Kabbalah Yoga Inc. v. Audi Gozlan

This Opinion is Not a
Precedent of the TTAB
Mailed: December 17, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Kabbalah Yoga Inc.
v.
Audi Gozlan
_____

Cancellation No. 92056167

_____

Jeannette Watkin of JWatkin Law PA
for Kabbalah Yoga Inc.

Audi Gozlan, pro se.1
_____

Before Kuhlke, Lykos and Heasley,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

1 On September 22, 2014, Mr. Gozlan revoked the power of attorney appointing legal counsel to
represent him in this proceeding. 37 TTABVUE.
Citations to the record throughout the decision include references to publicly available documents
on TTABVUE, the Board’s online docketing system. The number preceding “TTABVUE”
corresponds to the docket entry number; the number(s) following “TTABVUE” refer to the page
number(s) of that particular docket entry. See, e.g., Turdin v. Trilobite, Ltd., 109 USPQ2d 1473,
1476 n.6 (TTAB 2014).
Cancellation No. 92056167

On September 13, 2012, Kabbalah Yoga Inc. (“Petitioner”), a Florida corporation,

petitioned to cancel the following registrations owned by Audi Gozlan (“Respondent”), a

Canadian citizen residing in Montreal, Quebec:

Registration No. 3950368 for the standard character mark
KABALAH YOGA for “yoga instruction” in International Class
41; registered on the Principal Register based on a claim of
acquired distinctiveness under Section 2(f) of the Trademark
Act, 15 U.S.C. § 1052(f) with YOGA disclaimed;2

Registration No. 3912867 for the composite mark displayed
below

for “yoga instruction” in International Class 41; registered on
the Principal Register based on a claim of acquired
distinctiveness in part under Section 2(f) as to KABALAH
YOGA with YOGA disclaimed;3

2Registered April 26, 2011, based on an application filed July 26, 2010; Section 8 “Declaration of
Use in Commerce” accepted.
3 Registered February 1, 2011, based on an application filed November 30, 2009; Section 8
“Declaration of Use in Commerce” accepted. The description of the mark is as follows: “The mark
consists of the wording ‘KABALAH YOGA’ above the Hebrew letter alef. In front of this letter is a
man in a Yoga pose.” Color is not claimed as a feature of the mark. According to the translation
statement, “[t]he Hebrew character in the mark transliterates to ‘ALEF’ and this means
‘ONENESS’ in English.” The likeness or portrait in the mark identifies a living individual whose
consent is of record.

–2–
Cancellation No. 92056167

Registration No. 3140290 for the standard character mark
AUDI GOZLAN’S KABALAH YOGA: A GUIDE TO PHYSICAL
MOVEMENT AND MEDITATION FOR MIND, BODY AND
SOUL for “series of non-fiction books and brochures on Jewish
mysticism and yoga that feature a system of meditations and
body postures for relaxation, health, and exercise for mind, body
and soul” in International Class 16; registered on the Principal
Register with KABALAH YOGA disclaimed;4

Registration No. 3497059 for the standard character mark
KABALAH YOGA for “yoga mats, yoga exercise blocks and yoga
exercise belts” in International Class 28, registered on the
Principal Register based on a claim of acquired distinctiveness
under Section 2(f) with YOGA disclaimed.5

As set forth in the Petition to Cancel, Petitioner asserts a claim of likelihood of

confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based in part on

the following allegations:

6. Since long prior to Registrant’s claimed date(s) of first
use and filing date(s) for the “KABALAH YOGA” marks,
Petitioner adopted the trademark “KABBALAH YOGA” for use
in connection with yoga instruction, classes and seminars;
related teaching materials such as brochures and booklets; and
a series of DVDs in connection with yoga instruction. Since its
adoption, Petitioner has continuously used the “KABBALAH
YOGA” mark in interstate commerce and in foreign commerce
for and in connection with such goods and services and has not
abandoned this mark.

4 Registered September 5, 2006, based on an application filed December 2, 2004; renewed.
5 Cancelled on April 3, 2015 for failure to file a Section 8 “Declaration of Use in Commerce.” On
May 25, 2015, the Board, noting that Respondent permitted his registration to be cancelled during
the course of this proceeding, ordered Respondent to show cause why such cancellation should not
be treated as the equivalent of a surrender of the registration without Petitioner’s consent. In
response, Respondent indicated that his failure to file a Section 8 affidavit was “a simple
oversight.” 51 TTABVUE. In accordance with Board practice, the Board did not enter judgment
against Respondent and allowed Petitioner time to indicate whether it would like the cancellation
to move forward with regard to the cancelled registration. 54 TTABVUE. On August 26, 2015,
Petitioner stated that it did not want the cancellation dismissed as moot as to the cancelled
registration but rather sought judgment. 55 TTABVUE.

–3–
Cancellation No. 92056167

…

8. Petitioner has expended considerable time, money, and
effort in promoting its goods and services under the
“KABBALAH YOGA” mark. The strength of the “KABBALAH
YOGA” mark has continuously grown such that Petitioner has
established valuable goodwill in the “KABBALAH YOGA”
mark.6

In addition, Petitioner alleges a claim of “partial abandonment.”7 Insofar as this claim

was not argued in Petitioner’s brief, it is deemed waived. See Alcatraz Media, Inc. v.

Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1753 (TTAB 2013) (petitioner’s

pleaded descriptiveness and geographical descriptiveness claims not argued in brief

deemed waived), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Swatch AG (Swatch SA)

(Swatch Ltd.) v. M.Z. Berger & Co., 108 USPQ2d 1463, 1465 n.3 (TTAB 2013) (petitioner’s

pleaded claims not argued in its brief deemed waived), aff’d, 787 F.3d 1368, 114 USPQ2d

1892 (Fed. Cir. 2015).

Respondent filed an answer on December 24, 2012, in which he denied the salient

allegations in the Petition for Cancellation.

The case has been presented to us for a decision on the merits. Although Respondent

introduced evidence at trial, he did not file a brief. “The filing of a brief on the case is

optional, not mandatory, for a party in the position of defendant.” TRADEMARK TRIAL AND

APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 801.02(b) (2018) (citing Trademark

Rule 2.128(a)(1), 37 C.F.R. § 2.128(a)(1)). Petitioner did file a brief but failed to follow the

Board’s well-established practice of including the TTABVUE docket entries and page

6 Petition to Cancel, 1 TTABVUE 6-7.
7 Petition to Cancel ¶¶ 14-18; 1 TTABVUE 8-11.

–4–
Cancellation No. 92056167

numbers when citing to evidence in the record. Instead, Petitioner cited to the evidentiary

record by document title and page number or simply by exhibit number or letter with no

corresponding page number, making it time-consuming for the Board to ascertain the

precise location of evidentiary materials. Petitioner is directed to the guidance set forth in

Turdin v. Trilobite, 109 USPQ2d at 1476 n.6 and TBMP §§ 106.03, 801.01, and is urged to

adhere to this practice when appearing in future cases before the Board.8

As plaintiff in this proceeding, Petitioner bears the burden of establishing its standing

and Section 2(d) claim by a preponderance of the evidence. In reaching our decision, we

have not considered any statements made by Petitioner in its brief that are unsupported

by evidence in the record. See Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1725 n.7 (TTAB

2010). Similarly, we have not considered any allegations in the pleadings unsupported by

trial evidence.

I. The Record

The record includes the pleadings and, by operation of Trademark Rule 2.122, 37

C.F.R. § 2.122, the registration files for each of Respondent’s marks.

Petitioner submitted the oral testimony deposition of its founder Yvonne Dayan, with

exhibits, as well as the oral testimony deposition of Ms. Dayan’s daughter, Anabelle

Watkin. In addition, Petitioner submitted the oral testimony depositions of two volunteers

for Petitioner, Roberto Fiallos and Dilia Rodriguez, with a single exhibit attached to the

8 In addition, Petitioner mistakenly states in its main brief that it filed a “Rebuttal Brief” on
January 23, 2018 at 96 TTABVUE. This submission was filed during Petitioner’s 15-day rebuttal
testimony period. A rebuttal or reply brief, as it is referred to under Board practice, if filed, is filed
only after the close of all testimony periods. Trademark Rule 2.128(a)(1), 37 C.F.R. § 2.128(a)(1).
Petitioner’s submission does not include rebuttal evidence, rather it is a list of evidentiary
objections which Petitioner reiterated in its main brief.

–5–
Cancellation No. 92056167

Fiallos Deposition.9 Lastly Petitioner submitted the deposition of Choi Wong, President of

Caminos, Inc., a “Florida-based international seminar training corporation,”10 along with

a single exhibit.

Respondent submitted the deposition on written questions and cross-examination

questions of himself11 as well as his wife and business partner, Karen Gozlan; his brother,

Eric Gozlan; and his second cousin, Daniel Touzier. He also submitted the deposition on

written questions and cross-examination questions of two friends and business associates,

Arie Corcos and Ariel Cozocaru, as well as a married couple with whom he and his wife

socialize with, Dr. Eli Ben David and Linda Castro a/k/a Linda Ben David.

Neither party submitted evidence under notice of reliance.

II. Evidentiary Issues

Both parties have asserted substantive evidentiary objections. To the extent an

objection has not been specifically addressed below, we have considered the objected-to

evidence, keeping in mind the objections, and have accorded it whatever probative value

it merits. See, e.g. Alcatraz Media, 107 USPQ2d at 1755. We also address in this section

non-conforming evidence.

9Petitioner states that the record includes Respondent’s answers to interrogatories filed on August
26, 2015. See id. This statement is inaccurate. Typically, in order to properly make this evidence
of record, Petitioner would have had to file Respondent’s answers by notice of reliance during its
main testimony period, with a copy of the interrogatory and the answer thereto, as well as a cover
sheet indicating the general relevance of the interrogatory answer and associating it with one or
more issues in the case. See Trademark Rules 2.120(k)(3)(i) and 2.120(g); 37 C.F.R. §§ 2.120(k)(3)(i)
and 2.120(g).
10 Wong Deposition 4:7-10; 69 TTABVUE 5.
11 Petitioner’s amended motion (filed November 23, 2016 at 78 TTABVUE) to take the oral
testimony deposition of each of Respondent’s witnesses was denied as untimely. 85 TTABVUE.

–6–
Cancellation No. 92056167

A. Respondent’s Objections

On December 12, 2002, in accordance with Trademark Rule 2.124(d)(1), 37 C.F.R. §

2.124(d)(1), Respondent filed a notice of objection to certain of Petitioner’s written cross-

examination questions on relevancy grounds.12 Some of the objected-to cross-examination

questions relate to bias and include questions such as “Are you related to Mr. Gouzlan in

any way?”; “Do you attend social events with Mr. Gouzlan’s family i.e. Social gatherings,

Birthdays, anniversaries, etc..?”; and “What kind of compensation have you received for

playing a role in Kabalah Yoga, including but not limited to money, perks, benefits,

etc…”13 Others fall in the category of financial data such as Respondent’s annual net

revenues and profits.14 Respondent’s objections are overruled. Petitioner had a reasonable

basis for serving written cross-examination questions designed to establish bias or solicit

corroborating information regarding Respondent’s use of its registered marks.

B. Petitioner’s Objections

As noted above, Respondent’s witnesses consist of family members, friends, and

business associates. Petitioner objects to the testimony of Respondent’s witnesses on

various grounds, including bias, lack of personal knowledge and hearsay, and moves to

strike portions of such testimony.15 The Board does not ordinarily strike testimony taken

in accordance with the applicable rules on the basis of substantive objections; rather, such

objections are considered by the Board in its evaluation of the probative value of the

12 81 TTABVUE.
13 81 TTABVUE 3-4.
14 81 TTABVUE 12-13.
15 Brief, pp. 22-25; 97 TTABVUE 24-26.

–7–
Cancellation No. 92056167

testimony. Alcatraz Media, 107 USPQ2d at 1755 (citing Krause v. Krause Publ’ns Inc., 76

USPQ2d 1904, 1907 (TTAB 2005) and Marshall Field & Co. v. Mrs. Fields Cookies, 15

USPQ2d 1321, 1326 (TTAB 1992)). See also Bd. of Regents, Univ. of Tex. Sys. v. S. Ill.

Miners, LLC, 110 USPQ2d 1182, 1194 n.19 (TTAB 2014). In accordance with our practice,

we have not stricken any of the objected-to testimony offered by the witnesses. Rather, we

have considered the probative value of each witness’ testimony in light of Petitioner’s

specific objections. See Alcatraz Media, 107 USPQ2d at 1755. We hasten to add that

Petitioner’s own witnesses consist of the family members, friends, and business associates

of Petitioner’s founder, Ms. Dayan. As such, we have weighed the probative value of their

testimony against any potential bias based on each witness’ relationship with Ms. Dayan.

Id.

C. Foreign Language Materials

Exhibit Nos. 3, 4 and 12 submitted with Ms. Dayan’s testimony deposition are either

partially or entirely in Spanish. No English language translation was provided. “Board

proceedings are conducted in English. If a party intends to rely upon any submissions that

are in a language other than English, the party should also file a translation of the

submissions. If a translation is not filed, the submissions may not be considered.” TBMP

§ 104. Accordingly, the Board does not consider evidence submitted in a foreign language

without a signed translation. See Swiss Watch Int’l Inc. v. Federation of the Swiss Watch

Indus., 101 USPQ2d 1731, 1734 n.8 (TTAB 2012) (printed publications submitted in a

foreign language without translations have no probative value); Johnson & Johnson v.

Obschestvo s ogranitchennoy; otvetstvennostiu “WDS”, 95 USPQ2d 1567, 1570 n.3 (TTAB

2010) (if a party intends to rely at trial on business records in a foreign language, it must

–8–
Cancellation No. 92056167

provide a translation); Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1405

(TTAB 1998) (a proffered excerpt from a newspaper or periodical is lacking in foundation

and, thus, is not admissible as evidence to the extent that it is unintelligible because it is

in a language other than English). In view thereof, the portions of Exhibit Nos. 3, 4 and

12 in Spanish to Ms. Dayan’s deposition are inadmissible and have not been considered.

D. Hearsay Exhibits to the Dayan Deposition

Petitioner submitted a notarized declaration from Gillian Ruma, a member of the

Mystic Point management team dated March 12, 2013 as Exhibit No. 2 to Ms. Dayan’s

deposition; two “To Whom It May Concern” letters, one from Diani Azout, head of special

events of the Michael-Ann Ruseel Jewish Community Center dated March 14, 2103 and

the other from Rabbi Allan Tuffs of Temple Beth El Hollywood dated August 21, 2012 as

Exhibit No. 6; and a second letter from Rabbi Tuffs to Ms. Dayan dated October 25, 1999

as Exhibit No. 7. This evidence constitutes hearsay and is only admissible for what its

shows on its face, not for the truth of the matters asserted therein. See Fed. R. Evid.

801(c)16 and TBMP § 707.01 (“[W]here ordinarily inadmissible hearsay evidence is

admitted into evidence without objection, it may be considered for whatever probative

value the finder of fact chooses to give it.”).

III. Standing

Standing is a threshold issue that must be proven by the plaintiff in every inter partes

case. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,

16“Hearsay” means a statement that “the declarant does not make while testifying at the current
trial or hearing, and a party offers in evidence to prove the truth of the matter asserted in the
statement.”

–9–
Cancellation No. 92056167

1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). Our primary reviewing court,

the U.S. Court of Appeals for the Federal Circuit, has enunciated a liberal threshold for

determining standing, namely that “[a] petitioner is authorized by statute to seek

cancellation of a mark where it has both a real interest in the proceeding as well as a

reasonable basis for its belief of damage.” Id. at 1062 (citing Ritchie v. Simpson, 170 F.3d

1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)). A “real interest” is a “direct and

personal stake” in the outcome of the proceeding. Ritchie v. Simpson, 50 USPQ2d at 1026.

Petitioner did not squarely address the issue of standing in its brief. We can discern

Petitioner’s standing, however, from the testimony of its founder, Ms. Dayan, and

corroborating documentary evidence that Ms. Dayan “officially launched” the use of the

KABBALAH YOGA mark on September 20, 1991 by providing free yoga classes in the

swimming pool area to the residents of the Mystic Point development in Aventura,

Florida;17 that on October 23, 1993, Ms. Dayan did “a short, little workshop” in Panama

City, Florida and additional seminars later that year and in 1994;18 that in 1998, Ms.

Dayan offered a five class yoga instruction series at the Jewish Community Center in

North Miami Beach, Florida;19 that on August 17, 2005, Ms. Dayan conducted “a whole

workshop in a book store called Books and Books” in Coral Gables, Florida;20 that Ms.

Dayan “still teach[es] Kabbalah Yoga to date”;21 that Ms. Dayan created and offered for

17 Dayan Deposition 8:25-11:17; 71 TTABVUE 11-14 & Ex. 1 (flyer); 71 TTABVUE 41.
18 Id. at 13:6-21; 71 TTABVUE 16.
19 Id. at 15:6-16:15; 71 TTABVUE 18-19 & Ex. 5 (flyer); 71 TTABVUE 45.
20 Id. at 17:23-19:4; 71 TTABVUE 20-22 & Ex. 5 (flyer); 71 TTABVUE 45.
21 Id. at 35:2-4; 71 TTABVUE 38.

– – 10 – –
Cancellation No. 92056167

sale a series of three DVDs bearing the mark KABBALAH YOGA in 2004-2005;22 and that

various vendors, including Amazon.com, offer for sale Petitioner’s DVDs. Petitioner has

asserted a plausible likelihood of confusion claim against each of Respondent’s registered

marks comprised, in whole or in part of KABBALAH YOGA, for yoga instruction and goods

collateral to those services. Thus, Petitioner has demonstrated that it possesses a real

interest in this proceeding beyond that of a mere intermeddler, and a reasonable basis for

its belief of damage, thereby proving its standing. See Giersch v. Scripps Networks Inc., 90

USPQ2d 1020, 1022 (TTAB 2009) (common-law use sufficient to establish standing).23

IV. Section 2(d) Claim

We turn now to the substantive claim before us. To prevail on a likelihood of confusion

claim brought under Trademark Act Section 2(d), a party must first prove that it owns “a

mark registered in the Patent and Trademark Office, or a mark or trade name previously

used in the United States … and not abandoned ….” Trademark Act Section 2(d), 15 U.S.C.

§ 1052(d). Trademark Act Section 2(d), 15 U.S.C. § 1052(d); see also Cunningham v. Laser

Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000); Otto Roth & Co., Inc. v.

Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Life Zone Inc. v.

Middleman Grp. Inc., 87 USPQ2d 1953, 1959 (TTAB 2008). As noted above, Petitioner has

22Id. at 26:7-31:17, 71 TTABVUE 29 & Ex. 13 (DVD entitled “Yvonne Dayan, Kabbalah Yoga,
Fountain of Youth”); Ex. 14 (DVD entitled “Kabbalah Yoga, Bringing the Light Down, by Yvonne
Dayan” & Ex. 15 (DVD entitled “Kabbalah Yoga, Restoring Your Soul to Wholeness”); 71
TTABVUE 62-65.
23 Although Petitioner pleaded ownership of a pending application for the mark KABBALAH
YOGA and referred to this application in its brief, because Petitioner failed to make the application
and its file history of record, the application cannot form a basis for Petitioner’s standing to bring
this case. See Empresa Cubana del Tabaco, 111 USPQ2d at 1062; Saddlesprings Inc. v Mad Croc
Brands Inc., 104 USPQ2d 1948, 1950 (TTAB 2012).

– – 11 – –
Cancellation No. 92056167

not pleaded ownership of a federal registration; rather Petitioner relies upon common law

rights in the term KABBALAH YOGA.24 Accordingly, Petitioner must prove ownership

and prior use, under common law, of a distinctive, inherently or otherwise, mark in

connection with “yoga instruction, classes and seminars; related teaching materials such

as brochures and booklets; and a series of DVDs in connection with yoga instruction,” its

pleaded goods and services. Id. See Otto Roth, 209 USPQ at 43 (plaintiff must establish

proprietary rights, either inherent in or by acquisition of secondary meaning in, pleaded

common-law mark). See also Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64

USPQ2d 1375, 1378 (Fed. Cir. 2002) (to establish priority, a plaintiff must show previous

proprietary rights in a mark that produces a likelihood of confusion); Hoover Co. v. Royal

Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720, 1721 (Fed. Cir. 2001) (because trade

identity rights arise when a term is distinctive, petitioner must prove that its mark is

distinctive either inherently or through acquired distinctiveness) and RxD Media, LLC v.

IP Application Dev. LLC, 125 USPQ2d 1801, 1808 (TTAB 2018) (applying “the rule of Otto

Roth”). Any assertion by Petitioner of common law rights in KABBALAH YOGA must be

accompanied by evidence of a proprietary interest in the mark or secondary meaning. See

Otto Roth, 209 USPQ at 43. See also Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107

USPQ2d 1424, 1429 (TTAB 2013) (“Because Petitioner’s registration for the mark GOTT

issued on the Supplemental Register, while Petitioner need not establish priority of use of

its mark GOTT to prevail on its claim of likelihood of confusion with respect to the mark,

24 Petition for Cancellation ¶ 6; 1 TTABVUE 7.

– – 12 – –
Cancellation No. 92056167

Petitioner must still establish ownership of a proprietary interest in the mark by

competent evidence.”) (internal citations omitted).

Petitioner’s brief is silent as to whether its pleaded mark KABBALAH YOGA is

inherently distinctive, and if not, whether Petitioner has acquired distinctiveness through

secondary meaning the term.25 A threshold question then is whether Petitioner’s mark is

inherently distinctive or merely descriptive. See RxD Media, 125 USPQ2d at 1810. A term

is “merely descriptive” within the meaning of Section 2(e)(1) of the Trademark Act, 15

U.S.C. § 1052(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

AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). See also In re TriVita, Inc.,

783 F.3d 872, 114 USPQ2d 1574 (Fed. Cir. 2015). Descriptiveness must be evaluated “in

relation to the particular goods [or services] for which registration is sought, the context

in which it is being used, and the possible significance that the term would have to the

average purchaser of the goods [or services] because of the manner of its use or intended

use.” In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (quoting In re Bayer

AG, 82 USPQ2d at 1831).

25With the exception of the extra letter “B,” Petitioner’s pleaded mark is identical to and may be
pronounced in the same manner as Respondent’s mark KABALAH YOGA for “yoga instruction”
which is registered on the Principal Register based on a claim of acquired distinctiveness under
Section 2(f) of the Trademark Act. Under The Cold War Museum, Inc. v. Cold War Air Museum,
Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009), Respondent’s reliance on Section 2(f)
during prosecution presumes that its mark is merely descriptive, not inherently distinctive. We
cannot, however, impute Respondent’s admission Petitioner.

– – 13 – –
Cancellation No. 92056167

Based on dictionary definitions and the testimony of Petitioner’s own witnesses, it is

clear that Petitioner’s pleaded common law mark KABBALAH YOGA, is at a minimum,

merely descriptive of a particular type of yoga integrating Kabbalah, the mystical

teachings of the Jewish religion. According to the online version of Merriam-Webster,

“Kabbalah” is defined as “a medieval and modern system of Jewish theosophy, mysticism,

and thaumaturgy marked by belief in creation through emanation and a cipher method of

interpreting Scripture”; “yoga” is defined as “a system of physical postures, breathing

techniques, and sometimes meditation derived from Yoga but often practiced

independently especially in Western cultures to promote physical and emotional well-

being.”26 When asked what “Kabbalah Yoga” is, Ms. Dayan replied: “Kabbalah Yoga is the

fusion between the art of yoga movement and the philosophy of the Kabbalah with the

fusion of these two sciences.”27 She further explained that “Kabbalah is the mystical

teachings of the Jewish religion that have been passed down from generation to

generation, and it’s a philosophy that talks about receiving spiritual and practical

knowledge for better living.”28 Petitioner’s other witnesses corroborate this understanding

of the term. For example, Ms. Watkin, Ms. Dayan’s daughter, described “Kabbalah Yoga”

as “a mixture between body movement and Kabbalah … the balance of the mind, body and

26https://www.merriam-webster.com/dictionary. The Board may sua sponte take judicial notice of
“adjudicative facts” i.e. “a fact that is not subject to reasonable dispute.” Fed. R. Evid. 201. See
University of Notre Dame du Lac v. J. C. Gourmet Food Imps. Co., 213 USPQ 594, 596 (TTAB
1982) (Board takes judicial notice of dictionary definitions), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1853
(TTAB 2008).
27 Dayan Deposition 5:5-8; 71 TTABVUE 8.
28 Id. at 5:10-14; 71 TTABVUE 8.

– – 14 – –
Cancellation No. 92056167

spirit.”29 Ms. Rodriguez, a volunteer for Petitioner and attendee of Petitioner’s seminars,

echoed this understanding, stating that “Kabbalah Yoga is the combination of exercise

and Kabbalah.”30 When two or more merely descriptive terms are combined, the

determination of whether the composite mark also has a merely descriptive significance

turns on whether the combination of terms evokes a non-descriptive commercial

impression. If each component retains its merely descriptive significance in relation to the

goods [or services], the combination results in a composite that is itself merely descriptive.

See DuoproSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d

1753 (Fed. Cir. 2012); In re Carlson, 91 USPQ2d 1198 (TTAB 2009); In re Putman Publ’g

Co., 39 USPQ2d 2021 (TTAB 1996). Such is the case here where the combination of the

terms “Kabbalah Yoga” immediately conveys to prospective consumers a characteristic of

Petitioner’s yoga instruction services and seminars as well as the subject matter of any

related teaching materials and DVDs.

Having established that Petitioner’s pleaded mark is not inherently distinctive, we are

now faced with the question of whether Petitioner has shown secondary meaning in the

term KABBALAH YOGA i.e. proprietary rights. Acquired distinctiveness or secondary

meaning “indicate[s] that a mark … ‘has come through use to be uniquely associated with

a specific source.’” Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763, 23 USPQ2d 1081,

1083 n.4 (1992) (internal citation omitted). “To establish previous secondary meaning, a

[party] must show that, in the minds of the public, the primary significance of a … term

29 Watkin Deposition 4:22-5:1; 72 TTABVUE 7-8.
30 Rodriguez Deposition 4:16-18; 70 TTABVUE 7.

– – 15 – –
Cancellation No. 92056167

is to identify the source of the [goods or services] rather than the [goods or services]

themselves.” Id. (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844,

851, 214 USPQ 1 n.11 (1982)). To determine whether a mark has acquired secondary

meaning, we consider advertising expenditures and sales success; length and exclusivity

of use; unsolicited media coverage; copying of the mark by the defendant; and consumer

studies. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,

1729 (Fed. Cir. 2012) (citing In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d

1420 (Fed. Cir. 2005)).

Petitioner argues that it has “expended considerable time, money and effort in

promoting its goods and services under the ‘KABBALAH YOGA’ mark,” and that “[t]he

strength of the ‘KABBALAH YOGA’ mark has continuously grown such that Petitioner

has established valuable goodwill in the ‘KABBALAH YOGA’ mark.”31 Ms. Dayan testified

that she began offering KABBALAH YOGA services in her home in the 1980s; that she

was subsequently invited “to do Kabbalah Yoga in local temples, and in different local,

small programs, … mostly in my home and in other people’s homes;”32 that she “officially

launched” Kabbalah Yoga in 1991;33 and that “a big part of my marketing has been

through word of mouth” as well as through brochures, advertisements in “countless”

publications, “TV shows, Spanish channels,” “many, many radio talk shows along the

years … and as a guest speaker at different events.”34 She further testified that she

31 Brief, p. 8; 97 TTABVUE 9.
32 Dayan Deposition 8:1-8; 71 TTABVUE 11.
33 Id. at 9:2-3; 71 TTABVUE 12 & Ex. 1 (flyer dated September 20, 1991); 71 TTABVUE 41.
34Id. at 9:10-18; 71 TTABVUE 12 & Ex. 1 (Mystic Point flyer dated September 20, 1991) at 71
TTABVUE 41; Ex. 5 (JCC flyer dated 1998) at 71 TTABVUE 45; Ex. 8 (Books & Books flyer dated

– – 16 – –
Cancellation No. 92056167

promotes Petitioner’s KABBALAH YOGA branded DVDs in the “USA, Columbia,

Venezuela, Dominican Republic, Panama City, Panama, Spain, Israel, the UK and

Greece” via pamphlets and magazines such as “Publishers magazines, the Awakening

magazine, and Natural Awakenings;”35 Petitioner’s own website

www.kabbalahyoga.com;36 and online third-party retailers such as Amazon.37 She also

testified that she has written two books “published with legendary Brian Tracy and Steve

Forbes.”38 Ms. Dayan professes to be “the creator of Kabbalah Yoga,”39 and presented

testimony alleging that Respondent “is the person who copied my DVDs,”40 and “is using

my domain, my brand to promote his product… .”41 Respondent in turn counters that it is

Petitioner infringing upon his trademarks and service marks.42

Ms. Dayan’s daughter and volunteer for Petitioner, Ms. Watkin, testified that she has

attended Petitioner’s seminars “plenty of times” at “the chabad dinners we [had] at home”

and “at Peaches.”43 She also testified that she has attended Petitioner’s yoga classes given

by her mother, including “the one at the pool of Mystic Point” in 1991.44 Ms. Rodriguez,

August 5, 2005) at 71 TTABVUE 49-52; Ex. 9 (Borders flyer dated November 2005) at 71
TTABVUE 53; and Ex. 10 (Barry University newsletter dated February 2006) at 71 TTABVUE 54.
35 Id. at 27:6-12; 71 TTABVUE 29.
36 Id. at 29:23-30:7; 71 TTABVUE 32-33.
37 Id. at 30:8-17; 71 TTABVUE 33 & Ex. 16 (printouts from Amazon.com) at 71 TTABVUE 66-69.
38 Id. at 9:18-20; 71 TTABUVE 12.
39 Id. at 4:7-9; 71 TTABVUE 7.
40 Id. at 31:3-4; 71 TTABVUE 34.
41 Id. at 34:25-35:1; 71 TTABVUE 37-38.
42 Gozlan Deposition on Written Questions, Question No. 42 and Answer; 90 TTABVUE 9.
43 Watkin Deposition 5:13-25; 72 TTABVUE 8.
44 Id. at 8:3-10; 72 TTABVUE 11.

– – 17 – –
Cancellation No. 92056167

another volunteer, testified that since 1991, she has attended fifteen of Petitioner’s

seminars.45 Mr. Fiallos, who also volunteers for Petitioner testified to attending “[m]any”

of Petitioner’s seminars … “all [Ms. Dayan] would do” since 1991.46 Ms. Choy, president

of Caminos Inc., the training company that sponsors Petitioner’s seminars, testified that

Petitioner has been offering seminars on an ongoing basis since 1993 at Caminos Center

in Florida as well as other U.S. locations and in Columbia, Venezuela and the Dominican

Republic.47 She also testified that she personally has attended yoga classes offered by

Petitioner at the Yacht Club of Aventura, Florida, the Spa at Mystic Point also located in

Aventura, Florida, and the Gold’s Gym.48

Considering the totality of the evidence, we find that Petitioner failed to establish a

proprietary interest in the term KABBALAH YOGA based on secondary meaning. There

is scant evidence to show that the public associates the term KABBALAH YOGA with

Petitioner’s goods and services. Ms. Dayan, Petitioner’s principal, failed to testify to or

authenticate any specific data regarding annual U.S. advertising expenditures, sales

figures or revenues for Petitioner’s goods and services generated under the KABBALAH

YOGA mark. Petitioner does advertise and offer its DVDs on Amazon; however, the bulk

of Petitioner’s promotional efforts with regard to its yoga classes and seminars are limited

to the state of Florida. While Ms. Dayan’s daughter, two volunteers, and the CEO of the

45 Rodriguez Deposition 5:14-16; 70 TTABVUE 8.
46 Fiallos Deposition 6:22-25; 69 TTABVUE 9.
47 Choy Deposition 7:24-8:2; 68 TTABVUE 8-9.
48Id. at 9:14-20, 10:24-11:8; 68 TTABVUE 10-12. She did not indicate the location of the Gold’s
Gym.

– – 18 – –
Cancellation No. 92056167

company that sponsors Petitioner’s seminars attested to attending Petitioner’s yoga

classes and seminars, we have no data regarding the number of other attendees. As noted

above, media accolades can be an indicator of secondary meaning; however, the record in

this regard is limited as well, with only one admissible example of media recognition in a

foreign magazine with no indication as to the amount of exposure to U.S. consumers. See

Hard Rock Cafe Int’l (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1508 n.6 (TTAB 2000) (article

from a foreign publication not considered where there is no indication as to whether it has

had any exposure in the United States). Likewise, Petitioner’s evidence regarding

advertising and exposure in foreign countries is not relevant here. And Petitioner’s

evidence of use since 1991, standing alone, is insufficient to show secondary meaning given

Respondent’s evidence of concurrent use of a nearly identical mark yoga classes.49

Compare In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015)

(finding evidence of long use insufficient to establish acquired distinctiveness of FISH FRY

PRODUCTS where evidence involved uses of LOUISIANA FISH FRY PRODUCTS) with

Joel Gott Wines, 107 USPQ2d at 1429 (opposer demonstrated a proprietary interest in the

mark GOTT in connection with wine through its actual use dating from 2005, its

significant sales amounting to $73 million and advertising and the unsolicited media

attention directed to GOTT its brand). Ms. Dayan’s allegation of copying on the part of

49Trademark Act Section 2(f) by its terms only applies to the question of registrability, not use. 15
U.S.C. § 1052(f) (“Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of
this section, nothing herein shall prevent the registration of a mark used by the Respondent which
has become distinctive of the Respondent’s goods in commerce.”) (emphasis added). Thus, proof of
substantially exclusive and continuous use of a mark in commerce for five years may only
constitute prima facie evidence of distinctiveness in the context of registrability and not at common
law.

– – 19 – –
Cancellation No. 92056167

Respondent falls short because “[c]opying is only evidence of secondary meaning if the

defendant’s intent in copying is to confuse consumers and pass off his product as the

plaintiff’s.” Stuart Spector Designs Ltd. v. Fender Musical Instruments, 94 USPQ2d 1549,

1572, 1575 (TTAB 2009) (internal citation omitted). While Petitioner has adduced

testimony that a handful of consumers (all of whom are either related to Ms. Dayan or

work with her) associate KABBALAH YOGA with Petitioner, much more evidence is

required to show secondary meaning in the term. After weighing all of the evidence, we

find that Petitioner has failed to demonstrate that consumers perceive KABBALAH YOGA

as a source indicator for Petitioner’s yoga instruction services, classes and seminars,

DVDs, and teaching materials.

In sum, we find that the term KABBALAH YOGA is merely descriptive of Petitioner’s

pleaded goods and services, and that Petitioner has failed to establish that the term has

acquired secondary meaning indicating as Petitioner as their source. Because Petitioner

has not shown by a preponderance of the evidence that it has a proprietary interest in

KABBALAH YOGA, by logical extension it cannot prevail on its Section 2(d) claim.

Accordingly, Petitioner’s Section 2(d) claim is dismissed.

Decision: The petition to cancel is denied.

– – 20 – –