Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA1081211

Filing date: 09/11/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 88388867

Applicant Douglas Wood

Applied for Mark MISSIONAL MILLIONAIRE

CorrespondenceAddress

HILLARY A. BROOKSBROOKS QUINN, LLC6513 132ND AVE NE #378KIRKLAND, WA 98033UNITED STATESPrimary Email: docketing@brooksquinn.comSecondary Email(s): hillary@brooksquinn.com503-629-1559

Submission Appeal Brief

Attachments 0220.0007 Appeal Brief.pdf(263498 bytes )

Filer's Name Hillary A. Brooks

Filer's email docketing@brooksquinn.com, hillary@brooksquinn.com

Signature /Hillary A. Brooks/

Date 09/11/2020

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Attorney Do. No. 0220.0007

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In re Trademark Application of Douglas Wood

Serial No.: 88/388,867

Filed: April 16, 2019

For the mark: MISSIONAL MILLIONAIRE

Class: 16

APPLICANT’S APPEAL BRIEF

STATEMENT OF ISSUES

Whether Applicant’s mark MISSIONAL MILLIONAIRE is merely descriptive such that

registration should be refused pursuant to Trademark Act Section 2(d)(1), 15 USC §1052(e)(1).

INDEX OF CASES

Am. Home Prods. Corp. v. Johnson Chem. Co., Inc., 589 F.2d 103, 200 USPQ 417 (2d Cir. 1978)

Assoc. of Coop. Members, Inc. v. Farmland Indus., Inc., 684 F.2d 1134, 216 USPQ 361 (5th Cir. 1982), cert. denied, 460 U.S. 1038 (1983)

California Cooler, Inc. v. Loretto Winery, Ltd., 774 F.2d 1451, 227 USPQ 808 (9th Cir. 1985)

Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991)

DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012)

In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007)

In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999)

In re Brown-Forman Corp., 81 USPQ2d 1284 (TTAB 2006),

In re Carvel Corp., 223 USPQ 65 (TTAB 1984)

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In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217 (Fed. Cir. 2012)

In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968)

In re Del. Punch Co., 186 USPQ 63 (TTAB 1975)

In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987)

In re Kraft, 218 USPQ 571 (TTAB 1983)

In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987)

In re Mueller Sports. Med., Inc., 126 USPQ2d 1584 (TTAB 2018)

In re Nat’l Tea Co., 144 USPQ 286 (TTAB 1965)

In re Oriental Daily News, Inc., 230 USPQ 637 (TTAB 1986)

In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999)

In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380 82 USPQ2d 1378 (Fed. Cir. 2007)

In re Remington Prods. Inc., 3 USPQ2d 1714 (TTAB 1987)

In re Shutts, 217 USPQ 363 (TTAB 1983)

In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213 (TTAB 2000)

In re Tea & Sympathy, Inc., 88 USPQ2d 1062 (TTAB 2008)

In re Tennis in the Round, Inc., 199 USPQ 496 (TTAB 1978)

In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984)

In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002)

In re Universal Water Sys., Inc., 209 USPQ 165, 166 (TTAB 1980)

In re Waverly Inc., 27 USPQ2d 162 (TTAB 1993)

In re Women’s Publ’g Co., 23 USPQ2d 1876 (TTAB 1992)

Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190 (Fed. Cir. 1992)

Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986)

Sweetarts v. Sunline, Inc., 380 F.2d 923, 154 USPQ 459 (8th Cir. 1967)

Taco Cabana Int’l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 19 USPQ2d 1253 (5th Cir. 1991), aff’d, 505 U.S. 763 (1992)

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ARGUMENT

The Examining Attorney has finally refused Applicant’s mark MISSIONAL

MILLIONAIRE as merely descriptive under Section 2(e)(1). In making this refusal, the

Examining Attorney has, despite contrary representation, improperly dissected the mark, ignored

the absence of evidence of descriptiveness, and ignored the evidence of record. Marks must be

considered as-a-whole and when a proper analysis is made, registration for Applicant’s mark

should be permitted.

Section 2(e) of the Trademark Act prohibits registration on the Principal Register of “a

mark which, (1) when used on or in connection with the goods of the applicant is merely

descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A term is “merely descriptive” within the

meaning of Section 2(e)(1) if it “immediately conveys knowledge of a quality, feature, function,

or characteristic of the goods or services with which it is used.” In re Chamber of Commerce of

the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer

Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “On the other hand,

if one must exercise mature thought or follow a multi-stage reasoning process in order to determine

what product or service characteristics the term indicates, the term is suggestive rather than merely

descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978); see also In re

Shutts, 217 USPQ 363, 364-65 (TTAB 1983); In re Universal Water Sys., Inc., 209 USPQ 165,

166 (TTAB 1980). And while it is not necessary that a term or phrase describe all of the properties

or functions of the goods or services to be merely descriptive, it must describe a significant

attribute or idea about them. In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999). The

line between descriptive and suggestive marks has been said to be a narrow one. 2 MCCARTHY §

11:66 (5th ed.). Board precedent requires that any doubts on descriptiveness be resolved in favor

of registration.

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According to the Examining Attorney, Applicant’s mark identifies a millionaire who is

missional and should be refused. This is an overly simplistic analysis that fails to consider the

immediacy requirement in making such a refusal, and likewise fails to ensure that the proffered

meaning, namely a religious one, is significant. The Examining Attorney has not provided any

evidence demonstrating mere descriptiveness; to the contrary, the Examining Attorney’s evidence

establishes the unitary and protectable nature of the mark for the identified goods and services on

number of bases, which are discussed in turn.

A. Applicant Responded to the Information Request and No Negative Inference Should Be Made

As a preliminary matter, the Examining Attorney stated that Applicant failed to address the

Information Request, particularly, the Examining Attorney stated: “the applicant’s failure to

completely respond to the information requirement, that is whether MISSIONAL or

MILLIONAIRE, as separate terms, have any significance other than as a trademark” allows a

presumption that the information would be detrimental to Applicant. (Final Office Action, January

14, 2020) (“Final Action”)). In support, the Examining Attorney referenced Question 1 in the July

1, 2019 Office Action (“July 2019 Action”). Applicant clearly responded to Question 1 on the

Information Request, “No”, in the January 2, 2020 Office Action Response (“January 2020

Response”). Further, Applicant indicated with respect to Question 4: “The goods are authored

by and could appeal to someone who is a millionaire, or aspires to be a millionaire, and someone

could potentially consider the subject matter religious in some aspects in a very broad sense,

however thought or imagination would be required to arrive at that conclusion.”

Applicant attempted to respond to the inquiry in good faith and Applicant’s attempt to do

so should not rise to a refusal, and accordingly failure to respond should not be a basis for either

refusal of Applicant’s mark or any inference against Applicant. This is an intent-to-use

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application, and while Applicant has an intent-to-use the mark for the identified goods and services

indicated, it has not yet done so (for example, no applicable website in response to Question 3),

which largely renders the questions abstract at this juncture and requires that Applicant consider

the breadth of future uses of the mark in making an accurate response.

B. Website Evidence of Different Marks is Not Proper

Despite Applicant’s indication that it did not have a website in which the applied-for mark

was used (Question 3 from the Information Request in the January 2020 Response), the Examining

Attorney who was, at the time, examining co-pending applications by Applicant for different

marks, turned to other websites used by Applicant for different trademarks and on that basis made

certain assumptions about Applicant’s intent-to-use with respect to this Application. Applicant

believes this was improper. That Applicant has different applications to register different marks,

and one or more websites associated with the different applications, does not provide a basis for

making assumptions about the use of the mark herein, particularly where the applied-for mark does

not appear on the websites. Nevertheless, even that evidence supports registration.

The Examining Attorney cites several cases indicating that website evidence is admissible,

for example See Final Action, citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d

1828, 1833 (Fed. Cir. 2007) and In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380 82 USPQ2d

1378, 1381 (Fed. Cir. 2007). The websites in those cases established the mere descriptiveness of

the mark at issue using things like dictionary definitions, Google searches, evidence of third-party

use, industry journals, etc. Notably, here the Examining Attorney did not come forward with

evidence showing dictionary use of MISSIONAL MILLIONAIRE, because it does not exist. The

Examining Attorney did not come forward with Google printouts showing the descriptiveness of

MISSIONAL MILLIONAIRE, because the only hits pertain to Applicant’s application for

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registration. The Examining Attorney did not come forward with third-party internet usage for

MISSIONAL MILLIONAIRE or with industry materials showing a competitive need to use

MISSIONAL MILLIONAIRE. In short, the Examining Attorney glossed over that none of this

evidence, the type identified in the cases the Examining Attorney cited, exists in this case. See

Final Action, throughout. While not determinative of registrability, the absence of this evidence

is certainly germane, and even persuasive, and should be considered in looking at the total picture

of registrability of a given mark when properly examined. Here, the Examining Attorney failed

entirely to acknowledge the absence of evidence and instead turned to websites for different marks

and fell short in making a case for mere descriptiveness.

The Examining Attorney has the burden to provide evidence demonstrating why

MISSIONAL MILLIONAIRE is merely descriptive for the identified goods and services and

should not be permitted to register. The Examining Attorney has wholly failed to make the

required showing, and when informed of that fact in the January 2020 Response, merely came

back in the Final Action with denials of Applicant’s positions, producing no affirmative evidence

or argument to the contrary, and supported the various denials with citation to TMEP sections

broadly discussing concepts, without applying those concepts or the facts of the cases cited therein

to the applied for mark for the identified goods and services. Because the Examining Attorney

failed to support refusal, MISSIONAL MILLIONAIRE should be permitted to register.

C. The Examining Attorney’s Proffered Meanings for “missional” and “millionaire”

The Examining Attorney defined “missional” to mean “relating to or connected to a

religious mission.” (Final Action.) That definition was first proffered in the July 2019 Action

(Attach. 1), and comes from vocabulary.com. That attachment includes, in the lower right corner

an example of usage of the term “missionary” and states: “Fuentes stayed on with the new venture,

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but I couldn’t help but ask if joining one of the most recognizable names in finance was in

alignment with all this missional, change-the-way-people-bank dialogue.” (Emphasis in original.)

Thus, the Examining Attorney’s definition sets forth usage of the term in a non-religious context,

specifically finance, to identify someone with a mission to make change. This particular usage

was, according to the attachment, published in Forbes on May 21, 2015.

The Examining Attorney has defined “millionaire” to mean a “person whose wealth

amounts to a least a million dollars, pounds, or the equivalent in other currency.” (July 2019

Action, Attach. 3.)

D. The Evidence Cited by The Examining Attorney Comports with Applicant’s Information

Response

Although the website materials (Final Action, Attach.1-9) and amazon.com user reviews

(Final Action, Attach. 10-17) for Applicant’s different marks and websites are not directly relevant

to this intent-to-use Application for MISSIONAL MILLIONAIRE, they nevertheless establish

precisely what Applicant said in the January 2020 Response and support registration here:

• In Question 1 of the July 2019 Action the Examining Attorney asked whether MISSIONAL, MILLIONAIRE, or MISSIONAL MILLIONAIRE have any trademark significance. In response to Question 1 in the January 2020 Response, Applicant responded “No.”

• In Question 2 of the July 2019 Action the Examining Attorney asked whether MISSIONAL, MILLIONAIRE, or MISSIONAL MILLIONAIRE have any significance in the relevant trade or industry. In response to Question 2 in the January 2020 Response, Applicant responded “No.”

As to whether any of the goods and services are about or related to a millionaire that is

missional (Information Request Question 4 of the July 2019 Action), Applicant responded, in the

January 2020 Response: “The goods are authored by and could appeal to someone who is a

millionaire, or aspires to be a millionaire, and someone could potentially consider the subject

matter religious in some aspects in a very broad sense, however thought or imagination would be

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required to arrive at that conclusion. Applicant adopted the mark to be source-indicating and to

relate to someone doing something with purpose.”

The website materials attached to the Final Action (Attach. 1-17), demonstrate precisely

what Applicant said about having “adopted the mark to be source-indicating and to relate to

someone doing something with purpose.” In particular:

Attachment # Source Quote

Attachment 1 www.churchboytomillionaire.com HELPING OTHERS LIBERATE THEIR MILLIONAIRE MINDSET FOR MAXIMUM IMPACT

Attachment 2 www.churchboytomillionaire.com In 2009, Doug Wood was 65 pounds overweight, buried in $200,000 in personal and business debt, and on the brink of suicide.

Church Boy To Millionaire is his story of how he liberated the millionaire within himself to find a life of abundance. Best of all, it’s a life guide for everyone who wants to the same.

For those who want to TRANSFORM their lives . . . What it takes to level up and live above the line of mediocrity. And how to shift from a broke mindset to an abundance mindset.

Attachment 3 www.churchboytomillionaire.com They imagine a world where people live and express the riches within, rather than purely pursue the riches without.

Attachment 5 www.massivemomentumtour.com EMPOWERING PEOPLE

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TO LIVE ON PURPOSE

Attachment 6 www.massivemomentumtour.com OUR MISSION

Empowering people to live on purpose by creating abundance in their life, family, and finances

Attachment 7 www.massivemomentumtour.com Each life-changing night will share singular purpose across the United States: sparking massive momentum to help people in their purpose, finances, families, marriages, and whatever matters most to them.

Attachment 10 www.amazon.com... In his motivational book, he shares exactly what an average guy like him did to lose the debt, the weight, and overcome depression to change his life forever.

How to shift from a “broke” mindset to an “abundance” mindset.

Why our purpose has everything to do with our profit.

Why business is our ministry. [highlighted by the Examining Attorney]

Indisputably, the Examining Attorney’s evidence supports that Applicant is on a mission to help

people liberate their “millionaire mindset,” which Applicant frames in view of living a life of

abundance. See id. While there is specific mention to weight loss, debt, business, suicide, etc.,

Applicant does not expressly mention religion in any context, other than the title of his Church

Boy to Millionaire book and inclusion of the word “church” in the URL for the site. In terms of

wealth, Applicant speaks of a millionaire mindset, transformation above mediocrity, and that a

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millionaire is someone living with abundance, or richness. Exactly as Applicant indicated,

Applicant is on a mission to help people change their lives to lead lives of abundance.

Accordingly, MISSIONAL, as indicated, has no significant association with a religious mission,

as shown in the dictionary definition adopted by the Examining Attorney and in the cited

registrations (Final Action, Attach. 18-21), and accordingly the term is not descriptive of

Applicant’s goods and services. Even the amazon.com reviews included by the Examining

Attorney (Final Action, Attach. 14-16) predominantly mention the lay message that Applicant

conveys. In no way is a religious connotation the central message of Applicant’s goods and

services, although candidly and as responded, there is a faith-based component at some level, but

it does not have the significance the Examining Attorney suggests. Moreover, even the Examining

Attorney’s proffered definition for “missional” (July 2019 Action, Attach. 1) discusses the type of

non-religious usage of the term made by Applicant.

As with “missional,” Applicant’s uses demonstrate that “millionaire” is meant to convey a

life of abundance, someone reaching for better circumstances than they presently enjoy; someone

endeavoring to help people find what means the most to them. While Applicant is a self-described

millionaire, as indicated in the Information Response, and while the life coaching services could

be conducted by a millionaire (such as Applicant or another person Applicant might engage), or

be delivered to an audience of millionaires (or simply those who want to be millionaires), they are

more significantly directed to someone who wants to live a life of abundance, as indicated.

Accordingly, there is no immediate association between “millionaire,” as in the Examining

Attorney’s definition of the word and Applicant’s goods and services and, accordingly, the term

is not merely descriptive. And in any event, the sheer magnitude of the possibility of meanings

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for “millionaire” in this context demonstrate the type of multi-stage reasoning process which

precludes the immediacy necessary for holding a mark merely descriptive.

As regards MISSIONAL MILLIONAIRE, the Examining Attorney has entirely failed to

make a case that the term has any particular meaning, much less one which renders the mark as-a-

whole merely descriptive such that it must be refused. The only attempt in the Final Action to

discuss the mark as-a-whole occurs in this passage:

The previously attached dictionary definitions define MISSIONAL as “relating to or connected to a religious mission” and MILLIONAIRE as “[a] person whose wealth amounts to at least a million dollars, pounds, or the equivalent in other currency.” The applicant’s identification states that the subject matter of the books are in the field of faith-based coaching and include memoirs. Therefore, the term MISSIONAL is merely descriptive in relation to the faith based books. Moreover, the memoirs are presumed to include information about a millionaire that is missional. The website evidence shows that the goods are likely about a millionaire that is missional because the website, and response, states that the author is a millionaire and the website at least implies that the goods are missional in nature because they are related to a religious viewpoint. The applicant’s existing book (attached) is presumably in the same general subject matter and states in the description that “[w]hy our business IS our ministry.”

This is simply wrong, as the evidence and chart above indicate. In no way does the website

evidence show that “goods are missional in nature because they are related to a religious

viewpoint.” Further, the Examining Attorney appears to completely misapprehend the final line

in the passage. Business is their ministry, not religion. The Examining Attorney’s own definition

of “missional” accounts for this meaning in mainstream media, particularly Forbes, a publication

about finance, not religion. Applicant primarily uses the term for non-faith based goods and

services and uses the individual components on the other websites to express meaning contrary to

those suggested by the Examining Attorney, namely someone acting with purpose to help others

lead a life of abundance. And although the Examining Attorney has looked to these other websites

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to make the case for mere descriptiveness on the proffered definitions, the showing fails, and

indeed supports registration rather than refusal.

In particular, the Examining Attorney cites no dictionary definitions for the unitary term

MISSIONAL MILLIONAIRE and the definitions supplied for the individual components, as

discussed above, fail to demonstrate mere descriptiveness as it would be understood to one who

has knowledge of Applicant’s goods (printed material) and services (life coaching/motivational

speaking):

The question is not whether someone presented only with the mark could guess what the goods are, but “whether someone who knows what the goods and[/or] services are will understand the mark to convey information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Mueller Sports. Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018). In this case, the proposed mark, as shown by the evidence, immediately describes the subject matter of the applicant’s faith based books and memoirs. Therefore, the applicant’s argument does not obviate the refusal.

(Final Action.) Once again, the Examining Attorney is making statements that are directly

contrary the evidence of record. Here, the proposed mark, as shown by the evidence, describes

books and memoirs directed to self-improvement and financial gain, not faith, at least not as a

significant feature. Additionally, the Examining Attorney cites no third-party use of the combined

term MISSIONAL MILLIONAIRE, no commonly understood meaning for the term, and no need

for competitors to use the term. Compare the cases cited by the Examining Attorney in which a

significant amount of evidence regarding the mark under examination was adduced. In re Mueller

Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (identifying significant use of applied-

for mark in the athletic industry); In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB

2002) (reviewing substantial uses of SMART in association with animated processes); In re The

Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012)

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(identifying competent examples of usage and looking to other registrations); and Inst. Nat’l des

Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196

(Fed. Cir. 1992) (discussing substantial evidence of use of term by third parties in descriptive and

geographic sense). The Examining Attorney has not produced any of this type of evidence. The

Examining Attorney likewise cites no basis in a trade or industry for use of the term. Compare In

re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (discussing significant

understanding in the relevant trade for “concurrent” as a descriptor of a particular type of operating

system). Accordingly, this case presents very different facts from the cases cited by, and relied

upon, the Examining Attorney. There is no evidence to support refusal here, even if there was in

the cited cases.

The only “evidence” the Examining Attorney does provide is websites for different marks

which show that Applicant uses the terms “mission” and “millionaire” as indicated in the

Information Request and in a manner that does not support a case for mere descriptiveness based

on the proffered meanings of the terms. In other words, the content is not principally religious or

for or by a millionaire, whether in book form or life coaching. And indeed, unlike in In re Brown-

Forman Corp., 81 USPQ2d 1284, 1287 (TTAB 2006), cited by the Examining Attorney as

supporting refusal, the evidence of record here establishes that missional is modifying millionaire,

thus forming a unitary term for which Applicant should not even be required to disclaim a portion,

much less the entirety of the mark as the refusal would indicate. Of course, there are a host of

additional reasons why neither term should be required to be disclaimed here and why the mark

should be allowed to register.

While website evidence may serve a purpose and properly be considered, as the Examining

Attorney noted in the Final Refusal, it should bear some relationship to the mark at issue and when

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it leads the examining attorney away from a given refusal, the examining attorney should be led

toward allowance of the mark, not wholesale refusal.

E. The Examining Attorney Improperly Dissected Applicant’s Mark

Applicant challenged the Examining Attorney for improperly dissecting the mark in the

January 2020 Response. In the Final Action, the Examining Attorney, rejecting the challenge

stated “a trademark examining attorney may consider the significance of each element separately

in the course of evaluating the mark as a whole,” citing DuoProSS Meditech Cop. v. Inviro Med.

Devices, Ltd., 695 F.3d 1247, 1253, 103 USPQ2d 1753, 1756-57 (Fed. Cir. 2012). That case was

critical of the approach the Examining Attorney took here.

Other than citing cases indicating that an examining attorney is permitted to look at the

significance of each term, the Examining Attorney, even when called out for dissection, still failed

to consider the mark-as-a-whole. Merely stating “the proposed mark was refused on the basis of

the proposed mark as a whole as supported by the evidence” does not counteract dissection. “The

Board, to be sure, may ascertain the meaning and weight of each of the components that makes up

the mark. The Board, however, ultimately must consider the mark as a whole and do so in the

context of the goods or services at issue. The Board failed to do so here.” DuoPro, 103 USPQ2d

at 1253 (citations omitted). This is particularly true where, as here, the only evidence is that the

Applicant had an intention that was not descriptive as the Examining Attorney set forth or

supported by the evidence the Examining Attorney brought to bear.

F. Descriptive Components Can Produce a Non-Descriptive Composite

Trademarks are more than the sum of their parts. See 2 MCCARTHY § 11:26 (5th ed.)

While Applicant vigorously disputes that the Examining Attorney has made a case for mere

descriptiveness for even the components “missional” and “millionaire,” had the Examining

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Attorney done so, it would not have ended the inquiry. “[T]he commercial impression of a

composite mark may be arbitrary or suggestive even though its separate parts are descriptive.”

Assoc. of Coop. Members, Inc. v. Farmland Indus., Inc., 684 F.2d 1134, 216 USPQ 361 (5th Cir.

1982), cert. denied, 460 U.S. 1038 (1983), quoted with approval in Taco Cabana Int’l, Inc. v. Two

Pesos, Inc., 932 F.2d 1113, 19 USPQ2d 1253, 1258 (5th Cir. 1991), aff’d, 505 U.S. 763 (1992)

(stating combination of descriptive elements of trade dress can itself be inherently distinctive; “the

existence of descriptive elements does not eliminate the possibility of inherent distinctiveness in

the trade dress as a whole.”). See also California Cooler, Inc. v. Loretto Winery, Ltd., 774 F.2d

1451, 1455, 227 USPQ 808, 810 (9th Cir. 1985) (CALIFORNIA COOLER “is a composite term

and its validity is not judged by an examination of its parts. Rather, the validity of a trademark is

to be determined by viewing the trademark as-a-whole. . . . Thus, the composite may become a

distinguishing mark even though its component parts individually cannot.”).

Where combined terms, even if descriptive in a different context, are used in a manner that

is not descriptive, then the composite mark as-a-whole is not descriptive. See TMEP 1209.03(d).

While “missional” has a certain meaning in the context of religious services, as set forth in the

applied references U.S. Trademark Reg. No. 4,816,030 for MISSIONAL MARKETPLACE

SUMMIT #GREATERWORK for “religious and spiritual services . . .” and U.S. Trademark Reg.

No. 5,829,619 for MISSIONAL INTELLIGENCE for “Christian ministry services,” it has no such

meaning when associated with Applicant’s goods and services, as set forth above. (See Final

Action, Attach. 18-21.) As indicated in the Information Request, and as further supported by the

Examining Attorney’s website evidence, Applicant uses “mission” to refer to someone on a

mission to help others make positive life changes. As can be seen from Applicant’s personal story

discussed therein, Applicant’s mission is multi-faceted, including weight loss, financial recovery,

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and suicide prevention. Similarly, while “millionaire” may have a certain known meaning when

used in conjunction with persons of great wealth, it has a different connotation when viewed as a

term of aspiration or abundance, as used by Applicant.

G. Applicant’s Mark is a Unitary Mark Entitled to Registration

As used by Applicant, MISSIONAL MILLIONAIRE is a unitary term. TMEP 1209.03(d).

Missional is modifying millionaire (with a twist), and accordingly, the two terms evoke a new and

unique commercial impression—someone acting with purpose to help others live a life of

abundance. Unitary phrases are ones which create “a commercial impression separate and apart

from any unregistrable component.” TMEP 1213.05. The test for unitariness is whether “the

elements are so integrated or merged together that they cannot be regarded as separable.” See id.

Here, because MISSIONAL MILLIONAIRE is read together as a single unit and creates a single

and distinct impression, it is unitary. “The examining attorney should exercise discretion in

determining whether a mark or portion of a mark is unitary, in which case a disclaimer of a

nondistinctive component must not be required.” TMEP 1213.05 (emphasis added).

According to TMEP 1213.05(b)(iv), an unregistrable unitary phrase or slogan is one which

is generic, descriptive or merely informational. Common examples are laudatory phrases or

ordinary statements used in a trade. See, e.g., In re Boston Beer Co. L.P., 198 F.3d 1370, 53

USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA for beer and ale); In re

Remington Prods. Inc., 3 USPQ2d 1714 (TTAB 1987) (PROUDLY MADE IN USA for electric

shavers); In re Carvel Corp., 223 USPQ 65 (TTAB 1984) (AMERICA’S FRESHEST ICE

CREAM for flavored ices); In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984). Here,

MISSIONAL MILLIONAIRE is not generic, nor does the Examining Attorney suggests that it is.

It is not merely informational. It is not laudatory. It is not an ordinary statement used in trade.

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And indeed, as set forth above, it is not merely descriptive of Applicant’s goods and services, at

least not in the immediate and significant way the imagination test requires.

In refusing the mark in its entirety, rather than requiring disclaimer of a portion of the mark,

the Examining Attorney takes the position that the mark, as-a-whole, is descriptive and must be

refused. However, while life coaching can include a faith-based component, that is not the only

component, and in Applicant’s case, in viewing the evidence of record, it is not a primary or

significant component. (Final Action, Attach. 1-17.) Indeed, of the evidence the Examining

Attorney cites as originating with Applicant, none discuss religion; rather what is discussed is the

general concept of self-improvement across all areas of one’s life. Additionally, as regards

“millionaire” while Applicant has indicated that Applicant is a millionaire, and that an audience

member/reader or coach could be a millionaire, Applicant’s purpose is to offer life coaching and

printed materials to help others embrace a life of abundance, or richness, with a mission to rise

above mediocrity. This evidence, cited by the Examining Attorney, does not relate the definition

the Examining Attorney provided for the component parts of the unitary phrase with Applicant’s

goods and services in a merely descriptive way.

Accordingly, the only evidence of record, Applicant’s response to the Information Request

and the Examining Attorney’s evidence from websites, demonstrate that there is no case for mere

descriptiveness, and indeed, no case for establishing a significant association, or that significant

mental pause is not required to make the connection the Examining Attorney suggests as opposed

to the one identified by Applicant. Applicant’s mark is entitled to register without any disclaimer.

“If the matter that comprises the mark or relevant portion of the mark is unitary, no disclaimer of

an element, whether descriptive, generic, or otherwise, is required.” TMEP 1213.05 (citing Dena

Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991).).

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H. Applicant’s Mark Employs Double Entendre in a Manner that Negates Descriptiveness

A designation will be treated as a double entendre only if both meanings are readily

apparent from the mark itself. Where the Examining Attorney gets it wrong, is that the evidence

of record is not faith-based as argued, and the Examining Attorney’s own proffered definition

demonstrates common usage that is not so limited. Both the “missional” portion of the mark and

the “millionaire” portion employ double entendre. See TMEP 1213.05(c). While Applicant

adopted the “missional” term to suggest someone purposeful in doing something, the Examining

Attorney’s suggestion of a religious component demonstrates that the mark is susceptible to

multiple interpretations. Applicant’s intention is supported not only in Applicant’s response to the

Information Request, but also from the usage of the definition proffered by the Examining

Attorney and the website evidence attached in the Final Action. Similarly, for “millionaire” the

Examining Attorney provides a definition relating to wealth, while the evidence cited by the

Examining Attorney in the Final Action website materials shows use of the term for abundance,

in addition to literal wealth. When someone must stop and think about the relationship between

the multiple meanings for a mark and its relationship to the goods and services, the time required

to do so cuts away from the immediacy required for mere descriptiveness.

While the separate components employ double entendre, the mark as-a-whole does as well,

placing Applicant’s mark closer to those where registration was allowed than the cases cited by

the Examining Attorney. See, for e.g. In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382

(C.C.P.A. 1968) (SUGAR & SPICE held not merely descriptive of bakery products); In re

Shutts,217 USPQ 363 (TTAB 1983) (SNO-RAKE held not merely descriptive of a snow removal

hand tool); In re Nat’l Tea Co., 144 USPQ 286, 1965 WL 7345 (TTAB 1965) (NO BONES

ABOUT IT held not descriptive of fresh pre-cooked ham, noting the “double connotation.”);

Sweetarts v. Sunline, Inc., 380 F.2d 923, 154 USPQ 459 (8th Cir. 1967) (SWEETARTS candy

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held nondescriptive); In re Del. Punch Co., 186 USPQ 63 (TTAB 1975) (THE SOFT PUNCH for

non-alcoholic soft drinks held not descriptive.); In re Tea & Sympathy, Inc., 88 USPQ2d 1062

(TTAB 2008) (THE FARMACY for stores services selling natural herbs held not merely

descriptive because it is a double entendre play on “the pharmacy” and “the farm”); In re Kraft,

218 USPQ 571 (TTAB 1983) (reversing refusal to register LIGHT ‘N LIVELY without disclaimer

for reduced calorie mayonnaise).

Additionally, as in Colonial Stores and Kraft, Applicant’s alliterative term MISSIONAL

MILLIONAIRE, provides additional weight to its non-descriptiveness, by incorporating the type

of rhyming/alliterative pattern that contributes to a finding the mark is a registrable unitary phrase.

See TMEP 1213.05(e) (citing Kraft).

I. Applicant’s Mark Enjoys an Incongruous Meaning

Incongruity can be a strong indicator of suggestiveness because the incongruity is what

catches one’s attention. For example, the mark ROACH MOTEL for an insect trap was held not

to be descriptive. See Am. Home Prods. Corp. v. Johnson Chem. Co., Inc., 589 F.2d 103, 106, 200

USPQ 417 (2d Cir. 1978) (“While roaches may live in some motels against the will of the owners,

motels are surely not built for roaches to live in. Hence the mark is fanciful in conception.”); see

also In re Tennis in the Round, Inc., 199 USPQ 496, 1978 WL 21243 (TTAB 1978) (TENNIS IN

THE ROUND held not descriptive of a special kind of tennis facility; “This association of

applicant’s marks with the phrase ‘theater-in-the-round’ creates an incongruity because applicant’s

tennis facilities are not in fact at all analogous to those used in a ‘theater-in-the-round’; that is,

applicant’s facilities do not involve a tennis court in the middle of an auditorium (or in the middle

of an arrangement of stands) with an audience seated on all sides of the court”).

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Applicant’s mark is incongruous because as the Examining Attorney indicates, “missional”

means “relating to or connected to a religious mission” and the registrations cited in the Final

Action (Attach. 18-21) confirm this meaning insofar as they are offered for religious and spiritual

services and ministry services. The applied definition for “millionaire” is someone who has a

million dollars or its equivalent in wealth. Accordingly, the term itself combines religious or

spiritual services with great wealth, in a way that is contrary to the commonly understood notions

of both of those terms. Missions are associated with religious-based services for the poor, while

millionaires are traditionally seeking to make money for themselves. Therefore, the bizarre or

incongruent meaning of MISSIONAL MILLIONAIRE also entitles it to registration.

J. There is No Per Se Rule that Titles of Printed Materials are Descriptive

The Examining Attorney cites a number of cases in an apparent suggestion that marks

employing terms with defined meanings for magazines or printed material are merely descriptive

and either unregistrable or registrable only on the supplemental register. These cases are factually

distinguishable. For example, Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782

F.2d 987, 228 USPQ 528 (Fed. Cir. 1986), does not support denial of registration here. The case

involved a petition to cancel a registration for the magazine FIRE CHIEF about firefighting. The

TTAB rejected the mark as generic and the Federal Circuit reversed finding that the mark was at

least merely descriptive. The FIRE CHIEF mark lacks the salient features of the MISSIONAL

MILLIONAIRE mark. For example, the mark did not employ incongruity or double-entendre.

FIRE CHIEF is itself a defined term with an established meaning that immediately relates to the

goods and services and the intended audience for the same, firefighters. Similarly, In re Taylor &

Francis [Publishers] Inc., 55 USPQ2d 1213, 1215 (TTAB 2000), refused registration to the mark

PSYCHOLOGY PRESS where the applicant was a publishing establishment and there was no

other meaning or significance to the relevance purchasing public other than the defined term. The

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same cannot be said here. In re Waverly Inc., 27 USPQ2d 162) (TTAB 1993), involved a refusal

to register MEDICINE for a periodic journal. Applicant’s mark is not a single defined term with

an understood dictionary definition that relates to the goods and services. In re Women’s Publ’g

Co., 23 USPQ2d 1876 (TTAB 1992), involved the mark DECORATING DIGEST for a magazine

about decorating. Despite much evidence, which is not the case here, showing the mere

descriptiveness of the component parts for the goods and services, the evidence of record showed

that the primary significance was still source-indicating. In re Oriental Daily News, Inc., 230

USPQ 637 (TTAB 1986), involved application of the doctrine of equivalents to refuse registration

to Chinese characters which literally translated to ORIENTAL DAILY NEWS for news

publications directed to Asian readers. All of these cases are distinguishable from Applicant’s

mark and the facts here, and none supports refusal of MISSIONAL MILLIONAIRE.

CONCLUSION

While the Examining Attorney finds that there is no doubt and refuses registration, the

Examining Attorney is respectfully mistaken. The Examining Attorney has failed to make a prima

facie showing that MISSIONAL MILLIONAIRE is merely descriptive of Applicant’s goods and

services and the evidence of record shows that MISSIONAL MILLIONAIRE is not merely

descriptive. While Applicant believes this is a clear case of an improper refusal, to the extent any

doubt exists, precedent requires resolution in favor of Applicant. See In re Merrill Lynch, Pierce,

Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1144 (Fed. Cir. 1987). Accordingly,

Applicant requests the refusal to register be reversed, and the Examining Attorney be ordered to

approve Applicant’s mark for publication without further delay.