Grendel Taylor Hightower*

Trademark Trial and Appeal Board

Jun 14, 2013

No. 85181815 (T.T.A.B. Jun. 14, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 14, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Wellnx Life Sciences Inc.
_____

Serial No. 85181815
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Catherine M. Clayton of Gibbons P.C. for Wellnx Life Sciences Inc.

Elissa Garber Kon, Trademark Examining Attorney, Law Office 106 (Mary I.
Sparrow, Managing Attorney).
_____

Before Grendel, Taylor, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On November 20, 2010, applicant Wellnx Life Sciences Inc. filed an
application to register on the Principal Register the term DESIGNED FOR
WOMEN, in standard character form and with “WOMEN” disclaimed, for goods
ultimately identified as:
Dietary supplements; dietary supplements, namely,
powder drink mixes, vitamins and minerals, capsules,
tablets and caplets for promoting weight loss and for
promoting weight management; nutritional supplements;
nutritional supplements, namely, energy drinks used as a
meal replacement, vitamins and minerals, capsules,
Serial No. 85181815
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tablets and caplets for supplementing nutritional dietary
supplements, in International Class 5.1
The examining attorney has refused registration under Trademark Act
Sections 1, 2, and 45, 15 U.S.C. §§ 1051, 1052, and 1127, on the ground that the
proposed mark is merely informational matter and fails to function as a trademark
on the specimen of record. The examining attorney also has refused registration
because the designation DESIGNED FOR WOMEN is merely descriptive of the
goods pursuant to Section 2(e)(1), 15 U.S.C. § 1052(e)(1), and has not acquired
distinctiveness under Section 2(f), 15 U.S.C. § 1052(f). Applicant timely appealed
and, after requesting and receiving a three-month extension of time to file its
appeal brief due to the appointment of new counsel,2 timely filed its appeal brief on
January 2, 2013.
Failure to Function as a Trademark
The Trademark Act defines a “trademark” in relevant part as “any word,
name, symbol, or device, or any combination thereof used by a person . . . to identify
and distinguish his or her goods . . . from those manufactured or sold by others and
to indicate the source of the goods, even if that source is unknown.” Trademark Act
Section 45, 15 U.S.C. § 1127. “It is settled that not every designation that is placed
or used on or in connection with a product necessarily functions or is recognized as a
trademark for said product; not every designation adopted with the intention that it

1 Application Serial No. 85181815, based on allegations of first use and first use in
commerce in September 2007, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
2 See Applicant’s Request for an Extension of Time to File Appeal Brief, filed September 24,
2012, and Board Order of September 27, 2012 granting extension.
Serial No. 85181815
3

performs a trademark function and even labeled as a trademark necessarily
accomplishes that purpose; and there are certain designations that are inherently
incapable of functioning as trademarks to identify and distinguish the source of the
products in connection with which they are used.” American Velcro, Inc. v. Charles
Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973).
Terms that are considered to be merely informational in nature, or common
statements that would ordinarily be used in business or in the particular trade or
industry, are not registrable. See In re Boston Beer Co. L.P., 198 F.3d 1370, 53
USPQ2d 1056, 1058-59 (Fed. Cir. 1999). See also In re Eagle Crest Inc., 96 USPQ2d
1227, 1232 (TTAB 2010) (ONCE A MARINE, ALWAYS A MARINE would not be
perceived as a trademark but rather as an informational slogan “to express support,
admiration or affiliation with the Marines”); In re T.S. Designs Inc., 95 USPQ2d
1669, 1671 (TTAB 2010) (CLOTHING FACTS will be perceived as informational
matter, not as a source identifier for shirts); In re Volvo Cars of N. Am., Inc., 46
USPQ2d 1455, 1460-61 (TTAB 1998) (DRIVE SAFELY not registrable because it
would be perceived as an everyday, commonplace safety admonition and not as a
trademark for “automobiles and structural parts therefor”); In re Manco, Inc., 24
USPQ2d 1938, 1942 (TTAB 1992) (THINK GREEN and design would be perceived
only as an informational slogan encouraging environmental awareness and not as a
trademark for weather stripping and paper products).
The critical inquiry in determining whether a designation
functions as a mark is how the designation would be
perceived by the relevant public. To make this
determination we look to the specimens and other
Serial No. 85181815
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evidence of record showing how the designation is
actually used in the marketplace. . . . The more commonly
a phrase is used, the less likely that the public will use it
to identify only one source and the less likely that it will
be recognized by purchasers as a trademark.
In re Eagle Crest Inc., 96 USPQ2d at 1229 (citations omitted).
We first examine how applicant’s proposed mark is used on its specimens:3

Applicant asserts that it uses the term DESIGNED FOR WOMEN “prominently
and with trademark notice. The mark is not used together with explanatory
narrative, and is set off in a manner that conveys to consumers that it indicates the
source of the goods.”4

3 Applicant’s actual specimens are quite blurry, so much so that its asserted mark is
illegible on the first. The images above are attached to applicant’s June 13, 2011 response
to Office action and represented as “clearer copies of packaging.” Id. at 2, 4-5. They appear
to show packaging identical to that in applicant’s actual specimens.
4 Appeal Brief at 9.
Serial No. 85181815
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We do not view use of the phrase the same way applicant does. Although the
phrase appears on its own line at or near the top of each package, it is not displayed
prominently, but in very small type – smaller even than the similarly informational
phrase “for women” on the hoodia product packaging. That applicant uses the “TM”
symbol after the phrase does not transform it into a trademark. In re Aerospace
Optics Inc., 78 USPQ2d 1861, 1864 (TTAB 2006); In re Brass-Craft Mfg. Co., 49
USPQ2d 1849, 1853 (TTAB 1998); In re Remington Prods. Inc., 3 USPQ2d 1714,
1715 (TTAB 1987). Nor does applicant’s intent that the phrase function as a mark:
[T]he mere fact that applicant’s slogan appears on the
specimens, even separate and apart from any other
indicia which appear on them, does not make it a
trademark. To be a mark, the term, or slogan, must be
used in a manner calculated to project to purchasers or
potential purchasers a single source or origin for the
goods in question. Mere intent that a term function as a
trademark is not enough in and of itself, any more than
attachment of the trademark symbol would be, to make a
term a trademark.
Id. Rather, the relative placement, prominence, and meaning of the phrase
DESIGNED FOR WOMEN on the packaging indicate to us that the public will view
it as indicating not the source of the goods, but their intended consumers: women.
The examining attorney also has made of record evidence demonstrating
significant informational use of the phrase “designed for women” (as well as
“designed for men”) on product packaging, in news stories, and in text on third-
party websites, including in reference to applicant’s own products. For example, use
of the phrase “designed for women” on packaging for dietary supplements other
than applicant’s includes:
Serial No. 85181815
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• GNC Women’s Ultra Mega, “Premium multivitamin designed for
women”5

• Berkley & Jensen Women’s “Premium Multivitamin Designed for
Women”6

5 February 1, 2012 final Office action at 2.
6 Id. at 5.
Serial No. 85181815
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• TrimSpa Ultra Formula “designed for Women”7

Similarly, the examining attorney submitted screenshots of a page titled
“Supplements Designed for Women” from the website www.supplements101.com8
and of a page titled “Discover the Best Multivitamins for Women” and subtitled
“See Comparison of 100 Multivitamin Brands Designed for Women” from
www.multivitaminguide.org.9 Applicant itself has described its products in text on
its websites as “designed specifically for women,” “designed specifically for a
woman’s body,” and “designed with females in mind.”10
This evidence demonstrates that consumers are accustomed to seeing
“designed for women” used in a merely informational manner, as well as in

7 Id. at 120. The cached image from the website www.extremebargains.net states that this
package is “past date” and apparently expired in February 2009, id. at 119, nearly 1½ years
after applicant’s first use.
8 Id. at 97-98.
9 Id. at 57-61 (discussing “vitamin supplements”).
10 July 6, 2011 Office action at 1.
Serial No. 85181815
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association with items similar to applicant’s from different sources. As a result,
consumers will not perceive this wording as applied to applicant’s goods as a source
indicator uniquely identifying applicant.
In support of its argument that DESIGNED FOR WOMEN is capable of
trademark significance, applicant points to four registrations on the Supplemental
Register for DESIGNED FOR SENIORS;11 DESIGNED BY WOMEN, FOR
WOMEN;12 and SAFETY DESIGNED FOR WOMEN.13 Only one of these
registrations is for Class 5 goods,14 and the latter two of these phrases incorporate
wording in addition to DESIGNED FOR _____, which may have influenced whether
they were viewed as capable of acquiring trademark significance. Moreover, the
specimens of use for these registrations are not of record, so we cannot determine
how the terms are actually used. Finally, while the Office strives for consistency,
we must decide each case on its own record and merits. “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 . . . .” In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
We affirm the refusal to register DESIGNED FOR WOMEN on the ground
that it is merely informational matter and fails to function as a trademark under
Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051, 1052, and 1127.

11 Registration No. 3614183.
12 Registration Nos. 3846721 and 3846722.
13 Registration No. 3407595.
14 Registration No. 3846722.
Serial No. 85181815
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Mere Descriptiveness
A term is deemed to be merely descriptive of services, within the meaning of
Trademark Act Section 2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function, purpose or use of the services.
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978). “The 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); see also In re American
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant does not dispute that its dietary and nutritional supplements are
intended for use by women. Rather, applicant argues that the phrase DESIGNED
FOR WOMEN is suggestive because it “might equally convey any one of a number
of meanings as applied to dietary and nutritional supplements.”15 Applicant cites
two of the definitions for the word “design” submitted by the examining attorney:
1. To intend for a definite purpose; and
2. To plan and fashion artistically or skillfully.16
Applicant argues:
By virtue of the first definition, Wellnx’s DESIGNED
FOR WOMEN could convey that the dietary and

15 Applicant’s Brief at 7 (footnote omitted).
16 March 2, 2011 Office action at 56-59, retrieved from dictionary.com (definitions 2 and 3).
Serial No. 85181815
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nutritional supplements are “designed” or “intended” for
use by women, as opposed to men or children.
In view of the second definition, DESIGNED FOR
WOMEN could also convey that the shape or size of the
products were “designed” or “fashioned” to make them
uniquely suited to women, such as by using a smaller pill
size or a shape intended to appeal to female consumers.
It could also convey that the specific ingredients of the
product were chosen to address needs unique to the
physiology of adult females. Equally, the mark could
convey that something about the color or other aesthetic
properties of the products were designed to appeal
particularly to women.17
We agree with the examining attorney that “[t]he fact that the phrase does
not elaborate on the specific aspects of the product that makes them more suitable
for consumption by women than men is irrelevant.”18 A term need not immediately
convey an idea of each and every specific feature of the applicant’s goods in order to
be considered merely descriptive; it is enough that the term describes one single,
significant feature or attribute. See In re Chamber of Commerce of the U.S., 675
F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Oppedahl & Larson LLP,
373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (“A mark may be merely
descriptive even if it does not describe the full scope and extent of the applicant’s
goods or services.”) (quotation omitted); In re H.U.D.D.L.E., 216 USPQ 358, 359
(TTAB 1982); In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973). Consistent
with applicant’s argument, we find that the phrase DESIGNED FOR WOMEN
advises consumers that applicant’s dietary and nutritional supplements are

17 Applicant’s Brief at 6-7 (footnote omitted).
18 Examiner’s brief at unnumbered p. 18.
Serial No. 85181815
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“‘designed’ or ‘intended’ for use by women, as opposed to men or children.”19 We
further note that each of these definitions, when used in connection with applicant’s
goods, is merely descriptive of the goods and does not present a double entendre or
incongruous meaning. See In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB
2012). We therefore hold that the applied-for phrase is merely descriptive in
association with applicant’s goods pursuant to Trademark Act Section 2(e)(1), 15
U.S.C. § 1052(e)(1).
Acquired Distinctiveness
Applicant asserts in the alternative that its mark has acquired
distinctiveness pursuant to Trademark Act Section 2(f), 15 U.S.C. § 1052(f). The
burden of establishing that a mark has acquired distinctiveness is on the applicant.
See Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1006
(Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372, 375
(CCPA 1959). “To establish secondary meaning, a manufacturer must show that, in
the minds of the public, the primary significance of a product feature or term is to
identify the source of the product rather than the product itself.” Inwood Labs., Inc.
v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.11 (1982).
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. Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 166
USPQ 34, 39 (CCPA 1970); see also In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ

19 Applicant’s Brief at 6.
Serial No. 85181815
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381, 383 (CCPA 1960); In re Gammon Reel, Inc., 227 USPQ 729, 730 (TTAB 1985).
Typically, more evidence is required where a mark is so highly descriptive that
purchasers seeing the matter in relation to the named goods or services would be
less likely to believe that it indicates source in any one party. See, e.g., In re
Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir.
1990); In re Seaman & Assocs., Inc., 1 USPQ2d 1657, 1659 (TTAB 1986); In re
Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984). The applicant may
present any competent evidence to establish that a mark has acquired
distinctiveness. We consider the evidence applicant provided in support of its claim.
A. Sales, Advertising, and Commercial Impressions
Applicant submitted a declaration from director Derek Woodgate dated June
8, 2011 stating that its mark has become distinctive of its goods:
“1. through the applicant’s substantially exclusive and continuous use
thereof as a trademark, in commerce, for at least the 3½ years
immediately before the filing date of this statement;
2. through applicant’s reported media spend of over $100,000,000.00 (one
hundred million dollars) over the past 3½ years;
3. through applicant’s advertising expenditures of over $50,000,000 (fifty
million dollars) over the past 3½ years;
4. through applicant’s sales of over 10 million units of product in
packaging bearing the trademark; and
5. through an estimated 5,000,000,000 (5 billion) ‘impressions’ of the
mark upon consumers.”20
These numbers obviously are large. Applicant, however, provided no examples or
other evidence concerning the nature of its advertisements. Nor did applicant

20 June 13, 2011 response to Office action at 3.
Serial No. 85181815
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provide any evidence whatsoever regarding the source of the consumer
“impressions” of its mark. It is therefore impossible to determine how the phrase
DESIGNED FOR WOMEN is used in applicant’s advertising, and particularly
whether the phrase is used in a manner sufficient to create secondary meaning
among consumers. See Trademark Rule 2.41(a), 37 C.F.R. § 2.41(a) (stating that an
applicant may submit evidence of advertising expenditures “identifying types of
media and attaching typical advertisements”). Evidence of the amount of
applicant’s advertising expenditures, without more, merely substantiates its efforts
to develop distinctiveness and does not prove that the advertising has been
effective. See In re Pennzoil Prods. Co., 20 USPQ2d 1753, 1760 (TTAB 1991); In re
Redken Labs., Inc., 170 USPQ 526, 529 (TTAB 1971) (“It is necessary to examine
the advertising material to determine how the term is being used therein, what is
the commercial impression created by such use, and what would it mean to
purchasers.”). The fact that 10 million “units” of product have been sold in
packaging bearing the phrase does not result in acquired distinctiveness unless
purchasers view that phrase as a source indicator. Applicant provides no evidence
that its efforts to establish acquired distinctiveness in the phrase DESIGNED FOR
WOMEN have succeeded.
The only evidence applicant submitted, in addition to the Woodgate
declaration and the two images of packaging referenced supra, is what appears to
be the front and back of a third package of applicant’s product:21

21 Id. at 6-7. The declaration refers to “additional specimens substituted herewith.” Id. at
3.
Serial No. 85181815
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We view use of the applied-for phrase on this package as similar to that of the other
two packages discussed supra.
In view of the highly descriptive nature of the phrase DESIGNED FOR
WOMEN and the incomplete nature of the evidence of secondary meaning,
applicant’s evidence falls short of establishing acquired distinctiveness.22
B. Request for Remand to Provide Statement of More Than Five Years’ Use
Finally, at pages 7-8 of its appeal brief, applicant asks the Board to “remand
the proceeding to permit Wellnx to submit additional evidence, including a claim
based on five years’ use and evidence of promotional expenditures and sales from

22 We also point out that, in any event, no amount of Section 2(f) evidence would suffice to
overcome the “merely informational” refusal under Sections 1, 2 and 45 of the Trademark
Act. In re Tilcon Warren, Inc., 221 USPQ 87, 87-88 (TTAB 1984).
Serial No. 85181815
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June 2011 to the present”23 should we find its Section 2(f) evidence insufficient.
Applicant correctly states that it could not have made a claim of acquired
distinctiveness based on five years’ use during prosecution because its first use date
is alleged to be September 2007.24
The record in an application should be complete prior to filing an appeal, and
the Board ordinarily will not consider additional evidence submitted after the
appeal is filed. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). “After an appeal is
filed, if the appellant or the examiner desires to introduce additional evidence, the
appellant or the examiner may request the Board to suspend the appeal and to
remand the application for further action.” Id. Such a request should be made by
way of separate motion rather than buried in the appeal brief.25 Applicant’s request
contemplates a final decision on the merits of its claim before the Board considers
remand and, as such, is untimely. An application may not be reopened after final
decision except for entry of a disclaimer. Trademark Rule 2.142(g), 15 U.S.C.
§ 2.142(g).
Moreover, remand in an ex parte appeal is a matter of discretion with the
Board, and a request to remand for additional evidence must be accompanied by the
additional evidence sought to be introduced. Trademark Trial and Appeal Board
Manual of Procedure (TBMP) §§ 1205.01, 1207.02 (3d ed. rev. June 2012).
Applicant did not submit any such evidence.

23 Appeal Brief at 8.
24 Id. at 7.
25 We also note that this claim of five years use had matured and a request for remand
could have been made at the time applicant’s brief was originally due on October 1, 2012.
Serial No. 85181815
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Even if applicant’s request was not untimely, we find the request to submit
“evidence of promotional expenditures and sales from June 2011 to the present”
does not constitute good cause for remand. “[I]f the applicant requests remand to
make of record its most recent monthly sales or advertising figures in support of a
Trademark Act § 2(f), 15 U.S.C. § 2(f), claim, the request may be denied. There is a
point at which prosecution or examination must come to an end.” TBMP
§ 1207.02(1).
Turning to applicant’s request to assert that it has acquired distinctiveness
based on five years’ use of the term DESIGNED FOR WOMEN, we agree with the
examining attorney that such a claim would not be sufficient. Although such a
statement may be accepted as prima facie evidence that a mark has acquired
distinctiveness, Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), and
Trademark Rule 2.41(b), 37 C.F.R. § 2.41(b), state that reliance on a claim of five
years’ use to establish secondary meaning is acceptable in “appropriate cases,”
depending largely on the nature of the mark in relation to the specified services. If
a mark is highly descriptive of the services named in the application, the statement
of five years’ use alone will be deemed insufficient to establish acquired
distinctiveness. See In re Crystal Geyser Water Co., 85 USPQ2d 1374, 1379 (TTAB
2007); In re Kalmbach Publ’g Co., 14 USPQ2d 1490, 1492 (TTAB 1989); In re Gray
Inc., 3 USPQ2d 1558, 1559 (TTAB 1987). Given the highly descriptive and
informational nature of applicant’s asserted mark, a statement of more than five
years’ use would be insufficient to establish acquired distinctiveness.
Serial No. 85181815
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Such a statement, furthermore, must claim not just continuous use by the
applicant in commerce for at least the preceding five years, but that such use has
been substantially exclusive. The evidence of record indicates that applicant’s use
of the term “designed for women” has not been substantially exclusive.
For these reasons, we decline to exercise our discretion to suspend the appeal
and remand for submission of additional evidence as requested by applicant.
Decision: The refusal of registration is affirmed.