Fonterra TM Ltd.

Trademark Trial and Appeal Board

Sep 3, 2014

No. 85311090 (T.T.A.B. Sep. 3, 2014)

This Opinion is not a
Precedent of the TTAB

Mailed: September 3, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fonterra TM Ltd.
________

Serial No. 85311090
_______

William J. Seiter of Seiter Legal Studio for Fonterra TM Ltd.

Patrick Shanahan, Trademark Examining Attorney, Law Office 116 (Michael
W. Baird, Managing Attorney).
_______

Before Quinn, Cataldo and Kuczma,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Fonterra TM Ltd. (“Applicant”) has applied to register as a mark on
the Principal Register the designation HN001 in standard characters for the
following goods, as amended:
Dietetic foods, food substances and beverages adapted for
medical use; pharmaceutical foodstuff additives, preparations
and substances in the nature of foodstuffs and food ingredients
for humans or animals; food for babies and infants, including
milk powder for babies and infants; nutraceutical preparations
and substances for medical use, namely, for providing intestinal
balance; nutritional supplements; nutritional additives for
medical purposes used in foods and dietary supplements for
human and animal consumption; nutritional cultures used in
foods and dietary supplements for human and animal
Serial No. 85311090

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consumption; food supplements for medical purposes; mineral
supplements for foodstuffs; nutritional supplements for medical
use; nutritional supplements in the nature of probiotic cultures;
cultures of micro-organisms used in foods and dietary
supplements for providing intestinal balance; food supplements;
dietary supplements; all the foregoing containing lactobacillus
rhamnosus

(International Class 5); and
Dairy products excluding ice cream, ice milk and frozen yoghurt;
dairy based beverages; dairy based powders for making dairy
based beverages and shakes; milk and milk products, excluding
ice cream, ice milk and frozen yoghurt; milk protein; milk
beverages including flavored and fortified milk beverages (milk
predominating); cream; butter; edible oils and fats and blends of
edible oils and fats; dairy based food spreads; proteins being
foodstuffs for human consumption; cheese; cultured dairy
products excluding ice cream, ice milk and frozen yoghurt;
yoghurt and yoghurt beverages; flavored dairy desserts, namely,
dairy-based dips, dairy based snack foods excluding ice cream,
ice milk and frozen yoghurt; whey; casein for food; all the
foregoing containing lactobacillus rhamnosus

(International Class 29).1
The Trademark Examining Attorney refused registration under
Section 2(e)(1) of the Trademark Act on the ground that Applicant’s mark is
merely descriptive of a feature or quality of Applicant’s goods in both classes.
When the refusal was made final, Applicant appealed. Applicant and
the Examining Attorney filed briefs.

1 Application Serial No. 85311090 was filed on May 3, 2011, under Section 1(b) of the
Trademark Act, based on Applicant’s assertion of its bona fide intent to use the
mark in commerce on the recited goods, and also under Section 44(e) of the
Trademark Act based upon Applicant’s ownership of New Zealand Registration No.
841066, issued on April 29, 2011.

Serial No. 85311090

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Applicant argues that it created the bacteria strain lactobacillus
rhamnosus found in its goods, and that the New Zealand patent therefor is
owned by its subsidiary, New Zealand Dairy Board. Applicant further argues
that it coined the term HN001 as a mark to identify the goods in this
application which contain lactobacillus rhamnosus. Applicant argues in
addition that “the Internet references relied on by the Examining Attorney
are in fact references to Applicant’s HN001 trademark.”2
In support of the refusal to register, the Examining Attorney made of
record articles retrieved from commercial and informational Internet
webpages, of which the following are considered probative of the issue on
appeal:
(ncbi.nlm.gov/pubmed)3
Enhancement of natural and acquired immunity by
Lactobacillus rhamnosus (HN001), Lactobacillus acidophilus
(HN017) and Bifidobacterium lactis (HN019).

Milk and Health Research Centre, Institute of Food, Nutrition
and Human Health, Massey University, Plamerston North, New
Zealand, h.s.gill@massey.ac.nz
Abstract
Consumption of lactic acid bacteria (LAB) has been suggested to
confer a range of health benefits including stimulation of the
immune system and increased resistance to malignancy and
infectious illness. In the present study, the effects of feeding
Lactobacillus rhamnosus (HN001, DR20), Lactobacillus
acidophilus (HN017) and Bifidobacterium lactis (HN019, DR10)
on in vivo and in vitro indices of natural and acquired immunity
in healthy mice were examined. …

2 Applicant’s brief, p. 4.
3 Examining Attorney’s November 28, 2012 Office Action.
Serial No. 85311090

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(plosone.org)4
PLOS One a peer-reviewed, open access journal

Lactobacillus rhamnosus HN001 Attenuates Allergy
Development in a Pig Model

Background
Probiotics have been studied as immunomodulatory agents of
allergy. Several human probiotic trials tracking the
development of eczema and other forms of allergy have yielded
inconsistent results. A recent infant study demonstrated that
pre and postnatal Lactobacillus rhamnosus HN001 (HN001)
supplementation decreased the prevalence of eczema and IgE
associated eczema. However, the influence of HN001 on the
incidence of wheeze, asthma, and/or other allergic
manifestations has yet to be reported.

Objective
This study was conducted to determine the effects of the
probiotic HN001 on the development of allergic lung disease in a
pig model.

(powerofprobiotics.com/Lactobacillus-rhamnosus.html)5
Lactobacillus rhamnosus: Probiotics Bacteria with Impressive
Health Benefits

Lactobacillus rhamnosus is one of several species of probiotic
bacteria that has an impressive resume of health benefits. This
is one species that certainly has some strain-specific health
benefits and attributes, so if you are interested in it, you should
decide if you need to consume one of the specific strains. . . . .

. . . Some of the most researched strains are listed below:

Lactobacillus rhamnosus GG, also known as “LGG”
Lactobacillus rhamnosus GR-1
Lactobacillus rhamnosus HN001

4 Id.
5 Examining Attorney’s May 9, 2013 Final Office Action.
Serial No. 85311090

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The Examining Attorney also made of record the following patent
abstract:
(freepatentsonline.com)6
FPO
IP Research & Communities
Polynucleotides and Polypeptides Derived from Lactobacillus
Rhamnosus HN001
European Patent Application EP1546338
Reference: Sequence 306 from patent US 6544772
Assignee: Genesis Res & Dev Corp Ltd (NZ)
Fonterra Co-Operative Group LT (NZ)7

In addition, the Examining Attorney made of record patent abstracts from
boliven.com/patent (New Zealand Patent Application No. NZ200300221
Polynucleotides and Polypeptides Derived from Lactobacillus Rhamnosus
HN001);8 faqs.org/patents (New Zealand Patent Application No. 20120045422
“Claims: A method of treating or preventing eczema in a subject, the method
comprising administration of Lactobacillus rhamnosus HN001, AGAL deposit
number NM97/09514 dated 18 Aug. 1997 to a subject in need thereof”);9 and
ep.espacenet.com (also European Patent Application No. EP1546338, listed
above)10 containing information consistent with the above abstract from
freepatentsonline.com.
It is well-settled that a term is considered to be merely descriptive of

6 Id.
7 On page 5 of its brief, Applicant explains that it is a wholly-owned subsidiary of
Fonterra Co-Operative Group LT.

8 Id.
9 Id.
10 Id.

Serial No. 85311090

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goods and/or services, within the meaning of Section 2(e)(1) of the Trademark
Act, if it immediately describes an ingredient, quality, feature or
characteristic thereof or if it directly conveys information regarding the
nature, function, purpose or use of the goods and/or services. See Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052. See also In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). It is not
necessary that a term describe all of the properties or functions of the goods
and/or services in order for it to be considered to be merely descriptive
thereof; rather, it is sufficient if the term describes a significant attribute or
feature about them. Moreover, whether a term is merely descriptive is
determined not in the abstract, but in relation to the goods and/or services for
which registration is sought. See In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979). Thus, “[w]hether consumers could guess what the product is
from consideration of the mark alone is not the test.” In re American
Greetings Corp., 226 USPQ 365 (TTAB 1985).
In this case, Applicant’s goods in both Class 5 and Class 29 are
identified as various foodstuffs and food supplements, “all of the foregoing
containing lactobacillus rhamnosus.” The evidence made of record by the
Examining Attorney supports a finding that, as applied to Applicant’s goods,
the term HN001 would immediately describe, without conjecture or
speculation, a significant characteristic or feature of such goods, namely, that
they contain the bacteria strain Lactobacillus rhamnosus HN001. The
Serial No. 85311090

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Internet articles submitted by the Examining Attorney establish that HN001
is recognized as a synonym for a strain of Lactobacillus rhamnosus used in
connection with, inter alia, human probiotics. As such, this evidence
supports a finding that prospective purchasers of Applicant’s goods, namely,
consumers of foodstuffs, nutraceuticals and nutritional supplements
consisting of and containing probiotics, are accustomed to encountering this
term used to describe a feature thereof, namely, that they goods contain the
bacteria strain Lactobacillus rhamnosus. Material obtained from the
Internet is acceptable in ex parte proceedings as evidence of potential
exposure to a term by the relevant public. See In re Fitch IBCA, Inc., 64
USPQ2d 1058 (TTAB 2002). Furthermore, and as noted above, it is not
necessary that a term describe all of the properties of the identified goods in
order for it to be considered to be merely descriptive of such goods; rather, it
is sufficient if the term describes a significant attribute or feature thereof.
See Id.
We are not persuaded by Applicant’s argument that HN001 does not
merely describe the identified goods because the Internet articles and
abstracts excerpted above refer to Applicant and its applied-for mark. The
evidence made of record by the Examining Attorney displays the term HN001
used in a descriptive manner as applied to a particular strain of Lactobacillus
rhamnosus, not as a source identifier for Applicant. Put another way, the
Serial No. 85311090

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Internet evidence simply does not show use of HN001 as a trademark, but
rather as a descriptive term.
We similarly are not persuaded by Applicant’s argument that HN001
cannot be merely descriptive of the identified goods because Applicant
created the bacteria strain Lactobacillus rhamnosus and coined the term
HN001. Even if Applicant is the first and/or at present the only user of the
term HN001 in connection with the identified goods, it is well settled that
such intended use does not entitle Applicant to the registration thereof
where, as here, the term has been shown to immediately convey only a
merely descriptive significance in the context of Applicant’s goods. See, e.g.,
In re National Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020
(TTAB 1983); and In re Mark A. Gould, M.D., 173 USPQ 243, 245 (TTAB
1972). Indeed, the term Lactobacillus rhamnosus HN001 is used
descriptively in patents and patent applications, including those filed on
behalf of Applicant or its related companies.
Finally, we note that Applicant has not submitted sufficient evidence
to rebut the Examining Attorney’s prima facie case that Applicant’s proposed
mark merely describes its goods. Rather, Applicant has provided arguments
regarding what a proposed purchaser would conclude when confronted with
Applicant’s mark. See In re Vsesoyuzny Ordena Trudovogo Krasnogo
Znameni, 219 USPQ 69, 70 (TTAB 1983) (assertions in briefs are not
evidence). See also In re Minnetonka, 212 USPQ 772, 777 (TTAB 1981)
Serial No. 85311090

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(determining whether a mark has acquired distinctiveness is based on the
facts as they exist and are revealed by the evidence in the record at the time
the application is acted upon).
Accordingly, we find that Applicant’s mark is merely descriptive as
contemplated by Section 2(e)(1) of the Act.
Decision: The refusal to register is affirmed.