IP Law Daily, TRADEMARK—TTAB: ‘Stories of the Prophets’ registration cancelled as merely descriptive, (Oct 31, 2025)

By Steven Melendez

A TTAB panel considered evidence the trademark was used for numerous unrelated religious books and remained merely distinctive.

A Trademark Trial and Appeal Board (TTAB) panel cancelled a registration for the mark STORIES OF THE PROPHETS for “religious books,” finding that the mark was merely descriptive and lacked acquired distinctiveness (Paramus Publishing, Inc. v. Noaha, No. 92079706 (T.T.A.B. Oct. 23, 2025)).

Respondent Noaha owns Principal Register Registration No. 6325687 for the mark STORIES OF THE PROPHETS, in standard characters, for “religious books” in International Class 16. The Examining Attorney issued a nonfinal Office Action refusing registration on the ground of mere descriptiveness under Trademark Act Section 2(e)(1), prompting the applicant to assert a claim of acquired distinctiveness under Section 2(f), based on substantially exclusive and continuous use since January 8, 1980. The registration was issued on April 20, 2021.

Paramus Publishing, Inc., petitioned for the cancellation of the trademark, on the ground of mere descriptiveness and lack of acquired distinctiveness. Paramus Publishing cited evidence of a variety of publications using the phrase “stories of the prophets” in their titles and provided a declaration from an expert on Islam who said the term has been used in the religion since the sixth century.

Entitlement to cancellation proceeding. Someone who reasonably believes they are or will be damaged by a trademark’s registration may petition for its cancellation under the Lanham Act, according to the ruling.

In this case, Paramus Publishing’s vice president asserted that the company has used the phrase “stories of the prophets” in connection with some of its publications since 2009, including a children’s book titled “Stories of the Prophets in the Holy Qur’an.” The company filed a notice of reliance including two books featuring the phrase, including a children’s book and a coloring book.

One of its books was sold on Amazon, the company said, but the book was taken off of Amazon’s marketplace when Noaha filed an infringement claim with the retailer. Noah argued that Paramus Publishing and other publishers have “plagiarized” some of its principal’s “stories, titles, and ideas” and alleged that Paramus Publishing’s book is still available through Walmart and other retailers.

But the TTAB panel agreed that the registration allows Noaha to assert exclusive rights to the name, which it could continue to assert against Paramus Publishing. The company’s interest is “within the zone of interests protected by statute” and it has “a reasonable belief in damage proximately caused by” the registration, according to the ruling, entitling Paramus Publishing to file a petition for cancellation.

Acquired distinctiveness. Noaha claimed acquired distinctiveness in its trademark application based on “its purported substantially exclusive and continuous use of the mark in commerce for at least five years,” which was necessary to show the mark is more than merely descriptive.

In a cancellation proceeding, the registration is presumed valid, meaning Paramus Publishing has the burden of disproving the claim of acquired distinctiveness by a preponderance of the evidence. The company produced a declaration from its vice president pointing to its own books and other published work with “stories of the prophets” in their titles, and other religious publishers and vendors provided similar examples. The company also pointed to a Wikipedia entry for the Arabic term “Qisas al-Anbiya,” translated as “stories of the prophets,” and YouTube playlists with “Stories of the Prophets” in the title.’

The TTAB panel found that Paramus Publishing made a “prima facie case” that Noaha has not made exclusive use of the term, shifting the burden of proof to Noaha to defend the registration.

But, according to the ruling, Noaha’s only evidence was in its notice of reliance, which failed to contain testimony under oath. “A notice of reliance is not the proper vessel for the submission of testimony,” according to the ruling.

Noaha argued in the notice that its principal is descended from a 13th century writer, Ibn Kathir, who “wrote the original Stories of the Prophets,” which the TTAB panel found may be an attempt to extend its period of exclusive use back to that era. But the company failed to provide evidence of such lineage, and Paramus Publishing provided testimony from a religious scholar claiming under oath that the term’s use traces back even further, to Islam’s origins in the 6th century. Additionally, according to the ruling, other publishers and writers have based “stories of the prophets” on Ibn Kathir’s texts, which Noaha acknowledges in its own filings.

The TTAB panel thus granted the cancellation after finding that the evidence and Noaha’s own filings “overwhelmingly establish” that the use of the trademark has not been “substantially inclusive,” meaning it remains merely descriptive of the goods sold.

The Case is Cancellation No. 92079706.

Judge: Heasley, D.

Attorneys: Enes Hajdarpasic (Onal Gallant & Partners) for Paramus Publishing, Inc. Noaha, pro se.

Companies: Paramus Publishing, Inc.

Cases: Trademark USPTO