A divided panel of the Board affirmed a refusal to register the mark NO EXCUSES DIET for “Books in the field of food in health and wellness,” on the ground that the phrase does not function as a trademark because it is merely the title of a single book. Judge Adlin dissented, finding that as a result of applicant’s “association creating activities under the marks NO EXCUSES and THE NO EXCUSES DIET,” these marks identify a set of literary and other works on the same subject.” In re Jonathan Roche Fitness Ventures LLCC, Serial No. 85981686 (April 15, 2015) [nor precedential].
Judge Kuczma, writing for the panel majority, observed that the title of a single book “describes the book, and is not associated in the public mind with the publisher, printer of bookseller.” However, if the title identifies a series of works, it performs a trademark function and is registrable.
Reviewing applicant’s specimen of use and its submitted evidence, the majority found it clear the proposed mark “only identifies the title of a single book.” The additional evidence submitted by applicant comprised advertising for materials in its book, including workouts, articles and other items available at applicant’s website or on YouTube, made available on the same webpage that offers the book. That use, the majority found, does not constitute use of NO EXCUSES DIET as a trademark for books (though it may be service mark use).
Given the identification of goods – i.e., books – the panel majority affirmed the refusal.
Dissent: Judge Adlin called the majority’s conception of “book,” “titles,” and “series” as too narrow. He would find that THE NO EXCUSES DIET (sic!) is associated in the public mind with the book’s source. It is not required that the works in a series all be in the same format, or that the marks be used without any variation.
Although applicant offers only one book under the title NO EXCUSES DIET, that is not its only use of the mark (or closely related marks). The ancillary materials referencing the book, in combination, form a “system or process to ‘crank up your energy fitness and weight loss.'” The evidence supports a finding that NO EXCUSES is in fact applicant’s “primary mark” (DIET being disclaimed).
Judge Adlin concluded that applicant is engaged in a number of “association creating activities” under the marks NO EXCUSES and THE NO EXCUSES DIET, and as a result these marks identify a set of works on the same subject, namely, nutrition, health and wellness.