No. 87200413 (T.T.A.B. Feb. 4, 2019)

BPI Sports

Trademark Trial and Appeal BoardFeb 4, 2019

No. 87200413 (T.T.A.B. Feb. 4, 2019)

This Opinion is not a Precedent of the TTAB Mailed: February 4, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re BPI Sports _____ Serial No. 87200413 _____ Adam C. Underwood and John Carey of Carey Rodriguez Milian Gonya LLP, for BPI Sports. Alicia Collins Edwards, Trademark Examining Attorney, Law Office 115, Daniel Brody, Managing Attorney. _____ Before Cataldo, Adlin and Goodman, Administrative Trademark Judges. Opinion by Goodman, Administrative Trademark Judge: BPI Sports, dba BPI Health (“Applicant”) seeks registration on the Principal Register of the mark BEST AMINO GUMMIES (in standard characters) for “Dietary and nutritional supplements containing amino acids” in International Class 5.1 The Trademark Examining Attorney has refused registration of Applicant’s mark on the ground that it is merely descriptive of the identified goods under Section 2(e)(1) 1 Application Serial No. 87200413 was filed on October 12, 2016, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. Serial No. 87200413 - 2 - of the Trademark Act, 15 U.S.C. § 1052(e)(1). When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. I. Legal Standard Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), prohibits the registration of a mark which, when used on or in connection with the applicant’s goods, is merely descriptive of them. “A term is merely descriptive 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 Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Descriptiveness is analyzed in relation to an applicant’s identified goods, “the context in which the [term] is being used, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use or intended use”; that a term may have other meanings in different contexts is not controlling. In re Bayer, 82 USPQ2d at 1831. Descriptiveness is not considered in the abstract. Id. The question is whether someone who knows what the goods are will understand the term to convey information about them. DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). Serial No. 87200413 - 3 - 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 new and unique commercial impression. If each component retains its merely descriptive significance in relation to the goods, the combination results in a composite that is itself merely descriptive. See, e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372, 1374 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer software for managing a database of records that could include patents and for tracking the status of the records by means of the Internet). “Marks that are merely laudatory and descriptive of the alleged merit of a product are also regarded as being descriptive. … Self-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods.” In re Boston Beer Co. L.P., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA for beer and ale found to be laudatory and incapable of distinguishing source). II. Arguments The Examining Attorney submits that the term BEST AMINO GUMMIES immediately describes that Applicant’s goods “are the most excellent, effective, or desirable dietary and nutritional supplements containing amino acids in the form of gummies.” 12 TTABVUE 15. Applicant, on the other hand, argues that BEST AMINO GUMMIES is too vague and nebulous to describe a significant feature of the goods and that multi-stage Serial No. 87200413 - 4 - reasoning is required by the consumer to understand the nature of the goods. Applicant submits that a consumer is left to wonder “what aspects, if any, are better than other similar goods.” 12 TTABVUE 15. Applicant argues that BEST AMINO GUMMIES “has a unique, incongruous and non-descriptive meaning in relation to dietary and nutritional supplements.” Id. at 15. III. The Record Applicant’s goods are identified as “Dietary and nutritional supplements containing amino acids.” A dietary supplement is defined as: “a product taken orally that contains one or more ingredients (such as vitamins or amino acids) that are intended to supplement one’s diet and are not considered food.” Merriam-Webster dictionary, merriam-webster.com.2 See also Wikipedia.com: Dietary supplement. A dietary supplement is intended to provide nutrients in order to increase the quantity of their consumption, or to provide non-nutrient chemicals which are claimed to have a biological beneficial effect. Supplements as generally understood include vitamins, fiber, minerals, fatty acids, or amino acids among other substances. wikipedia.com (dietary supplement). July 19, 2017 Response to Office Action at 32. Both the Examining Attorney and Applicant submitted evidence relating to the terms “best,” “amino,” and “gummies.” Definitions: Best: of the most excellent, effective, or desirable type or quality. 2 We hereby take judicial notice of this definition. The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). Serial No. 87200413 - 5 - Oxford English Dictionary. en.oxforddictionaries.com. January 20, 2017 Office Action at 2, Amino: The group –NH2 present in amino acids, amides and many amines. Oxford English Dictionary. en.oxforddictionaries.com. January 20, 2017 Office Action at 4; July 19, 2017 Response to Office Action at 6. Amino (adj) : relating to, being, or containing an amine group —often used in combination. Merriam-Webster dictionary. merriam-webster.com.3 Gummy: 1. Of, resembling, or of the consistency of gum; viscid; mucilaginous 2. covered with or clogged by gum 3. exuding gum dictionary.com. July 19, 2017 Response to Office Action at 6. Gummy: 1:Viscous or sticky 2: a: Consisting of or containing gum b: Covered with gum Merriam-Webster dictionary. merriam-webster.com. February 21, 2018, Request for Reconsideration at 122. The Examining Attorney relies on five third-party registrations with disclaimers of “amino” for dietary and nutritional supplements and eight third-party registrations with disclaimers of “gummies” for dietary and nutritional supplements or vitamin supplements. August 22, 2017 Office Action at 2-20 (third-party registrations with disclaimers of gummies); Jan. 20, 2017 Office Action at 6-15 (third- party registrations with disclaimers of amino). “Third-party registrations can be used 3 We take judicial notice of the definition for “amino.” Serial No. 87200413 - 6 - in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry.” In re Box Solutions Corp., 79 USPQ2d 1953, 1957 (TTAB 2006). Although not controlling, these registrations “may show that a particular term has descriptive significance as applied to certain goods or services.” Institut National Des Appellations D’Origine v. Vintners International Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992) (third-party registrations found to be “persuasive evidence”). Internet articles discussing amino acid supplements: [W]hy should you also take amino acid supplements, instead of just getting all your protein? … amino acid supplements change the way your body uses your primary fuel sources – carbs and fat. … If we take all of the physical and psychological benefits of amino acid supplements together, something amazing becomes apparent; it can improve your overall performance. John, “10 Benefits of Amino Acid Supplements,” January 11, 2016, thefeed.com. January 2017 Office Action at 5. Amino acid supplements are being studied to determine their effect on behavior problems in children, but more research is needed. Fisk, Michelle “Are Amino Acid Supplements Okay for Kids?” October 3, 2017, livestrong.com. February 21, 2018 Request for Reconsideration at 147-148. Results from a Google search for “gummy supplements”: Serial No. 87200413 - 7 - January 20, 2017 Office Action at 3. Results from a Google search for the term “gummies” returned results for candy as well as results for vitamin and nutritional supplements.4 The vitamins and supplements shown in the results include the following: 4 Applicant argues that its Google image search for “gummies” reflects a lack of descriptiveness of the term because a “search for ‘gummies’ gives around 300 results with only approximately 25 related to adult nutritional supplements presented under the form of gummies, and only 1 within the first 50 results.” 10 TTABVUE 10. But the placement of the results based on the search algorithm does not make the descriptive use of “gummies or “gummy” for vitamins or supplements any less probative. The question is not how often a term is used descriptively in connection with uninvolved goods or services, but rather whether it is descriptive of the involved products or services. Serial No. 87200413 - 8 - February 21, 2018 Request for Reconsideration at 138-139. Id. at 139-140 Id. at 139-141. Serial No. 87200413 - 9 - Google search results for “amino gummy” showing amino supplements in gummy form include: February 21, 2018 Request for Reconsideration at 143-144. Excerpts on articles about gummy supplements: These gummy supplements are loaded with good-for-your- tresses ingredients, such as biotin and vitamin C, and promise to plump skin and smooth strands. … Currently most gummies on the market do contain plenty of extra sugar to make them fun to eat. Kinonen, Sarah “What’s the Deal with Gummy Supplements Are they Safe?,” September 6, 2016, people.com. March 21, 2018 Denial of Reconsideration at 2-6. While you may be too old to enjoy Flinstones Gummies vitamins, these adult-friendly versions are just as fun, tasty and colorful as their kid counterparts—and pack Serial No. 87200413 - 10 - essential nturients grown-ups need.5 Nuñez, Alana, “The 5 Best Chewable Vitamins or Supplements for Adults,” shape.com. March 21, 2018 Denial of Reconsideration at 8- 9. [S]hoppers are looking to formats like gummies bcause they like taking vitamins and minerals in fun and easy delivery methods. … innovative delivery platorms such as gummies … provide an appreciated departure from consumers’ routine. . .. To meet the needs of consumers seeking clean label gummies, MegaFood is on the path to creating its own line of gummy supplements. Olivo, Lisa “Focus on Gummy Supplements,” June 29, 2017, Nutriceuticalsworld.com. March 21, 2018 Denial of Reconsideration at 12-16. The most concerning factors about gummy vitamins is that with any candy-like supplement, there is a risk of overconsumption … The desire for companies to make them taste more like candy, makes it harder to pack an effective amount of vitamins and minerals into the gummies. “Do Gummy Vitamins Actually Work? 3 Nutritionists Hash it Out.” April 10, 2015, updated December 6, 2017, Teen Vogue, huffingtonpost.com. March 21, 2018 Denial of Reconsideration at 21-24. A Wikipedia entry for “Gummi Candies” includes a sub-section titled “Vitamin Gummies:” There are also several multi-vitamin gummi bears, usually marketed for children, such as Flintstones Chewable Vitamins. These form of vitamins give off nutrients and protein for those that do not swallow pills or need various supplements to stay healthy. wikipedia.com. February 21, 2018 Request for Reconsideration at 22. A Wikipedia entry for “dietary supplement” includes separate subsections on “amino acids and proteins” and “bodybuilding supplements”: 5 The products listed include: NatureMade Calcium Adult Gummies, One a Day Women’s VitaCraves Gummies, and Hydroxycut Gummies. Serial No. 87200413 - 11 - Amino acids and proteins. Amino acids are biologically organic compounds composed of amine (-NH2) and carboxylic acid (-COOH) functional groups along with a side-chain specific to each amino acid. …Amino acids can be divided into three categories: essential amino acids, non- essential amino acids, and conditional amino acids. wikipedia.com, (dietary supplements). July 19, 2017 Response to Office Action at 34. Bodybuilding supplements. Bodybuilding supplements are dietary supplements commonly used by those involved in bodybuilding and athletics. Bodybuilding supplements may be used to replace meals, enhance weight gain, promote weight loss or improve athletic performance. Among the most widely used are vitamin supplements, protein drinks, branched-chain amino acids (BCAA), glutamine, essential fatty acids, meal replacement products, creatine, weight loss products and testosterone boosters. wikipedia.com. (dietary supplements). July 19, 2017 Response to Office Action at 35. Applicant relies on results from the 2010 census showing that “Best” is one of 1000 most frequent surnames in the United States. February 21, 2018 Request for Reconsideration at 10-51. Applicant also submitted a Wikipedia entry for Best (surname) listing people with the surname “Best.” Id. at 53-54. Applicant relies on plain copies of fourteen third-party registrations on the Principal Register that contain the term “best.” Id. at 55-85. IV. Analysis Based on the evidence in the record, the composite BEST AMINO GUMMIES is laudatorily descriptive, conveying the superiority of Applicant’s dietary and nutritional supplements containing amino acids in gummy form. Serial No. 87200413 - 12 - The dictionary definition of “best” establishes that “best” is a laudatory term. It is settled that laudatory terms, such as “best” which attribute superiority to the identified goods, are merely descriptive. In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999). Additionally, the dictionary evidence shows there is a readily recognized meaning of “best.” Thus, Applicant’s evidence that “best” is also a surname is not persuasive to show that the term is not laudatory. We also do not find the third-party registrations containing the term “best” persuasive to show a lack of descriptiveness because the registrations either contain a Section 2(f) claim, a disclaimer, are unitary, or suggestive.6 Applicant also has argued that it offers dietary and nutritional supplements under a family of BEST marks. While an applicant refused registration under Section 2(e)(1) may present evidence of a family of marks to help prove acquired distinctiveness under Section 2(f) of a new member of that family, Applicant has not amended its intent-to-use application to claim Section 2(f) in whole or in part. In re LC Trademarks, Inc., 121 USPQ2d 1197, 1202 (TTAB 2016). In any event, there are specific requirements to establish a family of marks, as well as to claim Section 2(f) when an application has been filed under Section 1(b), and Applicant has not attempted to meet those requirements. See Trademark Manual of Examining 6 Five of the registrations contain a Section 2(f) claim and four of the registrations include a disclaimer of “best.” Of the remaining five registrations, three are unitary while the other two marks appear to be at worst suggestive. Only one of the registrations covers supplements (with a disclaimer of “best herb”), while the other registrations cover unrelated goods and services. Serial No. 87200413 - 13 - Procedure (TMEP) Sections 1212.06(e)(v), 1212.09(a), and 1212.09(b) (Oct. 2018); In re LC Trademarks, 121 USPQ2d at 1204. (“Applicant has taken upon itself the [substantial] burden of proving first, that its claimed family of “double word” marks has acquired distinctiveness, and second, that the public recognition of that family helps the subject “family member” mark, in turn, acquire distinctiveness.”). As to the term “amino,” this word is merely descriptive because it identifies an ingredient in Applicant’s supplements, is included in Applicant’s identification of goods and is used by Wikipedia as an example of a type of “dietary supplement.” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1375 (Fed. Cir. 2018) (citing In re Gyulay, 3 USPQ2d at 1009); In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1576 (Fed. Cir. 2015) (“The Board found that the relevant consumer, knowing that the goods are supplements containing nopal cactus juice, would understand the mark NOPALEA to convey information that the goods contain ingredients from the Nopalea cactus …Substantial evidence supports the Board’s findings, and its conclusion that ‘nopalea’ is merely descriptive of TriVita’s goods.”). Applicant’s identification of goods is essentially a concession that “amino” is merely descriptive. Cf. In re Johanna Farms, Inc., 222 USPQ 607, 609 (TTAB 1984) (the “term ‘yogurt’ is concededly the name of the goods. That fact is uncontrovertible where, as here, the same term has been used in the identification of goods for which registration is sought.”). Applicant’s search results for “amino gummies” show that some competitors use “amino” or “aminos” in combination with their marks. This is also persuasive evidence of descriptiveness. Real Foods, 128 USPQ2d at 1377 Serial No. 87200413 - 14 - (evidence of the term “thins” being used in marks for other, similar snack food products, (such as “Pita Thins,” and “Wheat Thins”) is probative of the term’s descriptiveness). The dictionary definitions and the third-party registrations provide additional evidence of the descriptive significance of the word “amino.” The Internet articles provided by the Examining Attorney and Applicant relating to amino acid supplements, the Wikipedia excerpt relating to dietary supplements, and the dictionary definition of “dietary supplement” show that amino acids may be offered as dietary or nutritional supplements, further establishing the descriptiveness of the term “amino” in relation to Applicant’s goods.7 The term “gummies” in Applicant’s mark describes a chewable form of Applicant’s dietary nutritional supplements, similar to gummy candy. The third-party registrations provide some evidence of the descriptive significance of the word “gummies” for vitamins and dietary and nutritional supplements. The Google search results offered by the Examining Attorney and Applicant showing images of third- party use of “gummy” and “gummies” by producers of dietary and nutritional supplements, and the use of the term “gummy” and “gummies” in articles relating to dietary and nutritional supplements, establish that the term “gummies” and its 7 Applicant contends that consumers will not readily perceive the meaning of “amino” because the word in its singular and plural form “is a scientific word that does not belong to the everyday language,” and “amino” is phonetically similar to many other words in English, Spanish and “Greco-Roman” such as “amanous, ominous, amenous, amoenous, camino, ominoso, aminums, amorino, minos, homiletic and homines. 10 TTABVUE at 11. However, these terms are not phonetic equivalents, and the record reveals that “amino” is commonly used in English language product names for, and descriptions of, dietary supplements. Serial No. 87200413 - 15 - singular form “gummy” are merely descriptive of dietary and nutritional supplements.8 Applicant’s argument that “gummies” is not descriptive of Applicant’s goods because it generally relates to candy fails to consider the term “gummies” in relation to Applicant’s goods. As stated, the determination of descriptiveness is not made in the abstract. The proper inquiry involves whether someone familiar with dietary and nutritional supplements will understand “gummies” to convey something about them. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).9 Applicant also argues that the online articles provided by the Examining Attorney regarding gummy supplements do not use “gummies” in the titles and this reflects a lack of descriptive use of the plural form as the product name. However, there is 8 Applicant also submitted a list of truncated Google search results for “gummy” but it was barely legible and lacked context. July 19, 2017 Response to Office Action at 13-14. This evidence is entitled to little, if any, probative weight. See Weider Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1350-51 (TTAB 2014); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba Watermark Cruises, 107 USPQ2d 170, 1758 n.16 (TTAB 2013) (“the onus is on the party making the submissions to ensure that, at a minimum, all materials are clearly readable by the adverse party and the Board”); In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (“Because the GOOGLE search report provides very little context of the use of ASPIRINA on the webpages linked to the search report, it is of little value in assessing the consumer public perception of the ASPIRINA mark.”). 9 As indicated, Applicant submitted a number of dictionary definitions for “Gummy” and a Wikipedia entry for gummi candy. Applicant also submitted a Wikipedia entry for “Gummy,” a Korean singer, as well as a website printout for Haribo gummi bears. We do not find the definitions or the portion of the Wikipedia article relating to gummi candy, the website relating to gummi bears, or the Wikipedia article relating to the stage name of singer “Gummy” probative when considered in connection with the goods. It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.” In re Chopper Industries, 222 USPQ 258, 259 (TTAB 1984); see also, In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1034 (TTAB 2007); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Serial No. 87200413 - 16 - sufficient evidence in the record of use of both the “singular” gummy and plural “gummies” that refer to vitamin and dietary and nutritional supplements. It also is not relevant that there is no evidence of any use of the term BEST AMINO GUMMIES in the marketplace. Although evidence of competitors’ use of the applied-for mark would be relevant evidence of the mark’s descriptiveness, the opposite is not true, i.e., the lack of such evidence does not show that a mark is not merely descriptive. It is well-established that where an applicant is the first and, at present, only user of a descriptive term, that does not make it registrable. See In re Acuson, 225 USPQ 790, 792 (TTAB 1985). “There is no requirement that the Office prove actual competitor use or need; it is well established that even if an applicant is the only user of a merely descriptive term, this does not justify registration of that term.” In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009); see also In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016). When the words “best” “amino” and “gummies” are combined together, as Applicant has combined them, they retain their laudatory, descriptive meaning in relation to the goods without the composite term creating a unique or incongruous meaning. The record, as discussed, establishes that Applicant’s proposed mark is merely descriptive of ingredients, properties and qualities of its dietary and nutritional supplements. The evidence makes clear that consumers who know that the goods are dietary and nutritional supplements will understand the proposed mark to convey information about them, specifically that they are superior to other amino gummy supplements. Serial No. 87200413 - 17 - For the foregoing reasons, on consideration of all of the evidence of record, including parts we have not mentioned, we conclude that the combined term BEST AMINO GUMMIES immediately describes a feature of Applicant’s supplements, i.e., they are excellent amino gummies or the most effective dietary supplement amino gummies. Decision: The refusal to register BEST AMINO GUMMIES under Section 2(e)(1) is affirmed.