No. 85331608 (T.T.A.B. Sep. 10, 2013)

Festival of Vitamins, LLC

Trademark Trial and Appeal BoardSep 10, 2013

No. 85331608 (T.T.A.B. Sep. 10, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: September 10, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Festival of Vitamins, LLC _____ Serial No. 85331608 _____ Matthew H. Swyers of The Trademark Company for Festival of Vitamins, LLC. Barbara Brown, Trademark Examining Attorney, Law Office 116 (Michael W. Baird, Managing Attorney). _____ Before Seeherman, Wellington, and Masiello, Administrative Trademark Judges. Opinion by Masiello, Administrative Trademark Judge: Festival of Vitamins, LLC has applied to register on the Principal Register the mark ANTI-AGING NATURALS in standard character form for goods identified as “Dietary and nutritional supplements,” in International Class 5.1 The trademark examining attorney refused registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that applicant’s mark merely describes the goods. In response, applicant asserted that its mark had 1 Application Serial No. 85331608, filed on May 26, 2011 under Trademark Act § 1(a), 15 U.S.C. § 1051(a), with a claim of first use and first use in commerce of May 27, 2005. Serial No. 85331608 2 acquired distinctiveness and requested that its mark be registered under the provisions of Section 2(f), 15 U.S.C. § 1052(f). The examining attorney then refused registration on the ground that applicant’s mark is generic for applicant’s goods and is, accordingly, not capable of acquiring distinctiveness within the meaning of Section 2(f). When the refusal was made final, applicant appealed. Applicant and the examining attorney have filed appeal briefs. There are two primary questions before the Board. The first is whether the mark ANTI-AGING NATURALS is the generic name of applicant’s goods. If the mark is not the generic name of those goods, the second question, arising from applicant’s concession that its mark is merely descriptive of its goods,2 is whether applicant has demonstrated that its mark has acquired distinctiveness so as to justify registration. 1. Genericness. A mark is a generic name if it refers to the class or category of goods or services on or in connection with which it is used. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986) (“Marvin Ginn”). The test for determining whether a mark is generic is its primary significance to the relevant public. In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB 2 A claim of acquired distinctiveness under Section 2(f) is a concession that the matter to which the claim pertains is not inherently distinctive and, accordingly, not registrable on the Principal Register absent proof of acquired distinctiveness. Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988). Serial No. 85331608 3 Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991); and Marvin Ginn, supra. Making this determination “involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered … understood by the relevant public primarily to refer to that genus of goods or services?” Marvin Ginn, 228 USPQ at 530. The examining attorney has the burden of establishing by clear evidence that a mark is generic. In re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); In re American Fertility Society, supra; and Magic Wand Inc., supra. “Doubt on the issue of genericness is resolved in favor of the applicant.” In re DNI Holdings Ltd., 77 USPQ2d 1435, 1437 (TTAB 2005). As noted above, our first task under Marvin Ginn is to determine, based on the evidence of record, the genus of respondent's services. A proper genericness inquiry in an ex parte matter focuses on the description of goods or services set forth in the application. In re Country Music Association Inc., 100 USPQ2d 1824, 1827 (TTAB 2011). We find that the genus of goods at issue in this case is adequately defined by applicant's identification of goods, namely, “dietary and nutritional supplements.” See id.; In re Trek 2000 Int'l Ltd., 97 USPQ2d 1106, 1112 (TTAB 2010). We next consider whether applicant’s mark would be understood by the relevant public primarily to refer to the genus of dietary and nutritional supplements. The examining attorney has submitted evidence from online Serial No. 85331608 4 dictionaries that indicates that the following terms have the meanings set forth below: anti- or ant- c. Counteracting; neutralizing: antacid.3 anti-aging adj. delaying the effects of aging, having an effect in decelerating the effects of aging; used to impede the effects of aging; used to reduce the impact of aging.4 aging 1. The process of growing old or maturing.5 natural 1. Existing in or formed by nature (opposed to artificial): a natural bridge.6 On the basis of these definitions, and relying upon the adjectival meaning of “natural,” the examining attorney argues, “ANTI-AGING means counteracting the process of growing old and NATURALS, in the noun form, identifies a natural product.”7 The examining attorney has also submitted evidence from the internet showing use of the terms “anti-aging” and “natural” as adjectives modifying the names of various products, including dietary or nutritional supplements. Moreover, 3 Definition found at , submitted with Office action of September 15, 2011. The examining attorney’s brief indicates that this definition is from THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, Third Edition. 4 Definition found at , submitted with Office action of January 30, 2012. 5 Id. 6 Definition found at , submitted with Office action of September 15, 2011. 7 Examining attorney’s brief at 6. Serial No. 85331608 5 she has submitted such evidence showing use of “anti-aging” and “natural” together as modifiers.8 Among these, we note in particular the following: The anti aging natural supplements that used to be just another “health food craze” have been proven to be a beneficial addition to your life and diet. … Natural anti aging supplements are a smart way to provide your body with the essential nutrients you’re missing. Advertisement at . PureZenTM Anti Aging Natural supplements including anti aging vitamins, anti aging herbs, and anti aging nutritional supplements are true all-natural anti aging supplements that are designed to enhance your health and wellbeing…. … Natural Anti Aging Supplements Resources:: natural anti aging supplements Advertisement at . anti aging natural supplements … The B-vitamins help to combat stress and hence may indirectly act as an anti aging natural supplement. … Anti aging natural supplements are gaining ground and is headed for a gigantic leap forwards. How far these supplements are actually effective differs from individual to individual…. Advertisement at . Prohormones as well as anti aging natural supplements can help to increase testosterone and growth hormone levels in men while providing faster increases in muscle size and strength. Advertisement from . 8 The examples of usage that follow were all submitted with the Office action of August 2, 2012. Serial No. 85331608 6 Dr. Theodore, an Australian MD who focuses on Anti Aging natural medicine, believes he has found a unique and long term solution to this common problem…. “Impotence Can Be Reversed with New Medical Program,” American Consumer News, December 28, 2010. She is a walking advertisement for the line of “anti-aging” natural skin care products she has developed and hopes to market. “A Perfect Guest,” Newsday, March 15, 2001. Ray Lewis, a chiropractor, will give a free seminar on anti-aging, natural health and healing, and therapeutic use of essential oils…. “Happenings,” The Charlotte Observer, November 5, 1999. Next up, tarte is launching an anti-aging, natural lipstick with aBORBA nutraceutical core…. “Sweet tarte: taking inside-out beauty to heart,” Global Cosmetic Industry, October 1, 2007. The examining attorney has also submitted samples of commercial materials (discussed infra) in which the word NATURALS (including the final letter S) is used.9 In order to demonstrate genericness under Marvin Ginn, the evidence of record must prove that the mark is “understood by the relevant public primarily to refer to [the] genus of” applicant’s goods. 228 USPQ at 530. The evidence before us is insufficient to prove that ANTI-AGING NATURALS is a generic term because it does not demonstrate that the public understands the term primarily to refer to the genus of applicant’s goods. 9 All submitted with the Office action of August 2, 2012. Serial No. 85331608 7 Applicant’s mark is ANTI-AGING NATURALS, and the examining attorney argues that, as used in the mark, “NATURALS, in the noun form, identifies a natural product.”10 However, none of the evidence, including the dictionary definitions, supports her contention that NATURALS may be used as a noun to mean “natural product” or “natural products.” Rather, the evidence from Dictionary.com indicates that, as a noun, “natural” may be used to designate a person having innate talents; a musical pitch; “an idiot”; blackjack (in cards); and “Afro.”11 The bulk of the examining attorney’s evidence shows that the words “anti- aging” and “natural” (without a final letter S) have been used together as adjectives to describe certain things, but none of this shows generic usage of NATURALS as having the meaning “natural products.”12 The examining attorney has submitted some evidence in which the word NATURALS (including the final letter S) appears.13 However, from the context it is unclear whether the word NATURALS is being used as a generic term within the trade name or trademark or as a source-identifying part of the trade name or trademark. These examples include WHISTLER NATURALS (“Whistler Naturals 10 Examining attorney’s brief at 6. 11 Definition found at , definitions numbered 32 through 36, submitted with Office action of September 15, 2011. 12 We acknowledge that there are cases in which the Board has found the addition of an “s” is irrelevant in assessing the meaning of a mark when it changes a term from the singular to the plural. See, e.g., Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996, 1998 (TTAB 1986); In re Vanilla Gorilla L.P., 80 USPQ2d 1637 (TTAB 2006). But in this case, by changing the term from an adjective to a noun, it makes a significant difference in the meaning of the word. 13 Submitted with the Office action of August 2, 2012. Serial No. 85331608 8 anti-aging natural Skin Care has everything you need….”); L.A. NATURALS botanical supplements; NORDIC NATURALS supplements; SOURCE NATURALS (“Source Naturals was created in 1982 with the primary goal to support each individual’s potential to enjoy optimal health”); NAVITAS NATURALS products (“…Navitas Naturals makes 100% organic, raw, vegan, kosher, sustainably-grown and gluten-free products…”); NEEMAURA NATURALS supplements; and LIVING ORCHARD NATURALS (“I recommend Living Orchard Naturals products if you are committed to a healthy lifestyle.”) Overall, the evidence does not demonstrate that the public understands ANTI-AGING NATURALS to be a generic term for the identified goods. While the evidence indicates that “anti-aging natural” may be considered an appropriate chain of descriptors for goods such as applicant’s supplements, it does not show that these words are a unitary phrase rather than individual adjectives that happen to be placed together. To the contrary, the record contains numerous examples14 of use of these words in formats that are inconsistent with use of a unitary, generic term. In particular, these words have been placed in reverse order; separated by a comma or other punctuation; separated by other words; or other variations. For example, the advertisements at and , quoted above, use both “anti aging natural supplements” and the reversed form “natural anti aging supplements.” The articles quoted above from Newsday, The Charlotte Observer and Global Cosmetic Industry show the words at 14 Submitted with the Office action of August 2, 2012. Serial No. 85331608 9 issue interrupted by punctuation, in the forms “‘anti-aging’ natural” and “anti- aging, natural.” We also note the following articles in which ANTI-AGING and NATURAL are used as separate adjectives: Anti-aging and natural products expected to grow in Europe, North America. “Demand Growth Slows, But Niche Opportunities Remain,” Chemical Week, September 27, 2010, p. 65. … anti-aging and natural foods. “In Brief,” News Sentinel (Knoxville, Tennessee), October 21, 2002, p. E2. Aging Fabulous tells you about anti-aging the natural way. “Splendid Saturday reads,” Her Accessories, April 26, 2008. … skin creams with miraculously anti-ageing [sic] ‘natural’ herbs…. “This ‘nature’ fad is just not natural,” GP, September 29, 2003, p. 27. Dr. Elisha’s all natural anti aging skin care products…. Advertisement at Okay, we are going creative here and combining anti- aging natural skin care with a great party recipe. Serial No. 85331608 10 … Related Posts: - Natural Anti-Aging Skin Care: Breasts, Face and Body Lifts (Slideshow) - Natural Anti-Aging Skin Care Web page at . Whistler Naturals anti-aging natural Skin Care has everything you need for your anti-aging skin care routine. … Our natural anti-aging skin care line is free from harsh preservatives…. Advertisement at . These examples of inconsistent use of the words at issue undermine the contention that the mark is generic. Because a finding of genericness must be supported by clear evidence of generic use, In re Merrill Lynch, 4 USPQ2d at 1143, and because the record fails to prove that the mark at issue is a unitary term that is understood by the relevant public primarily to refer to the genus of applicant’s goods, we find that the mark has not been shown, by clear evidence, to be generic for applicant’s goods. 2. Acquired distinctiveness. We next address the examining attorney’s refusal to register applicant’s mark under Section 2(e)(1) on the ground that applicant’s mark merely describes the goods; and the examining attorney’s rejection of applicant’s claim that its mark has acquired distinctiveness and is entitled to registration under Section 2(f). As we have noted above at footnote 2, applicant’s invocation of Section 2(f) as the basis upon which it seeks registration removes from consideration any question Serial No. 85331608 11 as to whether applicant’s mark is inherently distinctive, leaving only the issue of whether the mark has acquired distinctiveness. Yamaha International Corp., 6 USPQ2d at 1005. The burden of showing that the mark has acquired distinctiveness is on applicant. Id. at 1006. The amount and character of evidence required to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered. See Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970). “[T]he evidence required is in proportion to the degree of nondistinctiveness of the mark at issue.” Nextel Communications, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1401 (TTAB 2009); see also In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 424 (Fed. Cir. 1985). Typically, more evidence is required where a mark is so highly descriptive that purchasers would be less likely to believe that it indicates source in any one party. See In re Bongrain Int’l Corp., 894 F.2d 1316, 1318, 13 USPQ2d 1727, 1728 fn4 (Fed. Cir. 1990) (“the greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning” (quoting Yamaha International, 6 USPQ2d at 1008)). In support of its claim of acquired distinctiveness, applicant has submitted the verified statement15 of its principal Huitt Danvers that “The mark has become distinctive of the goods/services through the applicant’s substantially exclusive and 15 Response filed October 28, 2011. Serial No. 85331608 12 continuous use in commerce for at least the five years immediately before the date of this statement [October 28, 2011].” Ms. Danvers’ declaration also states that: - applicant actually commenced use of its mark in May, 2005; - the mark has been used on thousands of product labels and products, representing a total of 15 labels and products (plus several revisions); - the marked products have been marketed on since 2005; and are marketed on “Amazon.com affiliated websites”; - marked products are sold on 20 websites owned by applicant; - sales have been made in the United States, in Europe through a distributor, and on Amazon’s UK website; and applicant has two registered websites in China; - applicant has spent over $12,000 on product development, including label design and preparation and art expenses; - applicant has spent over $100,000 on manufacturing; - applicant has spent over $5,000 on product advertising, including ads through Google, Yahoo, and comparison shopping venues; - applicant has spent over $600 on registering and maintaining 20 web addresses. Applicant also submitted copies of seven labels for seven distinct products under the proposed ANTI-AGING NATURALS mark.16 As we discussed in part 1 of this decision, the record shows that the designation “anti-aging” (or “anti aging”) is used to identify a category of nutritional supplements or, at the very least, to describe a characteristic of goods that are 16 Id. Serial No. 85331608 13 similar in general nature to applicant’s goods, including nutritional supplements. The record also contains evidence of at least seven third-party products that are marketed under trademarks or trade names that include the designation NATURALS, indicating that customers would not readily perceive this term as an indicator of a single source of goods. The combination of these two non-distinctive components results in a designation that is highly descriptive and very weak in source-indicating potential. Accordingly, applicant’s burden of showing that its mark has acquired distinctiveness as a source-indicator is a heavy one, requiring substantial evidence. Under such circumstances, applicant’s reliance on substantially exclusive and continuous use of the mark since 2005, and the activities detailed in its declaration, are not sufficient to demonstrate that the mark has acquired distinctiveness. Applicant’s total expenditures of $5600 on advertising and website maintenance are quite modest and not indicative of substantial success in bringing applicant’s mark to the attention of the public. The costs of product development and manufacture do not tell us anything about the extent of public recognition of the mark or the goods. The fact that applicant’s goods have been marketed internationally through the internet and through other channels does not indicate widespread recognition of the mark in the United States. We also point out that, although applicant has asserted substantially exclusive and continuous use of its mark since 2005, it has not provided any information about what its sales figures in the United States have been. In short, a much greater degree of detail regarding Serial No. 85331608 14 applicant’s marketing efforts and sales would be required for us to conclude that the public recognizes ANTI-AGING NATURALS as a trademark for the goods identified in the application. Having considered all of the evidence and arguments of record, including those not expressly discussed herein, we find that applicant has failed to demonstrate that its mark has acquired distinctiveness. Accordingly, the mark is not entitled to registration under Section 2(f). Decision: We reverse the refusal on the ground that applicant’s mark is generic, but we affirm the refusal under Trademark Act Section 2(e)(1) on the ground that applicant’s mark is merely descriptive of its identified goods.