Learning Annex Holdings, LLCv.True Power International, Ltd.

Trademark Trial and Appeal Board

Jul 27, 2009

No. 91168283 (T.T.A.B. Jul. 27, 2009)

Mailed: July 27, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Learning Annex Holdings, LLC
v.
True Power International, Ltd.
_____

Opposition No. 91168283
to application Serial No. 78492400
filed on September 30, 2004
_____

Andrew Hyams of Kerstein, Coren & Lichtenstein for Learning
Annex Holdings, LLC.

Richard H. Zaitlen of Pillsbury Winthrop Shaw Pittman LLP
for True Power International, Ltd.
______

Before Quinn, Rogers, and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, True Power International, Ltd., seeks
registration of the mark SECRETS OF THE MILLIONAIRE MIND in
standard characters for goods and services identified in the
application as:
sound recorded tapes and compact discs, video
recorded tapes, dvds, and electronic book
publications concerning self-improvement and
wealth accumulation; cd-roms and computer software
in the field of self-improvement and wealth
accumulation, in International Class 9;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91168283
2
printed matter related to self-improvement and
wealth accumulation, namely notebooks, envelopes,
writing paper, note pads, calendars, tablets,
bumper stickers, memo boards, cards, journals,
diaries and address books; syndicated columns
dealing with self-improvement and wealth
accumulation, in International Class 16; and

education services namely, one-on-one mentoring
and personal coaching services in the fields of
self-improvement and wealth accumulation;
education services namely, conducting workshops
and seminars via live audio and video streaming
over the internet in the fields of self-
improvement and wealth accumulation, in
International Class 41.1

Opposer, Learning Annex Holdings, LLC, opposed
registration of applicant’s mark on the grounds that, as
used in connection with applicant’s goods and services,
applicant’s proposed mark is merely descriptive and has not
acquired secondary meaning. Specifically, opposer alleges
that “[t]he phrases SECRETS OF THE MILLIONAIRE MIND,
‘Millionaire Mind,’ ‘Millionaire Mindset’ and ‘Mind of the
Millionaire’ are used as common names for self-improvement
and wealth accumulation products made by many companies ...
the phrase SECRETS OF THE MILLIONAIRE MIND conveys an
immediate idea of the ingredients, qualities and
characteristics of the Applicant’s goods and services, and
the phrase is thus merely descriptive ... Applicant’s use of
the mark SECRETS OF THE MILLIONAIRE MIND has not been

1 Application Serial No. 78492400, filed September 30, 2004,
alleging a bona fide intention to use the mark in commerce under
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b).

Opposition No. 91168283
3
exclusive ... [c]onsumers do not associate the mark SECRETS
OF THE MILLIONAIRE MIND with a single source, and thus the
mark has no secondary meaning.” Notice of Opposition ¶¶8,
11-13.2
In addition, in its brief opposer asserts as a further
basis for opposition that “as was revealed in discovery, the
Applicant is improperly seeking to trademark a book title.”
Br. p. 2. Because the application is based on an allegation
of a bona fide intention to use the mark in commerce, to the
extent a claim could be based on this assertion, it would be
that applicant does not have a bona fide intention to use
the mark in commerce to support registration because its
intent is only to use it as the title of a single work.
Such a claim was not asserted in the pleading, nor did
opposer seek to amend the pleading to assert such a claim.
However, applicant briefed this issue on its merits. In
view thereof, we consider the pleadings amended by implied
consent to include this as a claim.
Applicant, in its answer, denied the essential
allegations of the notice of opposition.
THE RECORD
By operation of Trademark Rule 2.122 the record
includes the pleadings and the file of the subject

2 In the Notice of Opposition, opposer also alleged that the
proposed mark is generic; however, in its brief opposer waived
this claim. See Br. p. 2.
Opposition No. 91168283
4
application. In addition, in support of its case-in-chief,
opposer submitted a notice of reliance on a third-party
registration for the mark MILLIONAIRE’S MINDSET, dictionary
definitions and a printed publication.3 In support of its
defense, applicant submitted the testimony depositions (with
exhibits) of Michelle Burr, applicant’s consultant, and
Maraia Hoffman, applicant’s client. Opposer, in rebuttal,
submitted the testimony deposition (with exhibits) of Sara
Bushard, legal secretary for opposer’s counsel, and a notice
of reliance on a third-party application for the mark
SECRETS OF THE MILLIONAIRE MIND and a printed publication.
STANDING
To establish standing, opposer must show a real
interest in the proceeding. Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023 (Fed. Cir. 1999). Generally, where a
claim of mere descriptiveness is asserted, it is sufficient
for the plaintiff to establish that it is a competitor.
Plyboo America, Inc. v. Smith & Fong Co., 51 USPQ2d 1633
(TTAB 1999) and No Nonsense Fashions, Inc. v. Consolidated
Foods Corp., 226 USPQ 502 (TTAB 1985). Opposer, in the
notice of opposition, alleged:
3. Since 1980, Learning Annex Holdings, LLC
(Opposer or LAH), through its predecessors-in-
interest, has been engaged in the sale of goods or
educational services related to self-improvement

3 Exhibit Nos. 3-15 and 17-23 were stricken from the notice of
reliance by Board order on February 20, 2009 and they have not
been considered.
Opposition No. 91168283
5
and wealth accumulation. As to all of the goods
and service International Classifications in which
Applicant is seeking to register the mark, Opposer
is either a competitor, or those classifications
constitute a normal expansion of Opposer’s
business.

4. Opposer’s courses have had such titles as “How
to Develop a Millionaire Mind,” “Develop a
Millionaire’s Mind,” “How to Become a Mental
Millionaire,” “Discover the Seven Secrets to
Becoming a Millionaire,” and “Amazing Secrets of
Self-Made Millionaires.”

Applicant denied these allegations, leaving opposer to
its proof. There is nothing in the record to establish
these allegations. Opposer introduced no direct evidence,
testimonial or otherwise, to establish that it is “engaged
in the sale of goods or educational services related to
self-improvement and wealth accumulation” or in any other
business for that matter. No Nonsense, 226 USPQ at 505.
Therefore, opposer has not established its standing.
However, for completeness we also address opposer’s claims
that the proposed mark is merely descriptive and that it is
intended to be used as the title of a single work.
MERE DESCRIPTIVENESS
Opposer argues that “The Applicant’s mark SECRETS
OF THE MILLIONAIRE MIND states to consumers that the
Applicant provides the mental ‘secrets’ of people who
have accumulated a million dollars or more. Simply
stated, the applicant’s mark tells consumers merely
that the applicant is the source or provider of mental
Opposition No. 91168283
6
secrets of wealth accumulation.” Br. p. 4. Opposer
relies on the dictionary definitions of the individual
words “secret,” “millionaire” and “mind” to support its
position that:4
...consumers will presume that Applicant’s goods
and services will do exactly what the dictionary
definitions state: the goods and services will
provide secrets about how to have more than a
million dollars- in other words, “wealth
accumulation.” Or as Applicant phrases it in its
publicity: “Think Rich to Get Rich.” Since the
Applicant’s identification of goods and services
contains information regarding wealth
accumulation, the wording “secrets of the
millionaire mind” is merely descriptive...
SECRETS OF THE MILLIONAIRE MIND describes exactly
what the applicant provides in its educational
goods and services: the secrets of wealthy
people. Applicant’s mark is not partially
descriptive; it is entirely descriptive.

Br. p. 6.

In response, applicant argues that “opposer has
failed to meet the required minimum legal standard to
support a finding of mere descriptiveness and,
therefore, the opposition should be denied.” Br. p.
10. Further, applicant argues that opposer’s
“piecemeal analysis of Applicant’s Mark by its
individual components is an improper attempt by Opposer

4 “Secret – something kept hidden or unexplained,” “millionaire –
a person whose wealth is estimated at a million or more (as of
dollars or pounds),” and “mind – the element or complex of
elements in an individual that feels, perceives, thinks, wills
and especially reasons.” First Notice of Reliance, Exh. No. 1
(excerpt from Merriam-Webster Online Dictionary).
Opposition No. 91168283
7
to circumvent the anti-dissection rule.” Br. p. 11.
In addition, applicant argues that:
...a consumer must engage in mature thought or
follow a multistage reasoning process to determine
any specific attributes of Applicant’s goods and
services: first, a consumer must connect the
terms ‘secrets’ (generally defined as ‘something
hidden or unexplained’) and ‘mind’ to knowledge,
experience or information, and then must connect
‘millionaire’ to wealth accumulation and self-
improvement. After making these respective
connections, the consumer is then forced to make
some sense out of the various meanings conveyed by
the combination of these terms. For example,
SECRETS OF THE MILLIONAIRE MIND could be
interpreted in multiple ways to mean a study of
how millionaires think, or a scientific
examination of a millionaire’s brain, or tips on
wealth accumulation. However, all of these
interpretations require a multi-stage reasoning
process. As such, this need to resort to
imagination renders Applicant’s Mark suggestive,
at a minimum, of Applicant’s goods and services.

Br. pp. 12-13.
A term is deemed to be merely descriptive of goods
or services, within the meaning of Trademark Act
Section 2(e)(1), if it forthwith conveys an immediate
idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the goods or
services. See, e.g., In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). A term need not immediately convey an
idea of each and every specific feature of the
applicant’s goods or services in order to be considered
Opposition No. 91168283
8
merely descriptive; it is enough that the term
describes one significant attribute, function or
property of the goods or services. See In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re
MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term
is merely descriptive is determined not in the
abstract, but in relation to the goods or services for
which registration is sought, the context in which it
is being used or is intended to be used on or in
connection with those goods or services, and the
possible significance that the term would have to the
average purchaser of the goods or services because of
the manner of its use or intended use. In re Tower
Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002) (“The
question is not whether someone presented with only the
mark could guess what the goods or services are.
Rather, the question is whether someone who knows what
the goods and services are will understand the mark to
convey information about them.”) That a term may have
other meanings in different contexts is not
controlling. In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979). Finally, a slogan, phrase or any
other combination of words may act as a trademark so
long as the slogan or combination is used in such a way
as to identify and distinguish the user’s goods or
Opposition No. 91168283
9
services from those of others. A slogan or phrase may
be merely descriptive and, thus, unregistrable on the
Principal Register in the absence of acquired
distinctiveness, if it directly refers to a
characteristic of the goods or services with which it
is used. The mere descriptiveness analysis is the same
for a slogan as it is with any other proposed mark.
See In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227
(CCPA 1960). See generally J.T. McCarthy, McCarthy on
Trademarks and Unfair Competition, §7:22 (4th ed.
updated 2009).
Opposer must prove its claim of mere
descriptiveness by a preponderance of the evidence.
This record does not meet that burden. In this case,
simply piecing together the separate dictionary
definitions of the individual words is not sufficient
to establish that this phrase in its entirety is merely
descriptive. The meaning and significance of the
component words and the composite phrase, when
considered in conjunction with the identified goods and
services, are not so immediately and directly
informative as to be merely descriptive. The phrase
SECRETS OF THE MILLIONAIRE MIND may be suggestive of
the subject matter of the goods and services but there
is something of an atmospheric quality to the phrase
Opposition No. 91168283
10
SECRETS OF THE MILLIONAIRE MIND that diminishes the
immediacy of any information it imparts as to the goods
and services. We add that there is no evidence in the
record to support opposer’s allegations that the
particular phrase or similar phrases are commonly used
by third parties in the relevant industry.5
In view of our determination based on this record
that the phrase SECRETS OF THE MILLIONAIRE MIND is not
merely descriptive, we do not reach applicant’s
alternative defense that, even if merely descriptive,
the phrase has acquired distinctiveness as a source
indicator for its goods and services.6
TITLE OF A SINGLE WORK
Opposer also argues that “Applicant is seeking, through
the ‘backdoor,’ to trademark the name of its best-selling
book Secrets of the Millionaire Mind, authored by T. Harv

5 The third-party application is not evidence of third-party use.

6 Applications based on intent to use may include a claim of
acquired distinctiveness under Section 2(f) of the Trademark Act
when applicant establishes “through the appropriate submission,
the acquired distinctiveness of the same mark in connection with
specified other goods and/or services in connection with which
the mark is in use in commerce. All of the rules and legal
precedent pertaining to such a showing in a use-based application
are equally applicable in this context...[and] through submission
of relevant evidence rather than mere conjecture, a sufficient
relationship between the goods or services in connection with
which the mark has acquired distinctiveness and the goods or
services recited in the intent-to-use application to warrant the
conclusion that the previously created distinctiveness will
transfer to the goods or services in the application upon use.”
In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999).

Opposition No. 91168283
11
Eker... [and t]he title of a single book cannot be
registered even if secondary meaning can be shown...[and]
Applicant’s case is a Herculean effort to elevate a mere
book title into something more.” Br. p. 7. Opposer
analyzes applicant’s evidence of acquired distinctiveness as
only showing use of the phrase SECRETS OF THE MILLIONAIRE
MIND as the title of a single book.
Applicant responds by stating that “a title of a book
series can be trademarked...[and] Applicant’s Application
was filed on an intent-to-use basis, meaning Applicant has a
bona fide intention to use the mark in commerce on or in
connection with the goods or services listed in the
application. As such, Applicant is not foreclosed from
developing another book in the SECRETS OF THE MILLIONAIRE
MIND series, or other goods and services as listed in its
Application...[and] Opposer ignores the fact that there are
other uses of Applicant’s Mark, such as the CDs and DVDs,
the SECRETS OF THE MILLIONAIRE MIND seminar, and the Wisdom
cards.” Br. pp. 18-19.
The title of a single creative work is not registrable
on either the Principal or Supplemental Register unless the
title has been used on a series of creative works. Herbko
Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d
1375, 1378 (Fed. Cir. 2002); TMEP §1202.08 (5th ed. 2007).
Books, sound recordings, DVDs and audio CDs are usually
Opposition No. 91168283
12
single creative works. TMEP §1202.08(a). Finally, “[t]he
issue of whether a proposed mark is the title of a single
creative work is tied to use of the mark, as evidenced by
the specimen. Therefore, generally, no refusal will be
issued in an intent-to-use application under §1(b) of the
Trademark Act, 15 U.S.C. §1051(b), until the applicant has
submitted a specimen with an allegation of use under §1(c)
or §1(d) of the Act, 15 U.S.C. §1051(c) or (d).” TMEP
§1202.08(f).
To the extent opposer advances this argument to attack
the sufficiency of applicant’s evidence of acquired
distinctiveness, as noted above we do not reach the issue of
acquired distinctiveness. To the extent opposer is
asserting that the proposed mark is unregistrable as the
title of a single work, this claim would arguably be
applicable only for the goods in International Class 9. As
applicant has argued, this application is based on intention
to use the mark in commerce and this record does not
establish that applicant will not use this proposed mark in
connection with its International Class 9 goods on a series
of creative works.
Decision: The opposition, both on the claim of mere
descriptiveness and on the claim that the mark is the title
of a single work, is dismissed.