World Kanreikai Karate, LLC

Trademark Trial and Appeal Board

Oct 1, 2009

No. 78448346 (T.T.A.B. Oct. 1, 2009)

Mailed: October 1, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re World Kanreikai Karate, LLC
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Serial No. 78448346
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George A. Coury of Bachman & LaPointe for World Kanreikai
Karate, LLC.

Doritt Carroll, Trademark Examining Attorney, Law Office
116 (Robert Lorenzo, Acting Managing Attorney).
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Before Walters, Holtzman and Mermelstein, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

World Kanreikai Karate, LLC seeks registration on the
Principal Register of the standard character mark KANREIKAI1
for the goods and services listed below.

1 Serial No. 78448346, filed July 9, 2004. The application was
filed on the basis of intent-to-use under Trademark Act Section
1(b), 15 U.S.C. §1051(b). Following publication of the mark for
opposition, on December 6, 2007, applicant filed a statement of
use and specimen, alleging first use and use in commerce as of
June 7, 2004, in connection with the goods and services in all
classes. The application includes the following description of
the mark: “The mark consists of the names of three separate
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78448346
2
“All purpose sport bags,” in International Class 18;
“Clothing, namely, T-shirts, shorts, and hats,” in
International Class 25; and
“Martial arts instruction; organization and arrangement of
martial arts’ competitions and tournaments,” in
International Class 41.
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that the mark shown in the drawing is not a
substantially exact representation of the mark as actually
used, as shown on the specimens of use. See Trademark Rule
2.56(a), 37 CFR §2.56(a). The appeal is fully briefed.
After careful consideration of the evidence and arguments
of record, we affirm the refusal to register.
The examining attorney contends that the specimen of
use submitted by applicant shows use of the phrase WORLD
KANREIKAI KARATE. The examining attorney agrees that
KARATE is a generic term and, thus, applicant is not
required to amend its mark to include this term. However,
the examining attorney contends that WORLD KANREIKAI is a

Japanese characters which have meaning. Specifically ‘kan’ is a
symbol which means ‘to go beyond your limits,’ ‘rei’ is a symbol
which means ‘to exceed your goals,’ and ‘kai’ is the symbol for
‘group.’” The application also contains the following
translation of the mark: “‘kan’ is a symbol which means ‘to go
beyond your limits,’ ‘rei’ is a symbol which means ‘to exceed
your goals,’ and ‘kai’ is the symbol for ‘group.’”
Ser. No. 78448346
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unitary mark, regardless of whether “world” is merely
descriptive in connection with the identified goods and
services. The examining attorney notes that on the
application form, annual membership rate form, gym bag and
clothing, pictures of which were submitted as specimens of
use, the words WORLD and KANREIKAI are presented together
on a single line in the same font and that none of the
specimens show KANREIKAI used alone.
Applicant argues that the term KANREIKAI is the
distinctive portion of its mark; that it did not include
the terms “world” and “karate” in the mark in the
application because “karate” is merely descriptive and
“world” merely describes the fact that applicant’s studios
are located throughout the world; and that “world” is a
widely and commonly used term within the karate field,
giving as examples several karate organizations that
include in their names the term “world.”
Referring to the circle logo submitted as a specimen
of use, applicant notes that the Japanese characters at the
top of the circle are the word KANREIKAI and, thus,
KANREIKAI is used without the term WORLD; and that
KANREIKAI is centered, and thus, it is the focus of
attention and dominant part of the English character
representation in the lower part of the logo circle.
Ser. No. 78448346
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To determine whether KANREIKAI is a substantially
exact representation of the mark as actually used, the
question is whether the “designation for which registration
is sought comprises a separate and distinct ‘trademark’ in
and of itself.” Institut Nat’l Des Appellations D’Origine
v. Vinters Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1197
(Fed. Cir. 1992) (CALIFORNIA not part of mark CHABLIS WITH
A TWIST as shown on wine label and, moreover, it is
geographically descriptive and, thus, devoid of trademark
significance). This is clearly a judgment call. Id.
In this case, the specimens show the phrase WORLD
KANREIKAI KARATE used in connection with, inter alia, a
rate sheet as well as in a complex logo consisting of two
concentric circles. The inner circle shows a kicking
figure superimposed over a world map, with the kicking leg
extending beyond the inner circle. In the band between the
two circles the Japanese characters, which transliterate as
KANREIKAI, appear alone at the top of the band and the
phrase WORLD KANREIKAI KARATE appears at the bottom of the
band.
In no place on the specimens submitted is the word
KANREIKAI used alone; it always appears as WORLD KANREIKAI
KARATE. As the examining attorney notes, KARATE is generic
in connection with the identified goods and services and,
Ser. No. 78448346
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thus, the deletion of this term from the applied-for mark
does not significantly alter the commercial impression of
the mark. However, there is no evidence that the term
WORLD is primarily geographically descriptive or generic.
The fact that WORLD may be a weak term in a trademark in
view of the suggestion by applicant that other karate
organizations also use WORLD, does not lead us to the
conclusion that it is not an integral part of the mark
herein as that mark is used on the specimens of record.
Therefore, we conclude that the omission of the word WORLD
in the applied-for mark does not leave us with a mark that
is a substantially exact representation of the mark as
actually used.
We are not convinced otherwise by applicant’s argument
that, on the logo, the Japanese characters “kan,” “rei” and
“kai” appear alone at the top of the circles. The logo
includes both Japanese characters and English words along
with the English transliteration of those characters.
Applicant has chosen to apply to register the English
transliteration of the Japanese characters, i.e.,
KANREIKAI, rather than the Japanese characters, and the
commercial impression of the mark including the term
KANREIKAI is of the phrase WORLD KANREIKAI.
Decision: The refusal to register is affirmed.