Nutrition Headquarters, Inc.

Trademark Trial and Appeal Board

Jan 30, 1998

No. 74380932re (T.T.A.B. Jan. 30, 1998)

Hearing: Paper No. 23
February 11, 1997 PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 1/30/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Nutrition Headquarters, Inc.
________
Serial Nos. 74/380,556 and 74/380,932
_______
Daniel Kegan of Kegan & Kegan, Ltd. for Nutrition
Headquarters, Inc.
Ronald Sussman, Senior Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______
Before Seeherman, Hanak and Hairston, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
On April 16, 1993 Nutrition Headquarters, Inc. (a
Delaware corporation) filed applications to register the
designs shown below for “mail order services for vitamin and
mineral supplements, cosmetics, jewelry, wallets,
housewares, kitchen accessories, health aids, [and] clothing
accessories.”
Ser Nos. 74/380,556 and 74/380,932
2
Serial No. 74/380,556 Serial No. 74/380,932
Applicant claims December 31, 1975 as its date of first
use and date of first use in commerce with respect to each
design.
Applicant describes the designs as follows: “The mark
is a vertical arrangement of rectangles” (74/380,556); and
“The mark is a vertical arrangement of rectangles with the
word FREE enclosed within another rectangle to the side”
(74/380,932).1 In the latter application, applicant has
disclaimed the word FREE apart from the mark as shown.

1 If applicant ultimately prevails herein, it is recommended that
applicant amend the description of the mark in each application
to clearly set forth what it is applicant is claiming as its
Ser Nos. 74/380,556 and 74/380,932
3
In each case, registration has been finally refused on
the ground that the design sought to be registered does not
function as a mark for applicant’s services (Sections 1, 2,
and 45 of the Trademark Act, 15 U.S.C. 1051, 1052, and
1145).2
Applicant appealed from the refusals in both
applications asserting, in essence, that the configuration
designs sought to be registered have acquired
distinctiveness and do, in fact, indicate source or origin
of the identified services.
Both applicant and the Senior Trademark Examining
Attorney briefed the cases and were present at the oral
hearing before the Board. Because the issues involved and
record in each case are essentially identical, we are
rendering our decision as to both applications in a single
opinion.3
The Examining Attorney, in each application, argues
that, “as used on the specimens of record, the proposed mark

marks. For example, in Serial No. 74/380,556, a more accurate
description of the mark would be: “A rectangular grid design in
which an order blank and coupons with the names and prices of
applicant’s vitamin and nutritional supplements appear.”
2 Although applicant maintains, in its reply brief, that “the
various examining attorneys [handling these applications] have
impliedly argued [that] applicant’s marks are functional”, it is
clear in each case that the ground for refusal is that the design
sought to be registered does not function as a mark.
3 We note that both applicant and the Examining Attorney have
treated these cases as consolidated for purposes of filing briefs
and presenting argument at oral hearing.
Ser Nos. 74/380,556 and 74/380,932
4
functions not as an indication of origin, but as an
effective arrangement of advertising copy on a page” and as
a “helpful cutting guide for consumers who clip coupons.”
According to the Examining Attorney, “the statement ‘Limit
one of any size per coupon below!’ appearing immediately
above the proposed mark on the specimens of record
powerfully underscores the failure of applicant’s proposed
mark to function as a trademark.” (Final Office action, pp.
1-2) A photocopy of the specimen submitted in each
application is reproduced below in reduced form:
Ser Nos. 74/380,556 and 74/380,932
5
Also, the Examining Attorney argues that a substantial
amount of Section 2(f) evidence is required in these cases
because the designs are (1) “highly non-distinctive”, or
commonplace, and (2) buried in applicant’s larger
advertisement such that customers and prospective customers
are unlikely to notice the designs, much less regard them as
marks, without exposure to promotion of the designs as
source indicators. Finally, the Examining Attorney
maintains that applicant’s Section 2(f) evidence is
inadequate because it pertains to the overall advertisement
for applicant’s mail order services, and not to the specific
designs sought to be registered.
Applicant, on the other hand, contends that by virtue
of extensive advertising, the designs sought to be
registered are recognized and associated with applicant’s
mail order services, and thus function as service marks for
the services. In each case, applicant submitted the
declarations of Michael Slade and Ed Davis, its president
and vice-president, respectively.
The declarations are virtually identical and read, in
relevant part, that applicant has used the “FREE and Design
(Order Form) and Design (Order Form) trademarks” in
connection with the mail order promotion and sale of
vitamins, nutritional supplements, cosmetics, jewelry,
wallets, housewares, kitchen accessories, health aids, and
Ser Nos. 74/380,556 and 74/380,932
6
clothing related products throughout the United States for
approximately 15 years; that since 1978 applicant has
expended over seventy million dollars in advertising through
“the distinctive FREE & Design (Order Form) trademark and
Design (Order Form) trademark ad layouts”; and that “the
Free & Design (Order Form) and Design (Order Form)
trademarks have become distinctive of applicant’s mail order
services.”
Further, in each case, applicant submitted five letters
from representatives of publications in which it advertises.
According to these advertising representatives, subscribers
and readers of their publications recognize applicant
because of its continued use of the same advertising layout.
Also, the advertising representatives, in follow-up
declarations, state that they recognize applicant’s “Free
and Order Form design layout as original and distinctive” of
applicant.
Finally, in each case, applicant submitted fourteen
form declarations which read, in relevant part, as follows:
I have worked in or purchased product from the mail
order nutritional supplement industry for ____ years,
and am well acquainted with the major mail order
services and distributors of nutritional supplements
and related mail order products.
I recognize the attached layout Design and the
layout Free & Design as identifying a mail order
services [sic] for vitamin and mineral supplements,
cosmetics, jewelry, wallets, housewares, kitchen
accessories, health aids and clothing accessories
sold by Nutrition Headquarters, Inc.
Ser Nos. 74/380,556 and 74/380,932
7
. . . . .
In my opinion the attached layout Design and the
attached layout Free & Design are distinctive
and are known for high quality products and
providing high quality mail order services.
Accompanying each declaration is a photocopy of one of
applicant’s advertisements. These advertisements are very
similar to the specimen reproduced above, the main
difference being that the product items and the free gift
item depicted in the advertisements vary.
After careful review of the evidence submitted in these
applications, we are not persuaded that the designs sought
to be registered have become distinctive of applicant’s mail
order services and serve to distinguish them from the
services of others.
There is no question that grid designs are commonly
used in advertising. Thus, applicant has a heavy burden to
establish that the designs sought to be registered have
acquired distinctiveness and would not be considered as mere
advertising. See, e.g., In re Sandberg & Sikorsky Diamond
Corporation, 42 USPQ2d 1544 (TTAB 1997)[ In view of the
ordinary nature of the gem arrangement designs sought to be
registered, applicant had a heavy burden to establish
acquired distinctiveness.]; and Yamaha International Corp.
v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001 (Fed.
Cir. 1988) and In re Merrill Lynch, Pierce, Fenner & Smith,
Ser Nos. 74/380,556 and 74/380,932
8
Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987) [The
greater the degree of descriptiveness, the greater the
evidentiary burden on the user to establish acquired
distinctiveness.]
Although applicant’s advertising figures are
impressive, they do not prove that purchasers recognize the
designs sought to be registered as applicant’s marks. As
the Examining Attorney points out, the designs are simply
part of the overall advertising layout used by applicant in
promoting its services. While purchasers may well be
“attracted” to the designs because they consist of coupons
and an order blank, there is no evidence in this record that
applicant, in its advertising, emphasized or directed
purchasers’ attention to the designs in a manner that would
cause them to regard the designs as applicant’s marks.
Moreover, there are problems with the declarations of
the advertising representatives and the individuals “who
have worked in or purchased product from the industry.” The
first problem with these declarations, as the Examining
Attorney points out, is that they do not specifically
identify what it is that the declarants recognize as
applicant’s marks. The declarations speak of the “Design
layout” and “Free and Design layout”, but it is not clear
that this reference is to the specific designs applicant has
claimed as its marks. As noted previously, the declarations
Ser Nos. 74/380,556 and 74/380,932
9
include copies of applicant’s overall advertisement layout
and not that portion of the layout which is shown in the
drawings of the applications.
Second, even if it were clear from the declarations
that the declarants recognize these specific designs as
applicant’s marks, the declarations would be insufficient to
establish that the relevant class of purchasers as a whole
recognize the designs as applicant’s marks. In this regard,
we note that applicant’s mail order services contain no
restriction as to the class of purchasers. Thus, the
relevant class of purchasers of applicant’s services
includes ordinary consumers. Yet, it is not clear that any
of the individuals identified as having “ worked in or
purchased product from the nutritional industry” are
ordinary consumers and not industry personnel.4 Thus,
neither these declarations nor the declarations of the
advertising personnel are probative of how ordinary
consumers view applicant’s designs. Even if we assume, for
purposes herein, that the advertising and industry personnel
are purchasers of vitamin and mineral supplements, they
constitute a small segment of the consuming public. See,
e.g., Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d
1551 (CAFC 1991) [In determining whether the mark TOUCHLESS

4 Indeed, it appears from the occupations provided that most are
industry personnel, i.e., account representatives, salespersons,
and marketing directors.
Ser Nos. 74/380,556 and 74/380,932
10
had become generic for automobile washing services, the
relevant purchasing public consisted of all automobile
owners and operators. The court noted that vendors,
operators and manufacturers of automobile washing machines
constituted but a very small segment of the relevant
purchasing public and that evidence of generic use by this
segment had limited probative value]. In sum, the
declarations are not probative of how the relevant class of
purchasers as a whole view applicant’s designs.
In reaching our decision, we have not overlooked
applicant’s reliance on In re Singer Mfg. Co, 225 F.2d 939,
118 USPQ 311 (CCPA 1958) [Although the design sought to be
registered was used on relatively small labels affixed to
containers for the goods, it was nonetheless held to
function as a mark]; In re Haggar Company, 217 USPQ 81 (TTAB
1982) [Although applicant’s “Black Swatch” design (i.e., a
design of a black rectangular configuration having a
serrated edge along one side thereof) was not inherently
distinctive, it was “something more than a common geometric
shape or design” and the evidence submitted established that
the design had become distinctive of applicant’s clothing];
and In re Post Properties, Inc., 227 USPQ 334 (TTAB 1985)
[Although the term QUALITY SHOWS was used near text of
advertisements, because it was “set off distinctively from
the text of the ad copy in extremely large typeface, it was
Ser Nos. 74/380,556 and 74/380,932
11
held to function as a mark for the management and leasing of
residential properties for others].
Each of these cases is distinguishable. In Singer, the
issue was not whether the design sought to be registered had
acquired distinctiveness. In Haggar, a substantial amount
of Section 2(f) evidence was submitted which related to the
specific Black Swatch design sought to be registered; and as
noted above, in Post Properties, the term QUALITY SHOWS was
set off distinctively from the text of the advertisement in
extremely large typeface.
Finally, applicant relies on a third-party
registration, i.e., Registration No. 1,697,934 issued under
the provisions of Section 2(f) for a mark consisting of,
inter alia, four rectangles forming a large rectangle.
While, of course, uniform treatment under the Trademark Act
is highly desirable, our task on this appeal, based upon the
factual record before us, is to determine whether
applicant’s mark is registrable. As the Board has often
stated, each case must be decided on its own set of facts.
See, e.g., In re Pennzoil Products Co., 20 USPQ2d 1753, 1758
(TTAB 1991) and cases cited therein. We are not privy to
the file record of this third-party registration and thus
have no way of knowing the reasons for its allowance.
Ser Nos. 74/380,556 and 74/380,932
12
Decision: The refusals to register in application
Serial Nos. 74/380,556 and 74/380,932 are affirmed.
E. J. Seeherman
E. W. Hanak
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board