In re Teambonding, Inc.

• Decision Date: 25 September 2017
• Docket Number: 86803594
• Parties: In re TeamBonding, Inc.
• Court: Trademark Trial and Appeal Board

In re TeamBonding, Inc.

No. 86803594

United States Patent and Trademark Office, Trademark Trial and Appeal Board

September 25, 2017

THIS OPINION IS NOT A PRECEDENT OF THE TTAB

Hearing: June 6, 2017

Jeffrey Sonnabend of Sonnabend Law, for TeamBonding, Inc.

Claudia Garcia, Trademark Examining Attorney, Law Office 111 Robert L. Lorenzo, Managing Attorney.

Before Greenbaum, Goodman and Pologeorgis, Administrative Trademark Judges.

OPINION

Greenbaum, Administrative Trademark Judge.

TeamBonding, Inc. ("Applicant") filed an application to register TEAMBONDING (in standard characters) on the Principal Register for "corporate entertainment, educational and training services, namely, motivational and team building presentations, seminars and workshops" in International Class 41.^[1] Applicant claims that the mark has become distinctive of its services in commerce pursuant to Trademark Act Section 2(f), 15 U.S.C. § 1052(f).

The Trademark Examining Attorney has refused registration on the ground that TEAMBONDING is generic under Sections 1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052, 1053, and 1127, and therefore incapable of distinguishing the identified services, and, alternatively, that TEAMBONDING is merely descriptive and Applicant has not demonstrated that it has acquired distinctiveness under Section 2(f).

After the Examining Attorney made the refusals final, Applicant appealed to this Board. Applicant and the Examining Attorney have filed their briefs, and an oral hearing was held on June 6, 2017. We AFFIRM the refusals to register.

I. Evidentiary Issue

Before proceeding to the merits of the refusal, we address an evidentiary matter. Applicant attached to its reply brief a March 31, 2017 declaration from David Goldstein, Applicant's President and CEO. Only evidence filed during examination is timely, Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), and it should not be submitted on appeal. Accordingly, we have given no consideration to Mr. Goldstein's declaration attached to Applicant's reply brief in our determination herein.

II. Genericness

A term is generic if it refers to the class or category of goods or services on or in connection with which it is used. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 U.S.P.Q.2d 1807 (Fed. Cir. 2001) (citing H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528 (Fed. Cir. 1986)). See In re Cordua Rests., Inc., 823 F.3d 594, 118 U.S.P.Q.2d 1632, 1634 (Fed. Cir. 2016); Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 U.S.P.Q.2d 1827 (Fed. Cir. 2015). The test for determining whether a mark is generic is its primary significance to the relevant public. In re. Am. Fertility Soc'y, 188 F.3d 1341, 51 U.S.P.Q.2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 U.S.P.Q.2d 1551 (Fed. Cir. 1991); Marvin Ginn, 228 U.S.P.Q. at 530. Making this determination "involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered … understood by the relevant public primarily to refer to that genus of goods or services?" Marvin Ginn, 228 U.S.P.Q. at 530. The Examining Attorney must establish with "clear evidence" that a proposed mark is generic. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 U.S.P.Q.2d 1262, 1264 (citing Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 U.S.P.Q.2d 1141, 1143 (Fed. Cir. 1987)).

Evidence of the public's understanding of a term may be obtained from "any competent source, such as consumer surveys, dictionaries, newspapers and other publications." Princeton Vanguard, 114 U.S.P.Q.2d at 1830 (quoting In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 U.S.P.Q. 961, 963 (Fed. Cir. 1985) (BUNDT is not registrable for "ring cake mix, " citing numerous cookbook recipes and newspaper articles).

A. The genus of Applicant's services

Because the identification of services in an application defines the scope of rights that will be accorded the owner of any resulting registration under Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), an applicant's identification of services generally defines the genus of the services. See Cordua Rests., 118 U.S.P.Q.2d at 1636 (citing Magic Wand, 19 U.S.P.Q.2d at 1552 ("a proper genericness inquiry focuses on the description of services set forth in the [application or] certificate of registration.")). In this case, the identification of services, "corporate entertainment, educational and training services, namely, motivational and team building presentations, seminars and workshops, " is clear in meaning and is an appropriate expression of the genus of services at issue.

B. Primary Significance of TEAMBUILDING to the Relevant Public

We next consider whether the relevant public understands TEAMBONDING primarily to refer to the genus of the involved services. Cordua Rests., 118 U.S.P.Q.2d at 1637 (quoting In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 92 U.S.P.Q.2d 1682, 1684 (Fed. Cir. 2009)). The "relevant public" for services is limited to actual or potential purchasers of the services. Magic Wand, 19 U.S.P.Q.2d at 1552-53. We agree with the Examining Attorney and find the relevant public are ordinary consumers who are part of any workplace group. There is no evidence or argument to the contrary.

The Examining Attorney maintains that TEAMBONDING identifies "a type of training, event, seminar or workshop where individuals are building bonds, " and that the "public at large across multiple industries" would understand that TEAMBONDING refers to "motivational, team building services." In support of the refusal, the Examining Attorney submitted a number of printouts from the Internet, the most probative of which are summarized below.

1. A January 28, 2014 article by Holly Woolard on the smartmeetings.com website titled "Team Building: Building and Bonding"^[2] asks the reader to "Raise your hand if you know the difference between team building and team bonding. Is there really a difference? It seems reasonable to assume that some bonding will occur during team building activities, but, conversely, bonding alone can hardly be counted on to build a productive, winning team." The article quotes Ms. Comaford, a columnist for Forbes.com and "leadership guru" who has appeared on several cable and television networks:

"Team bonding is an opportunity to build deeper relationships, play and let off steam. Here we are investing in the team's understanding of and connection to one another via a shared experience." … "My preference is that team building and bonding are joined, " Comaford says. "For example, when we train a team in the neuroscience of leadership, participants are all learning new skills to enhance their ability to perform both together and solo. And since we know that connection between human beings fosters improved performance, health, happiness and emotional engagement, we simultaneously incorporate team bonding. Team members bond powerfully when they create safety, belonging and mattering with one another, and when they have an emotionally engaging shared mission, vision and set of values." …

Comaford addresses team bonding in Chapter 2 of [her book], pointing out that the key is creating a safe environment in which team members feel a sense of belonging, that they matter to the team and begin to develop trust in coworkers. "Sometimes bonding is what we need. We've worked hard all day and it's time for R&R."

Comaford typically pushes for a combination of team building and team bonding to help businesses and organizations achieve their ultimate goals. She says this one-two punch is ideal "when you want to design the future together; forge a leadership code of conduct; refine mission, vision and values; or do any sort of learning/brainstorming/creation where helping the team to connect as human beings is essential for a positive business result."

The last paragraph of Ms. Woolard's article discusses "[a]n emotionally charged team-bonding opportunity offered by Songs of Love Experience, which sets up mobile recording studios so groups can create "songs of love" for sick children."

2. A March 17, 2014 post by Lindsay Patton-Carson in the "Course Categories" section of the udemy blog titled "6 Team Bonding Games that are Fun and Productive"^[3] discusses the purpose of team bonding and various team bonding games:

When you're working with a group of people - whether it be at your job, on a sports team, as part of a support group and move - it's important for you to know and trust the people you are working with. Team bonding games can not only strengthen the bonds between you and people you are working with, but they are fun. These activities offer an opportunity to get to know your teammates better, as well as develop trust to make for a stronger team overall.

For effective team bonding, we offer this course that will show you the importance of a team, how to strengthen the relationships within the team, how you can contribute as a leader or follower (depending on your personality) and more.

Under the heading "Team Bonding Games, " the author lists "a few examples of team bonding games that might be successful with your team" including "Two Truths and a Lie" which "is not just for team bonding" and "has important team-building qualities to it. The most important being getting to know your teammates better.", and "The Bad and the Good" which is a "team bonding game [that] helps put things into perspective for anyone who has had something bad happen to them…." The post concludes: "Regardless of working with a team in a workplace, a sport or like-minded group, it is important to know and strengthen the bonds between your teammates. Team...