Ortho Molecular Products, Inc.Download PDFTrademark Trial and Appeal BoardAug 15, 2013No. 85426335 (T.T.A.B. Aug. 15, 2013) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: August 15, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Ortho Molecular Products, Inc. _____ Serial Nos. 85426335 and 85426345 _____ 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). _____ 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 2 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 Serial Nos. 85426335 and 85426345 3 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 Serial Nos. 85426335 and 85426345 4 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: Serial Nos. 85426335 and 85426345 5 (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. Serial Nos. 85426335 and 85426345 6 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. Serial Nos. 85426335 and 85426345 7 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 8 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 9 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. Copy with citationCopy as parenthetical citation