Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA256828
`ESTTA Tracking number:
`12/22/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`77019085
`Chad W. Moody P.C.
`RANDALL K. MCCARTHY
`FELLERS, SNIDER ET AL.
`100 N BROADWAY AVE STE 1700
`OKLAHOMA CITY, OK 73102-8820
`UNITED STATES
`rmccarthy@fellerssnider.com
`Appeal Brief
`MOODYAppealBrief.pdf ( 12 pages )(614740 bytes )
`Scott R. Zingerman/
`trademarks@fellerssnider.com, szingerman@fellerssnider.com
`/scott r. zingerman/
`12/22/2008
`
`Proceeding
`Applicant
`Correspondence
`Address
`
`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`SERIAL NO.: 77/019,085
`FILING DATE: 10/11/06
`
`MARK: Design Only
`APPLICANT: CHAD W. MOODY, P.C.
`DOCKET NO.: OKC01238
`
`LAW OFFICE: 111
`
`EXAMINING ATTORNEY: LINDA ORNDORFF
`
`Trademark Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1451
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`Alexandria, VA 22313-1451
`
`APPLICANT’S APPEAL BRIEF
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`Chad Moody, P.C. (Appellant) hereby appeals from the Examiner’s refusal to register the
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`aboVe—identified mark as set out in the Examiner’s Final Rejection dated April 23, 2008, and
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`respectfully requests that the Trademark Trial and Appeal Board reverse the Examiner's decision.
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`INDEX OF REFERENCES CITED
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`CASES
`
`In re Mavety Group Ltd, 33 F.3d 1367, 1371 31 USPQ2d 1923, 1925 (Fed. Cir. 1994)
`In re Wilcher Corp, 40 USPQZD 1929, 1930 (TTAB 1996)
`In re Boulevard Entertainment, Inc., 334 F.3d 1336, 67 USPQ2d 1475 (Fed. Cir. 2003)
`In Re Tinseltown, Inc., 212 USPQ 863 (TTAB 1981)
`In re Joseph Gyulay, 820 P2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)
`In re LRC Products, Ltd, 223 USPQ 1250, 1251 (TTAB 1984)
`In re Society for Private and Commercial Earth Stations, 226 USPQ 436 (TTAB 1985)
`In re Underwater Connections, Inc., 221 USPQ95, (TTAB 1983)
`Zatarains, Inc. 12. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983)
`No Nonsense Fashions, Inc. 1/. Consolidated Foods Corp, 226 USPQ 502,
`1985 WL 72081 (TTAB)
`In re Gourmet Bakers, Inc., 173 USPQ 565, 1972 WL 17997 (TTAB)
`In re The Stroh Brewery Co., 34 USPQ2d 1796, 1994 WL 808246 (TTAB)
`
`

`
`STATUTES
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`is U.S.C. § l052(a)
`15 U.S.C. § 1052 (d)
`l5 U.S.C. § l052(e)(l)
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`TREATISES
`
`McCarthy on Trademarks and Unfair Competition, Vol. 3, (Thomson Reuters/West 2008)
`
`OTHER
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`TMEP §1209.02
`TMEP §i2o9.9(b)
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`I. FACTS
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`Appellant filed an intent—to-use application to register a design mark depicting a stylized
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`marijuana or hemp plant
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`leaf on the Principal Register
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`for “Pharmaceuticals, namely,
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`psychotropics
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`for Adult ADD, Aggressive disorders, AIDS, AIDS wasting syndrome,
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`Alcoholism, Alzheimer’s disease, Analgesic, Antibiotic, Anti—depressant, Anti—epileptic or
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`epilepsy/seizures, Anti—inflammatory, Anti—spasmodic (muscle spasms), Anti—tumor effects,
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`Anti—tussive, Appetite stimulation, Arthritis, Asthma/breathing disorders, Brain injury/stroke,
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`Cancer chemotherapy, Child birth, Chronic pain, Chron’s disease, Depression, Dementia,
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`Diabetic gastroparesis, Dystonias, Eating disorders, Epilepsy, Eye disorders, Gastrointestinal
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`sedative, General pain, Glaucoma, Hepatitis A, B and C, Herbal remedies, Hypertension,
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`Immune system disorders and dysfunction, Insomnia, Labor pains, Menstrual cramps, Migraine,
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`Multiple sclerosis, Muscular dystrophy, Nausea, Neurological and movement disorders,
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`Oxytocic, Pain relief, Paraplegia, Phantom limb pain, PMT, Pruritus, Psuedotumour cerebri,
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`Psychological conditions, PTSD, Quadriplegia, Rheumatic diseases, Schizophrenia, Severe
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`nausea, Systemic sclerosis, Tinnitus, Topical anesthetic, Tranquilizer, Terminally ill, Tumors,
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`2
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`

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`Vomiting, and Withdrawal agent for opiate and alcohol addiction” in lnternational Class 005.
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`The application was filed on October ll, 2006. The Trademark Examining Attorney has issued
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`a final
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`refusal
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`to register under Sections 2(a) and 2(e)(l) of the Trademark Act,
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`l5
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`U.S.C. §§ 1052(a) and lO52(e).
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`

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`II. ARGUMENT
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`A.
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`The Examining Attorney Has Failed To Meet Her Burden of Presenting a Prima
`Facie Case that Applicant’s Mark is Scandalous.
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`The Examining Attorney has refused registration of Applicant’s design mark because, as
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`stated by the Examining Attorney, the “proposed mark, contains a representation of a marijuana
`3
`leaf and is scandalous, within the meaning of the term.’ A mark that is deemed scandalous
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`under section 2(a) is not registerable. However, the Federal Circuit has outlined a series of
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`principles governing a refusal to register under section 2(a) for scandalous matter. As the
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`Federal Circuit has held,
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`[T]he PTO must demonstrate that the mark is “shocking to the sense of truth,
`decency, or propriety; disgraceful; offensive; disreputable;
`giving offense to the
`conscience or moral feelings;
`[or] calling out [for] condemnation.”
`In re
`Riverbank Canning Co., 95 F.2d 327, 328, 37 USPQ 268, 269 (CCPA 1938)
`(citations omitted). The PTO must consider the mark in the context of the
`marketplace as applied to only the goods described in Mavety's application for
`registration.
`In re McGinley, 660 F.2d 481, 485, 211 USPQ 668, 673 (CCPA
`1981). Furthermore, whether the mark .
`.
`.
`including innuendo, comprises
`scandalous matter is to be ascertained (1) from “the standpoint of not necessarily
`a majority, but a substantial composite of the general public,” Id., 660 F.2d at 211
`USPQ at 673, and (2).
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`In re Mavety Media Group Ltd, 33 F.3d 1367, 1371, 31 USPQ2d 1923, 1925 (Fed. Cir. 1994).
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`See also, McCarthy on Trademarks and Unfair Competition,
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`§ 19:77, Vol. 3 (Thomson
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`Reuters/West 2008).
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`Contrary to the Examining Attorney’s position, there is nothing about Applicant’s design
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`mark which is shocking, scandalous or indecent. Applicant respectfully submits that no plant
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`leafi irrespective of the species of plant, is scandalous.
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`Indeed, what is covered for reasons of
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`

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`modesty by the proverbal fig leaf may be scandalous if revealed, but the fig leaf itself certainly is
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`not.‘
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`The cases cited by the Examining Attorney strongly support registerability of Applicant’s
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`mark rather than the Examining Attorney’s position. By way of example, in one of the principal
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`cases cited by the Examining Attorney, In re Wile/ier Corp, 40 USPQ2d l929,
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`l930 (TTAB
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`l996), the subject matter which was found to be scandalous was a “graphic, readily recognizable
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`representation of male genitalia.” The others, such as In re Boulevard Entertainment, Inc, 334
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`F.3d l336, 67 USPQ2d l475 (Fed. Cir. 2003) and In re Tinseltown, Ina, 2l2 USPQ 863 (TTAB
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`l98l), are likewise inapplicable to the simple plant leaf at issue.
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`Numerous applications which include a stylized design of a marijuana or hemp plant leaf
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`have been approved for registration. A few examples include the following:
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`serial nos.
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`77/244,727, 77/300,048, 79/033,061, 77/146,774 and 77/253,204. Applicant’s position is also
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`supported by the fact that the US. Patent & Trademark Office has a trademark Design Search
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`Code Manual that has a design search code “05.l3.09” listed for marijuana plants. With such a
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`design code being contained within the Office’s own manual, it is not feasible for Applicant’s
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`design to be scandalous.
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`The fact that many pharmaceutical products may require a prescription or permit for
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`usage in various jurisdictions does not make them scandalous. Even with regard to marijuana
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`itself, Applicant previously submitted in its response to the Office Action dated September l2,
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`2007, information listing United Stated jurisdictions with medical cannibis laws that permit the
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`usage for medical purposes,
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`including California, Nevada, Oregon, Washington, Colorado,
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`Alaska, Hawaii, New Mexico, Montana, Maine, Rhode Island, and Vermont. Therefore, even if
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`' Interestingly, a registration was recently approved for a mark consisting of a stylized design of
`a lion with a marijuana or hemp leaf being used as a “fig” leaf. See Application No. 77/253,204.
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`5
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`

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`Applicant’s description of goods was limited to marijuana, which it is not,2 Applicant submits
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`that it would have legal and lawful usage of its goods in interstate commerce.
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`Further,
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`there are many goods for which possession may not be lawful without
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`appropriate permission from a governmental authority. However,
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`that does not render the
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`depiction of such goods to be scandalous. For example, it may be unlawful except in certain
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`circumstances to possess eagle feathers, elephant ivory, sea turtle skins and other such goods or
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`products. The fact that these goods may be regulated, or that possession may be unlawful under
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`certain circumstances, certainly does not render them scandalous, nor does it bar registration of
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`depictions of eagle feathers, elephants with tusks, sea turtles or any other such matters.
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`Applicant submits that, if the Board accepts the Examining Attorney’s position of what
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`constitutes obscene or scandalous matter, it will have extended the scope of “scandalous” matter
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`far beyond established precedent. Applicant respectfully requests that the mark be passed for
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`publication.
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`B.
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`The Examining Attorney Has Failed To Meet Her Burden of Presenting a Prima
`Facie Case that Applicant’s Mark is Merely Descriptive of Its Goods
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`Applicant has sought to register a design mark for a stylized marijuana or hemp plant leaf
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`for use with pharmaceuticals, namely, psychotropics,
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`for various diseases and disorders.
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`Applicant’s mark was also rejected by the Examining Attorney under Trademark Act § 2(e), 15
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`U.S.C. § l052(e)(l) as being merely descriptive of Applicant’s goods. Specifically, Applicant’s
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`mark was rejected because the Examining Attorney contends that
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`the representation of a
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`marijuana leaf is merely descriptive of an ingredient of the Applicant’s goods since “marijuana is
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`an ingredient used in psychotropic pharmaceuticals.” (Final Action dated April 23, 2008.)
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`In
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`support of her rejection,
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`the Examining Attorney has attached a definition of the word
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`2 Applicant’s description of goods is not limited to marijuana and does not include the words
`marijuana, cannibus or hemp.
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`6
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`

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`“marijuana” obtained from the lnternet. Applicant respectfully submits that, when viewed in its
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`entirety, the Examining Attorney has failed to present a prima facie case of descriptiveness.
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`A mark is merely descriptive under Trademark Act 2(e)( 1) if it describes an ingredient,
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`quality, characteristic, function, feature, purpose or use of the relevant goods and/or services.
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`TMEP § 1209.9(b). See In re Joseph Gyulay, 820 P2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
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`As the Trademark Manual of Examining Procedure provides,
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`The examining attorney must consider the evidence of record to determine
`whether a mark is merely descriptive or whether it is suggestive or arbitrary. See
`In re Noble Co., 225 USPQ 749, 750 (TTAB 1985). The examining attorney may
`request that the applicant submit additional explanation or materials to clarify the
`nature of the goods or services. 37 C.F.R. §2.61(b); TMEP §814. The examining
`attorney should also do any necessary research to determine the nature of the
`use of the designation in the marketplace. “[T]he fact that applicant has filed an
`intent—to—use application does not
`limit
`the examining attorney’s evidentiary
`options, nor does it shield an applicant from producing evidence that it may have
`in its possession.” In re Promo Ink, 78 USPQ2d 1301, 1303 (TTAB 2006). If the
`examining attorney refuses registration, he or she should support the refusal
`with appropriate evidence. See also In re Stereotaxis Inc., 429 F.3d 1039, 77
`USPQ2cl 1087 (Fed. Cir. 2005), involving an intent-lo—use application where the
`Federal Circuit found a press release cited by the examining attorney relevant to
`show the public’s perception of the goods
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`TMEP § 1209.02 (emphasis added).
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`It is argued by the Examining Attorney that the “Applicant’s mark immediately tells you
`99
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`that the goods contain marijuana, thus the mark is merely descriptive.
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`This argument is then
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`purportedly supported in the final Office Action by the definition of the word “marijuana” from
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`www.dictionary.com. However, as set forth below, Applicant is not attempting to register the
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`word “marijuana,” but rather a design representation for a marijuana leaf of the cannabis plant.
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`The Examining Attorney also argues that “[a] visual representation that consists merely
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`of an illustration of the goods, or of an article that is an important feature or characteristic of the
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`goods or services, is merely descriptive under §2(e)(1) of the Act.” In support, the Examining
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`

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`Attorney cites three cases, two that relate to services3 and one that relates to goods.4 The present
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`Application is
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`for a design mark depicting a marijuana leaf of a cannabis plant
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`for
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`pharmaceuticals, and namely, psychotropics. As stated above, App1icant’s description of goods
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`does not include, marijuana leaves, cannabis plants or hemp. As such, Applicant’s mark is not an
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`illustration of App1icant’s goods.
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`Moreover, App1icant’s mark does not illustrate an “important feature or characteristic of
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`App1icant’s goods.” As noted in In re LRCProduetS, Ltd., 223 USPQ 1250, 1252 (TTAB 1984)
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`(emphasis added, citations omitted):
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`“While we acknowledge that this is a close case, we are neverless [sic] persuaded
`by applicant's arguments that, while the mark may suggest or resemble the goods,
`it does not merely describe the goods. There is no evidence that applicant's
`mark is a common symbol or design used by the trade to represent gloves.
`Registration of this mark, of course, will not deprive competitors of the free use of
`representations or illustrations of their products in the advertising or sale of their
`goods.”
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`1n the same way, there is no evidence in the present record that marijuana leaves of the
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`cannabis plant are a common symbol or design in the trade to represent pharmaceuticals and
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`psychotropics for the treatment of the ailments listed in Applicant’s identification of goods.
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`Registration of App1icant’s mark will not deprive competitors of the free use of representations
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`or illustrations of their pharmaceutical products in the advertising or sale of their goods.
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`Accordingly, the Examining Attorney has failed to set ‘forth a prima facie case that App1icant’s
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`mark is merely descriptive.
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`3 In re Societyfor Private and Commercial Earth Stations, 226 USPQ 436 (TTAB 1985); In re
`Underwater Connections, Inc, 221 USPQ95 (TTAB 1983).
`4In re LRC Products, Lld., 223 USPQ 1250 (TTAB 1984).
`8
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`

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`C.
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`The Design Mark Is At Least Suggestive
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`Applicant submits that the design mark is at least suggestive. The Examining Attorney
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`contends that it is merely descriptive.
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`In evaluating whether a mark is suggestive or merely
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`descriptive, at least four different tests have been utilized, including the following:
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`l.
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`2.
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`3.
`4.
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`Dictionary definition;
`Imagination test;
`Competitor’s need test; and
`Competitor’s use test.
`
`Zatarains, Inc. 12. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983); See No Nonsense
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`Fashions, Inc. V. Consolidated Foods Corp, 226 USPQ 502, 1985 WL 72081 (TTAB.).
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`Each of these tests supports Applicant’s position that
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`the design mark is at
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`least
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`suggestive rather than merely descriptive. First, although the Examining Attorney has attempted
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`to cite a dictionary definition for the word marijuana, however, there is no evidence in the record
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`that a dictionary definition for this Eign mark exists. Likewise, Applicant is not aware of any
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`dictionary definition for design marks. Accordingly, this test indicates that the mark is at least
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`suggestive.
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`Second, the imagination test also supports Applicant’s position. This test is probably the
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`most popular test which has been applied to the descriptive~suggestive distinction. See, e.g., In
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`re Joseph Gyulay, 820 F.2d 1216 (Fed. Cir. l987). As the Federal Circuit noted in Gyulay, the
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`question is whether “imagination, thought or perception is required to reach a conclusion on the
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`nature of goods.”
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`Clearly, imagination, thought or perception is necessary to reach a conclusion on the
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`nature of the goods, namely pharmaceuticals for certain medical conditions and disorders. The
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`79
`words “marijuana ,
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`64
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`cannibis” and “hemp” appear nowhere in the description of the goods.
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`

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`Thus, a consumer faced with Applicant’s mark, as applied to its goods most employ imagination,
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`thought, or perception to make an association.
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`In fact, at least a multi—step mental process is required. First, the consumer confronted
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`with Applicant’s design mark must mentally recognize that the plant leaf design is a marijuana
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`leaf from a cannibis plant. The next mental step is for the consumer to process the fact that the
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`marijuana leaf contains cannabinoids, and specifically THC (delta—9—tetrahydrocannibinol),
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`which is believed to have psychoactive effects on humans. An additional mental step is for the
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`consumer to evaluate the fact
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`that Applicant’s goods, phychotropics, may include these
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`cannabinoids. A final mental step is required to reach a conclusion regarding the use of
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`psychotropics which may include cannabinoids
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`for
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`the ailments
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`listed in Applicant’s
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`identification of goods. This conclusion is not immediately apparent from Applicant’s design
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`mark. Since some imagination, thought and/or perception is required to reach this conclusion,
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`Applicant’s mark is at least suggestive rather than merely descriptive of its goods.
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`Third, the competitor’s need test and the competitor’s use test also favor registration.
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`The Examining Attorney has acknowledged that no similar registered or pending third party
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`mark has been found that would bar registration under Trademark Act § 2(d). Accordingly, there
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`is no evidence in the record that any competitors need to use the mark or that any competitors are
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`indeed using the mark in connection with the subject goods.
`
`10
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`

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`D.
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`Agplicanfis Prior Registration For A Leaf Design Mark Favors Registration
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`Applicant directed the Examining Attorney’s attention to Applicant’s own prior U.S.
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`Registration No. 3,l76,832 for the comparable leaf design mark. Although Applicant recognizes
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`that each case is to be decided upon its own particular facts and circumstances, the facts and
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`circumstances are substantially similar. The prior registration is therefore instructive, and the
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`leaf design mark should be approved for publication.
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`E.
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`Any Doubt Should Be Resolved In ApQlicant’s Favor
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`It has been long—recognized by the Board that,
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`The distinction between marks which are "merely descriptive" and marks which
`are "suggestive" is so nebulous that more often than not it is determined largely
`on a subjective basis with any doubt in the matter being resolved in applicant’s
`behalf on the theory that any person who believes that he would be damaged by
`the registration will have an opportunity under Section l3 to oppose the
`registration of the mark and to present evidence, usually not present
`in the
`ex parte application, to that effect.
`
`In re Gourmet Bakers, Inca, l73 USPQ 565, l972 WL l7997 (TTAB.); See In re The Szfroh
`
`Brewery C0., 34 USPQ2d l796, 1994 WL 808246 (TTAB) (“[l]t is the practice of this Board to
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`resolve doubts in favor of the applicant and pass the mark to publication .
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`.
`
`. .”).
`
`Although Applicant respectfully submits that the leaf design mark is at least suggestive
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`and that the Examining Attorney has failed to meet her prima faeie burden of establishing that
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`the mark is merely descriptive,
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`in the event that the Board believes that any doubt remains,
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`Applicant respectfully submits that such doubt should be resolved in Applicant’s favor and that
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`the mark should be passed for publication.
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`11
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`

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`III. CONCLUSION
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`For the reasons set
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`forth above, Appellant submits that
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`the Trademark Examining
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`Attorney’s refusal should be reversed and the Application to register this mark should be passed
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`to publication.
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`Respectfully submitted,
`
`Dated:
`
`flmr‘ .12'[7»-Q08
`
`FELLERS, SNID “ '— —* ANKENSHIP,
`
`BAILEY & TIPPE-NS, P.C.
`
`321 South Boston, Suite 800
`
`Tulsa, OK 74103-3318
`Phone: 918/599—062l
`
`Certificate of Electronic Transmission
`
`I hereby certify that this paper is being electronically transn 'tted to the U ited States Pa em and
`on:/Z“ ZZ*"08/
`dd
`
`
`rademark Office
`
`Date
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`#467137
`
`Signature
`
`Carol Welch
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`(Typed or printed name ofperson S1TgI1iI7.g certificate)