Arthur Weissmann

Trademark Trial and Appeal Board

Jun 26, 2013

No. 85183458 (T.T.A.B. Jun. 26, 2013)

Mailed: 6/26/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Arthur Weissmann
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Serial No. 85183458
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Donna L. Mirman of Gottlieb, Rackman & Reisman for Arthur
Weissmann.

Robert Clark, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Quinn, Bergsman and Wolfson,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Arthur Weissmann filed, on November 23, 2010, an intent-to-
use application to register the mark shown below

(“CALORIE” disclaimed) for services ultimately identified as
follows:
Providing advertising services for the food,
beverage, health, fitness and sporting goods
industries and to government agencies and
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
S. N. 85183458

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programs regarding health, nutrition and
wellness; promoting the charitable services
of others, namely, providing individuals
with information for the purpose of making
donations to charities and philanthropic
organizations; promotional services, namely,
promoting the goods and services of others
by means of providing online gift cards and
gift certificates (in International Class
35);

Providing on-line chat rooms and electronic
bulletin boards for transmission of messages
among users in the fields of nutritional
sustainability, nutrition, diet, weight
loss, diet planning, and lifestyle wellness;
chat room services for social networking (in
International Class 38);

Educational services, namely, conducting
seminars, conferences, and workshops in the
fields of health, nutrition and wellness for
the food, beverage, health, fitness and
sporting goods industries; educational
services, namely conducting classes,
seminars and workshops for the public
regarding food, beverage, health, fitness
and sporting goods industries; providing a
website featuring information on fitness;
providing links to websites of others
featuring fitness; providing news and
information in the field of fitness; (in
International Class 41);

Creating and maintaining blogs for others
(in International Class 42); and

Consulting services in the fields of health,
wellness and nutrition; providing a website
featuring information in the fields of
nutrition, diet, weight loss, diet planning,
and lifestyle wellness; providing links to
websites of others featuring nutrition,
diet, weight loss, diet planning, and
lifestyle awareness; proving news and
information in the fields of nutrition,
nutritional sustainability, diet, fitness,
S. N. 85183458

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health and wellness (in International Class
44).

The trademark examining attorney refused registration based
on applicant’s failure to comply with a requirement to disclaim
the word FOOTPRINT apart from the mark as used in connection
with the services. The examining attorney maintains that the
term CALORIE FOOTPRINT is merely descriptive under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), when used
in connection with applicant’s services.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant contends that although it has disclaimed the term
CALORIE, the remaining term FOOTPRINT is not merely descriptive
and, thus, need not be disclaimed: “Taken as a whole, the
wording CALORIE FOOTPRINT or at the very least FOOTPRINT as
applied to applicant’s services is at least suggestive, and not
merely descriptive.” (Brief, p. 8). Applicant asserts that the
term does not immediately impart with any degree of
particularity information about applicant’s services. In
support of its position, applicant submitted five third-party
registrations.
The examining attorney contends that the term “calorie
footprint” is merely descriptive because “the subject matter of
the services includes promotion of healthy nutrition by reducing
S. N. 85183458

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the calorie footprint in food and encouraging the food and
beverage industries to reduce their calorie footprint.” (Brief,
p. 7). In support of the refusal the examining attorney
introduced dictionary definitions of “calorie” and “footprint”;
excerpts of articles retrieved from the LEXIS/NEXIS database;
excerpts of third-party websites; and copies of third-party
registrations.
The examining attorney may require an applicant to disclaim
an unregistrable component of a mark otherwise registrable.
Section 6 of the Trademark Act, 15 U.S.C. § 1056. This section
of the statute was amended in 1962 to allow the exercise of
greater discretion by examining attorneys in determining whether
a disclaimer is necessary. See TMEP § 1213.01(a) (2013).
Merely descriptive or generic terms are unregistrable under
Section 2(e)(1), and therefore are subject to disclaimer if the
mark is otherwise registrable. Failure to comply with a
disclaimer requirement is grounds for refusal of registration.
See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987); and In re Box Solutions Corp., 79 USPQ2d 1953
(TTAB 2006). See TMEP § 1213.01(b).
A mark is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the goods
S. N. 85183458

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or services. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828 (TTAB 2007); and In re Abcor Development, 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). A mark need not
immediately convey an idea of each and every specific feature of
the applicant’s goods or services in order to be considered
merely descriptive; rather, it is sufficient that the mark
describes one significant attribute, function or property of the
goods or services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a mark is merely descriptive is determined not in the
abstract, but in relation to the goods or services for which
registration is sought, the context in which it is being used on
or in connection with the goods or services, and the possible
significance that the mark would have to the average purchaser
of the goods or services because of the manner of its use. In
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is
settled that “[t]he question is not whether someone presented
with only the mark could guess what the goods or services are.
Rather, the question is whether someone who knows what the goods
or services are will understand the mark to convey information
about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17
(TTAB 2002).
When two or more merely descriptive terms are combined, the
determination of whether the composite mark also has a merely
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descriptive significance turns on the question of whether the
combination of terms evokes a new and unique 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, e.g., In re Petroglyph Games, Inc., 91 USPQ2d
1332 (TTAB 2009) (BATTLECAM is merely descriptive of computer
game software); In re Tower Tech Inc., 64 USPQ2d at 1317
(SMARTTOWER is merely descriptive of commercial and industrial
cooling towers); and In re Sun Microsystems Inc., 59 USPQ2d 1084
(TTAB 2001) (AGENTBEANS is merely descriptive of computer
programs for use in development and deployment of application
programs).
During prosecution of the application, applicant indicated
that it did not have any documentation covering the nature of
the services inasmuch as the application is based on an
intention to use the mark. Applicant did, however, offer the
following remarks on its prospective services:
Applicant intends to use analogous tools
from the environmental economy which deal
with limiting carbon emissions and
preserving natural resources to achieve
environmental sustainability in order to
work on existing and looming health
problems. Such tools include the use of
terms extrapolated from the language of
environmental sustainability, such as the
term CALORIE FOOTPRINT, which is derived
from CARBON FOOTPRINT.
S. N. 85183458

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[I]n the realm of “nutritional
sustainability” it is the food and beverage
industries, especially soft drink and fast
food manufacturers, which are often the
subject of debate as to regulation and
taxation, while companies providing
healthcare and wellness services are
encouraged through incentives. The services
offered under the mark CALORIE FOOTPRINT are
intended to educate the public and encourage
responsible voluntary actions by all
involved industries (such as food and
beverage companies, healthcare providers and
insurance companies) utilizing similar
principles as already exist for
environmental sustainability.

The advertising, website, social networking
and consulting services under the CALORIE
FOOTPRINT mark are to be used to educate and
inform the public about healthy nutrition
and healthy lifestyles, support and supply a
platform for activism in this area, as well
as provide access to institutions,
organizations and corporations which are
able to facilitate these goals. The
services to be offered under this mark also
are intended to increase public awareness of
the efforts of the food and beverage
industries to foster healthy lifestyles, as
part of their corporate social
responsibility. To this end, applicant
intends to partner with a wide variety of
these companies, as well as with not-for-
profit organizations.

(Response to Office action, Apr. 2, 2012).
The term “calorie” means, in relevant part, “a unit
equivalent to the large calorie expressing heat-producing or
energy-producing value in food when oxidized in the body; an
amount of food having an energy-producing value of one large
calorie.” (m-w.com); “this unit is used as a measure of the
S. N. 85183458

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energy released by food as it is digested by the human body.”
(The American Heritage Science Dictionary (2005).1 The term
“footprint” is defined, in relevant part, as “a marked effect,
impression, or impact; something that identifies, a genetic
footprint.” (m-w.com).
The term “calorie footprint” identifies the impact or
effect of calories. As shown by the evidence of record, there
is an effort by those within the food and beverage industry to
reduce the “calorie footprint” of certain foods and beverages,
thereby allowing consumers to meet their nutritional goals.
Obviously, the goal is to reduce one’s “calorie footprint,”
thereby encouraging consumers to make healthier, informed food
and drink choices.
As indicated by applicant’s remarks about the nature of its
prospective services, the term “calorie footprint” is derived
from the commonly recognized environmental term “carbon
footprint.” The examining attorney introduced evidence to show
that the term “calorie footprint” has taken on a meaning in the
context of health, wellness, diet and nutrition. The following
are examples:

1 The request in the examining attorney’s brief to take judicial notice
of this dictionary definition is granted. In re Hotels.com, L.P., 87
USPQ2d 1100, 1103 (TTAB 2007), aff’d, 573 F.3d 1300, 91 USPQ2d 1532
(Fed. Cir. 2009); and In re Thomas White Int’l. Ltd., 106 USPQ2d 1158,
1160 n.1 (TTAB 2013).
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Michele Obama: huge chain to reduce calorie
“footprint”
Darden restaurants...has promised to reduce
their calorie and sodium footprint by 20
percent over the next 10 years...
(blog.sfgate.com)

PureCircle Stevia Helping Reduce USA
‘Calorie Footprint:’ Half a Trillion So Far
and Counting...
(prnewswire.com)

Blueberries are a nutritional powerhouse
with a small calorie footprint.
(livestrong.com)

To offset our calorie footprint we decided
to walk some of the way home...
(getjealous.com)

Darden Restaurants...announced Thursday that
it will cut the “calorie footprint” and
sodium levels in its meals and create new
kids’ menus to comply with the first lady’s
public health objectives....“Much like a
carbon footprint, we are looking at our
calorie footprint as a measurement of total
impact,” said Clarence Otis, Darden’s CEO.
“That means we will reduce the number of
calories across our entire portfolio of
brands by [reformulating], resizing,
removing certain items, and introducing new,
calorie conscious, flavorful options.”
(dailycaller.com)

We agree with the examining attorney’s assessment that
CALORIE FOOTPRINT in the proposed mark is a combination of
merely descriptive terms that, when combined, form a merely
descriptive mark as a whole. The terminology merely indicates
that applicant’s services feature information about the “calorie
footprint” of foods and beverages. The combination of merely
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descriptive terms does not evoke a new and unique commercial
impression. Rather, each component of the composite terminology
retains its merely descriptive significance in relation to
applicant’s services, thus resulting in a composite that is
itself merely descriptive. DuoProSS Meditech Corp. v. Inviro
Medical Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753 (Fed. Cir.
2012) (SNAP SIMPLY SAFER is merely descriptive for “medical
devices, namely, cannulae; medical, hypodermic, aspiration and
injection needles; medical, hypodermic, aspiration and injection
syringes”); and In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM is merely descriptive
of computer software for managing a database of records that
could include patents for tracking the status of the records by
means of the Internet). No imagination is required by a
prospective purchaser or user to discern that applicant’s
services feature information about the “calorie footprint” of
food and beverages, that is, the impact of calories on
consumers.
Also of record are several third-party registrations
submitted by applicant and the examining attorney.
The third-party registrations furnished by the examining
attorney show disclaimers of the term “calorie” apart from the
marks for health related goods and/or services. Given
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applicant’s disclaimer of “calorie,” we view this evidence as
superfluous.
Applicant, for its part, relied upon three third-party
registrations of marks comprising, in part, the term FOOTPRINT.2
In each instance, the term is not disclaimed. Third-party
registrations are not conclusive on the issue of mere
descriptiveness. Each case must stand on its own merits, and a
mark that is merely descriptive must not be registered on the
Principal Register simply because other such marks appear on the
register. In re International Taste Inc., 53 USPQ2d 1604, 1606
(TTAB 2000); and In re Scholastic Testing Service, Inc., 196
USPQ 517, 519 (TTAB 1977). See In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)(“Even if some
prior registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such prior
registrations does not bind the board or this court.”). In any
event, this evidence is entitled to little probative value, and
is clearly outweighed by the evidence showing that the term

2 Applicant introduced these three registrations during prosecution.
Two additional registrations were attached to the appeal brief;
applicant indicates that the registrations issued after the appeal was
filed. The examining attorney neither objected to this evidence nor
considered it in his brief. Accordingly, the two additional
registrations (Ex. B) are not properly of record, and we have not
considered them in making our decision. See TBMP § 1207.03 (2013).
We hasten to add, however, that even if the registrations were
considered, they are not persuasive of a different result for the
reason discussed above.
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“calorie footprint” is merely descriptive when used in
connection with services related to diet and nutrition.
We find that the term “footprint” in applicant’s mark is
merely descriptive for applicant’s services and, therefore, a
disclaimer of the entire term “calorie footprint” is required.
Decision: The refusal to register is affirmed. However,
if applicant submits the required disclaimer within 30 days of
the mailing date of this decision, the decision will be set
aside, and the application passed to publication. Trademark
Rule 2.142(g). If the disclaimer is submitted, the wording will
read as follows: “No claim is made to the exclusive right to
use ‘Calorie Footprint’ apart from the mark as shown.” See TMEP
§ 1213.08(a)(i) (2013).