Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1118755
`
`Filing date:
`
`03/08/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
`
`88378998
`
`ISSA, LLC
`
`Applied for Mark
`
`ISSA INTERNATIONAL SPORTS SCIENCES ASSOCIATION
`
`Correspondence
`Address
`
`MARK A. WATKINS
`VORYS, SATER, SEYMOUR AND PEASE LLP
`P.O. BOX 2255
`IPLAW@VORYS.COM
`COLUMBUS, OH 43216-2255
`UNITED STATES
`Primary Email: iplaw@vorys.com
`Secondary Email(s): bjjustice@vorys.com
`330-208-1000
`
`Submission
`
`Attachments
`
`Appeal Brief
`
`ISSA Appeal Brief 3.8.2021.pdf(331975 bytes )
`
`Appealed classes Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are appealed, namely: Downloadable multi-
`media files, text files, CDs, DVDs, and pre-recorded storage devices, namely
`blank flash drives, featuring information in the fields of health, nutrition, wellness,
`lifestyle improvement, exercise, fitness, fitness assessment and sports; written
`materials in the nature of brochures and newsletters featuring information in the
`fields of health, nutrition, wellness, lifestyle improvement, exercise, fitness, fit-
`ness assessment, training, development, and sports; computer application soft-
`ware for mobile phones, portable media players, and handheld computers,
`namely software for providing users with information, and enabling the collect-
`ing, tracking, monitoring, and analysis regarding the user's health plans, physical
`activity, nutrition and diet, exercise, fitness, rest, andgeneral health
`
`Class 016. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are appealed, namely: Printed informational
`materials, signage, books, training manuals, study guides, testing and certifica-
`tion materials inthe fields of fitness, fitness assessment, training, development,
`exercise, health, nutrition, and sports
`
`Class 025. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are appealed, namely: Clothing, namely,
`shirts, shorts, pants, headwear, footwear, jackets, tights, sweatshirts, sweat-
`pants, undergarments, wristbands and headbands
`
`Class 041. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are appealed, namely: Educational services,
`namely, providingtraining, development, classes, seminars, testing, certification,
`on-line information and news in the fields of fitness, fitness assessment, exer-
`cise, health, wellness, lifestyle improvement, sports,and nutrition, and distribut-
`ing course materials in connection therewith; Providing education and consulta-
`tion in the fields of fitness, fitness assessment, exercise, health, sports, and nu-
`trition; Educational services, namely, providing web based and classroom train-
`ing, development, and testing for certification and continuing education of fitness
`trainers, nutrition consultants, coaches and instructors, in the fields of fitness, fit-
`ness assessment, exercise, health, nutrition, and sports; Providing a website an-
`donline journals in the nature of blogs and articles featuring information on
`
`

`

`health, nutrition, exercise, fitness, fitness assessment and sports
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Mark A. Watkins
`
`iplaw@vorys.com, bjjustice@vorys.com
`
`/Mark A. Watkins/
`
`03/08/2021
`
`

`

`Application Serial No. [88378998]
`Attorney Docket No.: 077817-006
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Application Serial No.:
`
`
`88378998
`
`April 10, 2019
`
`ISSA, LLC
`
`Bridgett G. Smith, Esq
`Law Office 115
`
`
`
`
`
`
`
`
`
`
`
`
`
`For the Mark
`
`Filing Date:
`
`Applicant:
`
`Examining Attorney:
`
`
`
`
`ATTN: TTAB
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`APPLICANT’S EX PARTE APPEAL BRIEF
`
`
`
`
`
`
`
`1
`
`Appeal Brief
`
`

`

`Application Serial No. [88378998]
`Attorney Docket No.: 077817-006
`
`
`TABLE OF CONTENTS
`
`
`
`
`
`I. TABLE OF AUTHORITIES............................................................................ 3
`
`II. INTRODUCTION ....................................................................................... 4
`
`III. PROSECUTION HISTORY ........................................................................... 5
`
`IV. SUMMARY OF EVIDENCE ........................................................................... 6
`
`V. ARGUMENT .............................................................................................. 7
`
`A.
`
`The phrase INTERNATIONAL SPORTS SCIENCE ASSOCIATION is not Merely
`
`Descriptive and the Examining Attorney has not carried the requisite Burden of
`
`Proof. ........................................................................................................ 8
`
`B.
`
`Applicant’s Mark does NOT Deprive Competitors of an apt Description of
`
`their Goods/Services ................................................................................. 13
`
`C.
`
`The mark INTERNATIONAL SPORTS SCIENCES ASSOCIATION is a Unitary
`
`Mark 13
`
`D.
`
`Applicant has provided evidence of use dating back to at least 1990. ...... 15
`
`VI. CONCLUSION ......................................................................................... 16
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2
`
`Appeal Brief
`
`

`

`Application Serial No. [88378998]
`Attorney Docket No.: 077817-006
`
`
`I.
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 131 USPQ 55 (2d Cir.
`1961) ...................................................................................................... 12
`Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052
`(Fed. Cir. 1991) ........................................................................................ 14
`Firestone Tire & Rubber Co. v. Goodyear Tire & Rubber Co., 186 USPQ 557 (TTAB
`1975) ...................................................................................................... 14
`Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330,
`332 (CCPA 1953) ...................................................................................... 11
`In re Grand Metropolitan Foodservice Inc., 30 USPQ2d 1974, 1976 (TTAB 1994) . 17
`In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987) .................................................... 8
`In re Hormel & Co., 218 USPQ 286, 287 (TTAB. 1983) ..................................... 17
`In re Morton-Norwich Products, Inc., 209 USPQ 791, 791 (TTAB 1981) ............... 12
`In re National Data Corp, 222 USPQ 515 (TTAB 1984) ...................................... 10
`In re Pennwalt Corp., 173 USPQ 317 (TTAB 1972) ........................................... 17
`In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983) ........................................... 10
`In re Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB 1995) ............................ 8
`In re: DC Comics, Inc., 215 U.S.P.Q. 394, 396 (C.C.P.A.1982) ............................ 8
`In re: Hutchinson Technology, Inc., 852 F.2d 552, 555 (Fed. Cir. 1988) ............... 8
`Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852, 860 n.7 (TTAB 1981)
` .............................................................................................................. 11
`No Nonsense Fashions, Inc. v Consolidated Foods Corp., 226 USPQ 502 (TTAB
`1985) ...................................................................................................... 13
`Physicians Formula Cosmetics Inc. v. West Cabot Cosmetics Inc., 8 USPQ2d 1136
`(2d Cir. 1988) ............................................................................................ 9
`Plus Prods. v. Medical Modalities Assocs., Inc., 211 USPQ 1199, 1204-1205 (TTAB
`1981) ........................................................................................................ 8
`University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 213 USPQ
`594, 596 (TTAB 1982) ............................................................................... 11
`Yamaha Int'l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1576 (Fed. Cir. 1988) .... 8
`
`
`
`Other Authorities
`
`Section 2(e)(1) of the Lanham Act ................................................................... 8
`TMEP Section 1213.05 .................................................................................. 14
`
`
`
`
`
`
`
`
`3
`
`Appeal Brief
`
`

`

`Application Serial No. [88378998]
`Attorney Docket No.: 077817-006
`
`
`II.
`
`INTRODUCTION
`
`
`
`
`
`Pursuant to the Notice of Appeal filed with the Trademark Trial and Appeal
`
`Board on January 19, 2021, Applicant hereby appeals from the Examining Attorney’s
`
`July 25, 2020 Final Refusal to register the above-captioned mark on the Principal
`
`Register, and respectfully requests the Trademark Trial and Appeal Board reverse the
`
`Examining Attorney’s determination that Applicant’s entire mark INTERNATIONAL
`
`SPORTS SCIENCES ASSOCIATION is descriptive, and thus is an unregisterable
`
`component of the mark. To this effect, the Examining Attorney has maintained the
`
`requirement that Applicant disclaim the entire phrase “INTERNATIONAL SPORTS
`
`SCIENCES ASSOCIATION.”
`
`
`
`By way of introduction, Applicant INTERNATIONAL SPORTS SCIENCES
`
`ASSOCIATION or ISSA (for short) is recognized as a global leader in the education
`
`and certification of fitness trainers, personal trainers, strength and conditioning
`
`coaches, nutritionists, nutrition coaches, aerobic
`
`instructors and medical
`
`professionals. ISSA, since its inception has enrolled over 300,000 students. ISSA,
`
`inter alia, is recognized by the National Board of Fitness Examiners, the Distance
`
`Education and Training Council (an accrediting agency recognized by the United
`
`States Department of Education), as well as the Defense Activity for Non-Traditional
`
`Education Support, the Council for Higher Education, and the United States
`
`Department of Defense (to provide US Armed Forces Tuition Assistance and Military
`
`Spouse Career Advancement Financial Assistance). Applicant is well-known in the
`
`relevant industry and the phrase/terms “International Sports Science Association”
`
`are exclusively associated therewith.
`
`
`
`4
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`Appeal Brief
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`

`

`Application Serial No. [88378998]
`Attorney Docket No.: 077817-006
`
`
`
`
`III. PROSECUTION HISTORY
`
`
`
`Applicant filed an application to register the mark
`
`on
`
`April 10, 2019 in connection with:
`
`Downloadable multimedia files, text files, CDs, DVDs, and pre-recorded
`storage devices featuring information in the fields of health, nutrition,
`wellness, lifestyle improvement, exercise, fitness, fitness assessment
`and sports; written materials in the nature of brochures and newsletters
`featuring information in the fields of health, nutrition, wellness, lifestyle
`improvement, exercise,
`fitness,
`fitness assessment,
`training,
`development, and sports; computer application software for mobile
`phones, portable media players, and handheld computers in Class 9;
`
`Printed informational materials, signage, books, training manuals, study
`guides, testing and certification materials in the fields of fitness, fitness
`assessment, training, development, exercise, health, nutrition, and
`sports, in Class 16;
`
`Clothing in Class 25; and
`
`Educational services, namely, providing training, development, classes,
`seminars, testing, certification, on-line information and news in the
`fields of fitness, fitness assessment, exercise, health, wellness, lifestyle
`improvement, sports, and nutrition, and distributing course materials in
`connection therewith; Providing education and consultation in the fields
`of fitness, fitness assessment, exercise, health, sports, and nutrition;
`Educational services, namely, providing web based and classroom
`training, development, and testing for certification and continuing
`education of fitness trainers, nutrition consultants, coaches and
`instructors, in the fields of fitness, fitness assessment, exercise, health,
`nutrition, and sports; Providing a website and online journals in the
`nature of blogs and articles featuring information on health, nutrition,
`exercise, fitness, fitness assessment and sports, in Class 41.
`
`
`
`On June 29, 2019 the Examining Attorney issued a Non-Final Office Action
`
`(“the First Office Action”) refusing registration based on (1) an Identification of Goods
`
`and Services issue, (2) a drawing issue, (3) a merely descriptive issue, and (4) a
`
`color claim issue.
`
`
`
`5
`
`Appeal Brief
`
`

`

`Application Serial No. [88378998]
`Attorney Docket No.: 077817-006
`
`
`Applicant filed a response (“the First OAR”) on December 30, 2019 in which
`
`Applicant (1) amended the description of goods to substantially comport with the
`
`Examining Attorney’s suggestions, (2) provided a new drawing, (3) offered
`
`arguments against the required disclaimer and (4) stated that color is not to be
`
`claimed.
`
`On January 28, 2020 the Examining Attorney and Attorney Mark Watkins
`
`discussed the disclaimer requirement and the Examining Attorney subsequently
`
`issued a Priority Action. The Priority Action stated the Disclaimer requirement is
`
`maintained and made Final and included an Examiner’s Amendment to address
`
`the listing of goods and services.
`
`On June 25, 2020 Applicant filed a response to the Priority Action (“the
`
`PAR”), in which Applicant offered arguments and evidence against the refusal.
`
`On July 20, 2020 the Examining Attorney issued a Final Office Action, (“the
`
`Final Office Action”) wherein the Examining Attorney made final the refusal to
`
`register based on the disclaimer issue.
`
`Applicant filed a Notice of Appeal on January 19, 2021.
`
`IV. SUMMARY OF EVIDENCE
`
` The First Office Action
`
`
`o Dictionary Evidence from Merriam-webster.com of:
` “International” and
` “Association”
`
`
`
`o Dictionary Evidence from Cambridge.org of:
` “Sports Science”
`
`
`
`6
`
`Appeal Brief
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`

`

`Application Serial No. [88378998]
`Attorney Docket No.: 077817-006
`
`
`
` The Priority Action Response
`
`
`o Exhibit A
` Google Search Engine Results for “personal training certification”
`
`
`the Wikipedia Entry for INTERNATIONAL SPORTS SCIENCES
`
`ASSOCIATION
` Google Search Engine Results for “INTERNATIONAL SPORTS
`SCIENCES ASSOCIATION”
`
`
`o Exhibit B – Third Party evidence associating the terms INTERNATIONAL
`
`SPORTS SCIENCES ASSOCIATION with the Applicant
`
` www.ptpioneer.com
`
` www.futuretrainers.com
`
`
`o Exhibit C – Job boards recognizing an association between
`
`INTERNATIONAL SPORTS SCIENCES ASSOCIATION and Applicant
`
`
`
`V.
`
`ARGUMENT
`
`The Examining Attorney has alleged that the wording “INTERNATIONAL
`
`SPORTS SCIENCES ASSOCIATION,” is not inherently distinctive and is “at best merely
`
`descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use
`
`of applicant’s goods and/or services.”1 In light of the allegation, the Examining
`
`Attorney has required Applicant to disclaim INTERNATIONAL SPORTS SCIENCES
`
`ASSOCIATION in its entirety.2 Applicant believes that the mark is inherently
`
`distinctive and does not require a disclaimer. It is well-settled that "'an applicant need
`
`
`1 TSDR June 29, 2019, Office Action Outgoing (The First Office Action)
`
`2 Id.
`
`
`
`7
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`Appeal Brief
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`

`

`Application Serial No. [88378998]
`Attorney Docket No.: 077817-006
`
`
`not conclusively establish distinctiveness but need only establish a prima facie case'
`
`to warrant publication of a mark for opposition." Yamaha Int'l Corp. v. Hoshino Gakki
`
`Co., 840 F.2d 1572, 1576 (Fed. Cir. 1988) (quoting In re Capital Formation
`
`Counselors, Inc., 219 USPQ 916, 919 (TTAB 1983)).
`
`
`
`A. The phrase INTERNATIONAL SPORTS SCIENCE ASSOCIATION is
`
`not Merely Descriptive and the Examining Attorney has not carried the
`
`requisite Burden of Proof.
`
` A
`
` portion of a mark is merely descriptive only if it immediately describes or
`
`conveys to one who is unfamiliar with the product its function or qualities. In re:
`
`Hutchinson Technology, Inc., 852 F.2d 552, 555 (Fed. Cir. 1988); In re: DC Comics,
`
`Inc., 215 U.S.P.Q. 394, 396 (C.C.P.A.1982). A mark or portion of a mark is “merely
`
`descriptive” within the meaning of Section 2(e)(1) of the Lanham Act only “if it
`
`forthwith conveys an immediate idea of the ingredients, qualities, or characteristics
`
`of the goods.” See, e.g., In re Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB
`
`1995) (emphasis in original). The Examining Attorney bears the burden of showing
`
`that the relevant public makes descriptive use of the term in connective with the
`
`goods for which registration is sought. In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987).
`
`Moreover, in order to be descriptive, the term must immediately convey information
`
`as to the qualities, features, or characteristics of the goods and/or services with a
`
`“degree of particularity.” Plus Prods. v. Medical Modalities Assocs., Inc., 211 USPQ
`
`1199, 1204-1205 (TTAB 1981). Applicant believes that the Examining Attorney has
`
`not carried the requisite burden of proof that Applicant’s mark is merely descriptive.
`
`
`
`8
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`Appeal Brief
`
`

`

`Application Serial No. [88378998]
`Attorney Docket No.: 077817-006
`
`
`The Examining Attorney has dissected the mark into three portions (1)
`
`“INTERNATIONAL,” (2) “SPORTS SCIENCES,” and (3) “ASSOCIATION” and taking the
`
`definitions of each word (or combination of terms), determined that the mark is
`
`descriptive of “provid[ing] an international organization of persons having a common
`
`interest related to the study of various sciences.”3
`
`Taking into account the Examining Attorney’s proffered meaning of the
`
`combination of terms, the terms do little to identify Applicant’s services other than
`
`to locate it in the realm of an of a sports association. The proffered meaning does not
`
`with any degree of particularity identify education and certification services for
`
`personal trainers, fitness coaches, and nutritionists. In Physicians Formula Cosmetics
`
`Inc. v. West Cabot Cosmetics Inc., 8 USPQ2d 1136 (2d Cir. 1988) (finding that the
`
`mark PHYSICIANS FORMULA for skin care products was not descriptive because “it
`
`does little to identify the product other than to locate it in the realm of medicine.”)
`
`The relevant consumers confronted with the
`
` mark must use thought,
`
`perception, and imagination to determine exactly what those services might be. The
`
`phrase INTERNATIONAL SPORTS SCIENCES ASSOCIATION may “locate [the services]
`
`in the realm of the study of sports,” but that is as far as the terms take the consumer.
`
`The Examining Attorney has provided no evidence that the phrase “INTERNATIONAL
`
`SPORTS SCIENCES ASSOCIATION” is merely descriptive other than to attach
`
`definitions of cherry picked word combinations. The Examining Attorney has not
`
`provided any evidence whatsoever relating to any potential third party usage of any
`
`
`3 TSDR June 29, 2019, Office Action Outgoing (The First Office Action)
`
`
`
`9
`
`Appeal Brief
`
`

`

`Application Serial No. [88378998]
`Attorney Docket No.: 077817-006
`
`
`term or combination of terms as being descriptive of Applicant’s services (or any
`
`party’s services or goods). In effect, the burden of proof carried by the Examining
`
`Attorney has not been met.
`
`Furthermore, Applicant submits that the four separate words INTERNATIONAL,
`
`SPORTS, SCIENCES, and ASSOCIATION, placed together in that order, comprise an
`
`incongruous word combination in connection with Applicant’s services, whose import
`
`cannot be grasped without a significant “mental pause,” making the mark at most,
`
`suggestive and certainly not merely descriptive. See In re Shutts, 217 USPQ 363,
`
`364-65 (TTAB 1983) (SNOW-RAKE is not merely descriptive of a tool used to scrape
`
`snow). In the case In re National Data Corp, 222 USPQ 515 (TTAB 1984), aff’d 753
`
`Fd.1056 (Fed. Cir. 1985), the applicant sought to register THE CASH MANAGEMENT
`
`EXCHANGE, and appealed from the Examiner’s refusal. The words “CASH
`
`MANAGEMENT” were disclaimed. The Examiner’s conclusion was that the mark THE
`
`CASH MANAGEMENT EXCHANGE conveys an immediate idea of the nature of the
`
`services and is merely descriptive because a significant part of the applicant’s
`
`services is to “handle cash so as to maximize yield (i.e., “cash management,”) by
`
`facilitating the interbank transfer, i.e., “exchange,” of funds by and between banks
`
`and other business organizations. The Board reversed the refusal holding that the
`
`combination of terms is arguably incongruous and thus, the mark is suggestive
`
`(although the Board upheld the Section 2(d) refusal). The same reasoning regarding
`
`descriptiveness is applicable here. Applicant’s primary services relate to education
`
`and certification services for personal trainers, fitness coaches, and nutritionists. The
`
`
`
`10
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`Appeal Brief
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`

`

`Application Serial No. [88378998]
`Attorney Docket No.: 077817-006
`
`
`relevant consumers viewing the mark must make a significant “mental pause,” in
`
`order to determine the services and goods offered under the mark.
`
`In regard to the Examining Attorney’s grouping of terms, there is no reason as
`
`to why the Examining Attorney has grouped the terms “SPORT SCIENCES” together
`
`and proffered an associated dictionary definition. The Examining Attorney could have
`
`just as easily grouped together the terms “INTERNATIONAL SPORTS” and provided a
`
`dictionary thereof. That is, “International Sports” are sports wherein the participants
`
`represent at least two countries.4,5 Including a definition of just “science,” from
`
`Merriam-Webster, as something that may be studied or learned like systematized
`
`knowledge.6 Thus, the meaning becomes an association for studying sports wherein
`
`the participants represent at least two countries. There is no reason to believe, nor
`
`evidence that shows, that consumers viewing Applicant’s mark would individually
`
`separate/group the terms of the phrase according to the Examining Attorney’s
`
`process when other groupings are just as easily plausible.
`
`Furthermore, during the cherry picked process, the Examining Attorney
`
`needed to cite to a different dictionary (Cambridge) from the one it cited for the terms
`
`“International” and “Association” (Merriam-Webster).7 In fact, the Meriam-Webster
`
`dictionary does not have a definition for the term “Sports Science” or “Sports
`
`
`4 “International Sport” Wikipedia https://en.wikipedia.org/wiki/International_sport
`
`5 It is well settled that the Board may take judicial notice of dictionary definitions. See, e.g., Hancock
`v. American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953);
`University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB
`1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v. American
`Can Co., 212 USPQ 852, 860 n.7 (TTAB 1981).
`
`6 https://www.merriam-webster.com/dictionary/science
`
`7 TSDR June 29, 2019, Office Action Outgoing (The First Office Action)
`
`
`
`11
`
`Appeal Brief
`
`

`

`Application Serial No. [88378998]
`Attorney Docket No.: 077817-006
`
`
`Sciences.” The absence of this definition with Merriam-Webster and the need to look
`
`elsewhere, must factor in to the fact that the combination of words INTERNATIONAL
`
`SPORTS SCIENCES ASSOCIATION is an incongruous word combination.
`
`Any doubt regarding descriptiveness must be decided in favor of the Applicant.
`
`"When there is a thin line between a suggestive and a merely descriptive designation,
`
`and where reasonable men may differ, it is the Board's practice to resolve the doubt
`
`in the Applicant's favor and publish the mark for opposition." In re Morton-Norwich
`
`Products, Inc., 209 USPQ 791, 791 (TTAB 1981). The required mental leap does not
`
`have to be great; if it is "not almost instantaneous, this strongly indicates
`
`suggestiveness." Self-realization Fellowship Church v. Ananda Church of Self-
`
`Realization, 59 F.3d 902, 911 (9th Cir. 1995). Indeed, a consumer viewing
`
`INTERNATIONAL SPORTS SCIENCES ASSOCIATION without further investigation
`
`would not conclude or surmise that the services are the provision of education and
`
`certification services for personal trainers, fitness coaches, and nutritionists. To be
`
`characterized as "merely" descriptive, a term must directly give some reasonably
`
`accurate or tolerably distinct knowledge of the characteristics of a product or service.
`
`Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 131 USPQ 55 (2d Cir.
`
`1961). The mark INTERNATIONAL SPORTS SCIENCES ASSOCIATION in no way does
`
`this.
`
`To the extent that the term “Association” points out that the name relates to
`
`an organization/entity, the phrase as a whole suggests that that International Sports
`
`Sciences designates something specific and not applicable generally.
`
`
`
`12
`
`Appeal Brief
`
`

`

`Application Serial No. [88378998]
`Attorney Docket No.: 077817-006
`
`
`B. Applicant’s Mark does NOT Deprive Competitors of an apt
`
`Description of their Goods/Services
`
`
`
`
` The Trademark Trial and Appeal Board in No Nonsense Fashions, Inc. v
`
`Consolidated Foods Corp., 226 USPQ 502 (TTAB 1985) adopted and relied upon a
`
`three part test for determining whether a mark is descriptive adding the item below
`
`relating to deprivation of descriptive language to competitors. According to No
`
`Nonsense Fashions, in determining whether a mark can be held merely descriptive,
`
`one must also ask whether the use of the term in connection with the goods deprives
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`competitors of an apt description of their goods. Id. at 507.
`
`Here, the Examining Attorney failed to cite any evidence that the mark
`
`deprives competitors of an apt description of the goods. Competitors can use various
`
`terms to reference their own relevant services. Third parties are not prevented from
`
`using similar individual words to describe similar education and certification services
`
`for personal trainers, coaches, and nutritionists. Others are, however, precluded
`
`from using the mark phrase INTERNATIONAL SPORTS SCIENCES ASSOCIATION in a
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`manner or arrangement which is confusingly similar to Applicant's mark. Competitors
`
`have no need to use Applicant's word combination or even portions thereof including
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`“Sports Sciences.”
`
`
`
`C. The mark INTERNATIONAL SPORTS SCIENCES ASSOCIATION is a
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`Unitary Mark
`
`The Courts and the Trademark Trial and Appeal Board have held time and
`
`again that the combination of two or more descriptive words may result in a unitary
`
`mark which is non-descriptive. See Firestone Tire & Rubber Co. v. Goodyear Tire &
`
`
`
`13
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`Appeal Brief
`
`

`

`Application Serial No. [88378998]
`Attorney Docket No.: 077817-006
`
`
`Rubber Co., 186 USPQ 557 (TTAB 1975). A mark or portion of a mark is considered
`
`"unitary" when it creates a commercial impression separate and apart from any
`
`unregistrable component.8 The test for unitariness inquires whether the elements of
`
`a mark are so integrated or merged together that they cannot be regarded as
`
`separable.9 The Trademark Manual of Examining Procedure even recognizes “Unitary
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`Phrases,” i.e., a group of words that are used together in fixed expressions. While
`
`acting as a “single idea” does not necessary mean that the phrase is unitary in the
`
`trademark sense, the phrase qualifies as unitary if the whole is something more than
`
`the sum of its parts.10 The inquiry focuses on "how the average purchaser would
`
`encounter the mark under normal marketing of such goods and also . . . what the
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`reaction of the average purchaser would be to this display of the mark." Dena Corp.
`
`v. Belvedere Int’l, Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991)
`
`(quoting In re Magic Muffler Serv., Inc., 184 USPQ 125, 126 (TTAB 1974)). If the
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`matter that comprises the mark or relevant portion of the mark is unitary, no
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`disclaimer of an element, whether descriptive, generic, or otherwise, is required.11
`
`Applicant has submitted evidence in the form of results from a Google® search
`
`engine query of the phrase “International Sports Sciences Association.” The results
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`related only to Applicant, and no other entity. Furthermore, Applicant provided
`
`evidence that third-parties associate the phrase “International Sports Sciences
`
`Association,” exclusively.
`
`
`8 TMEP Section 1213.05
`
`9 Id.
`
`10 TMEP 1213.05(b).
`11 Id.
`
`
`
`14
`
`Appeal Brief
`
`

`

`Application Serial No. [88378998]
`Attorney Docket No.: 077817-006
`
`
`For example, the website www.fitnesstrainer.com identifies the
`five (5) best personal trainer certifications and lists applicant as one
`such organization [see https://fitnesstrainer.com/fitness-blog/the-5-
`best-personal-trainer-certifications]. The websites www.ptpioneer.com
`and www.futuretrainers.com present similar lists (see Exhibit B). See
`also: https://www.exercise-science-guide.com/certifications/personal-
`training/; https://www.verywellfit.com/bestpersonal-trainer-
`certifications-4778789; https://www.becomingatrainer.com/best-
`personal-trainercertification.
`
`See Priority Action Response, page 2.
`
`
`Lastly,
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`third party
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`fitness and health clubs
`
`recognize
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`the
`
`term
`
`“INTERNATIONAL SPORTS SCIENCES ASSOCIATION” as being associated exclusively
`
`with the Applicant, as evidenced by job listings from platforms such as indeed.com
`
`where the employer includes Applicant’s name among the list of accepted
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`certifications for employment consideration.12
`
`The totality of the evidence supports the reality that the phrase
`
`“INTERNATIONAL SPORTS SCIENCES ASSOCIATION” has a meaning more the sum
`
`of its parts. That meaning is an immediate connection with Applicant and Applicant’s
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`services.
`
`D. Applicant has provided evidence of use dating back to at least
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`1990.
`
`In the Final Office Action the Examining attorney disregards Applicant’s
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`statement that the wording has been used by the Applicant and its predecessors since
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`at least as early as 1990, contending that Applicant did not include record evidence
`
`
`12 TSDR June 25, 2020, Exhibit C of the Priority Action Response
`
`
`
`15
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`Appeal Brief
`
`

`

`Application Serial No. [88378998]
`Attorney Docket No.: 077817-006
`
`
`to support its position.13 Applicant disagrees and believes it has provided some
`
`evidence to that fact.
`
`In Exhibit A of the Priority Office Action Response, Applicant included a
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`Wikipedia entry for International Sports Sciences Association.14 In the right hand
`
`box, the article states that the International Sports Sciences Association was founded
`
`in 1988 with a focus of certification and training serving members in 104 plus
`
`countries.15
`
`The article of Exhibit A further states that the International Sports Sciences
`
`Association was founded in the late 1980s when “recognizing the need for
`
`standardization and credibility” Dr. Aal Arria and Dr. Frederick Hatfield created a
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`personal fitness training program to merge gym experience with practical and applied
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`sciences. The foregoing statement is cited to Fitness: The Complete Guide, 8th
`
`edition. Hatfield, Frederick C., MSS, PhD. ISSA, Carpinteria, CA; 2007. Thus, in light
`
`of the content of Exhibit A of the PAR and arguments advanced above, Applicant
`
`believes that it has provided a prima facie case that the phrase “International Sports
`
`Sciences Association” is distinctive.
`
`
`
`VI. CONCLUSION
`
`Applicant is convinced that its
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`mark is entitled
`
`to registration on the Principal Register without disclaimer. Applicant respectfully
`
`
`13 TSDR July 20, 2021 – Final Office Action
`
`14 TSDR June 25, 2020 Exhibit A.
`15 Id.
`
`
`
`16
`
`Appeal Brief
`
`

`

`Application Serial No. [88378998]
`Attorney Docket No.: 077817-006
`
`
`requests that the Trademark Trial and Appeal Board overturn the Examining
`
`Attorney’s refusal to register.
`
`Again, any doubt with respect to whether a mark is descriptive or suggestive
`
`must be resolved in favor of the applicant, and borderline cases should pass to
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`publication. See In re Grand Metropolitan Foodservice Inc., 30 USPQ2d 1974, 1976
`
`(TTAB 1994) (MUFFUNS for muffins not merely descriptive); In re Priefert Mfg. Co.,
`
`Inc., 222 USPQ 731, 733 (TTAB 1984) (HAY DOLLY not merely descriptive of trailer
`
`for hauling hay); In re Hormel & Co., 218 USPQ 286, 287 (TTAB. 1983) (FAST'N
`
`EASY not merely descriptive of "pre-cooked m