JoAnna Lynn

Trademark Trial and Appeal Board

Mar 1, 2005

No. 76470354 (T.T.A.B. Mar. 1, 2005)

Mailed:
March 1, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re JoAnna Lynn
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Serial No. 76470354
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Sherrill Hondorf of Grubbs Hondorf Tabar Denham PLLC for
JoAnna Lynn.

M. Catherine Faint, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Seeherman, Hairston and Drost, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

JoAnna Lynn, an individual, has appealed from the
final refusal of the Trademark Examining Attorney to
register METAPHYSICAL EXERCISE as a mark for the following
goods and services:
Pre-recorded compact discs (CDs)
featuring meditations and recorded
music (Class 9);

Newsletters, training manuals,
notebooks and workbooks in the areas of
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76470354
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exercise, fitness and mental, spiritual
and physical health (Class 16); and

Educational services, namely, seminars,
workshops, classes and training
programs all in the areas of exercise,
fitness and mental spiritual and
physical health (Class 41).1

Registration has been refused on two grounds: (1)
that applicant’s mark so resembles the mark METAPHYSICAL,
previously registered for “providing an online computer
database in the field of evangelistic and ministerial
services, namely information regarding religious or
spiritual practices and beliefs”2 that, if used on
applicant’s identified goods and as used in connection with
applicant’s identified services, it is likely to cause
confusion or mistake or to deceive (Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d); and (2) that applicant’s
mark is merely descriptive of her goods and services
(Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1)).

1 Application Serial No 76470354, filed November 25, 2002. The
application in Classes 9 and 16 is based on an asserted bona fide
intention to use the mark in commerce (Section 1(b) of the
Trademark Act); the application in Class 41 is based on a claimed
date of first use and first use in commerce of May 2002 (Section
1(a) of the Trademark Act).
2 Registration No. 2655026, issued November 26, 2002.
Ser No. 76470354
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Applicant and the Examining Attorney filed appeal
briefs.3 Applicant did not request an oral hearing.
We turn first to the refusal based on Section 2(e)(1)
of the Trademark Act. A mark is merely descriptive, and
therefore prohibited from registration by Section 2(e)(1),
if it immediately conveys knowledge of the ingredients,
qualities or characteristics of the goods or services in
connection with which it is used. However, if a mark is
suggestive, i.e., imagination, thought or perception is
required to reach a conclusion on the nature of the goods
or services, it is registrable. See In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
It is the Examining Attorney’s position that
applicant’s mark is merely a combination of two descriptive
terms that indicate the subject matter of applicant’s goods
and services, namely spiritual exercises. In support of
the refusal, the Examining Attorney has made of record a
definition of “metaphysical” as meaning “of or relating to
the transcendent or to a reality beyond what is perceptible
to the senses.”4 The Examining Attorney asserts that the

3 Applicant also filed a reply brief that was untimely. Because
applicant did not provide a satisfactory explanation as to why
she filed the reply brief more than one month after it was due,
applicant was advised, in a Board action mailed January 27, 2005,
that the reply brief would not be considered.
4 Merriam-Webster Dictionary, www.m-w.com/cgi-
bin/dictionary?book=Dictionary&va=Metaphysical.
Ser No. 76470354
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term “metaphysical” is often associated in the minds of the
public with spiritual practices, pointing to excerpts of
articles taken from the NEXIS database, including the
following (emphasis added):
New Hope Metaphysical Society Group
meets to promotes [sic] & support
spiritual teachers, psychics, mediums &
channelers. Pebble Hill Church,
[address]…
“Philadelphia Inquirer,” October 26,
2003

Headline: Shirley MacLaine discusses
her dog Terry and new book “Out On A
Leash”
MacLaine: …And the experience with—with
sleeping with the dog puts you into a
spiritual kind of metaphysical other
place.
“Today,” October 21, 2003, NBC News
Transcripts

Headline: One Man’s Moving Memorial;
Ron Broyles dedicated his bike ride
across the U.S. to two men he never
knew who had started such a trip, but
were cut down
“…So maybe in some metaphysical and
spiritual way, they did complete the
trip.”
“Los Angeles Times,” October 15, 2003

Headline: Film Festival Review;
Drowning In the Wake Of a Loss
…who discourses knowledgeably on
chance, order and chaos theory. If his
metaphysical speculations have the most
intellectual substance, the move
suggests that they, too are little more
than spiritual fishing expeditions.
“The New York Times,” October 11, 2003

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As such there is a spiritual, though
it’s unspecified—call it metaphysical
if you will—aspect to individual works,
and to the overall exhibition, that
transports the visitor from the
minutiae of daily concerns and draws
him to transcendent considerations.
“Pittsburgh Post-Gazette,” October 11,
2003

In addition, the Examining Attorney states that some
of the third-party registrations that include the word
METAPHYSICAL, and which were made of record by applicant,
show that the USPTO has treated METAPHYSICAL as a
descriptive term. In the following two registrations the
word METAPHYSICAL has been disclaimed, and the registration
for METAPHYSICAL CELEBRATION not only has a disclaimer of
this word, but it is a Supplemental Register registration:
METAPHYSICAL CELEBRATION for
“educational and entertainment
services, namely, arranging and
conducting metaphysical lectures and
holistic healing or psychic reading
demonstrations and workshops”
(Registration No. 2149915)

METAPHYSICAL DNA for “educational and
entertainment services, namely
providing seminars to help people
better understand themselves and others
by using a person’s birth date and time
of birth to determine the personality
traits of the individual later in life
(Registration No. 2701632)

The Examining Attorney also states that no disclaimer of
METAPHYSICAL in the stylized mark ASTRO DEPOT (shown below)
Ser No. 76470354
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was required because it appears as part of a unitary
phrase.5

Finally, we note that applicant’s “class syllabus,”
which she submitted as a specimen in support of her
application in Class 41, references certain spiritual
aspects to the training, e.g., it begins with the quote,
“When we exercise our body with a Divine purpose in mind,
we allow all of God’s good to move in and through us”; and
during Week 2 it lists, as topics, Charles Fillmore’s
Interpretation of the Body (with a quote from Jesus Christ
Heals), Emily Cady’s Interpretation of the Body (with a

5 The only other current registration for a METAPHYSICAL mark in
which METAPHYSICAL was not disclaimed is for METAPHYSICAL JONES
for “entertainment services, namely, live musical performances by
a musical band.” Reg. No. 2671216. Three of the third-party
registration submitted by applicant, and which did not contain a
disclaimer of METAPHYSICAL, were cancelled or expired. They are
GEOPHYSICAL TO METAPHYSICAL for “retail store services providing
maps, books, flags, jewelry and crystals,” (Reg. No. 1922666);
REANISSANCE OF METAPHYSICAL IMAGERY for “works of fine art;
original prints in mixed media” (Reg. No. 1721095) and
ASTROMETAPHYSICAL SERVICES for “providing metaphysical and
astrological consulting and counseling services (Reg. No.
1592484). In the latter registration, because METAPHYSICAL
appears as part of the larger term ASTROMETAPHYSICAL, under
Office practice it would not be disclaimed even if it were
considered merely descriptive.

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quote from Lessons in Truth) and A Course in Miracles’
Interpretation of the Body (with a quote from A Course in
Miracles). According to the syllabus, each class ends with
“Song and Meditation.” Further, in Week 4, which is
entitled “Strengthening the ‘Body Temple’; Practical
Application of Weight Lifting Exercise, a subhead under
“Introduction to Weight Lifting Exercise,” along with
“basic principles of weight lifting” and “physiological
benefits of weight lifting,” is “metaphysical view of
weight lifting.” A similar subhead, “metaphysical view of
cardiovascular exercise,” appears in Week 5’s “Increasing
the flow of ‘God Life’: Cardiovascular Exercise and
Exercise Affirmations.”
Given the statements in applicant’s own specimens, and
applicant’s identifications in Classes 16 and 41, which
state that the respective printed materials and educational
outlets are in the areas of exercise and spiritual health,
the individual words METAPHYSICAL and EXERCISE are
descriptive of aspects of the goods and services. However,
when the words are combined in the mark METAPHYSICAL
EXERCISE, we think that the combination creates a certain
incongruity. Normally exercise is thought of as involving
physical exertion, especially when it involves health and
fitness. The concept of the word METAPHYSICAL—“relating to
Ser No. 76470354
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the transcendent or to a reality beyond what is perceptible
to the senses”—is not normally related to the traditional
notion of exercise and fitness, so that when it is combined
with the word EXERCISE the combined phrase METAPHYSICAL
EXERCISE causes a mental pause for the consumer to
correlate the two ideas. It is because of that pause that
we find METAPHYSICAL EXERCISE to be suggestive, rather than
merely descriptive of applicant’s goods and services.
It has often been said that there is but a thin line
of distinction between a suggestive and a merely
descriptive term. In re Recovery, Inc., 196 USPQ 830 (TTAB
1977). Where reasonable people may differ, it has long
been the practice of this Board to resolve doubt in
applicant’s favor and publish the mark for opposition. See
In re The Gracious Lady Service, Inc., 175 USPQ 380 (TTAB
1972). Thus, we reverse the refusal of registration on the
ground that the mark is merely descriptive of the goods and
services in Classes 16 and 41.
As for the goods in Class 9, nothing in the
identification indicates that the compact discs involve
exercise. Thus, in addition to the incongruity of the
phrase METAPHYSICAL EXERCISE discussed above, with respect
to the application in this class, we cannot even say that
Ser No. 76470354
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both of the individual words in the mark can be considered
merely descriptive.
Accordingly, for all three classes, we reverse the
refusal of registration based on Section 2(e)(1) of the
Act.
We turn now to the refusal based on the ground of
likelihood of confusion in view of the registration for
METAPHYSICAL for “providing an online computer database in
the field of evangelistic and ministerial services, namely
information regarding religious or spiritual practices and
beliefs.” In discussing the issue of descriptiveness, the
Examining Attorney had essentially taken the position that
METAPHYSICAL is a merely descriptive term for goods and
services involving spiritual concerns, and pointed to the
third-party registrations in which METAPHYSICAL was
disclaimed an indicating an Office practice that supported
that position. Here, of course, the mark is METAPHYSICAL
per se, and the services involve providing information
regarding spiritual practices and beliefs. Although
METAPHYSICAL was registered on the Principal Register
without resort to the provisions of Section 2(f) and
although we must give the registrations all the
presumptions that are accorded to it by Section 7(b) of the
Act, we cannot simply ignore the evidence of the meaning of
Ser No. 76470354
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the term “metaphysical” that was submitted in connection
with the Section 2(e)(1) refusal. Thus, we must consider
that the registered mark is highly suggestive of the
identified services, and entitled to a very limited scope
of protection.
In view thereof, we find that presence of the word
EXERCISE in applicant’s mark is sufficient to distinguish
METAPHYSICAL EXERCISE from METAPHYSICAL. Specifically,
METAPHYSICAL EXERCISE, because of the word EXERCISE,
differs from METAPHYSICAL in appearance, pronunciation and,
most especially, in connotation and commercial impression.
We recognize that the word EXERCISE has a descriptive
significance with respect to the goods in Class 16 and the
services in Class 41. However, because of the incongruous
effect, discussed above, the word EXERCISE has a stronger
impact in the mark than a merely descriptive word normally
would. Because of that incongruity, consumers are likely
to treat the mark as a whole and remember the element
EXERCISE as part of it. Thus, METAPHYSICAL EXERCISE must
be viewed as a unitary mark, rather than a mark consisting
of the dominant word METAPHYSICAL and the descriptive word
EXERCISE. Therefore, comparing the marks in their
entireties, we find that they are dissimilar.
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In determining the issue of likelihood of confusion,
we look to the probative facts in evidence that are
relevant to the factors set forth in In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also, In re Majestic Distilling Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Each of the
thirteen elements may from case to case play a dominant
role. DuPont, 476 F.2d at 1361, 177 USPQ at 567. Further,
in a particular case, a single duPont factor may be
dispositive. Kellogg Co. v. Pack'em Enterprises Inc., 951
F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
In this case, we find that the factor of the
similarity or dissimilarity of the marks in their
entireties, coupled with the very limited scope of
protection to which the cited registration is entitled, is
dispositive. Therefore, even though we agree with the
Examining Attorney that applicant’s goods and services
would be considered legally related to those identified in
the registration, this factor is not sufficient to outweigh
the dissimilarity of the marks factor. Nor is the factor
of the channels of trade. In this respect we have assumed
that applicant’s goods, if not services, could be offered
through the Internet, and therefore would be offered in the
same channel of trade as the registrant’s online database
Ser No. 76470354
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services. The only remaining duPont factor the applicant
or the Examining Attorney has discussed is the lack of any
evidence of actual confusion. However, because applicant
has not yet begun to offer her goods, and because her
services have been offered only since 2002, and in a
relatively limited geographic area, the fact that she is
unaware of any confusion has very little probative value.
We cannot conclude, based on this evidence, that this
duPont factor weighs in her favor.
Accordingly, despite the duPont factors of relatedness
of goods/services and channels of trade that weigh in favor
of a finding of likelihood of confusion, we find that
applicant’s mark, if used on the identified goods and
services, is not likely to cause confusion with the cited
registration.
Decision: The refusals of registration on the grounds
of Sections 2(d) and 2(e)(1) is reversed as to all classes
of the application.