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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1095800
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`Filing date:
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`11/16/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`Applicant
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`88017204
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`The PSYCH Group, LLC
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`Applied for Mark
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`THE PSYCH GROUP
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`Correspondence
`Address
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`ROSEZENA J. PIERCE
`R.J. PIERCE LAW GROUP, P.C.
`200 W. MADISON
`SUITE 2100
`CHICAGO, IL 60606
`UNITED STATES
`Primary Email: rosezena@rjpiercelaw.com
`Secondary Email(s): sakeena@rjpiercelaw.com, jasmine@rjpiercelaw.com
`312-217-0799
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`Submission
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`Attachments
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`Filer's Name
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`Filer's email
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`Reply Brief
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`THE PSYCH GROUP - Appeal Brief.pdf(244381 bytes )
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`Jasmine Jandrlich
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`rosezena@rjpiercelaw.com, info@rjpiercelaw.com, jasmine@rjpiercelaw.com,
`jonelle@rjpiercelaw.com
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`Signature
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`Date
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`/Jasmine Jandrlich/
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`11/16/2020
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK
`TRIAL AND APPEAL BOARD
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`
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`In re The PSYCH Group, LLC
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`Mark:
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`The PSYCH Group
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`Serial No.:
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`88017204
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`Filing Date:
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`June 27, 2018
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`Class:
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`Examining Attorney: Gretta Yao
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`APPLICANT’S APPEAL BRIEF
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Trademark Trial and Appeal Board
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`P.O. Box 1451
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`Alexandria, VA 22313-1451
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`1
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`TABLE OF CONTENTS
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`Page Nos.:
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`Table of Authorities ……………………………………………………………………..
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`I.
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`Introduction………………………………………………………………………
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`II.
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`Statement of the Case…………………………………………………………….
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`2
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`III.
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`Argument………………………………………………………………………….
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`IV.
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`Conclusion……………………………………………………………………..….
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`TABLE OF AUTHORITIES
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`CASES:
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`H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, (Fed. Cir. 1986)
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`6
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`Dep’t of Justice, FBI v. Calspan Corp., 578 F.2d 295, 299, 198 USPQ 147, 149 (C.C.P.A .1978)
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`7
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`In re Gould Paper Corp., 834 F.2d 1017, 5 U.S.P.Q.2d 1110, 1111 (Fed. Cir. 1987) 7
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`In re Dial-A-Mattress, 240 F.3d 1341, 57 U.S.P.Q.2d 1807, 1810 (Fed. Cir. 2001) 7
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`8
`In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567(Fed. Cir. 1987)
`In re Nordic Naturals, Inc., 755 F.3d 1340, 111 U.S.P.Q.2d 1495, 1497 (Fed. Cir. 2014. 8
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`In re Am. Fertility Soc’y, 188 F.3d at 1348, 51 USPQ2d at 1837
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` 10
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`Princeton Vanguard, 786 F.3d at 968, 114 USPQ2d at 1832. 10
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`I.
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`INTRODUCTION
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`COMES NOW Applicant, The PSYCH Group, LLC, (hereinafter “Applicant”) provides
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`this Brief of the Applicant in support of its appeal of the examining attorney’s refusal to register
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`the instant mark.
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`II.
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`STATEMENT OF THE CASE
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`On June 27, 2018, Applicant filed the instant trademark with the U.S. Patent and Trademark
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`Office seeking to register the same on in connection with the following services in International
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`Class 044: Psychological assessment services; Psychological assessment services in the field of
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`clinical, educational, neuropsychological, and forensic; Psychological consultation; Psychological
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`counseling; Psychological counseling in the field of trauma, parenting, anxiety, depression, work
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`and career issues, stress management, multicultural issues, conflict resolution, and intimacy
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`concerns; Psychological services, namely, providing diagnostic services to children with special
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`needs and their families; Psychological services, namely, providing therapeutic services to children
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`with special needs and their families; Psychological testing services; Consulting services in the
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`field of forensic psychology; Providing information in the field of psychological counseling and
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`treatment.
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`On Oct 19, 2018, the Examining Attorney refused registration of the Applicant’s
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`trademark on the grounds of genericism.
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`On April 19, 2019, Applicant filed a response to the Office Action with arguments in
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`support of registration, requesting that its mark be allowed on the supplemental registry. However,
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`ultimately Applicant’s arguments were not deemed persuasive by the Examining Attorney and,
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`accordingly, on May 14, 2019 the Examining Attorney refused to allow Applicant’s mark on the
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`supplemental registry.
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`On November 14, 2019, Applicant filed a response to the Office Action with arguments
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`in support of registration, again requesting that its mark be allowed on the supplemental registry.
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`However, ultimately Applicant’s arguments were not deemed persuasive by the Examining
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`Attorney and on December 12, 2019 the Examining Attorney finally refused to allow Applicant’s
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`mark on the supplemental registry.
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`On July 07, 2020 Applicant filed a Request Reconsideration after FOA in response to the
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`Final Office Action, further expounding on the arguments previously made in support of
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`registration and including additional evidence, in conjunction with a Notice of Appeal. However,
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`again, Applicant’s arguments were not deemed persuasive by the Examining Attorney and,
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`accordingly, on September 14, 2020 Applicant’s request for reconsideration was Denied.
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`The instant appeal now timely follows.
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`III. ARGUMENT
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`The Standard for a Determination of genericness
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`A mark is generic if its primary significance to the relevant public is the class or category of
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`services on or in connection with which it is used. See H. Marvin Ginn Corp. v. Int’l Ass’n of Fire
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`Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986) (citing Dep’t of Justice, FBI v.
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`Calspan Corp., 578 F.2d 295, 299, 198 USPQ 147, 149 (C.C.P.A .1978).
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`Applicant’s Mark Is Source Identifying And Capable Of Acquiring Distinctiveness
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`A generic term, by definition, identifies a type of product or service, not the source of the
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`product or service. In re Gould Paper Corp., 834 F.2d 1017, 5 U.S.P.Q.2d 1110, 1111 (Fed. Cir. 1987).
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`As such, a generic term cannot function as an indicator of the source of a product or services, and thus as
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`a trademark, because the relevant public understands the term primarily as the common name for the
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`product or services. In re Dial-A-Mattress, 240 F.3d 1341, 57 U.S.P.Q.2d 1807, 1810 (Fed. Cir.
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`2001); In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 U.S.P.Q.2d 1141, 1142
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`(Fed. Cir. 1987).
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`The relevant public does not understand the trademark “The PSYCH Group” primarily as the
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`common name for the identified services. The Office bears the burden of proving that a term
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`is generic by clear evidence. In re Nordic Naturals, Inc., 755 F.3d 1340, 111 U.S.P.Q.2d 1495, 1497
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`(Fed. Cir. 2014); In re Merrill Lynch, Pierce, Fenner & Smith, 4 U.S.P.Q.2d at 1143. It does however,
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`based on the record, indicated the source of the services. In the present case, there is no clear evidence to
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`support a finding that consumers, when considering “The PSYCH Group” in conjunction with the
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`identified services readily understand that counseling in the field of trauma, parenting, anxiety,
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`depression, work and career issues, stress management, multicultural issues, conflict resolution, and
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`intimacy concerns, or assessment services in the field of clinical, educational, neuropsychological, and
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`forensic, or Consulting services in the field of forensic psychology, or diagnostic services to children
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`with special needs and their families, or Providing information in the field of psychological counseling
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`and treatment, all in the field of psychology, is identified as “The PSYCH Group”. Consumers would
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`associate the trademark with a group of individuals. In fact, the evidence submitted by the examining
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`attorney, shows the terms “THE PSYCH GROUP” or “ PSYCH GROUP” are all either used in
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`trademarks to identify source of the services rather than referring primarily to the specific services
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`themselves. This is sufficient to show that Applicant’s trademark is in fact source identifying and
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`capable of distinguishing source. Therefore at the very least, Applicant’s mark “The PSYCH Group”
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`should be allowed to register on the supplemental registry.
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`The examining attorney has the burden of proving that a term is generic by clear evidence. In re
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`Nordic Naturals, Inc., 755 F.3d 1340, 1344, 111 USPQ2d 1495, 1498 (Fed. Cir. 2014) It has been
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`recognized that it is entirely appropriate to consider whether a particular designation is "highly
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`descriptive" in evaluating registrability under §2(f), or in similar circumstances. H. Marvin Ginn Corp.
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`v. Int'l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989–90, 228 USPQ 528, 530 (Fed. Cir. 1986). Here,
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`Applicant’s mark is Highly descriptive and registrable under 2f. Applicant has been using its mark in
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`commerce since as early as July 14, 2014 as identifying source.
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`Applicant’s Mark Should Be Allowed on the Principal Registry under §2(f),
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`The USPTO has allowed trademarks similar to Applicant’s to be registered on at least the
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`Supplemental Registry, or on the Principal Registry after a showing of acquired distinctiveness under
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`2(f), indicating it is often the policy of the Office to allow the marks to register. These marks include:
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`FORENSIC PSYCHOLOGY GROUP for Providing psychological and psychiatric assessment
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`services in legal matters in the fields of criminal law, personal injury law, employment law and
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`immigration law, and preparation of psychological and psychiatric assessment reports in
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`connection therewith is registered on the supplemental registry;
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`BEHAVIOR DEVELOPMENT GROUP for Behavioral health services; Behavioral health
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`services in the nature of behavior analysis therapy services is registered on the supplemental
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`registry;
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`THE EAR GROUP for Hearing aid fitting services; Hearing aid services is registered on the
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`principal registry under 2(f);
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`THE FOOD GROUP for Charitable services in the nature of coordination of the procurement
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`and distribution of food donations to needy persons and nutrition consultation is registered on the
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`supplemental registry;
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`THE OD/MD CONSULTING GROUP for Consulting services in the field of medical care is
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`registered on the supplemental registry;
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`OB HOSPITALIST GROUP for physician services registered on the principal registry under
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`2(f);
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`DOCTORS INJURY GROUP for Chiropractic services; Health care services, namely, wellness
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`programs; Massage therapy services; Physical rehabilitation; Physical therapy is registered on
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`the supplemental registry;
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`HEALTH STRATEGIES GROUP for Consulting services in the field of healthcare for
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`pharmaceutical manufactures; provision of healthcare information in the field of physician
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`8
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`groups services, health systems and hospitals, HMOs and insurance providers, regional market
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`data, drug product and customer response data, is registered on the principal registry under 2(f);
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`SENIOR RESOURCE GROUP for Providing assisted living care, programs and facilities is
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`registered on the principal registry under 2(f);
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`UNITED UROLOGY GROUP for Health care services in the field of urology; The Care group
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`for Consulting services in the field of medical care; Consulting services in the fields of
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`diagnostic medical testing and nutrition is registered on the supplemental register;
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`NATIONAL COUNSELING GROUP for Social services in the nature of behavioral health
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`counseling, namely, individual therapy, treatment and support for foster children; Medical
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`services in the nature of mental health and behavioral health counseling services is registered on
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`the principal registry under 2(f);
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`OUTDOOR ENVIRONMENTS GROUP for Horticultural processes and turf or lawn care
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`services, namely, providing preparation and development of turfgrass and/or soil for providing
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`an environment that encourages improved growth attributes; Horticultural services; Horticultural
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`services, namely, pneumatic application of mulch for others; Horticulture services; Landscape
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`gardening; Landscape gardening design for others; Floral design services; Garden design,
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`installation and maintenance of interior botanical displays, streetscape container plantings and
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`rooftop gardens for others; Horticultural services, namely, installing sod; Landscape design is
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`registered on the Principal Registry under 2(f);
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`THE CONCUSSION GROUP for Health care consulting in the field of medical imaging and
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`brain scans; Medical imaging services is registered on the Supplemental Register;
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`OB HOSPITALIST GROUP for physician services is registered on the Supplemental Register;
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`and
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`BEAUTY SYSTEMS GROUP for Wholesale store services and distributorship services in the
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`field of beauty supplies and equipment registered on the Principal Registry under 2(f).
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`In the present case, Applicant’s applied for trademark is “The PSYCH Group.” Applicant’s
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`trademark does not identify any type of product or service, it identifies a group of people and this is not
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`sufficient to render the mark generic, as can be seen by the registered trademarks at Exhibit A. Applicant
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`has been using its mark a source identifier since as early as July 14, 2014.
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`For instance, in Am. Fertility Soc’y, the court held that evidence that the components "Society" and
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`"Reproductive Medicine" were generic was not enough to establish that the composite phrase SOCIETY
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`FOR REPRODUCTIVE MEDICINE was generic for association services in the field of reproductive
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`medicine because, unlike in Gould, the evidence did not establish that the public would perceive "the
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`mark as a whole" to be no less generic than its constituents. In re Am. Fertility Soc’y, 188 F.3d at 1348,
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`51 USPQ2d at 1837; see also Princeton Vanguard, 786 F.3d at 968, 114 USPQ2d at 1832. Another
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`example set forth in Am. Fertility Soc’y states, “AMERICAN BAR ASSOCIATION is certainly an apt
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`name for a national association of lawyers; however, it is not used as a generic name for national
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`associations of lawyers (see, e.g., NATIONAL ASSOCIATION OF WOMEN LAWYERS; FEDERAL
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`BAR ASSOCIATION; AMERICAN HEALTH LAWYERS.).” Similarly, The PSYCH Group is
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`certainly an apt name for a group of psychologist or psychiatrist; however, it is not used as a generic
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`name for a group of psychologist or psychiatrist or psychics. Therefore, Applicant’s mark “The PSYCH
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`Group” is at the very least descriptive, able to acquire distinctiveness, and worthy for registration on the
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`principal registry under 2(f).
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`IV.
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`CONCLUSION
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`For the reasons stated above, the examining attorney has not met its burden of proving
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`that Applicant’s mark is generic by clear evidence. In re Nordic Naturals, Inc., 755 F.3d 1340,
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`1344, 111 USPQ2d 1495, 1498 (Fed. Cir. 2014).
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`WHEREFORE it is respectfully requested that the Trademark Trial and Appeal Board
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`reverse the decision of the Examining Attorney, remove as an impediment the cited trademark,
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`and approve the instant Application for publication.
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`Respectfully submitted,
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`The PSYCH Group, LLC
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`By: /Jasmine C. Boyd/ & /Rosezena J. Pierce/
`Jasmine C. Boyd, Esq.
`AL. Bar # 8544S11z
`R.J. Pierce Law Group, P.C.
`Jasmine@rjpiercelaw.com
`200 W. Madison
`Suite 2100
`Chicago, IL 60606
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`Date: November 16, 2020
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