Nutri/System IPHC, Inc.v.Nutrimost LLC

Trademark Trial and Appeal Board

Jul 30, 2019

91233167 (T.T.A.B. Jul. 30, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: July 30, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Nutri/System IPHC, Inc.

v.

Nutrimost LLC

_____

Opposition No. 91233167
_____

Lisa A. Lori of Klehr Harrison Harvey Branzburg LLP
for Nutri/System IPHC, Inc.

Laura L. Beoglos of Sand & Sebolt, for Nutrimost LLC.

_____

Before Greenbaum, Goodman and Pologeorgis,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Nutrimost LLC (“Applicant”) filed an application to register the mark
NUTRIMOST WELLNESS & WEIGHT LOSS (in standard characters, WELLNESS
& WEIGHT LOSS disclaimed) for the following services: “providing weight loss and
nutritional program services and dietary and nutritional guidance, all of the
Opposition No. 91233167
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aforementioned services offered only through offices professionally supervised by
healthcare practitioners” in International Class 44.1
Nutri/System IPHC, Inc. (“Opposer”) opposes registration on the ground of
likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d),
as well as on the basis of breach of the parties’ settlement agreement (“Agreement”),
namely that the plain language of the Agreement precludes registration of
NUTRIMOST WELLNESS & WEIGHT LOSS. Opposer pleaded ownership of its
previously used and registered NUTRISYSTEM and marks for a
variety of nutrition and weight loss goods and services.
Applicant filed an answer denying the salient allegations in the notice of
opposition.2 Each party filed a trial brief and Opposer filed a reply brief.3
I. Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the involved application.
Opposer introduced the following testimony: the declaration testimony of Denise
Bergner, (“Bergner declaration”), Vice President, Legal and Corporate Compliance,

1 Application Serial No. 87089928 was filed on June 30, 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.
2 Applicant also asserted the affirmative defense that the Board lacks subject matter
jurisdiction over the Applicant. This defense was not pursued at trial nor argued in
Applicant’s trial brief, and therefore we consider this defense waived. AS Holdings, Inc. v. H
& C Milcor, Inc., 107 USPQ2d 1829 1831 n.5 (TTAB 2013).
3 References to the briefs and the record refer to the Board’s TTABVUE docket system.
Opposition No. 91233167
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for Nutrisystem, Inc. (“Nutrisystem”), the parent of Opposer, and Exhibits A-G, 9
TTABVUE; the rebuttal declaration testimony of Denise Bergner, 18 TTABVUE; and
the rebuttal declaration testimony of Timothy DeGennaro, (“DeGennaro declaration”)
Associate Vice President for Insights Communities and Research at Finch Brands,
and Exhibit No. 1, 19 TTABVUE.
Applicant introduced the following testimony and evidence: the declaration
testimony of Ray Wisniewski, D.C., (Wisniewski declaration), President of NutriMost,
LLC, and Exhibits A-L, 12 TTABVUE; first notice of reliance on TESS printouts of
third-party registrations, 13-15 TTABVUE; second notice of reliance on third-party
web page printouts, 16 TTABVUE; and third notice of reliance on USPTO electronic
records of Registration No. 5267226 for the mark NUTRIMOST FOREVER and
Registration No. 5020059 for the mark NUTRIMOST, 17 TTABVUE.
II. Preliminary Matters
Applicant has objected to the DeGennaro declaration and survey submitted by
Opposer during its rebuttal testimony period. Applicant submits that this testimony
and survey are improper rebuttal, and the testimony and survey should have been
submitted during Opposer’s case-in-chief.4 Applicant seeks for the testimony and
survey to be excluded.
In response, Opposer argues that Applicant “opened the door to this evidence” and
“[t]he survey was included to rebut NutriMost’s contention, made throughout these

4 Applicant also argues that Opposer failed to provide any expert disclosures and that while
Opposer identified Mr. DeGennaro in its rebuttal disclosures, it did not identify him in its
pretrial disclosures. Opposer does not address this argument in its response.
Opposition No. 91233167
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proceedings from the very beginning, that there (supposedly) was no likelihood of
confusion.” 22 TTABVUE 11.
During a plaintiff’s rebuttal testimony period, the plaintiff may introduce evidence
and testimony to deny, explain, or discredit facts and witnesses adduced by the
defendant. Evidence is improper rebuttal, however, where it relates to a witness and
facts that might appropriately have been introduced during the party’s case-in-chief.
Western Leather Goods Co. v. Blue Bell, Inc., 178 USPQ 382, 383 (TTAB 1973). In this
case, the testimony and survey relate to the issue of likelihood of confusion. As such,
this evidence constitutes improper rebuttal because it should have been made of
record during Opposer’s case-in-chief. Accordingly, we have given no consideration to
the DeGennaro declaration and survey.
Opposer indicates in its trial brief that the issue for decision is “Does the
Agreement entered into between Opposer and Applicant preclude registration of
Applicant’s mark NUTRIMOST WELLNESS AND WEIGHT LOSS?” [sic] 20
TTABVUE 7. Opposer reiterates in its reply brief that the “issue presented, [is]
namely, whether the plain language of the Agreement precludes registration.” 22
TTABVUE 11.
In its brief, Opposer did not discuss its likelihood of confusion claim but only
discussed the issue of whether the parties’ Agreement precludes registration of
Applicant’s mark. Therefore, we find that the likelihood of confusion claim has been
waived. Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750,
1754 (TTAB 2013).
Opposition No. 91233167
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III. Standing
To have standing, a plaintiff must have a real interest, i.e., a personal stake in the
outcome of the proceeding and a reasonable basis for its belief that it will be damaged.
See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,
1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-28
(Fed. Cir. 1999). Opposer has properly made its pleaded registrations of record by
testimony.5 Bergner declaration ¶ 8, 9 TTABVUE 3-7. Trademark Rule 2.122(d)(2),
37 C.F.R. § 2.122(d)(2). Opposer also introduced the parties’ Agreement by testimony.
9 TTABVUE. In view thereof, we find Opposer has established its personal interest
in this proceeding and proven its standing. Cunningham v. Laser Golf Corp., 222 F.3d
943, 945, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Vaughn Russell Candy Co. v.
Cookies In Bloom Inc., 47 USPQ2d 1635, 1638 (TTAB 1998).
IV. Background
The parties were involved in a prior Board proceeding, Opposition No. 91221981,
in connection with application Serial No. 86421639, for the mark NUTRIMOST, for
Class 5 dietary and nutritional supplements and for Class 44 nutritional program
services.6 Bergner declaration ¶¶ 12, 14, 9 TTABVUE 8; Wisniewski declaration ¶¶

5 Registration Nos. 1251922, 1297847, 1731373, 1767562, 1776989, 1956649, 3251743,
3433126, 3467401, 3519390, 3519391, 4327113, 4327114, 4327116, 4327117, 4330709,
4766989, 4767024, 4767235, 4775224 and 4775225.
6 As issued, goods and services for the NUTRIMOST registration are as follows: Class 5:
“Dietary and nutritional supplements used for weight loss only offered through offices
professionally supervised by healthcare practitioners” and Class 44: “Providing weight loss
and nutritional program services only offered through offices professionally supervised by
healthcare practitioners.” Applicant’s Third Notice of Reliance, 17 TTABVUE 7-9.
Opposition No. 91233167
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8-9, 12 TTABVUE 4. In May 2016, the parties entered into a settlement to resolve
that opposition (i.e., the Agreement).7 Bergner declaration ¶ 16, 9 TTABVUE 8;
Wisniewski declaration ¶10, 12 TTAVUE 4; Wisniewski declaration, Exhibit C, 12
TTABVUE 22-25.
Based on the parties’ Agreement, which addressed application Serial No.
86421639 in Opposition No. 91221981, as well as future use and/or registration of
NUTRIMOST marks,8 Opposer withdrew and dismissed Opposition No. 91221981.
Bergner declaration ¶ 18, 9 TTABVUE 9; Wisniewski declaration ¶¶ 14-15, 12
TTABVUE 5. In addition, Applicant agreed to the following regarding its trademark
use and registration:
2. NutriMost shall only offer its goods and services through offices
professionally supervised by healthcare practitioners …

3(a). NutriMost agrees that it will not use the words “Nutri” or “Nutra”
with any word(s) or phrase(s) that convey or imply weight loss or diet
type products or services, such as, by way of example but not limitation,
“Nutridiet”; “Nutradiet”; NutriMost shall never use the words “Nutri” or
“Nutra” with the words “System” or “Systems”; and NutriMost shall
never use the words “Nutri” or “Nutra” with the terms “weight loss” or
“weight management” but the Parties expressly agree and understand
that, except as provided herein, NutriMost may use the wording
“NutriMost” with any wording that conveys or implies weight loss or diet
type products or services.

3(b). NutriMost agrees never to use or seek to register
NUTRIMOSTDIET or NUTRIMOST SYSTEM, or any reasonable
variations thereof, as a trademark, trade name, domain name or in

7 The Agreement states that it is effective as of the latest date signed. 9 TTABVUE 41. The
parties signed on separate dates, with Applicant signing on May 10, 2016, and Opposer
signing on May 17, 2016. Id. at 45. Opposer considers the date of the Agreement as May 17,
2016. Bergner declaration ¶16, 9 TTABVUE 16.
8 The Agreement also addressed Applicant’s application Serial No. 86876678, which was in
examination at the time. 9 TTABVUE 41.
Opposition No. 91233167
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connection with any gTLD regardless of the goods or services, including,
but not limited to, the domains, nutrimostdiet, nutrimost.diet.
nutrimostsystem or nutrimost.system; provided, however NutriMost
shall have the right to own and use the domain nutrimost.com and other
reasonable variations thereof so long as “Nutri'” and “Most” appear as
one word and never in any combination with the words “Diet” or
“System.”

7. NutriMost shall not object to Nutrisystem’s nationwide use and
registration of the Nutrisystem trademark; NutriMost further agrees
not to seek to cancel any of Nutrisystem’s existing registrations nor
oppose any future applications for Nutrisystem marks owned by
Nutrisystem or a successor-in-interest, wholly-owned subsidiary or
affiliate. Likewise, Nutrisystem shall not object to NutriMost’s
nationwide use and registration of the NUTRIMOST MARKS;
Nutrisystem further agrees not to seek to cancel the NUTRlMOST
MARKS nor oppose any future applications for the NUTRIMOST
MARKS owned by NutriMost or a successor-in-interest, wholly-owned
subsidiary or affiliate, provided that NutriMost is in compliance with its
obligations under this Agreement, including its obligations and
covenants as contained in paragraphs 3a and 3b herein.

12. This Agreement and all matters relating hereto are governed by, and
shall be construed in accordance with, the laws of the Commonwealth of
Pennsylvania, without regard to its conflict of law provisions …

Exhibit to Bergner declaration, 9 TTABVUE 42-44; Exhibit to Wisniewski
declaration, 12 TTABVUE 17-19.

After Opposition No. 91221981 was dismissed, Applicant filed the involved
application for NUTRIMOST WELLNESS & WEIGHT LOSS. Bergner declaration
¶19, 9 TTABVUE 9. On March 1, 2017, Opposer filed the instant opposition against
Applicant. Id. at ¶¶ 19, 21, 9 TTABVUE 9-10. The parties’ current dispute relates to
Opposition No. 91233167
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the interpretation of Section 3(a) of the parties’ Agreement, and whether Applicant is
entitled to use NUTRIMOST with the term “weight loss.”9
V. Does the Parties’ Agreement Preclude Applicant from filing an
application for a trademark that combines NUTRIMOST with the term
“weight loss?”
The issue of whether Applicant is precluded by the terms of the parties’ Agreement
from making any use of the term WEIGHT LOSS in conjunction with its
NUTRIMOST mark is a matter that may be considered by the Board. Kimberly-Clark
Corp. v. Fort Howard Paper Co., 772 F.2d 860, 863, 227 USPQ 36, 38 (Fed. Cir. 1985)
(“Whether a mark otherwise entitled to registration is, nevertheless, barred
therefrom by an agreement between the parties … [is an issue] within the jurisdiction
of the board and may constitute an independent basis for sustaining the opposition.”).
See also M-5 Steel Mfg. Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1094 (TTAB 2001)
(The Board may consider “the [parties] agreement, its construction, or its validity if
necessary to decide the issues properly before [the Board].”) (quoting Selva & Sons,
Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 1324, 217 USPQ 641, 647 (Fed. Cir. 1983));
Vaughn Russell Candy Co., 47 USPQ2d at 1638 n.6 (“[w]hile it does not lie within the
jurisdiction of the Board to enforce the contract between the parties, agreements to
cease use of a mark or to not use a mark in a certain format are routinely upheld and
enforced.”). Section 7 of the parties’ Agreement provides that Opposer will not oppose

9 To the extent that Opposer has argued that Applicant has breached the parties’ Agreement
by selling supplements on the Internet, this is a claim which cannot be addressed by the
Board as it does not relate to trademark registration rights.

Opposition No. 91233167
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“any future applications for the NUTRIMOST MARKS owned by NutriMost …
provided that NutriMost is in compliance with its obligations under this Agreement,
including its obligations and covenants as contained in paragraphs 3a and 3b herein.”
Thus, we may resolve any disputes regarding the meaning and interpretation of the
Agreement in connection with Applicant’s right to register the NUTRIMOST
WELLNESS & WEIGHT LOSS mark.
The question of whether Applicant is prohibited from seeking to register
NUTRIMOST marks that include the term WEIGHT LOSS requires construction of
the terms of the Agreement. We construe the Agreement in accordance with the laws
of the Commonwealth of Pennsylvania under paragraph 12 of the Agreement.
Pennsylvania contract law begins with the “firmly settled” point that “the intent
of the parties to a written contract is contained in the writing itself.” Krizovensky v.
Krizovensky, 624 A.2d 638, 642 (Pa. Super Ct.1993) (citing Steuart v. McChesney, 444
A.2d 659 (Pa. 1982)). “Clear contractual terms that are capable of one reasonable
interpretation must be given effect without reference to matters outside the contract.”
Krizovensky, 624 A.2d at 642. See East Crossroads Ctr., Inc. v. Mellon–Stuart Co., 205
A.2d 865, 866 (Pa. 1965) (“Where the intention of the parties is clear, there is no need
to resort to extrinsic aids or evidence.”). “The general rule in Pennsylvania is to give
effect to the plain language of the agreement.” Steuart, 444 A.2d at 661 (quoting East
Crossroads Ctr., 205 A.2d at 866).
Pennsylvania recognizes two kinds of ambiguity: patent and latent. A patent
ambiguity “‘appears on the face of the instrument, and arises from the defective,
Opposition No. 91233167
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obscure or insensible language used.’” Steuart 444 A.2d at 663. A latent ambiguity,
by contrast, “‘arises from extraneous or collateral facts which make the meaning of a
written agreement uncertain although the language used thereof, on its face, appears
clear and unambiguous.’” Id. “A contract is not ambiguous if the court can determine
its meaning without any guide other than a knowledge of the simple facts on which,
from the nature of the language in general, its meaning depends; and a contract is
not rendered ambiguous by the mere fact that the parties do not agree on the proper
construction.” Samuel Rappaport Family Partnership v. Meridian Bank, 657 A.2d 17,
21-22 (Pa Super Ct.1995) (quoting Z & L Lumber Co. of Atlasburg v. Nordquist, 502
A.2d 697, 700 (Pa. Super. Ct.1985)). See also Hutchison v. Sunbeam Coal Corp., 519
A.2d 385, 390 (Pa. 1985) (“A provision is ambiguous “if it is reasonably susceptible of
different constructions and capable of being understood in more than one sense.”).
“Where an ambiguity exists, parol evidence is admissible to explain or clarify or
resolve the ambiguity.” In re Herr’s Estate, 161 A.2d 32, 34 (Pa. 1960).
In this case, the focus is on Section 3(a) of the parties’ Agreement and the
interpretation of the highlighted wording:
NutriMost agrees that it will not use the words “Nutri” or
“Nutra” with any word(s) or phrase(s) that convey or imply
weight loss or diet type products or services, such as, by
way of example but not limitation, “Nutridiet”;
“Nutradiet”; NutriMost shall never use the words “Nutri”
or “Nutra” with the words “System” or “Systems”; and
NutriMost shall never use the words “Nutri” or “Nutra”
with the terms “weight loss” or “weight management” but
the Parties expressly agree and understand that,
except as provided herein, NutriMost may use the
wording “NutriMost” with any wording that conveys
Opposition No. 91233167
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or implies weight loss or diet type products or
services.
Opposer argues that this provision allows “Nutrimost to use NUTRIMOST with
alternate wording expressing those same concepts—i.e., wording that conveys or
implies weight loss or ‘weight management,’ without using the exact terms ‘weight
loss’ or ‘weight management.’” 20 TTABVUE 17. Applicant submits that “the wording
of the Agreement is very specific in that it allows Applicant to use the descriptive
wording WEIGHT LOSS” with NUTRIMOST. 21 TTABVUE 18. The parties have
submitted parol evidence relating to the parties’ discussions as to the terms of this
Agreement and Section 3(a) in particular.
In a case involving contract construction, we are tasked with finding the meaning
of a provision to which the parties have agreed. We consider whether Section 3(a)
must be construed to mean that Applicant cannot use NUTRIMOST with the term
“weight loss,” or whether Section 3(a) should be construed to mean that “Applicant
may indeed use any wording conveying weight loss with the wording NUTRIMOST,”
including the wording “weight loss” itself. 20 TTABVUE 19, 21 TTABVUE 20.
Opposer argues that “Section 3(a) allows NutriMost to use the term NUTRIMOST
with other words or terms that convey or imply weight loss” but the Agreement
prohibits NutriMost from using the NUTRIMOST WELLNESS & WEIGHT LOSS
mark due to the wording “except as provided herein” in the fourth clause, referencing
earlier clauses in Section 3(a), and incorporating their prohibitions. (emphasis in
original), 20 TTABVUE 22, 23. Applicant, on the other hand, submits that the clauses
in Section 3(a) must all be read in conjunction, and the fourth and final clause relating
Opposition No. 91233167
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to use of NUTRIMOST is “Opposer’s further acknowledgement that Opposer would
agree to allow Applicant to use its NUTRIMOST name with the wording ‘weight
loss’” because otherwise, the additional clause is unnecessary. (emphasis in original),
21 TTABVUE 20. Applicant submits that “[t]he purpose of this additional language
[i.e, except as provided …] where the parties are expressly agreeing and
understanding what is acceptable is to remove any doubt whatsoever that Applicant
could indeed describe its weight loss goods and services using the descriptive wording
‘weight loss’ so long as the mark NUTRIMOST was also used.” Id.
“It is [a] well-established principle that words in a contract are to be construed in
their natural, plain, and ordinary sense ... and we may inform our understanding of
these terms by considering their dictionary definitions.”10 True R.R. Assocs., L.P. v.
Ames True Temper, Inc., 152 A.3d 324, 339 (Pa. Super. Ct. 2016) (quoting Madison
Constr. Co. v. Harleysville Mut. Ins. Co., 735 A.2d 100, 108 (Pa. 1999); Pines Plaza
Bowling, 145 A.2d 672, 676 (1958) (words of a contract are to be given their ordinary
meaning, if left undefined; court may use dictionary definitions to ascertain plain
meaning of contract language). “Trade terms, legal terms of art, numbers, common
words of accepted usage and terms of a similar nature should be interpreted in accord
with their specialized or accepted usage unless such an interpretation would produce
irrational results or the contract documents are internally inconsistent.” Mellon
Bank, N.A. v. Aetna Bus. Credit, Inc., 619 F.2d 1001, 1013 (3d Cir. 1980) (applying

10 The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed format. Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031,
1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
Opposition No. 91233167
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Pennsylvania contract law). Words, phrases, sentences and paragraphs of a contract
are not to be read alone; the intention of the parties must be gathered from the entire
contract. Bohler-Uddeholm Am., Inc. v. Ellwood Group, Inc., 247 F.3d 79 (3d Cir.
2001) (applying Pennsylvania contract law). That is, each provision in a contract must
be interpreted in light of the other provisions so that each provision is given the
meaning suggested by the contract as a whole. To this end, contract terms will not be
construed in such a manner to render them meaningless. See, e.g., Girard Trust Bank
v. Life Ins. Co. of N. Am., 364 A.2d 495, 498 (Pa. Super. Ct. 1976).
In this case, the words in Section 3(a) are of common usage, undefined in the
contract itself, and are to be construed in their natural, plain, and ordinary sense,
and generally accepted meaning. We take judicial notice of the dictionary definitions
for the terms “except,” “convey,” and “imply.” The plain ordinary meaning of “except”
is “with the exclusion or exception of” MERRIAM-WEBSTER DICTIONARY (merriam-
webster.com, accessed July 23, 2019), and “to leave out or take out; make an exception
of; exclude; omit,” WEBSTER’S NEW WORLD COLLEGE DICTIONARY (4th ed. 2010)
(collinsdictionary.com accessed July 23, 2019). The plain ordinary meaning of
“convey” is “: to impart or communicate by statement, suggestion, gesture, or
appearance,” and “to make known; communicate in words, actions, appearance, etc.”
Id. The plain ordinary meaning of “imply” is “: to express indirectly,” and “to indicate
indirectly or by allusion; hint; suggest; intimate.” Id. Based on the definition for
convey, the term “weight loss” can be communicated both directly by statement, and
Opposition No. 91233167
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indirectly, by suggestion, while based on the definition for imply, the term “weight
loss can be communicated indirectly. The term “except” simply excludes or omits.
Based on the plain and ordinary meaning of the words used in Section 3(a) we find
nothing to suggest that the terms “except,” “convey,” or “imply” are uncertain or
capable of conflicting interpretations, and the parties have not claimed this provision
of the contract is ambiguous. A written contract, if unambiguous, must be held to
express all of the negotiations, conversations, and agreements made prior to its
execution, and neither oral testimony, nor prior written agreements, or other
writings, are admissible to explain or vary the terms of the contract. McGuire v.
Schneider, Inc., 534 A.2d 115, 117-118 (Pa. Super. Ct. 1987) (case citations omitted).
Therefore, we do not consider the submitted extrinsic evidence or testimony
regarding the parties’ negotiations or intent with regard to Section 3(a). Id.
Contractual provisions are read in a manner that effectuates the contract’s spirit
and purpose, considered as a whole, and interpreted so as to harmonize and give
meaning to all of its provisions. Thus, in ascertaining the intent of the parties, it is
necessary to look at Section 3(a) in context with the other three clauses in this
provision as well as in relation to other provisions in the contract as a whole.
We first look to Section 3(b) of the Agreement which specifically prohibits
Applicant’s use and registration of NUTRIMOST DIET or NUTRIMOST SYSTEM
and “reasonable variations,” but is silent as to use and registration of NUTRIMOST
with the term “weight loss”:
NutriMost agrees never to use or seek to register
NUTRIMOSTDIET or NUTRIMOST SYSTEM, or any
Opposition No. 91233167
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reasonable variations thereof, as a trademark, trade name,
domain name or in connection with any gTLD regardless of
the goods or services …
We next look to disputed Section 3(a), considering each clause in this provision in
context, not in isolation. The first clause in Section 3(a) more generally describes
prohibitions as to Applicant’s use of the stand-alone terms “Nutri” and “Nutra” “with
any word(s) or phrase(s) that convey or imply weight loss or diet type products or
services,” while clauses two and three expressly set forth prohibitions as to
Applicant’s use of the stand-alone terms “Nutri” and “Nutra” with specific wording.
In particular, the second and third clauses in Section 3(a) contain clear
prohibitions against Applicant’s use (i.e., “never use”) of the stand-alone terms
“Nutri” or “Nutra” with the words “System or Systems” and “weight loss or weight
management”:
NutriMost shall never use the words “Nutri” or “Nutra”
with the words “System” or “Systems”; and NutriMost shall
never use the words “Nutri” or “Nutra” with the terms
“weight loss” or “weight management.”
In contrast to the second and third clause, the first clause in Section 3(a) uses the
same verbs as the fourth clause, i.e., “convey” or “imply,” prohibiting Applicant’s use
of the standalone terms “Nutri” or “Nutra” with words or phrases that communicate
directly or indirectly “weight loss or diet type products or services”:
“NutriMost agrees that it will not use the words ‘Nutri’ or
‘Nutra’ with any word(s) or phrase(s) that convey or imply
weight loss or diet type products or services, such as, by
way of example but not limitation, ‘Nutridiet’; ‘Nutradiet.’”
It is apparent that the word “convey” in the first clause should be read to mean
not only indirect communication of words or phrases relating to weight loss or diet
Opposition No. 91233167
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but also direct communication by word, particularly, the words “weight loss” or “diet.”
Thus, the interpretation of this clause would necessarily prohibit use of the words
“weight loss” or “diet” themselves with “Nutri” or “Nutra.” This is borne out by the
nonexclusive examples provided within the clause prohibiting use by Applicant of the
terms “Nutridiet” and “Nutradiet.” It would be nonsensical to conclude otherwise.
Finally, we look at the fourth clause of Section 3(a), which is at the center of the
parties’ dispute. The fourth clause, while referencing the three clauses that precede
it, provides the manner in which Applicant “may use” NUTRIMOST with wording
that relates to “weight loss” “or “diet type products or services”:
but the Parties expressly agree and understand that,
except as provided herein, NutriMost may use the wording
“NutriMost” with any wording that conveys or implies
weight loss or diet type products or services.
The fourth clause of the parties’ Agreement means that with the exception of the
disallowed uses of “Nutri” and “Nutra” in the preceding clauses, Applicant may
communicate the word “weight loss” both indirectly and directly with NUTRIMOST.
This is the most logical interpretation, and it is consistent with the construction of
the first clause of Section 3(a). It would also be in harmony with Section 3(b), which
specifically sets forth the words Applicant may not use with NUTRIMOST. We cannot
adopt Opposer’s interpretation that prohibits direct use of the term “weight loss” with
NUTRIMOST because to do so would render the word “convey” in the fourth clause
meaningless. Thus, we read the plain language in the fourth clause of Section 3(a) to
allow Applicant to use the term “weight loss” in connection with NUTRIMOST.
Opposition No. 91233167
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In view of the foregoing, Applicant is entitled to register NUTRIMOST
WELLNESS & WEIGHT LOSS under the terms of the parties’ Agreement.
Decision: The Opposition is dismissed.