merkos and Machne
published books under the Kehot Publication Society name and
logo. For example, applicant’s exhibit 22 has the KEHOT
logo and applicant’s name and address and the notation, in
English, “Copyright by the Merkos L’Inyonei Chinuch, Inc.,
1943.” However, the bulk of the publications that are of
record have legends stating that they are published by and
claim copyright in “KEHOT” or “Kehot Publication Society.”
Applicant’s witness Rabbi Levine testified that Kehot
Publication Society published Merkos books, which were books
for education, and books edited by Otzar Hachassidim
(“Otzar’), “the editing department of Chabad under Kehot who
was editing Hasiduth [Chassidus] or the code of law or
anything else other than educational.” p. 42-43.9

and the courts are not precluded from determining trademark
rights when religious groups are involved, or when there has been
a split within a religious group, with each group claiming rights
of ownership of or rights to use a mark. In this case, a
determination of whether applicant has the right to register the
KEHOT logo would not involve a decision on the doctrinal dispute
between the parties; our decision herein has an effect only on
opposer’s right to register the KEHOT logo or a mark that is
likely to cause confusion with it.
9 We note that the translations that were submitted for some of
the Hebrew title pages of the latter books use the phrase
“Published by Oitzar Hachasidim,” although the books have the
KEHOT logo and the English legend “Published and Copyrighted by
‘KEHOT’ Publication Society.” See applicant’s exhibit 14; see
also applicant’s exhibit 23. Rabbi Levine has explained that,
although “published” is an acceptable translation of the Hebrew
Opposition No. 91156051
14
In 1967 opposer herein, Vaad L’Hafotzas Sichos
(hereafter “Vaad”), was established to publish the talks or
discourses of the Rebbe, and the KEHOT logo was used on
these publications. Some of the volumes of this work have
the legend that they were published and copyrighted by Kehot
Publication Society, (see opposer’s ex. 11-D), and some say
that they were published and copyrighted by Vaad. (see
opposer’s ex. 11-B). Subsequently Vaad took on additional
responsibilities, including publishing under the KEHOT logo
books other than the discourses, and administering the Tanya
campaign.10 By 1979 Vaad took over the arrangements for
doing all the printing for Kehot Publication Society, e.g.,
arranging for edited works to be printed and bound.
The minutes of the first meeting of the Board of
Directors of Merkos on October 7, 1942, at which the
Previous Rebbe and the Rebbe were present, show that, with
the incorporation of Merkos, it was determined that Merkos
would take over the activities of the Kehot Publication
Society and that the names KEHOT and KEHOT PUBLICATION
SOCIETY were assigned by the previous Rebbe to Merkos.11
The specific language of the resolution is as follows:

wording before Otzar Hachassidim, the nuance of the phrase, which
literally translates as “coming to light,” means editing.
10 The Tanya campaign was a project the Rebbe started in 1978 to
have the Tanya, which is the basic book of Lubavitch philosophy,
printed by and in each community throughout the world.
11 Opposer has, in both its brief and reply brief, made
statements that appear to question the validity of this evidence.
Opposition No. 91156051
15
Whereas “KEHOT” has been engaged in the
publication of literature of great value
both in the religious and pedagogic
field, and

Whereas it appears that such activity
would well fit into the program of
MERKOS L’INYONEI CHINUCH, INC. and it
would be for the best interests of
MERKOS L’INYONEI CHINUCH, INC. to assume
and adopt the continuance of these
publications hereafter, and

Whereas Rabbi Joseph I. Schneersohn [the
Previous Rebbe] has signified his
willingness to and does give and assign
to MERKOS L’INYONEI CHINUCH, INC. the
right to use the trade names of “KEHOT”
and “KEHOT PUBLICATION SOCIETY” in
publishing, advertising and distributing
religious and pedagogic literature,

Now, therefore, it is resolved that the
proposal as set forth above be and the
same hereby is approved and the
Executive Committee is directed to carry
out the terms of this resolution in all
respects.

On June 3, 1960 applicant obtained a New York State
registration for the KEHOT logo which was renewed through
1990. Applicant’s witness Rabbi Krinsky testified that it
was not renewed at that point due to an oversight.

“Only after the testimony period was closed and briefing
underway, did the Applicant emerge with an entirely new
proposition to give strength to Merkos’ standing as a proper
applicant.” Reply brief, p. 1. It is true that the minutes, and
the declaration attesting to the authenticity of the minutes and
how they were discovered, were submitted after the completion of
testimony. However, the parties stipulated to these submissions,
and therefore they are properly of record. Further, if opposer
had wanted to submit additional evidence with respect to the
authenticity or probative value of this evidence, presumably it
could have made this a condition of its stipulation.

Opposition No. 91156051
16
Opposer has set forth in its brief several positions as
to why applicant is not the owner of the KEHOT logo. First,
opposer appears to argue that applicant is not the owner of
the mark because there is no evidence that the Kehot
Publication Society, which has used the KEHOT logo through
the years, is a division of applicant. It appears that
opposer is saying that Kehot Publication Society is part of
an entity other than Merkos. However, because opposer’s
statement that “Merkos does not have proper standing to
prosecute this application on behalf of the Kehot
Publication Society,” brief, p. 32, could be read as
asserting that Kehot Publication Society is itself the owner
of the KEHOT logo, we will address that point first.
Opposer itself has acknowledged that
Kehot was never incorporated, never
operated under the direction of a formal
board of directors; nor did it ever
employ its own staff. It never
maintained its own bank account. Its
ephemeral existence is perhaps best
illustrated by the fact that on the
title page of many publications it was
identified in quotation marks as “Kehot
Publication Society”.

Brief, p. 33 (emphasis in original). We add that the
evidence supports what opposer has stated, i.e., Kehot
Publication Society was never incorporated, never paid the
salaries of the staff that worked there, and never had a
bank account. Thus, although numerous books bearing the
KEHOT logo state that they were published and copyrighted by
Opposition No. 91156051
17
Kehot or Kehot Publication Society, we cannot find on this
record that Kehot Publication Society is a separate company
and that it owns the KEHOT logo.
Opposer’s primary argument is that there is
insufficient evidence to demonstrate that Kehot Publication
Society is a division of Merkos. In support of this,
opposer points, inter alia, to its exhibits 45 and 50, see
p. 33 of opposer’s brief. Exhibit 45 is a declaration by
Rabbi Levine (applicant’s witness) that was submitted in a
civil action that provides information about the history of
the Chabad-Lubavitch Chasidic movement and the corporate
structure of the Chabad organizations.12 However, the
declaration actually states, at paragraph 16, that Kehot
Publication Society is a division of Merkos:
Once established, Merkos was assigned
primary responsibility for education and
publishing activities. Its publishing
activities were carried out through its
Kehot Publishing Society division under
the Kehot logo.

Exhibit 50 is a document signed in 1985 that is the
response to discovery by Agudas Chasidei Chabad (the Chabad
umbrella corporation set up by the Previous Rebbe) in a

12 The declaration was submitted in connection with a summary
judgment motion in a civil action between Merkos as plaintiff and
a third party before the U.S. District Court for the Eastern
District of New York.
Opposition No. 91156051
18
civil action brought by Agudas.13 The response was signed
by Rabbi Krinsky, one of applicant’s witnesses in this
proceeding. Agudas responded to an interrogatory to
identify all organizations through which the “Lubavitch
Rabbi and community” perform their major functions, by
listing four organizations: Kehot Publication Society
(publishing), Merkos (educational services), Machne (social
services) and United Lubavitch Yeshivot (yeshivas). Opposer
considers the fact that Kehot is listed as a separate
organization from Merkos in this response, and that its
publications are listed separately from the publications of
Merkos in other documents, as showing that Kehot is not a
division of Merkos.14
Opposer is correct that many of the exhibits make a
distinction between Merkos and Kehot. History of Chabad in
the U.S.A., opposer’s exhibit 46, describes Merkos and Kehot
in separate chapters, and does not describe Kehot as a
division of Merkos or list Merkos as overseeing the
activities of Kehot.
Ultimately, however, whether or not the publications
given out to the public state that Kehot Publication Society

13 The action was brought by Agudas in the U.S. District Court
for the Eastern District of New York against third parties
because of physical damage to the plaintiff’s library.
14 However, opposer does not apparently view the listing of Kehot
as a separate organization as proof that Kehot is an independent
entity, and for the reasons we have already discussed, we agree.

Opposition No. 91156051
19
is a division of Merkos is not determinative. It is not
required that a division of a corporation identify the
corporation on the pamphlets or books it publishes. So
although there is meager evidence in terms of the
publications themselves to show that Kehot is a division of
Merkos, there are other documents and testimony that does.
First, there are the minutes of the first Merkos board
meeting in 1942, discussed above, in which it was determined
that the newly incorporated Merkos would continue the
activities of Kehot, and in which the previous Rebbe
assigned the names Kehot and Kehot Publication Society to
Merkos. Although opposer argues that this assignment did
not “transform the Kehot Publication Society into a division
of Merkos,” brief, p. 35, there is significant documentary
evidence and testimony that shows that it did. As opposer
has acknowledged, the Kehot Publication Society does not
function as an actual company paying the salaries of
employees and maintaining a bank account; rather it has been
more of a vehicle through which written material is
published. The evidence shows that Merkos has paid the
salaries of Kehot staff. Rabbi Levine testified that he was
a senior editor in Kehot, but “all checks, all orders, all
instructions of Kehot came by Merkos,” p. 95; Merkos has
paid all the expenses of Kehot, and all income from Kehot
has gone into Merkos’s account, p. 96. See, for example,
Opposition No. 91156051
20
applicant’s exhibit 96, a 1978 bill from Empire Press for
work on the Tanya, which was published under the KEHOT logo;
Rabbi Krinsky, who has been on the board of directors of
Merkos since the 1970s, confirmed his handwriting on the
bill which indicated that he wrote out the check in payment
of the bill. Similarly, exhibit 97 is a 1978 bill from
Empire Press to Kehot Publication Society where, again,
Rabbi Krinsky testified as to his handwriting on the bill
indicating that he wrote the check.
In addition, Merkos applied for and obtained a New York
State trademark registration in 1960 for the KEHOT logo and
renewed the registration in 1980.
Viewing the evidence in its totality, there is ample
support for the conclusion that Kehot Publication Society is
a division of Merkos, and that Merkos is the owner of the
KEHOT logo and is the proper applicant for this trademark.
Put another way, opposer has not met its burden of proving
by a preponderance of the evidence that Kehot is not a
division of Merkos.
Opposer argues, alternatively, that “any assignment of
Kehot publishing rights to Merkos was unmistakably
superseded or terminated in 1979 when the Rebbe designated
Vaad to operate Kehot.” Brief, pp. 35-36. The record shows
that Vaad was established in 1967 to publish the Rebbe’s
talks and circulate them to the Chabad centers and
Opposition No. 91156051
21
synagogues in the United States. Levine, p. 44. Merkos
provided Vaad with space in its building for offices and
printing equipment, rent free. Levine, pp. 44-45. Later,
Vaad took on more responsibilities, managing publishing
activities for Kehot. At the end of 1978 or beginning of
197915 Vaad entered into a more formal relationship with
Kehot. According to opposer’s witness Rabbi Chanin, he was
told that the Rebbe wanted Vaad to take on the management of
Kehot, and that Vaad should prepare a contract in accordance
with the notes of the Rebbe. The relationship is shown by
opposer’s exhibit 14, an agreement between Kehot and Vaad.16
The document between Kehot and Vaad spells out the
different responsibilities of each party. Essentially Vaad
accepted responsibility for the actual printing process—
deliberations with the printers, binders, etc., supervising

15 The agreement, opposer’s exhibit 14, bears a date in Hebrew
which follows the Jewish calendar. The English translation does
not reflect a date. Rabbi Krinsky stated that the date would
coincide with December 1978.
16 Opposer has pointed out that the agreement that is Exhibit 14
is not signed. Rabbi Chanin testified that he signed the
agreement and gave it to Rabbi Hodakovs, the Rebbe’s Chief of
Staff, and that he does not know who else may have signed it.
Although an unsigned agreement would normally have little
probative value, in the present situation, given that the Rebbe
was regarded as a righteous man, and the authority that he
wielded, (“if we got such offer from the Rebbe, there is no—-
can’t refuse it,” Chanin, p. 50), the fact that Rabbi Chanin and
Vaad would act in accordance with the agreement without a signed
copy does not seem unusual. We also note that opposer’s witness
Rabbi Krinsky, who was part of Kehot’s management at the time,
stated that the paragraph in the agreement setting forth Vaad’s
obligations accurately reflected what Vaad’s responsibilities
actually were, and there is also documentary evidence that
indicates that the provisions of the agreement were followed.

Opposition No. 91156051
22
the aesthetic quality of the printing; maintaining contact
with the “handlers” (presumably the editors) about the
progress of their work; and publicity. The agreement states
very clearly that Vaad was not responsible for the
preparation of the books themselves: “the responsibility of
[Vaad] in the printing of books begins only after it
receives from Kehot an entirely complete book.” Kehot was
responsible for payment of all expenses, including printer’s
bills and publicity expenses.
It is not clear just what opposer means by its
statement that any assignment of Kehot publishing rights to
Merkos were terminated by the changed relationship in 1979
as evidenced by this agreement. Certainly opposer is not
asserting that the rights the Previous Rebbe assigned in
1942 somehow reverted to him; he had passed on many years
earlier. Nor is there any basis to conclude that the rights
in the Kehot name somehow vested in Kehot itself. As we
have discussed at some length, Kehot is not actually a
business entity that operates as an independent
organization. To the extent that opposer is asserting that
it became the owner of the logo in 1979, there is simply no
evidence to support such a claim. The agreement makes no
Opposition No. 91156051
23
mention whatsoever of the KEHOT logo, let alone a transfer
to Vaad of rights in the logo.17
On the contrary, there is documentary evidence that,
subsequent to 1979, Merkos continued to act as the owner of
the KEHOT logo. Merkos continued to receive and pay bills
for Kehot after 1979. See applicant’s exhibit 105, a 1991
bill for “Kehot Publications/Catalog”; applicant’s exhibit
106, a 1988 bill from Crown Bookbindery, Inc. to Kehot
Publication Society for the “History of Chabad in the
U.S.A.”; applicant’s exhibit 107, a 1987 bill from Expert
Bookbinding Corporation for a Kehot publication; and
applicant’s exhibit 108, a 1990 bill to Kehot from the
Algemeiner Journal for a newspaper advertisement placed by
Kehot. Rabbi Krinsky testified that all of these bills were
paid by Merkos, identifying the people who had approved the
payments. Perhaps most significantly in terms of showing
its continued ownership of the KEHOT logo, in 1980 Merkos
renewed its New York State registration for the logo.
Given the testimony and documentary evidence showing
that Merkos acted as the owner of the KEHOT logo after 1979,
and the omission from the agreement between Vaad and Kehot
on which Vaad relies from which a termination of Merkos’s
ownership rights in the KEHOT logo can even be inferred, we

17 Under this alternative theory by Vaad, presumably the putative
assignment would have been by Merkos, acting through its Kehot
division.
Opposition No. 91156051
24
find that opposer has not proved by a preponderance of the
evidence that Merkos lost its ownership rights in the KEHOT
logo, or that Vaad obtained them.
Finally, throughout opposer’s brief there is a claim
that the KEHOT logo is not a trademark, and that it
represents something spiritual, namely that the Rebbe has
sanctioned the material identified by the logo. Although
the Rebbe sanctioned the use of the logo for some material
but not for other material, this does not make it a
“spiritual” mark. Ownership of a trademark gives the owner
the right to determine what goods will be sold or offered
under the mark; thus, while the Rebbe may be a spiritual
leader, his actions in approving the use of the logo are no
different from any other trademark holder. Further, the
record shows that both the Previous Rebbe and the Rebbe
treated the KEHOT logo not as some spiritual or holy item.
Rather, they each took the business steps that any trademark
owner would take with respect to a trademark, including
filing for protection of the mark under the laws of New York
State.
Again, it is opposer’s burden as the plaintiff in this
proceeding to prove its case. Under any of the theories
opposer has advanced, it has simply failed to meet that
burden.
Decision: The opposition is dismissed.