The Synergy Co. of Utah, LLCv.IVC Industries, Inc.

Trademark Trial and Appeal Board

Jun 27, 2002

No. 92026899 (T.T.A.B. Jun. 27, 2002)

6/27/02
Paper No. 39
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

The Synergy Company of Utah, LLC
v.
IVC Industries, Inc.
_____

Cancellation No. 26,899
_____

Harold V. Stotland, J. Terry Stratman and Daniel P.
Lanciloti of Seyfarth Shaw for The Synergy Company of
Utah, LLC.

John M. Rannells and Stephen L. Baker of Baker & Rannells
for IVC Industries, Inc.
_____

Before Hanak, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
The Synergy Company of Utah, LLC (petitioner) seeks
to cancel a registration owned by IVC Industries, Inc.
(respondent). The registration is for the mark SYNERGY
as applied to “Dietary Food Supplement – Namely, Chewable
Wafers and Tablets Containing Honeybee Pollen,” in
International Class 5.1
The original petition for cancellation set out
several grounds for cancellation. In response to
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Cancellation No. 26,899
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petitioner’s motion for summary judgment on the ground
that respondent had abandoned its mark, respondent
admitted that its predecessor-in-title, C.C. Pollen, had
abandoned the mark through non-use, and hence, that
respondent could not have gotten any rights as a result
of the assignment. This also makes moot the question of
whether C.C. Pollen, the original registrant herein,
abandoned its rights in the mark as a result of
uncontrolled licensing. Accordingly, on December 31,
1998, the Board granted the petition to cancel in part.
However, despite the fact that the mark was to be
cancelled on the ground of abandonment, petitioner
elected to proceed, and on July 3, 2000, this Board
denied petitioner’s motion for summary judgment as well
as respondent’s cross-motion for summary judgment on the
issue of genericness. Hence, the sole issue remaining
before us at final judgment herein is whether or not the
term SYNERGY, respondent’s mark as currently registered
on the Principal Register, is capable of identifying and
distinguishing the source of respondent’s dietary food
supplement.

1 Reg. No. 1,297,341 issued to C.C. Pollen Company on
September 25, 1984; Section 8 affidavit accepted and Section 15
affidavit acknowledged.
Cancellation No. 26,899
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The record consists of a copy of respondent’s
registration, the testimony of petitioner’s witness,
Nancy Faust, with the exhibits thereto, and petitioner’s
notice of reliance under Rule 2.122(e) with the materials
submitted thereunder.
Petitioner argues that the word SYNERGY is generic
as designating a class of dietary or nutritional
supplements with ingredients which work cooperatively.
Petitioner argues that the term SYNERGY does not serve as
a trademark to distinguish IVC’s nutritional supplements
and vitamins from nutritional supplements and vitamins
sold by others. Rather, petitioner argues that members
of the relevant public, i.e. purchasers and potential
purchasers of nutritional supplements and vitamins,
understand the term SYNERGY to have its ordinary generic
meaning when used in connection with nutritional
supplements and vitamins. As further proof that the term
has lost its trademark significance when it is used in
connection with dietary supplements, petitioner points to
widespread use by third-party competitors of the term
“synergy” in the precise sense of its common dictionary
meaning.
Respondent, on the other hand, argues that
petitioner has failed to meet its challenging burden in
Cancellation No. 26,899
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demonstrating that the term “synergy” is generic for the
involved goods based upon the evidence in the record
considered in the context of existing case law dealing
with genericness.
In its reply brief, petitioner clarifies that it is
not its position that the term “synergy” has become a
generic name for a class of vitamins/supplements.
Rather, petitioner argues that the common dictionary
definition of the term “synergy” is consistent with the
contextual connotations of this word as widely used by
third parties, and that the term “synergy” is often used
to describe the central aspect or characteristic of
certain vitamins/supplements, and that, hence, under
existing case law, it has become generic. In this
regard, petitioner argues that respondent has applied
much too narrow a view of genericness.
As our principal reviewing court has stated:
…[D]etermining whether a mark is generic …
involves a two-step inquiry: First, what is
the genus of goods or services at issue?
Second, is the term sought to be registered …
understood by the relevant public primarily to
refer to that genus of goods or services?

H. Marvin Ginn Corporation v. International
Association of Fire Chiefs, Inc., 782 F.2d 987, 990, 228
USPQ 528, 530 (Fed. Cir. 1986). The critical issue (both
Cancellation No. 26,899
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before and after the 1984 Trademark Clarification Act) in
genericness cases such as this one is whether members of
the relevant public primarily use or understand the term
sought to be registered to refer to the genus or category
of goods in question. In re Montrachet S.A., 878 F.2d
375, 376, 11 USPQ2d 1393, 1394 (Fed. Cir. 1989): In re
Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d
1567, 1570, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); Dan
Robbins & Assocs., Inc. v. Questor Corp., 599 F.2d 1009,
1014, 202 USPQ 100, 105 (CCPA 1979); and In re Recorded
Books, Inc., 42 USPQ2d 1275 (TTAB 1997). Evidence of the
relevant public’s perception of a term may be obtained
from any competent source, including newspapers,
magazines, dictionaries, trade journals, catalogs and
other publications. In re Leatherman Tool Group, Inc.,
32 USPQ2d 1443, 1449 (TTAB 1994), citing In re Northland
Aluminum Products, Inc., 777 F.2d 1566, 227 USPQ 961, 963
(Fed. Cir. 1985). Finally, we note that in the context
of this inter partes proceeding, it is petitioner’s
burden to prove the genericness of this matter by a
preponderance of the evidence. Magic Wand Inc. v. RDB
Inc., 940 F.2d 638, 19 USPQ2d 1551, 1554 (Fed. Cir. 1991)
Cancellation No. 26,899
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We turn then to the first question posed by Marvin
Ginn: what is the genus of goods at issue? Respondent’s
identification of goods is “Dietary Food Supplement –
Namely, Chewable Wafers and Tablets Containing Honeybee
Pollen.” In the language of Marvin Ginn, the legal genus
of applicant’s goods herein is merely “dietary food
supplements,” or perhaps giving petitioner the benefit of
the doubt, “dietary or nutritional food supplements
having ingredients which work cooperatively.”2
We turn next to the second question posed by Marvin
Ginn: the question of how the term “synergy” will be
understood by members of the relevant public, primarily
with regard to this class or genus of goods?
When seeking out evidence on genericness,
dictionaries are a good beginning source. Mil-Mar Shoe
Co. v. Shonac Corp., 75 F.3d 1153, 37 USPQ2d 1633, 1637
(7th Cir. 1996). The parties have agreed on the
dictionary definition of “Synergy” as “combined action or
operation.” Petitioner argues that based upon thousands
of Internet hits in connection with nutritional
supplements and vitamins using the word “synergy” in the

2 This seems analogous to finding within the broad category
of “sprinklers for fire protection” a narrower category of
“sprinklers for fire protection of attics.” In re Central
Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998).
Cancellation No. 26,899
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ordinary dictionary sense of the word, we should conclude
that members of the relevant public understand this to
refer to dietary or nutritional supplements having
ingredients which work cooperatively.
Respondent claims one cannot draw such a conclusion
from the dictionary definition:
The fact that the word has a dictionary
meaning does not make it generic …
especially so here where the dictionary
definition does not equate the term
“synergy” with dietary food supplements and
does not even imply that the word “synergy”
means or denotes a class of goods generally
referred to as dietary food supplements.

We take judicial notice of several other unabridged
dictionary listings of various forms of the words
“synergism,” “synergist,” “synergy,” etc., as follows:
synergism: … 2: cooperative action of discrete
agencies (as drugs…) such that the total effect is
greater than the sum of the two or more effects
taken independently…

synergist: … 2: an agent that increases the
effectiveness of another agent when combined with
it: as a: a drug that acts in synergism with
another …

synergistic: … 2 a: having the capacity to act in
synergism (~ drug)…

synergy: combined action or operation3

3 Previous four entries are taken from Webster’s Third New
International Dictionary of the English Language, Unabridged,
2320 (1993).
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synergism: … 2: the joint action of agents, as
drugs, that when taken together increase each
other’s effectiveness…

synergist: … 2: Chem.., Pharm. Any admixture to a
substance for increasing the effectiveness of one or
more of its properties…

synergy: 1: combined action or functioning;
synergism; 2: the cooperative action of two or more
muscles, nerves, or the like. 3: the cooperative
action of two or more stimuli or drugs.4

It is clear from these dictionary entries that in
addition to the general meaning of “combined action,” the
term “synergy” has particular connotations specific to
chemical, herbal or pharmaceutical agents, with repeated
references to “drugs” in particular. From these
dictionary entries alone, we can conclude that “synergy”
appears to be a merely descriptive term for these goods.
However, one could hardly examine these dictionary
entries alone and conclude that the term “synergy” is
generic for these products. Hence, we turn next to
examine the actual uses from the Internet that
petitioner’s counsel had properly made of record. In
helping us to determine the relevant public’s perception
of the term “synergy,” petitioner has provided evidence
of widespread use by third parties. These Internet
“hits” include newspapers articles, journal articles,

4 Previous three entries are taken from The Random House
Dictionary of the English Language, 2nd Ed. Unabridged.
Cancellation No. 26,899
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magazines, product advertisements, research articles and
other written publications.5 Examples of these uses
include entries such as:
2001 FORMULA: “… 2001’s properly balanced
formula … guarantees the greatest synergy
between the nutrients. This synergy
assures that you will receive greater
benefits and optimum protection.”
(petitioner’s Ex. 1)

SYNERGY PAK: “… The four Life Plus
products contained in the SYNERGY PAK work
together synergistically to help you start
your nutritional support program… TVM-49:
… The herbs and associated synergistic
nutrients it contains helps (sic) ensure a
broad spectrum nutritional base…
(petitioner’s Ex. 2)

SYNERPRO NUTRITION: Dr. James Scala’s
SynerPro nutritional products have two
distinct advantages compared to similar
products: harmony and synergy. With
SynerPro, you receive nutrients in correct
proportion with each other. Balanced
formulas allow the body to obtain maximum
nutrition. Equally important is the
resultant synergy when essential vitamins
are combined with the nutritious
antioxidant SynerPro concentrate.
(petitioner’s Ex. 4)

SELENIUM: … In synergy with vitamin E,
selenium promotes normal growth and
fertility, and improves the function of
certain energy producing cells.
(petitioner’s Ex. 6)

SKALI – SPIRULINA: … Our bodies will not
metabolise synthetic vitamins as completely
and properly as whole foods. Furthermore,

5 Consistent with respondent’s reservations, these trial
exhibits drawn from the Internet are not being used to prove the
truth of the statements made therein.
Cancellation No. 26,899
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whole foods allow the synergy of the
multiple natural supplements that refined
and isolated vitamins cannot…
(petitioner’s Ex. 7)

Nutrition – Beta carotene: … A well-
nourished body should have a daily supply
of many anti-oxidant nutrients, including
vitamin C. E, beta carotene and a host of
others found in fruits and vegetables.
They each do different things, but together
they produce a powerful synergy…
(petitioner’s Ex. 12)

Fort Lauderdale – Around town: [Dr.
Shirley J. Robinson will] share research
findings related to synergy,
bioavailability and who food nutrition and
differentiate between whole food procedures
and fragmented nutritional supplements.
(petitioner’s Ex. 14)

Ayurvedic herbal food supplements:
Ayurveda is equally rigorous about synergy,
combining specific herbs into complex
formulas for greatest potency, assimilation
and overall results. Single-ingredient
formulas like vitamins or single herbs
balance only one area of life while they
unbalance others… (petitioner’s Ex. 15)

Of the more than one-hundred Web sites that
petitioner has drawn from Internet searches and placed
into the record, there are examples showing uses of the
term “Synergy” in connection with nutritional supplements
and vitamins where the use is: as a trademark; within
the corporate trade names of various companies operating
in the field of vitamins and dietary food supplements;
uses of the term in text in a most suggestive or
descriptive sense (the majority of those shown above fit
Cancellation No. 26,899
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this category); and yet others where the exact nature of
the use of the term remains somewhat ambiguous.
The somewhat different contexts in which these
discussions of synergy take place include the helpful
interaction of two or more separate ingredients in
dietary supplements, the healthy advantages of eating
plant-foods over taking mega-vitamins and nutritional
supplements, as well as relationships between related
fields of endeavor (e.g., nutrition and culinary science,
nutrition and weight training, etc.).
Given the many different contexts in which the term
“synergy” appears in relationship to dietary food
supplements, we find the record does indeed reflect
widespread use of this term by competitors in connection
with dietary and nutritional products that contain
cooperatively acting ingredients, exactly as petitioner
alleges.
As with the dictionary entries, it is clear from
these Internet entries that “synergy” is indeed a highly
descriptive term for these goods.6 On the other hand, we
are still unable to conclude from the nature of these

6 Respondent appears to concede descriptiveness on this
record: “At best, the term “synergy” refers to a desired effect
within a system while not identifying how the combined action of
operation works or what its actual effect is…” (Respondent’s
brief, p. 5).
Cancellation No. 26,899
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uses that the term “synergy” is generic for these
products.
Although petitioner cites repeatedly to the holding
in Mil-Mar Shoe, for support that the term herein “is
being used in a common or generic sense,” (37 USPQ2d at
1638), the evidence in that case involved more than 8000
retail stores that actually used the word “warehouse” in
their trade names. The court found that:
The union of “shoe(s)” with “warehouse” in
the names of the Mil-Mar and Shonac stores
signifies a specific type of retail store
and distinguishes that store from two other
categories of stores: other shoe stores
and other warehouse stores.

Similarly, respondent points out that the instant
record does not have evidence as persuasive as that in
Stromgren Supports Inc. v. Bike Athletic Co., 43 USPQ2d
1100 (TTAB 1997) [the term “compression” in connection
with compression (or support) shorts, as used by
respondent, petitioner, third-party competitors and as
used in the trade press demonstrate this to be a class of
product]. We agree with respondent that the evidence in
the current record is not similarly compelling.
We agree with petitioner that the word “synergy” is
used frequently in connection with nutritional
supplements. In the text of Web pages, the word
Cancellation No. 26,899
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“synergy” is overworked with repeated references to a
varying and amorphous collection of effects desired from
nutritional supplements. To the extent the record
suggests that the word “synergy” appears in this field
within a variety of common law trade names and
trademarks, it may well appear that this has to be seen
as a relatively weak source-identifier in this field.
However, finding that a term is overused, diluted or weak
in a particular field is quite different from concluding
that the term is being used in a “common or generic
sense.”
Petitioner also argues that the term is used in
these Internet excerpts to describe the central or most
important feature of respondent’s product. Petitioner
analogizes to the use of ATTIC as a category of
sprinklers for fire protection of attics. In re Central
Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998). Yet Central
Sprinkler stresses the need to focus on “whether members
of the relevant public primarily use or understand the
term sought to be registered to refer to the genus
(category or class) of goods in question” and warns that
such determinations “must be made on a case-by-case basis
in light of the particular designation … and the record
Cancellation No. 26,899
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in the application which is under consideration.” 49
USPQ2d at 1196-1197.
As was the case with “compression shorts,” so it is
clear from Central Sprinkler that “attic sprinklers” make
up a definitive class of sprinklers. A much earlier
decision found “sudsy” to be generic because it was “an
adjective, half of a common descriptive name [sudsy
ammonia].” Roselux Chemical Co., Inc., et al. v. Parsons
Ammonia Company, Inc., 132 USPQ 627 (CCPA 1962). See
also Ethicon, Inc. v. Deknatel Inc., 183 USPQ 503, 505
(TTAB 1974) [the term COTTONY is used (on non-cotton
sutures which are treated to have the characteristics of
cotton sutures) by respondent in such manner that it will
be considered a part of the name of the product “cottony
sutures”].
When comparing or contrasting reported decisions in
this area, it is often instructive to note the specific
part of speech of any allegedly generic term. Most of
the cases reported above dealing with allegations of
generic matter involve adjectives modifying nouns, which
generic nouns themselves are not part of the mark. By
contrast, the instant case involves a noun form (synergy)
that alone does not appear to be a common descriptive
term, and that does not combine logically or easily with
Cancellation No. 26,899
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broad categories like “vitamins” or “supplements” to
create a new, combined, common descriptive term or name
(e.g., “Synergy vitamins” or “Synergy Supplements”). In
fact, despite the widespread usage of the word “synergy”
throughout this record in newspaper articles, in medical
reviews and in advertisements in connection with dietary
supplements, were “Synergy” to be used in the context of
“Synergy vitamins” or “Synergy dietary supplements,” the
word SYNERGY in such a context maintains the look and
feel of a source indicator.
In short, petitioner’s primary argument from this
record is that “synergy” describes a “central aspect” of
the goods. Let us assume arguendo that the textual
evidence put forward by petitioner demonstrates that the
synergistic effect of supplements/vitamins is a central
or critical feature of these products. Nonetheless, in
making a determination as to “incapability,” our primary
reviewing court reversed this Board for finding that a
descriptor for a “central characteristic” of services was
incapable. See In re Seats, Inc., 225 USPQ 364, 367-368
(Fed. Cir. 1985).
The Board did not find that SEATS was
generic. Nor could it have so found. The
term “seats” may be generic in relation to
chairs or couches or bleachers. It is
clearly not generic to reservation
Cancellation No. 26,899
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services. Contrary to the Board's
statements, Seats is not selling seats, as
would for example a furniture merchant, but
is selling a reservation service…. It is
equally clear that SEATS is not “the common
descriptive name” of reservation services …
That is true when purchasers of the
services will be seated and when “standing
room” is involved. Nor did the Board find
that SEATS was the common descriptive name
of the services involved … On the
contrary, the Board recognized that
issuance of the registration here sought
would not deprive others of the use of
“seats” in connection with such services.
Competitors would remain free to advertise,
“seats are available,” “balcony seats --
$12.00,” “reserve your seats through us,”
etc, and theatres may employ “SEATS” in
advertisements and on box offices and
ticket windows.

The instant case is also analogous to use of the
descriptive term “Tasty” for salad dressing – a term that
in this context may well be capable of acquiring
distinctiveness over a period of time. See Henri's Food
Products Inc. v. Tasty Snacks Inc., 2 USPQ2d 1856 (7th
Cir. 1987).
[U]nlike “light beer,” “tasty salad
dressing” is not a kind, sort, genus or
subcategory of salad dressing. Rather,
“tasty” … describes a quality found in many
genuses of salad dressing. It is not an
adjective which in any way serves to
classify the noun to which it is attached …
The term "tasty" describes the quality of
the salad dressing. There really can be no
suggestion that "tasty dressing" is a kind
or type or subcategory of dressings, such
as, for example, French dressing.

Cancellation No. 26,899
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We have concluded that “synergy” is an overworked
concept in the field of nutritional supplements, based
solely upon the frequent occurrences on the Internet.
However, by contrast, the actual number of subsisting
federal registrations containing this term are relatively
few, and in many cases appear to have been registered
correctly on an individual basis and should arguably be
able peacefully to coexist on the register.7
Finally, we also agree with respondent who points
out that there seems to be an obvious contradiction
inherent in petitioner’s argument which points to
repeated uses of the word “synergy” in the trademarks of
third-party competitors. Respondent queries how is it
that the use of the term “Synergy” as a trademark is
evidence of generic usage? To the contrary, to the
extent third-party registrations appear to employ this
term in composite marks, it appears to be functioning as
a source indicator.8 We find that registrations such as

7 The third-party registrations suggest that the addition of
different wording to individual SYNERGY roots are sufficient to
distinguish such marks from each other, especially where the
additional wording forms a unitary expression that creates a
commercial impact readily distinguishable from SYNERGY alone and
from other SYNERGY registered marks. Cf. Borden, Inc. v. York
Wallcoverings, Inc., 207 USPQ 792 (TTAB 1980).
8 Reg. No. 2,250,542, TRIBULUS SYNERGY, for nutritional
supplements containing tribulus terrestris, TRIBULUS disclaimed
apart from the mark as shown
Cancellation No. 26,899
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these corroborate the fact that members of the relevant
public consider the term SYNERGY to be capable of
achieving trademark significance.
Decision: While we find that petitioner has not
shown by a preponderance of the evidence that the term
SYNERGY is generic for respondent’s goods, the petition
for cancellation is granted inasmuch as respondent’s
purported predecessor-in-interest had abandoned the mark
through non-use, and hence, respondent received no
property rights as a result of the assignment.
Accordingly, Registration No. 1,297,341 will be canceled
in due course.

Reg. No. 2,480,439, AJUNE THE CENTER FOR BEAUTY SYNERGY, for
inter alia, nutritional supplements, having a disclaimer of THE
CENTER FOR BEAUTY
Reg. No. 2,209,950, SYNERGY PLUS, for vitamins and food
supplements [no disclaimer].