Attorneys at Law ®
Erik M. Pelton* PO Box 100637 Tel 703.525.8009 * NJ DC Bar
Benjamin D. Pelton** Arlington, VA 22210 Fax 703.997.5349 ** VA DC & NY Bar
of counsel

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

October 12, 2009

Linda E. Blohm
Trademark Examining Attorney
Law Office 110
United States Patent and Trademark Office

RE: Serial No: 77750095
Mark: AFFIRMATION MEDITATION
Applicant: Lyndell Carey
Office Action Of: September 3, 2009

APPLICANT’S RESPONSE TO OFFICE ACTION

The following is the response of the Applicant, Lyndell Carey, by Counsel, to the Office
Action sent via email on September 3, 2009, by Examining Attorney Linda E. Blohm.

DESCRIPTIVENESS REFUSAL
The Examining Attorney has refused registration of the propo
proposed
sed mark pursuant to
Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), on the grounds that the mark merely
describes Applicant’s goods. For the following reasons, Applicant respectfully disagrees with the
findings and requests that the Examining Atto
Attorney
rney reconsider the statutory refusal and allow
registration of Applicant’s mark.

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function,
feature, purpose or use of the specified good or service. See In re Gyulay,, 820
8 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987). By contrast, a suggestive mark is one that, when applied to the
goods or services at issue, requires imagination, thought, or perception as to the nature of the
goods or services. See In re Shutts,
Shutts 217 USPQ 363 (TTAB 1983).

The question of whether a particular mark is descriptive must be reviewed in relation to
the identified goods, and in view of the meaning of the mark to the relevant public. See In re
Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); see also In re Colonial
Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 385 (CCPA 1968) (mark SUGAR & SPICE held
not descriptive of baked goods, as to the relevant public, the mark as a whole would conjure an
image of the nursery rhyme phrase “sugar and spice and everything nice, that’s what little girls
are made of” rather than immediately describing baked goods).

Here, the Examining Attorney relied on a GOOGLE® search as evidence that the public
may already be exposed to the term AFFIRMATION MEDITATION and understood one
meaning therein. This evidence is not sufficient to determine the use of the term by the public.1
The search result examples do not necessarily relate to consulting services, nor do they
necessarily originate from the U.S. Therefore, because the search results do not provide
sufficient context, they have little or no probative value.

The web pages which the Examining Attorney included are not sufficient to determine
the use of the term by the public nor do they relate to consulting services. The first website
example is example is a site titled “Acqyr: Strategies Compatible with Your Life… Looking for
Instant Inspiration? Click here!” The page provides a link to a youtube video consisting of an
audio tape recording to provide a set of meditative affirmations complimented by soft music. The
second website example is blogtalkradio.com. This provides a link to the online radio show
where users can join other listeners in meditation using affirmations to help with the process. The
third website example is lulu.com where users can purchase a meditation cd titled “Manifesting
Sales.” The cd is intended to assist users to manifest their financial desires into reality and help
change their mindset to be more positive in order to help with sales. The fourth and final website
example is a forum for personal development. On the provided page is an entry titled
“Affirmation Meditation” in which the writer describes the technique of using statements of truth
for personal development in order for future manifestation of a positive reality. These are
examples of group meditation experiences, meditation items for sale, or general information
about meditation techniques. None of these examples relate to consulting services.

1
See, McCarthy on Trademarks and Unfair Competition § 20:126.50
“Search engine results which provide little context to determine how a term is actually used on
the Web page listed on the result is generally not sufficient to determine the nature of use of a
term by the public.”);
Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., 84 U.S.P.Q.2d 1856, 2007 WL 2422997 (T.T.A.B. 2007) (Where
a GOOGLE hit-list search summary was found not self-authenticating and was stricken from evidence.).
In contrast, Applicant does not directly provide MEDITATION services. MEDITATION
is defined as “continued or extended thought; reflection; contemplation.” Exhibit A. Applicant
uses Buddhist philosophies to create his own concepts and tools to merely encourage clients to
think positively. Applicant’s services are self-help, and consist of conveying ideas about the
power of positive thought unlike the cds which the Examining Attorney noted which provide
soundtrack during a specific time of daily reflection. This creates a disconnection between the
mark AFFIRMATION MEDITATION and the relevant public’s understanding of the services
Applicant provides.

In addition, the expression AFFIRMATION MEDITATION as a whole has a rhythm and
cadence which encourages those encountering it to perceive it as a whole. The sound pattern of a
mark, in particular the use of terms which have the same number of syllables which end in the
same sound and stress the same syllables, can cause the mark to create a unitary whole. TMEP
§1213.05(e). When this happens the mark may be regarded as unitary and individual elements
should not be disclaimed. See In re Kraft, Inc., 218 USPQ 571 (TTAB 1983) (LIGHT N’
LIVELY found to be a unitary term not subject to disclaimer).

Further, a mark comprising a combination of merely descriptive components is
suggestive, and therefore registerable, if the combination of the terms has an incongruous
meaning as applied to the goods. See In re Colonial Stores, Inc.; see also In re Shutts. Here, the
combination of the terms AFFIRMATION and MEDITATION creates an incongruity that
requires a prospective client to make a leap of intuition to understand the nature of Applicant’s
services. AFFIRMATION is defined as “the act or an instance of affirming; state of being
affirmed.” See definitions attached in Exhibit B. The term AFFIRMATION therefore suggests a
state of being. This definition mirrors the definition provided by the Examining Attorney in the
Response to Office Action. In contrast, the term ‘affirmative’ is defined as “positive…
something that affirms or asserts.” Exhibit C. As used in Applicant’s mark, AFFIRMATION
does not refer to a positive attitude which clients use and hone during a meditation session with
Applicant. Rather, AFFIRMATION is a reference to a state of being which clients should focus
on having in their daily life. A client’s personal AFFIRMATION is the goal of the Applicant’s
services, but while MEDITATION is one of the services provided, it does not alone create self-
AFFIRMATION for clients. The Examining Attorney also highlights a definition of
MEDITATION which states “a discourse intended to express its author’s reflections or to guide
others in contemplation.” The second definition under this same example is “The act or process
of meditating.” Therefore MEDITATION is an act one engages in which includes a discourse
intended to help with inner reflection. This discourse is not a normal discussion but rather has a
specific mode. The Examining Attorney’s evidence also provides examples of the type of
discourse involved in MEDITATION. Based on the cited examples of radio MEDITATION and
the CDs for sale, MEDITATION often refers to one-sided, or inner discourse. This is not a
service comparable to that which Applicant offers.

The USPTO routinely allows registration of marks featuring the words AFFIRMATION
or MEDITATION. There are currently 40 U.S. trademark registrations for meditation services or
meditation education and training related goods containing the term MEDITATION. These
registrations (copies enclosed attached as Exhibit D) include at least 9 third-party registrations
which contain a combination of a descriptive word and the word MEDITATION on the principal
register, without disclaimer or a 2(f) limitation:
3241862 MINDMENDER MEDITATION
3213116 SUPREME MEDITATION
3037571 SHOONYA MEDITATION
2836381 MOVING MEDITATION
2741762 VISUAL MEDITATION
3571686 THE DEVI CLINIC VIBRATIONAL HEALING, MEDITATION,
YOGA AND WHOLISTIC HEALTH
2939271 UNIVERSAL BODHI MEDITATION
2883597 SAHAJ MARG MEDITATION FOR HUMAN INTEGRATION
2799869 SAHAJ MARG MEDITATION FOR HUMAN INTEGRATION

Finally, the Examining Attorney did not establish a prima facie case that the mark is
merely descriptive as used with Applicant’s goods. The Examining Attorney bears the burden of
presenting a prima facie case that a mark is merely descriptive before the Examining Attorney
can properly reject the mark under 15 U.S.C. section 1052(e)(1). In re Microsoft Corp., 68
USPQ2d 1195, 1200-1201 (TTAB 2003). To carry this burden, the Examining Attorney must
present substantial evidence that the mark is merely descriptive. Id. A “mere scintilla” of
evidence of descriptive use is not sufficient. Id. Absent substantial evidence, the Examining
Attorney’s argument that the mark is merely descriptive does not constitute a prima facie case
that the mark is merely descriptive, and is not sufficient to sustain a rejection of the mark.

Even when doubts exist as to whether a term is descriptive as applied to the goods or
services for which registration is sought, it is the practice of the Trademark Trial and Appeal
Board to resolve those doubts in favor of the Applicant, and allow the mark to register. In re
Grand Metropolitan Foodservice, Inc., 30 USPQ2d 1974 (TTAB 1994). Therefore, Applicant
respectfully requests that the statutory refusal pursuant to Trademark Act §2(e) be withdrawn.

Applicant has responded to all issues raised in the Office Action. If any further
information or response is required, please contact Applicant’s attorney. The attorney may be
reached by telephone at 703-525-8009.

Respectfully submitted,

Erik M. Pelton, Esq.
Attorney for Applicant

List of Exhibits

A: Dictionary.reference.com, Meditation
http://dictionary.reference.com/browse/meditation

B: Dictionary.reference.com, Affirmation
http://dictionary.reference.com/browse/affirmation

C: Dictionary.reference.com, Affirmative
http://dictionary.reference.com/browse/affirmative

D: USPTO Registration Certifications