Dan E. Rogers

Trademark Trial and Appeal Board

Jan 6, 2000

No. 75013108re (T.T.A.B. Jan. 6, 2000)

Paper No. 18
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 6, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Dan E. Rogers
Request for Reconsideration
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Serial No. 75/013,108
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Freling E. Baker of Baker and Maxham for applicant.
Mary E. Crawford, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
____________
Before Walters, Chapman and Wendel, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
On October 27, 1999, the Board affirmed the refusal to
register in this case under Section 2(e)(4) of the
Trademark Act, 15 U.S.C. § 1052(e)(4), on the ground that
applicant’s mark is primarily merely a surname and
applicant has not established, under Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f), that his mark has
acquired distinctiveness in relation to other goods or
Serial No. 75/013,108
2
services that, in this intent-to-use application, will
transfer to applicant’s use of the mark in connection with
the services of “providing medical treatment for human
illnesses by means of nutritionally based therapy.”
On December 2, 1999, applicant requested
reconsideration of the Board’s decision. Applicant
contends that “the Board erred in reaching the decision it
issued due to an alleged ambiguity in the facts presented
and Applicant’s declarations”; and that “[a]s a result of
misunderstanding the relationship between the Applicant and
others using the mark GERSON on Applicant’s behalf, the
Board 1) failed to take into consideration the fact that
the use of the mark on related goods and services and in
offering the services of Applicant were (sic) directly
marketing and advertising for Applicant’s benefit, and 2)
failed to take into consideration that the Applicant has
offered its services in commerce continuously for more than
five years prior to the application.” In support of his
position, applicant submitted a further declaration
regarding, inter alia, the relationship of the Gerson
Institute and of the Gerson Research Organization to
applicant.
We find applicant’s arguments unpersuasive of a
different result. The Board is without authority,
Serial No. 75/013,108
3
following the issuance of its final decision in this ex
parte appeal, either to consider additional evidence or to
remand this case to the Examining Attorney for further
examination. See, Trademark Trial and Appeal Board Manual
of Procedure (TBMP) Sections 1217 and 1218 and cases cited
therein. In both her response to applicant’s request for
reconsideration and in her brief on appeal, the Examining
Attorney raised the issue that applicant’s evidence of use
of the mark GERSON on related goods or services appears to
be by persons or organizations other than applicant. If
applicant believed he could have overcome the refusal in
this case and prevailed on appeal by submitting additional
evidence or explanation, applicant was required to submit
such evidence or explanation during examination or, if the
evidence was newly discovered, with a request for remand
during the pendency of the appeal, prior to issuance of the
Board’s decision in this case. The interests of judicial
economy are not served by applicant’s “wait-and-see”
approach to the appeal process.
Further, we note that, regardless of whether we had
considered the evidence and explanation submitted with
applicant’s request for reconsideration, our decision would
remain the same. As indicated in our decision, applicant
has not established acquired distinctiveness of GERSON in
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4
connection with printed publications, educational seminars,
tape recordings, or any other goods or services. Even if
we were to conclude that applicant’s declarations, evidence
and explanations clearly establish applicant’s use in
commerce of the term GERSON in connection with printed
publications, tape recordings and educational seminars, we
would find that this evidence falls far short of proving
that GERSON has acquired distinctiveness as applicant’s
trademark and service mark in connection with such goods or
services. As we stated in our original decision:
[I]t is impossible to determine whether
applicant’s use as indicated translates into
substantial exposure of applicant’s goods and
services to relevant purchasers or substantial
sales to a significant percentage of the relevant
market. The record contains no evidence of
consumer perception or information linking
applicant’s evidence with use in contexts that
would condition consumers to react to or
recognize the designation as an indication of
applicant as the source of such goods and
services.
For the reasons stated herein, we stand by our
decision affirming the refusal to register in this case
under Section 2(e)(4) of the Trademark Act, 15 U.S.C. §
1052(e)(4), on the ground that applicant’s mark is
primarily merely a surname and applicant has not
established, under Section 2(f) of the Trademark Act, 15
U.S.C. § 1052(f), that his mark has acquired
Serial No. 75/013,108
5
distinctiveness in relation to other goods or services
that, in this intent-to-use application, will transfer to
applicant’s use of the mark in connection with the services
of “providing medical treatment for human illnesses by
means of nutritionally based therapy.”
C. E. Walters
B. A. Chapman
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board