Institute for Transforma-tion, LLC

Trademark Trial and Appeal Board

Dec 12, 2001

No. 75789092 (T.T.A.B. Dec. 12, 2001)

EWH
Paper No. 10
12/12/01

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

Trademark Trial and Appeal Board
____________

In re Institute for Transformation, LLC
____________

Serial No. 75/789,092
____________

Faye L. Tomlinson of Christensen O’Connor Johnson
Kindness PLLC for Institute for Transformation, LLC.

Andrea D. Saunders, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
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Before Simms, Hanak and Chapman, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge.

Institute for Transformation, LLC (applicant) seeks
to register in typed drawing form SELF-AWARENESS SURVEY
for the goods and services listed below. The intent-to-
use application was filed on August 30, 1999.
computer software for behavioral assessment and
prerecorded CD-ROM disks and prerecorded video
tapes in the field of behavioral assessment
(in International Class 9);

tutorials, namely workbooks and books in the field
of behavioral assessment (in International Class
16);
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
and

Ser. No. 75/789,092

educational services, namely, providing seminars,
workshops, conferences, and instructional meetings
related to behavioral assessment; in-training
consultation services in the field of behavioral
assessment; computer on-line global service, namely,
providing a web site featuring instruction in the
field of behavioral assessment (in International
Class 41).

The Examining Attorney has refused registration on
the basis that applicant’s mark, as applied to
applicant’s goods and services, is merely descriptive
pursuant to Section 2(e)(1) of the Trademark Act.
When the refusal to register was made final,
applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. Applicant did not
request a hearing.
A mark is merely descriptive pursuant to Section
2(e)(1) of the Trademark Act if it immediately conveys
information about a significant quality or characteristic
of the relevant goods or services. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed &
Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed.
Cir. 1986). In order to be held merely descriptive, a
term need not immediately convey information about all of
the significant qualities or characteristics of the
relevant goods or services. A term is merely descriptive
if it immediately conveys information about “one of the
qualities” of the
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Ser. No. 75/789,092

relevant goods or services. Gyulay, 3 USPQ2d at 1010.
As is readily apparent, applicant’s description of
its goods and services is quite lengthy. However,
applicant seeks to register SELF-AWARENESS SURVEY for
essentially the
following goods: computer software, prerecorded video
tapes, workbooks and books for behavioral assessment or
in the field of behavioral assessment. Likewise,
applicant seeks to register SELF-AWARENESS SURVEY for
essentially the following services: educational services,
in-training consultation services and computer on-line
services in the field of behavioral assessment.
The Examining Attorney attached to the first Office
Action a page from what applicant concedes is its web
site. In its web site, applicant describes its SELF-
AWARENESS SURVEY as “a survey that gives you insight into
your behavior and increases your self-awareness.”
Continuing, applicant states in its web site that its
SELF-AWARENESS SURVEY “is a behavioral assessment
instrument, designed to describe how you view yourself at
any given point in time.”
At page 6 of its response to the first Office
Action, applicant makes the following statement:
“Although the phrase ‘self-awareness survey’ does give an
individual
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Ser. No. 75/789,092

insight into his or her behavior and increases that
individual’s self awareness, as stated in applicant’s web
site, the phrase does not describe the nature, scope or
extent of applicant’s goods and services.” If applicant
is
arguing that the term “self-awareness survey” does not
describe the entire nature, scope or extent of
applicant’s goods and services, we do not disagree.
Stated somewhat differently, we do not find that the
phrase “self-awareness survey” immediately conveys
information about all of the significant qualities and
characteristics of applicant’s goods and services.
However, as previously noted, a term is merely
descriptive pursuant to Section 2(e)(1) of the Trademark
Act if it immediately conveys information about one
significant quality or characteristic of applicant’s
goods or services.
When used in conjunction with computer software,
prerecorded video tapes, workbooks and books all in the
field of behavioral assessment, applicant’s “mark” SELF-
AWARENESS SURVEY immediately informs consumers about a
significant quality or characteristic of applicant’s
computer software and the like, namely, that said
computer software and the like contains a self-awareness
survey
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Ser. No. 75/789,092

(i.e. a behavioral assessment instrument). In other
words, a consumer considering the purchase of one of
applicant’s books in the field of behavioral assessment,
upon seeing applicant’s “mark” SELF-AWARENESS SURVEY,
would immediately
understand that one key characteristic of the book is
that it contains at least one self-awareness survey or,
to use applicant’s words, “a behavioral assessment
instrument.”
Likewise, with regard to applicant’s services in the
field of behavioral assessment, we also find that
applicant’s “mark” SELF-AWARENESS SURVEY immediately
conveys to consumers information about an important
quality or characteristic of applicant’s services,
namely, that they provide a self-awareness survey.
At page 3 of its brief, applicant argues that “the
phrase ‘self-awareness’ is not synonymous with behavioral
assessment. One might be provided objective data about
behavioral aspects of one’s personality and never become
‘self-aware.’”
Assuming for the pure sake of argument that the
phrase “self-awareness” is not merely descriptive of
applicant’s goods and services, the fact remains that
applicant is not seeking to register SELF-AWARENESS, but
rather is seeking to
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Ser. No. 75/789,092

register SELF-AWARENESS SURVEY. We have no doubt that
the entire “mark” SELF-AWARENESS SURVEY immediately
conveys information about a significant quality or
characteristic of applicant’s goods and services in the
field of behavioral
assessment, namely, that they offer a self-awareness
survey.
Decision: The refusal to register is affirmed.

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