Nikos Alexakis AG

Trademark Trial and Appeal Board

May 22, 2015

No. 85943027 (T.T.A.B. May. 22, 2015)

Mailed: May 22, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Nikos Alexakis AG
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Serial No. 85943027

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Marijan Stephan Hucke of Hucke & Hucke, for Nikos Alexakis AG.

Donald Johnson, Trademark Examining Attorney, Law Office 104 (Chris
Doninger, Managing Attorney).
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Before Ritchie, Kuczma, and Masiello,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Nikos Alexakis AG (“Applicant”) filed an application to register on the
Principal Register the mark OMEGA SOUL, in standard character form, for,
as relevant, “nutritional supplements,” in International Class 5.1 The
Examining Attorney refused registration of the goods in Class 5 only under
Section 2(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a), on the ground
1 Application Serial No. 85943027 was filed on May 27, 2013, under Section 1(b) of
the Trademark Act, alleging a bona fide intent to use the mark in commerce and
disclaiming the exclusive right to use the term “OMEGA” apart from the mark as
shown.
THIS OPINION IS A NOT
PRECEDENT OF
THE T.T.A.B.

Serial No. 85943027
that the mark sought to be registered is deceptive of a feature or ingredient of
those identified goods.2
When the refusal was made final, applicant filed an appeal. Applicant
and the examining attorney each filed briefs.
In accordance with Section 2(a) of the Trademark Act, registration must
be refused if a mark is deceptive of a feature or an ingredient of a mark. The
Examining Attorney’s brief contends, specifically, that the term “OMEGA” in
applicant’s mark would be understood by consumers to refer to “omega fatty
acids, a group of fats that are thought by a substantial number of consumers
to have health benefits.” 11 TTABVUE 5.
The U.S. Patent and Trademark Office has the initial burden of putting
forth a prima facie case that a trademark falls within the prohibition of
Section 2(a). In re Budge, 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir.
1988) (LOVEE LAMB deceptive for “automotive seat covers”). The test is: 1)
whether the mark misdescribes the goods; 2) if so, whether consumers would
be likely to believe the misrepresentation; and 3) whether the
misrepresentation would materially affect potential purchasers’ decision to
purchase the product. Id. at 1260. The term “omega” has various definitions,
including (1) the 24th and last letter of the Greek alphabet; and (medical) of,
relating to, or being a chemical group or position at the end of a molecular
2 Other grounds for refusal were addressed by Applicant and subsequently
withdrawn or deemed satisfied by the Examining Attorney.
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chain .3
In looking at the first element, we must decide whether the term
“OMEGA” misdescribes the goods for which applicant seeks registration.
There are essentially two parts to the Examining Attorney’s argument. First,
the Examining Attorney asserts that the term “OMEGA” is a separately
analyzable component in the mark that consumers will understand to refer to
omega fatty acids. Second, the Examining Attorney asserts that omega fatty
acids are not included in applicant’s “nutritional supplements.”
Regarding the first argument, Applicant notes that the term “OMEGA” is
and may be perceived as “the 24th letter of the Greek alphabet”, 9 TTABVUE
4, and cites to a nonprecential decision for the proposition that a unitary
mark may be created by adding another term to “OMEGA.” In re Omega
Alpha Pharmaceuticals Inc., nonprecedential (Serial Nos. 77486429 and
77486441 TTAB March 26, 2013). However, in that case, the mark at issue
was as follows:

3 Merriam-webster.com; The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc.,
213 USPQ 594 (TTAB 1982), aff’d 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
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Serial No. 85943027
As such, the components of the mark, two Greek letters, were clearly related.
Applicant here, by contrast, does not explain what unitary commercial
impression is formed by the terms “OMEGA” and “SOUL” with regard to
“nutritional supplements.” Rather, in viewing the mark “OMEGA SOUL” as a
whole, we find it appropriate to analyze the term “OMEGA” as a component
in a Section 2(a) analysis.
In this regard, Applicant argues that consumers will not perceive the term
“OMEGA” in its mark as referring to omega fatty acids since omega fatty
acids are actually referred to by number (omega-3, omega-6), and not
generally as “omega” or “omegas.” 9 TTABVUE 4-5. Applicant further
submitted evidence of six third-party registrations for dietary or nutritional
supplements that contain the term “OMEGA”: COMPLETE OMEGA
COMPLEX; OMEGA MAN; OMEGA MOM; OMEGA-T; OMEGATRU, and
design; and OMEGA WOMAN. However, these do not support Applicant’s
position. Indeed all but one (the design mark), are registered with either a
disclaimer of the term “OMEGA” or on the Supplemental Register.
The Examining Attorney also submitted evidence that the term “OMEGA”
is used without numbers in relation to nutritional supplements in a
descriptive manner. Some examples of such images in the record include the
following:
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As for the Examining Attorney’s second assertion, Applicant does not deny
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has admitted that it currently offers goods under the mark that do not
contain omega fatty acids.4 Rather, Applicant argues that it is clear from the
labeling that “it currently markets the product Garcinia Cambogia.” 9
TTABVUE 4. As our precedent dictates, labeling or advertising is not
sufficient to avoid misdescriptiveness. See In re E5 LLC, 103 USPQ2d 1578,
1581 (TTAB 2012) (“any clarifying features of an applicant’s advertising do
not serve to overcome deceptiveness in a mark. Rather, the mark must stand
on its own”; citing In re Budge, 8 USPQ2d at 1261); see also In re ALP of S.
Beach Inc., 79 USPQ2d 1009, 1014-1015 (TTAB 2006) (CAFETERIA
deceptive for “restaurants providing full service to sit-down patrons,
excluding cafeteria-style restaurants”).
We find that although Applicant’s goods do not contain omega fatty acids
in significant part, consumers would perceive Applicant’s mark OMEGA
SOUL for “nutritional supplements” as an indication that they do, given that
nutritional products sold by others are so marked. Thus we find the first
prong of the Section 2(a) deceptiveness test to be satisfied.
For the second prong of the deceptiveness analysis, we ask whether
4 In the first office action, the Examining Attorney issued a requirement that
Applicant verify “that its goods (i.e., nutritional supplements) contain in significant
part omega fatty acids.” Applicant responded in the January 17, 2014 Response to
Office Action, “The applicant currently markets the product Garcinia Cambogia as
depicted to the right. … The applicant submits that it currently does not market any
products which contain in significant part omega fatty acids. However, the applicant
intends to introduce new products which do contain omega fatty acids in the near
future.” Applicant did not follow up on this assertion or provide any further
argument or evidence in that regard. Applicant’s statement is insufficient to avoid a
refusal under Section 2(a).
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Serial No. 85943027
consumers are likely to believe that the misdescription actually describes the
goods. In this regard, the Examining Attorney submitted evidence to show
that omega fatty acids are a common ingredient in dietary supplements or
themselves constitute a supplement. Some examples are as follows:

NIH: National Center for Complementary and Alternative Medicine
(NCCAM): Key Points: There has been a substantial amount of
research on omega-3 supplements and heart disease. . . . According to
the 2007 National Health Interview Survey, which included a
comprehensive survey on the use of complementary health approaches
by Americans, fish oil/omega-3/DHA supplements are the
nonvitamin/nonmineral natural product most commonly taken by
adults, and the second most commonly taken by children.
Attached to June 17, 2013 Office Action, p. 48-50
http://nccam.nih.gov
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We find that, because the evidence shows that omega fatty acids are a
common supplement or ingredient in nutritional supplements, consumers
will believe, based on the mark and the goods at issue, that Applicant’s goods
contain that ingredient. Thus, the second prong of the Section 2(a)
deceptiveness test has also been satisfied.
In the third prong of the deceptiveness analysis, we ask whether the
misdescription is material to consumers’ decision to purchase the goods. See
In re Budge, 8 USPQ2d at 1260; see also In re E5 LLC, 103 USPQ2d 1578
(TTAB 2012) (finding mark with “CU” deceptive under Section 2(a) for
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dietary supplements). The examining attorney has submitted the evidence to
show that the intake of omega fatty acids may be perceived as useful for a
person’s health:
WebMD: Guide to a Healthy Kitchen: Understanding the Omega
Fatty Acids: Nutritionists call omega-3 and omega-6 fatty acids
“essential” fats for good reason. The human body needs them for
many functions, from building healthy cells to maintaining
brain and nerve function.
Attached to February 5, 2014 Final Office Action, p.2.

Fish Oil and Omega-3 EPA: The Omega-3s in Fish Oil may
reduce coronary heart disease risk and higher levels of the
Omega-3 EPA have been clinically shown to support a healthy
mood.
Attached to September 12, 2014 Denial of Request for
Reconsideration

Wikipedia: Omega-3 fatty acids: Omega-3s are considered
essential fatty acids . . . . Eating a diet high in fish that contain
long chain omega-3 fatty acids does appear to decrease the risk
of stroke. Large amounts may increase low-density lipoproteins
(LDL) (see below) up to 46%, . . . .Omega-3 fatty acids also have
mild antihypertensive effects.
Attached to June 17, 2013 Office Action, p. 4-5
http://en.wikipedia.org

Applicant also submitted the following regarding “fatty acids”:

Fatty acid: In chemistry, particularly in biochemistry, a fatty
acid is a carboxylic acid with a long aliphatic tail (chain), which
is either saturated or unsaturated. . . . Fatty acids are important
sources of fuel because, when metabolized, they yield large
quantities of ATP.
Attached to August 5, 2014 Response to Office Action, p2-7
http://en.wikipedia.org

Because the evidence shows that omega fatty acids are perceived as having
desirable health benefits, we find that their presence as an ingredient -- or
indeed their absence -- would be material to the decision of consumers to
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purchase Applicant’s nutritional supplements. Thus, the third and final
prong of the Section 2(a) deceptiveness test has also been satisfied.
In sum, after reviewing the evidence of record, we find that all three
prongs of the deceptiveness test have been satisfied: 1) Applicant’s mark
misdescribes its goods because consumers would understand the mark
OMEGA SOUL in the context of the goods sought to be registered to refer to
omega fatty acids, and the goods do not contain this ingredient; 2) due to the
inclusion of omega fatty acids as an ingredient in nutritional supplements,
consumers are likely to believe the misdescription; and 3) due to the health
benefits of omega fatty acids, the misrepresentation will materially affect the
decisions of consumers whether to purchase the goods. The Examining
Attorney’s evidence established a prima facie case against registration, and
Applicant did not meet its burden to come forward with countering evidence
to overcome the refusal. See Budge, 857 F.2d at 776, 8 USPQ2d at 1260.
Although “OMEGA” does refer to a letter of the Greek alphabet, it is clear
that in the context of Applicant’s “nutritional supplements,” consumers will
understand the mark OMEGA SOUL to refer not to the Greek letter
“OMEGA” but rather to omega fatty acids that are common in nutritional
supplements and which are perceived as conferring health benefits.
Therefore, the trademark refusal under Section 2(a) is affirmed on the
ground that the mark sought to be registered is deceptive of a feature or
ingredient of the identified goods in Class 5.
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Decision: The 2(a) refusal to register is affirmed as to class 5
only.

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