Rodale Inc.

Trademark Trial and Appeal Board

Aug 18, 2006

No. 78369241 (T.T.A.B. Aug. 18, 2006)

Mailed:
Aug. 18, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Rodale Inc.
________

Serial No. 78369241
_______

Kevin G. Smith, Jody H. Drake and Gary D. Krugman of
Sughrue Mion, PLLC for Rodale Inc.

Mrs. A.D. Saunders, Trademark Examining Attorney, Law
Office 109 (Dan Vavonese, Managing Attorney).
_______

Before Bucher, Grendel and Holtzman, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Supplemental
Register of the mark HEALTH BULLETIN (in standard character
form) for services recited in the application (as amended)
as “providing information in the field of fitness, exercise
and lifestyle,” in Class 41.1 Applicant has disclaimed
BULLETIN apart from the mark as shown.

1 Serial No. 78369241, filed February 17, 2004. The application
is based on use in commerce under Trademark Act Section 1(a), 15
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78369241
2
At issue in this appeal is the Trademark Examining
Attorney’s final refusal of registration on the
Supplemental Register on the ground that the matter sought
to be registered is generic and therefore incapable of
functioning as a mark for the recited services. Trademark
Act Section 23, 15 U.S.C. §1091.
The appeal is fully briefed, but no oral hearing was
requested. We affirm the refusal to register.
To be registrable on the Supplemental Register, the
matter sought to be registered must be “capable of
distinguishing applicant’s goods or services.” Trademark
Act Sections 23(a), 23(c). “Generic terms are common names
that the relevant purchasing public understands primarily
as describing the genus of goods or services being sold.
They are by definition incapable of indicating a particular
source of the goods or services.” In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed.
Cir. 2001)(citations omitted). Because they are incapable

U.S.C. §1051(a), and January 1993 is alleged to be the date of
first use of the mark anywhere and the date of first use of the
mark in commerce. As originally filed, the application sought
registration of the mark on the Principal Register. After the
Trademark Examining Attorney issued a first Office action
refusing registration on the ground of mere descriptiveness under
Trademark Act Section 2(e)(1), applicant amended the application
to one seeking registration on the Supplemental Register. The
application also has been amended to include applicant’s claim of
ownership of seven prior registrations, i.e., Nos. 2974874,
2984357, 2914031, 2956178, 2920260 and 2937172, and 3022218.
Ser. No. 78369241
3
of identifying source, generic terms are not registrable on
the Supplemental Register.
Our primary reviewing court has stated:

The determination of whether a mark is generic
is made according to a two-part inquiry:
“First, what is the genus of the goods or
services at issue? Second, is the term sought
to be registered ... understood by the relevant
purchasing public primarily to refer to that
genus of goods or services?”

In re Dial-A-Mattress Operating Corp., supra, 57 USPQ2d at
1810, quoting from H. Marvin Ginn Corp. v. Int’l Ass’n of
Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530
(Fed. Cir. 1986). The Office bears the burden of
establishing genericness based on clear evidence of generic
use. In re American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832 (Fed. Cir. 1999). “Any competent source
suffices to show the relevant purchasing public’s
understanding of a contested term, including purchaser
testimony, consumer surveys, dictionary definitions, trade
journals, newspapers and other publications.” In re Dial-
A-Mattress Operating Corp., supra, 57 USPQ2d at 1810.
Where (as in this case) the matter sought to be registered
is a phrase (rather than a compound word), the Office must
provide more than mere dictionary definitions showing the
genericness of the component words; “it must conduct an
Ser. No. 78369241
4
inquiry into ‘the meaning of the disputed phrase as a
whole.’” Id., quoting from In re American Fertility
Society, supra, 51 USPQ2d at 1836.
The evidence of record in this case includes the
following. Applicant’s specimen of use is a printout of a
page from its menshealth.com website, under the general
heading “Health.” (The other available headings or pages
are listed as “Fitness,” “Sex,” “Lifestyle,” “Weight Loss,”
“Nutrition” and “Style.”) The page bears the headline
“Health Bulletin June 2003” with the subheading “Health
news you can use.”
Also of record is the following dictionary definition
of “health”:2

1. The overall condition of an organism at a
given time. 2. Soundness, especially of body
or mind; freedom from disease or abnormality.
3. A condition of optimal well-being:
concerned about the ecological health of the
area. 4. A wish for someone’s good health,
often expressed as a toast.

Also of record is the following dictionary definition
of “bulletin”:3

2 The American Heritage Dictionary of the English Language (3d
ed. 1992).

3 The American Heritage Dictionary of the English Language (3d
ed. 1992).
Ser. No. 78369241
5
1. A brief report, especially an official
statement on a matter of public interest issued
for immediate publication or broadcast. 2. A
brief update or summary of current news, as on
television or radio or in a newspaper. 3. A
periodical, especially one published by an
organization or society. 4. A printed
program, especially one listing the order of
worship for a religious service: a church
bulletin.

The Trademark Examining Attorney also has submitted
(with her October 12, 2005 Office action) printouts of
seven excerpted articles obtained from the NEXIS database
showing uses of “health bulletin” in the press. These are
(emphasis added):

For more information about the pertussis
outbreaks, read the health bulletins posted on
the Web at: www.akepi.org.
Anchorage Daily News (November 1, 2003);

The site, updated daily, includes the latest
information on recent outbreaks and
recommendations, hyperlinks to other sites with
information such as ministries of health,
foreign medical associations, national health
bulletins, U.S. embassies worldwide and online
medical journals.
Pittsburgh Post-Gazette (April 14, 2002);

The CDC, in its weekly health bulletin, listed
signs and symptoms of bioterrorism-related germs
and chemicals…
Milwaukee Journal Sentinel (October 19, 2001);

Since 1970, when dietary cholesterol and blood
cholesterol were considered equal threats to
health, the public has been advised to end or
decrease the amount of eggs in their diets. ...
So what do all these new health bulletins mean?
Ser. No. 78369241
6
I guess they mean it’s OK if Rocky Balboa has an
egg in his beer. As long as it’s pasteurized or
hard boiled.
The Seattle Post-Intelligencer (April 17, 2002);

Anthem often sends out information on their
insurance products, newsletters and health
bulletins to customers and it sometimes uses
services that handle bulk mailings, he said.
Portland Press Herald (Maine) (July 15, 2001);

Be sure to quiz your travel agent about any
health bulletins or immunization requirements
that may be necessary or check with reliable
travel guides.
Fort Collins Coloradoan (March 21, 1999); and

So, there you are on the treadmill keeping fit,
pleased because research says that glass of wine
with last night’s dinner will help protect your
heart when the guy on TV says that according to a
new health study, even moderate drinking
increases a woman’s risk of getting breast
cancer. Confusing health bulletins like these
are common.
Daily News (New York)(March 2, 1998).

Also of record is the following excerpt from the
Internet web page of the Washington State Department of
Health, showing use of “health bulletin” (emphasis added):

This health bulletin will provide you and your
health care provider with information about the
releases of radioactive materials from Hanford
and their potential health effects.

As noted above (in footnote 1), applicant has
submitted claims of ownership of seven prior registrations,
all of them registered on the Supplemental Register. Our
Ser. No. 78369241
7
review of the Office’s records shows that these
registrations are as follows:
- Registration No. 3022218, of the mark HEALTH
BULLETIN (BULLETIN disclaimed) for “magazine columns or
sections in the fields of health, fitness, diet, exercise
and lifestyle,” in Class 16;
- Registration No. 2914031, of the mark WEIGHT-LOSS
BULLETIN (BULLETIN disclaimed) for “magazine feature and
section in the fields of health, fitness, diet, exercise
and lifestyle,” in Class 16;
- Registration No. 2920260, of the mark SEX BULLETIN
(BULLETIN disclaimed) for “magazine section featuring
information in the fields of health, fitness, diet,
exercise and lifestyle,” in Class 16;
- Registration No. 2937172, of the mark MUSCLE
BULLETIN (BULLETIN disclaimed) for “magazine columns and
sections in the field of health, fitness, diet, exercise
and lifestyle,” in Class 16;
- Registration No. 2956178, of the mark WEIGHT LOSS
BULLETIN (BULLETIN disclaimed) for “providing information
in the fields of physical fitness, exercise and maintaining
a healthy lifestyle; providing electronic newsletters in
the field of health, fitness, diet, exercise and
lifestyle,” in Class 41;
Ser. No. 78369241
8
- Registration No. 2974874, of the mark MUSCLE
BULLETIN (BULLETIN disclaimed) for “providing information
in the field of fitness, exercise and lifestyle,” in Class
41; and
- Registration No. 2984357, of the mark NUTRITION
BULLETIN (BULLETIN disclaimed) for “magazine column and
sections in the fields of health, fitness, diet, exercise
and lifestyle,” in Class 16.
Applicant relies on these registrations, and in
particular on Registration No. 3022218 (HEALTH BULLETIN for
class 16 goods), as evidence in support of its claim that
HEALTH BULLETIN likewise is registrable on the Supplemental
Register for the recited Class 41 services in the present
application. The Trademark Examining Attorney contends, in
response, that the marks and the goods or services depicted
in the prior registrations are distinguishable from the
mark and services of the present application and that, in
any event, the decisions of previous Trademark Examining
Attorneys are not binding on the Board, and the present
application must be decided on its own merits.
Our analysis begins with a determination of the genus
of the services at issue. See H. Marvin Ginn, supra. We
find in this case that the genus of services is
commensurate with applicant’s recitation of services in the
Ser. No. 78369241
9
application, i.e., “providing information in the field of
fitness, exercise and lifestyle.”
We next must determine whether the purchasing public
understands HEALTH BULLETIN to refer to the genus of
services at issue. See H. Marvin Ginn, supra. We note,
first, that the dictionary definition of “health” quoted
above includes “soundness, especially of body or mind;
freedom from disease or abnormality.” We find that this
definition of “health” directly applies to and is a name
for “the field of fitness, exercise and lifestyle” to which
applicant’s recitation of services refers. We also note
the usage on applicant’s own website specimen of the phrase
“Health news you can use,” as well as the generic usages of
the word “health” in the identifications of goods and
services in five of the seven prior registrations claimed
by applicant. Based on this evidence, we find that HEALTH
is the generic name of the subject matter of applicant’s
information services.
We further note that the dictionary definition of
“bulletin” quoted above includes “a brief update or summary
of current news, as on television or radio or in a
newspaper.” We find that this definition of “bulletin”
directly applies to and names the “providing information”
aspect of applicant’s recited services. We find that
Ser. No. 78369241
10
BULLETIN is a generic name for this aspect of the services.
Indeed, in this Supplemental Register application applicant
already has disclaimed BULLETIN apart from the mark as
shown.
In addition to finding that each of the words HEALTH
and BULLETIN are generic as applied to the genus of
services at issue, we also find, as we must under American
Fertility, supra, that the phrase HEALTH BULLETIN as a
whole is generic for the services. The seven NEXIS
excerpts and the one Internet page quoted above show that
informational reports on the subject of health are referred
to generically as “health bulletins.” We find that the
quoted excerpts suffice to establish that HEALTH BULLETIN,
as a whole, is and would be understood by purchasers to
refer to the genus of services at issue here, i.e., the
service of “providing information in the field of fitness,
exercise and lifestyle.”
Although we note that applicant already has obtained
various Supplemental Register registrations of BULLETIN
marks, including HEALTH BULLETIN (BULLETIN disclaimed) in
Class 16, we nonetheless find, based on the clear evidence
of genericness which is present in this case, that HEALTH
BULLETIN is generic for the services recited in applicant’s
application. Although consistency in examination is a goal
Ser. No. 78369241
11
of the Office, the decisions of previous Trademark
Examining Attorneys are not binding on us, and we must
decide each case based on the evidence presented in the
record before us. In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564 (Fed. Cir. 2001).4
In this case, the evidence of record clearly
establishes the genericness of HEALTH BULLETIN as applied
to applicant’s services. We therefore find that HEALTH
BULLETIN is incapable of distinguishing applicant’s
services, and that it therefore is not registrable on the
Supplemental Register.

Decision: The refusal to register on the Supplemental
Register is affirmed.

4 We note that in a recent decision published as citable
precedent of the Board, we affirmed the Trademark Examining
Attorney’s refusal to register NUTRITION BULLETIN on the
Supplemental Register for “providing information in the field of
health and diet via a web site on the Internet,” on the ground of
genericness. In re Rodale Inc., ___ USPQ2d ___, (TTAB
2006)(Serial No. 78369245, July 25, 2006.)