Ortho Molecular Products, Inc.

Trademark Trial and Appeal Board

Aug 15, 2013

No. 85426345 (T.T.A.B. Aug. 15, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 15, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Ortho Molecular Products, Inc.
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Serial Nos. 85426335 and 85426345
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Brian G. Gilpin and Jennifer L. Gregor of Godfrey & Kahn, S.C. for Ortho Molecular
Products, Inc.

Evelyn Bradley, Trademark Examining Attorney, Law Office 105 (Thomas G.
Howell, Managing Attorney).
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Before Quinn, Kuczma and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Ortho Molecular Products, Inc. (“applicant”) seeks registration of the
standard character marks D-HIST and NATURAL D-HIST (with NATURAL
disclaimed) for “dietary supplements, namely nutraceuticals for use during allergy
season.”1 The examining attorney refused registration of both marks on the
grounds that they comprise deceptive matter under Section 2(a) of the Act and are
deceptively misdescriptive under Section 2(e)(1) of the Act.

1 Application Serial Nos. 85426335 and 85426345, respectively, each filed September
19, 2011 based on dates of first use of January 1, 1993.
Serial Nos. 85426335 and 85426345
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After the refusals were made final, applicant appealed and the Board granted
applicant’s motion to consolidate the appeals. Applicant and the examining
attorney have filed briefs.
Evidence and Argument
The examining attorney takes the position that the letter “D” in applicant’s
marks is misdescriptive, because “[t]he letter D when used with dietary
supplements denotes vitamin D,” but applicant’s goods do not contain vitamin D.
Examining Attorney’s Appeal Brief at 3. The examining attorney further argues
that consumers are likely to believe the misdescription because “[m]any nutritional
supplements and nutraceuticals contain or are comprised of vitamin D,” and that
the misdescription will affect consumers’ purchasing decisions because vitamin D
makes dietary supplements or neutraceuticals more desirable. Id. at 4-5. The
examining attorney relies on the following evidence in support of her contentions:
• a MedlinePlus article which indicates that vitamin
D is used to prevent or cure a variety of diseases and
conditions and has been found effective in treating weak
bones, rickets and others; vitamin D is also used to treat
high blood pressure, rheumatoid arthritis, chronic
obstructive pulmonary disease, asthma and other
conditions, though the scientific evidence is not conclusive
on its effectiveness therefor; although vitamin D is
available in some foods and is produced by the body as a
result of sun exposure, “Vitamin D can also be made in
the laboratory as medicine;” Office Action of February 21,
2012;

• a printout from the “diet-myths.com” website
entitled “Importance of Vitamin D” which indicates that
vitamin D is useful in treating or preventing certain
conditions, possibly including asthma, and that “it may be
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a wise idea to start supplementing vitamin D during the
winter when you’re not getting vitamin D naturally from
the sun;” id.;

• printouts from the “naturemade.com” website
promoting the sale of vitamin D supplements and vitamin
D’s health benefits; id.;

• a printout from the “mayoclinic.com” website
entitled “Vitamin D” which sets forth its health benefits;
Office Action of September 24, 2012;

• a printout of an article by Jane E. Brody in the July
26, 2012 New York Times entitled “What Do You Lack?
Probably Vitamin D,” which states that “Vitamin D
promises to be the most talked-about and written-about
supplement of the decade,” and discusses its health
benefits; id.;

• a printout from the “diseaseproof.com” website
entitled “Importance of Vitamin D” which discusses its
health benefits and states “[i]t is extremely important for
individuals with limited sun exposure to ingest
supplemental vitamin D;” id.; and

• a printout of an article from the “fitday.com”
website entitled “Vitamin D: Why It’s Important,” which
states that “a lack of vitamin D can lead to many health
problems” and “Vitamin D supplementation is very
common to those suffering from deficiency or at risk for
osteoporosis.” Id.

Applicant contends that the examining attorney takes the “D” in its marks
“out of context,” in that D-HIST is a “unitary term.” Applicant argues that “the
pronunciation of ‘D’ with a following term is indistinguishable from the common
prefix, ‘de-’,” which “is used to indicate removal, negotiation or reversal,” such that
D-HIST “suggests the anti-histamine properties of Applicant’s dietary supplements
for use during the allergy season.” Applicant’s Appeal Brief at 4-5, 7. Applicant
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points out that “[t]he record is devoid of any evidence suggesting that anti-
histamines would contain Vitamin D or that Vitamin D would be desirable in an
anti-histamine.” Id. at 10. Applicant relies on the following evidence:
• the Declaration of Matthew Brady (“Brady Dec.”),
its Marketing Director, who testifies that “[t]he ‘D’ in D-
HIST does not represent vitamin D and I am unaware of
any consumer confusion with respect to any alleged
misdescriptive use of the letter ‘D;’” “[t]he ‘D’ in the D-
HIST trademark represents the root ‘de’ as in decrease
and means ‘reduce, away, down, or remove;’” and D-HIST
is “effective in helping an individual who suffers from
seasonal allergies … the D-HIST formula contains
ingredients that have been shown to reduce or decrease
the release of histamine;” Brady Dec. ¶¶ 1, 4-6; Office
Action response of August 20, 2012; and

• a printout from the “amazon.com” website offering
for sale the NATURAL D-HIST product, in which the
“Product Description” states “This gentle vitamin and
herb enriched anti-histamine helps you overcome allergies
by building up your natural defense system. The vitamin
C and stinging nettle dry up nasal passages, and the
array of other natural ingredients steadies histamine
production ….” Id.

The record also includes applicant’s specimen of use, apparently a printout from
applicant’s website, which under “Product Details” for NATURAL D-HIST states
“Nasal and sinus support for the height of the growing season.”
Analysis
Under Section 2(a) of the Act, registration must be refused when a mark is
deceptive concerning a feature or ingredient of the goods. A mark must be denied
registration as deceptive if the Office establishes that it meets all three of the
following criteria:
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(1) Is the term misdescriptive of the character, quality,
function, composition or use of the goods?

(2) If so, are prospective purchasers likely to believe that
the misdescription actually describes the goods?

(3) If so, is the misdescription likely to affect the decision
to purchase?

In re Budge Manufacturing Co., Inc., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir.
1988); In re E5 LLC, 103 USPQ2d 1578, 1579 (TTAB 2012).
Here, “[a]pplicant’s goods do not contain Vitamin D.” Applicant’s Appeal
Brief at 1. The evidence of record reveals, however, that certain dietary
supplements and neutraceuticals do contain vitamin D. Accordingly, we find,
notwithstanding applicant’s arguments to the contrary, that the letter “D” in
applicant’s marks is misdescriptive of applicant’s goods.
Applicant’s argument that D-HIST is unitary such that the letter “D” does
not operate alone or convey the vitamin is unavailing in the absence of any evidence
that “D” is used or construed as the prefix “de” in supplements or other products, or
for that matter that the prefix “de” is ever used in connection with the word
“histamine.” In fact, the evidence of record reveals that when “D” is used in
connection with dietary supplements, it is used to signify the vitamin. Applicant’s
use of a hyphen which joins “D” with “HIST” is not helpful because it separates the
“D” from the term “HIST” as a space might, thus drawing attention to the “D”
separate from “HIST.” Where, as here, the product is a dietary supplement, the “D”
conveys the vitamin.
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Nor are we persuaded by the fact that applicant’s goods are “for use during
the allergy season.” Despite applicant’s apparently intended implication that
products “for use during the allergy season” would be construed as anti-allergy
products, applicant’s identification of goods does not indicate that the products are
in fact anti-allergy, antihistamines or otherwise related to allergies.2 Instead,
according to applicant’s identification of goods, NATURAL D-HIST is a dietary
supplement, specifically a neutraceutical, which is to be used at certain times of
year. This encompasses vitamin D supplements taken during those times of year.
While the evidence reveals that for many people the need for vitamin D
supplements may be decreased or eliminated in summer months, which for some
may also be the “allergy season,” the record also indicates that for the elderly,
especially those in nursing homes, and people living in less sunny climates, vitamin
D supplementation may be required for most or all of the year. See New York
Times article attached to September 24, 2012 Office Action and MedlinePlus article
attached to February 21, 2012 Office Action. Moreover, because “allergy season” is
not defined in applicant’s identification of goods, and different people suffer allergy
symptoms at different times of the year, there is no way to determine when “allergy
season” is for a particular consumer or what that might have to do with a particular
consumer’s need for vitamin D supplementation. The point is that “dietary

2 If applicant desired the benefits of registration of its marks in connection with
antihistamines, then it should have sought registration for antihistamines. We need not
and therefore do not consider whether applicant’s mark would be misdescriptive or
deceptive for antihistamines.
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supplements, namely nutraceuticals for use during allergy season” encompasses
vitamin D supplements taken during “allergy season,” whenever that is.
Furthermore, while applicant would have us focus on Mr. Brady’s testimony
that NATURAL D-HIST is intended to decrease histamine, and on applicant’s
description of its product as providing “[n]asal and sinus support for the height of
the growing season,” we cannot do so. We are instead bound to consider the mark
in the context of applicant’s identification of goods as written. “[E]xplanatory
statements in advertising or on labels which purchasers may or may not note and
which may or may not always be provided” do not matter. See, In re Budge, 857
F.2d at 773, 8 USPQ2d at 1261; In re Berman Bros. Harlem Furniture Inc., 26
USPQ2d 1514, 1515-16 (TTAB 1993) (not improper for examining attorney to find
explanatory statements in applicant’s declaration unpersuasive). For all of these
reasons, we find that D-HIST is misdescriptive of applicant’s goods as identified in
the applications.3
Turning to the second inquiry, we find that prospective purchasers would be
likely to believe the misdescription. Indeed, the evidence establishes that vitamin D
is used in dietary supplements, so consumers of dietary supplements would believe
that the “D” in applicant’s marks identifies vitamin D when it does not. See e.g., In
re White Jasmine LLC, 106 USPQ2d 1385, 1392 (TTAB 2013); In re E5, 103
USPQ2d at 1583 (where applicant sought registration of an acronym used to

3 While the examining attorney has put forth sufficient evidence to establish that D-
HIST is misdescriptive for the identified goods, the case for misdescriptiveness would have
been stronger if it included evidence that vitamin D is not only used in dietary supplements
but also that it may help in preventing or treating allergies.
Serial Nos. 85426335 and 85426345
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identify copper even though its goods do not contain copper, “[w]e find that, because
the evidence shows that copper is a common supplement or ingredient in dietary
supplements, consumers will believe, based on the mark and the goods at issue,
that applicant’s goods contain copper”). Applicant’s focus on the lack of evidence
that vitamin D is used in antihistamines or allergy treatments is simply misplaced,
because applicant seeks registration for dietary supplements taken during an
unspecified time of year; applicant does not seek registration for antihistamines or
other allergy treatments.
Finally, we find that the misdescription in applicant’s mark is likely to affect
consumers’ decision to purchase the product. The evidence of record establishes
that vitamin D is a desirable component of dietary supplements because it may
have certain health benefits. This establishes the third “materiality” element of the
Budge test. In re White Jasmine, 106 F.2d at 1392-94 (“To establish that the
misdescriptive quality or characteristic would be a material factor in the purchasing
decision of a significant portion of the relevant consumers, the examining attorney
must provide evidence that the misdescription would make the product or service
more appealing or desirable to prospective purchasers.”); In re E5, 103 USPQ2d at
1584 (“Since the evidence shows that copper has important and desirable health
benefits, we find that its presence as an ingredient – or indeed its absence – would
be material to the decision of consumers to purchase applicant’s dietary
supplements.”).4

4 The addition of the word NATURAL to the D-HIST mark in application Serial No.
85426345 does not change our analysis of any of the deceptiveness criteria.
Serial Nos. 85426335 and 85426345
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Conclusion
For all of these reasons, we find that applicant’s mark is deceptive for
“dietary supplements, namely nutraceuticals for use during allergy season,” and the
refusal of registration on this basis is therefore affirmed.5 And our findings that the
marks are misdescriptive and that consumers are likely to believe the
misdescription require us to also affirm the examining attorney’s finding that the
mark is deceptively misdescriptive under Section 2(e)(1) of the Act. In re Shniberg,
79 USPQ2d 1309, 1311 (TTAB 2006) (“The two-prong test for whether a mark is
deceptively misdescriptive [is]: ‘(i) whether the mark misdescribes the goods [or
services] to which it applies; and (ii) whether consumers are likely to believe the
misdescription.’”) (citation omitted). See also, In re White Jasmine, 106 USPQ2d at
1394; Applicant’s Appeal Brief at 11 (“The test for deceptive misdescriptiveness is
the first two prongs of the test for deceptiveness.”).
Decision: The examining attorney’s refusals to register applicant’s marks
under Sections 2(a) and 2(e)(1) of the Act are affirmed.

5 Applicant’s reliance on In re Medcon Products, Inc., Serial No. 76476330, 2010 WL
1502436 (TTAB 2010) is misplaced because that case is not precedential. Even if it were, it
would be of no help to applicant, because there “the record [wa]s devoid of any evidence”
that the applicant’s goods contained the allegedly misdescriptive term in question, or that
ingredients derived from the term in question were desirable for applicant’s products.
Here, the record contains a good deal of evidence that some dietary supplements contain
vitamin D, and that vitamin D is a desirable component of dietary supplements.