Vitamin Shoppe Procurement Services, Inc.

Trademark Trial and Appeal Board

Oct 4, 2019

86905555 (T.T.A.B. Oct. 4, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 4, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Vitamin Shoppe Procurement Services, Inc.
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Serial Nos. 86905555, 86905614, 86905620, 86905628
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James E. Rosini, Jeremy S. Boczko, Susan A. Smith, William M. Merone of Hunton
Andrews Kurth LLP for Vitamin Shoppe Procurement Services, Inc.

Mark S. Tratos, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.
_____

Before Thurmon, Deputy Chief Administrative Trademark Judge, Greenbaum and
Goodman, Administrative Trademark Judges.

Opinion by Thurmon, Deputy Chief Administrative Trademark Judge:
These consolidated appeals present a single issue—whether the phrase THE
VITAMIN SHOPPE is generic for the goods and services identified in the applications
and must be disclaimed.1 Applicant seeks registration of four different composite

1 We consolidated these appeals upon motion by the Applicant because they involve common
issues of law and fact with similar records. 10 TTABVUE 1; see also In re S. Malhotra & Co.
AG, 128 USPQ2d 1100, 1102 (TTAB 2018); In re Anderson, 101 USPQ2d 1912, 1915 (TTAB
2012). Citations are to the record in Application Serial No. 86905555 unless otherwise noted.
Citations to the prosecution file refer to the USPTO’s Trademark Status & Document
Retrieval (“TSDR”) system and identify documents by title and date. Specific citations are to
the page number in the .pdf version of the TSDR records. References to the briefs and other
materials in the appeal record refer to the Board’s TTABVUE docket system.
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marks, but each mark includes the phrase in question, and Applicant has asserted a
claim of acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C.
§1052(f), as to the phrase in each application.2 The Examining Attorney found the
phrase THE VITAMIN SHOPPE generic and required a disclaimer under Section 6(a)
of the Trademark Act, 15 U.S.C. § 1056(a). Applicant refused to enter the disclaimer
and appealed from the requirement. We find the phrase THE VITAMIN SHOPPE is
generic and, therefore, affirm the disclaimer requirement and the refusal to register
in the absence of such a disclaimer in each application.
I. The Applications and the Record
Applicant seeks registration of the four marks shown below.

(the ’555 application)3 (the ’614 application)4

2 Applicant disclaimed the word VITAMIN in each application, but the Examining Attorney
required disclaimer of the phrase THE VITAMIN SHOPPE.
3 Application Serial No. 86905555 was filed on February 11, 2016, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as March 24, 2014
(Class 5 goods) and April 8, 2014 (Class 35 services). “The mark consists of a stylized letter
‘V’ which fades from yellow to orange and the wording ‘THE VITAMIN SHOPPE’ in blue with
‘THE VITAMIN’ above ‘SHOPPE’.” “The color(s) blue, yellow and orange is/are claimed as a
feature of the mark.”
4 Application Serial No. 86905614 was filed on February 11, 2016, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as October, 2012.
“The mark consists of a stylized letter ‘V’ and the wording ‘THE VITAMIN SHOPPE EVERY
BODY MATTERS’.” “Color is not claimed as a feature of the mark.”
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(the ’620 application)5 (the ’628 application)6

The ’555, ’620, and ’628 applications identify the following goods:
Veterinary preparations, namely, vitamins, nutritional
supplements, preparations for aiding digestion and
preventing and treating gas, preparations for treatment of
hip and joint pain, and calming and anxiety nutritional
supplements; dietetic food and nutritional substances,
namely, vitamins, minerals, dietary and nutritional
supplements for weight loss, diet, sports nutrition, body
building, muscle gain and training; dietary supplement
drinks, namely, nutritional supplements for bodybuilding;
dietary supplements in the nature of weight loss powders;
nutritional supplements in the form of non-fruit meal
replacement bars and powders and nutritional
supplements in the form of non-chocolate meal
replacement bars and powders; chocolate-based meal
replacement powders for weight loss purposes; nutritional
supplement meal replacement powders for boosting
energy; food for babies; material for stopping teeth, dental
wax; disinfectants; preparations for destroying vermin;
fungicides, herbicides in International Class 5.
The ’555 and ’628 applications identify the following services:
Retail store services, mail order catalog services and online
retail store services provided via a global computer
network featuring vitamins, vitamin, mineral, dietary and

5 Application Serial No. 86905620 was filed on February 11, 2016, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as August 1, 2012
(Class 5 goods) and October, 2012 (Class 35 services). “The mark consists of a stylized letter
‘V’ and the wording ‘THEVITAMINSHOPPE’ written horizontally.” “Color is not claimed as
a feature of the mark.”
6 Application Serial No. 86905628 was filed on February 11, 2016, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as March 24, 2014
(Class 5 goods) and April 8, 2014 (Class 35 services). “The mark consists of a stylized letter
‘V’ and the wording ‘THEVITAMIN’ written above the wording ‘SHOPPE’.” “Color is not
claimed as a feature of the mark.”
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nutritional supplements, weight loss supplements, foods,
beverages and sports performance drinks; promoting
public awareness of health and nutrition in International
Class 35.
The ’614 application identifies the following services:
Retail store services featuring health products in the
nature of vitamins, minerals, dietary and nutritional
supplements, complementary and alternative medicine
products, herbal products, aromatherapy products; Retail
store services featuring fitness products in the nature of
vitamins, minerals, dietary and nutritional supplements,
complementary and alternative medicine products, herbal
products, aromatherapy products; Retail store services
featuring nutrition products in the nature of vitamins,
minerals, dietary and nutritional supplements; Retail store
services featuring sports nutrition products in the nature
of vitamins, minerals, dietary and nutritional
supplements; Retail store services featuring weight
management products in the nature of vitamins, minerals,
dietary and nutritional supplements; Retail store services
featuring beauty products in the nature of skin care, oral
care, hand and body care, hair care, facial care, and sun
care products; Retail store services featuring pet care
products in the nature of hip and joint care, digestive and
gas care, vitamins, nutritional supplements and calming
and anxiety products; mail order catalog services featuring
health products in the nature of vitamins, minerals,
dietary and nutritional supplements, complementary and
alternative medicine products, herbal products,
aromatherapy products; mail order catalog services
featuring fitness products in the nature of vitamins,
minerals, dietary and nutritional supplements,
complementary and alternative medicine products, herbal
products, aromatherapy products; mail order catalog
services featuring nutrition products in the nature of
vitamins, minerals, dietary and nutritional supplements;
mail order catalog services featuring sports nutrition
products in the nature of vitamins, minerals, dietary and
nutritional supplements; mail order catalog services
featuring weight management products in the nature of
vitamins, minerals, dietary and nutritional supplements;
mail order catalog services featuring beauty products in
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the nature of skin care, oral care, hand and body care, hair
care, facial care, and sun care products; mail order catalog
services featuring pet care products in the nature of hip
and joint care, digestive and gas care, vitamins, nutritional
supplements and calming and anxiety products in
International Class 35.
Finally, the ’620 application identifies the following services:
Retail store services, mail order catalog services and online
retail store services providing via a global computer
network featuring vitamins, vitamin, mineral, dietary and
nutritional supplements, weight loss supplements, foods,
beverages and sports performance drinks in International
Class 35.
Though a number of issues arose during examination of these four applications,
from the first Office Action, a requirement to disclaim “THE VITAMIN SHOPPE”
was presented and continued.7 In the first Office Action, this phrase was found merely
descriptive and a disclaimer was required.8 Applicant responded by claiming the
phrase “has become distinctive of the goods/services through the applicant’s
substantially exclusive and continuous use of the mark in commerce that the U.S.
Congress may lawfully regulate for at least the five years immediately before the date
of this statement.”9 Applicant also argued that it owned five existing trademark
registrations that included this phrase and that the Office had accepted proof of

7 Office Actions dated May 18, 2016, January 16, 2017, August 16, 2017, and March 25, 2018.
These dates are for the ’555, ’620, and ’628 applications. The ’614 application began with an
initial Office Action on May 18, 2016, but subsequent Office Actions were issued on December
18, 2016, July 18, 2017, and February 24, 2018. In all of these Office Actions, the Applicant
was required to disclaim “THE VITAMIN SHOPPE.”
8 Office Action dated May 18, 2016.
9 Response to Office Action dated November 17, 2016.
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acquired distinctiveness under Section 2(f) in each of the applications that led to those
registrations.10
The Examining Attorney found Applicant’s Section 2(f) evidence and arguments
insufficient “because the mark is highly descriptive, if not generic, of the services.”11
Applicant responded with substantial evidence of use and promotion of its marks that
include THE VITAMIN SHOPPE.12 The Examining Attorney then rejected
Applicant’s claim of acquired distinctiveness finding the phrase was generic for the
goods and services.13 Because the phrase was found generic, “additional evidence [of
acquired distinctiveness] would not overcome the disclaimer requirement.”14

10 Id.
11 Office Action dated January 16, 2017 (’555, ’620, and ’628 applications) and December 18,
2016 (‘614 application). The Office Actions for the ’555, ’620, and ’628 applications also found
the phrase highly descriptive or generic for the goods identified in those applications because
“it is merely the common commercial name of the goods and the common commercial name
of the place in which those goods are sold.”
12 Responses to Office Action dated July 17, 2017 (’555, ’620, and ’628 applications) and June
16, 2017 (’614 application).
13 Office Actions dated August 16, 2017 (’555, ’620, and ’628 applications) and July 18, 2017
(’614 application). Because these Office Actions marked the first time the phrase THE
VITAMIN SHOPPE was found generic during the prosecution of these four applications, the
Office Actions were made non-final.
14 Id. We treat the Examining Attorney’s failure to make a separate alternative
determination about whether the Section 2(f) evidence of record would be sufficient to
overcome the disclaimer requirement as a concession that the evidence would be sufficient to
establish distinctiveness. See TMEP § 1212.02(i) (2018). Cf. In re Dietrich,91 USPQ2d 1622,
1625 (TTAB 2009) (Board held that an examining attorney had “effectively conceded that,
assuming the mark is not functional, applicant’s evidence is sufficient to establish that the
mark has acquired distinctiveness,” where the examining attorney rejected the applicant’s
§ 2(f) claim on the ground that applicant’s bicycle wheel configuration was functional and
thus unregistrable even under § 2(f), but did not specifically address the sufficiency of the
§ 2(f) evidence or the question of whether the mark would be registrable under § 2(f) if it were
ultimately found to be nonfunctional). Thus, if, on appeal, the phrase THE VITAMIN
SHOPPE ultimately is found not to be generic, each of the marks would register with a § 2(f)
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Applicant responded with arguments that the phrase was not generic and a
disclaimer of the word VITAMIN,15 but the Examining Attorney rejected those
arguments, found the disclaimer insufficient, and made the disclaimer requirement
final based on the finding that the phrase was generic.16
Applicant submitted Requests for Reconsideration that included arguments and a
survey purporting to show that THE VITAMIN SHOPPE was not generic for the
goods and services.17 Notices of Appeal were filed with the Board on the same day.18
The Examining Attorney denied the Requests for Reconsideration19 and the appeals
were consolidated upon motion by Applicant.20 The appeals have been fully briefed.
II. The Phrase “THE VITAMIN SHOPPE” Is Generic
The only issue presented by these appeals is whether THE VITAMIN SHOPPE is
generic for the goods and services identified in the four applications and therefore
must be disclaimed. Failure to comply with a disclaimer requirement is a ground for
refusal of registration. In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); In re Box Solutions Corp., 79 USPQ2d 1953, 1954 (TTAB 2006).

claim as to THE VITAMIN SHOPPE and a disclaimer of VITAMIN, and no further
proceedings before this Board would be needed.
15 Responses to Office Action dated February 16, 2018 (’555, ’620, and ’628 applications) and
January 18, 2018 (’614 application).
16 Office Actions dated March 25, 2018 (‘555, ’620, and ’628 applications) and February 24,
2018 (’614 application).
17 Requests for Reconsideration after Final Office Action dated September 21, 2018 (’555,
’620, and ’628 applications) and August 24, 2018 (’614 application).
18 1 TTABVUE.
19 4 TTABVUE.
20 10, 11 TTABVUE.
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Applicant’s disclaimer of the word VITAMIN is insufficient if the full phrase THE
VITAMIN SHOPPE is generic.
Consumer understanding is the measure of whether a term or phrase is generic,
as Judge Learned Hand explained almost 100 years ago:
What do the buyers understand by the word for whose use
the parties are contending? If they understand by it only
the kind of goods sold, them, I take it, it makes no
difference whatever what efforts the plaintiff has made to
get them to understand more.
Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y. 1921) (finding aspirin a
generic term because consumers “did not understand by the word anything more than
a kind of drug”). “The test is thus one of meaning to the usual buyer or other relevant
members of the public.” H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782
F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).
To determine “whether a mark is generic therefore involves a two-step inquiry:
First, what is the genus of goods or services at issue? Second, is the term sought to be
registered or retained on the register understood by the relevant public primarily to
refer to that genus of goods or services?” Id. “[I]n registration proceedings the PTO
always bears the burden of proving genericness by clear and convincing evidence.” In
re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (citing
In re Hotels.com, L.P., 573 F.3d 1300, 1301 (Fed. Cir. 2009)).
The genus is determined by the goods and services identified in the applications.
Cordua Rests., 118 USPQ2d at 1636. Three of the applications identify goods in Class
5 and retail services in Class 35, while one application identifies only retail services
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in Class 35. Applicant refers to its business as “health and wellness stores,” and then
lists many types of goods sold in its stores.21 The list provided in Applicant’s brief
substantially matches the goods identified in the ’555, ’620, and ’628 applications. We
find the genus for Applicant’s services is a health and wellness store that primarily
sells dietary and nutritional supplements.
We further find that the genus for the goods includes the types of products
Applicant sells in its health and wellness stores. When Applicant uses the phrase
THE VITAMIN SHOPPE as part of its composite marks on goods, the mark refers to
the name of the store in which the goods are sold.22 When used on goods, the marks
shown in the ’555, ’620, and ’628 applications are house marks that identify the store
in which the goods are sold, as the specimens submitted with these applications show:
the ’555 and ’628 application specimen

21 13 TTABVUE 3-4. Applicant’s survey expert identified the relevant business as “a store
that primarily sells dietary or nutritional supplements, such as vitamins, minerals, or weight
management products.” Request for Reconsideration dated September 21, 2018 at 24, 41.
22 ’555 Application specimen (showing such uses of the mark on goods).
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the ’620 application specimen

The sole issue, therefore, is whether THE VITAMIN SHOPPE is generic for the
type of stores Applicant operates and at least some of the goods identified in the
applications. See In re Analog Devices, Inc., 6 USPQ2d 1808, 1810 (TTAB 1988) (A
registration can be cancelled if the registered mark has become generic for any or all
of the goods identified), aff’d without pub. op., 871 F.2d 1097, 10 USPQ2d 1879 (Fed.
Cir. 1989). The evidence of record shows clearly and convincingly that the phrase
“vitamin shop” is generic for Applicant’s stores, as we explain in the following part of
this decision. The addition of the word “the” to “vitamin shop” does not alter the
generic meaning, and at most would refer to a specific vitamin shop (e.g., the vitamin
shop at Fifth and Main). Cf. In re Comput. Store, Inc., 211 USPQ 72, 74-75 (TTAB
1981) (THE COMPUTER STORE is the common descriptive name for computer-
related services).
Because the three versions on Applicant’s mark used on goods constitute uses as
a house mark, it follows that if the phrase THE VITAMIN SHOPPE is generic for the
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type of store operated by Applicant, the phrase is also generic when used on the goods
at issue here. See In re The Paint Products Co., 8 USPQ.2d 1863, 1866 (TTAB 1988)
(“‘PAINT PRODUCTS CO.’ is no more registrable for goods emanating from a
company that sells paint products than it would be as a service mark for the retail
paint store services offered by such a company.”).
We turn now to the evidence supporting our findings.
A. Evidence of Generic Use and Understanding of “Vitamin Shop”
The Examining Attorney submitted almost 100 examples of generic use of the
phrase “vitamin shop.”23 These uses come from a wide variety of contexts, including
news reports, business reports, and books. In every instance, the phrase “vitamin
shop” is used generically. The following examples are illustrative.
• A Corpus Christ, Texas television station’s website reported that “local
vitamin shop owner found guilty.”24
• Another television station’s website reported, “Car crashes into vitamin
shop.”25
• An online article from Fitness magazine stated “walking into a vitamin
shop or just perusing the supplement aisle at your drugstore can be
pretty overwhelming …;”26

23 Office Action dated August 16, 2017 at 18-118 (’555, ’620, and ’628 applications). The same
evidence was provided in an Office Action dated July 18, 2017 (’614 application). In the
remainder of this decisions, citations to this evidence are to the Office Action dated August
16, 2017.
24 Id. at 21.
25 Id. at 27.
26 Id. at 29.
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• An article on a website titled Rocco’s Medical Technology is captioned
“What Can You Find at a Vitamin Shop?” This article has six more
generic uses of “vitamin shop” on the first page.27
• An online article from the Del Mar Times states “many simply walk into
a vitamin shop and stock up …;”28
• An online notice from the Athens Banner-Herald described a new
Kroger Marketplace store would “will also feature a Starbucks, a
vitamin shop, a drive-through pharmacy, a floral shop and an expanded
cheese shop.”29
• An article in the Milwaukee Journal Sentinel states “walk into vitamin
shops or supplement stores …;”30
• An Arizona Republic article discussing the origins of the Smoothie King
business, explained “founder Steve Kahnau opened a vitamin shop
called Town and Country in New Orleans.”31
• A Newark Star-Ledger article discussing possible retail businesses
explained they might “include a vitamin shop, a sneaker and athletic
apparel shop, a men’s and women’s clothing store and other boutique
shops.”32
• A New York Post crime blotter article stated, “A GNC vitamins shop was
held up in Morris Park …”33

27 Id. at 31.
28 Id. at 34.
29 Id. at 35.
30 Id. at 37.
31 Id. at 38.
32 Id. at 39.
33 Id. at 40. This use appears to refer to a store from the GNC chain as a “vitamins shop,”
which is a generic use for the same type of store operated by Applicant. See infra Part C.2.
(discussion of survey offered by Applicant, where the survey noted that GNC was the leading
chain in Applicant’s business segment). See also Office Action dated August 16, 2017 at 45
(referring to “a GNC vitamin shop”); 51 (“I had been living in GNC vitamin shops …”); 58
(“GNC’s chain of vitamin shops”); 89 (“a GNC vitamin shop”).
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• An Orange County Register article stated, “While working in retail, at
vitamin shops and inside gyms, …”34
• A Tampa Tribune article stated, “before we began to fortify milk with
vitamin D and open vitamin shops …”35
• A New York Times article stated “Popular weight-loss and workout
supplements on sale in hundreds of vitamin shops across the nation
contain a chemical nearly identical to amphetamine …”36
• A San Diego Union-Tribune article referred to “a credit union; vitamin
shop; and pet supplies shop.”37
• A Sun-Sentinel article stated, “Rod Paille, a lifelong parishoner who
owns a vitamin shop just a couple of blocks from St. Mary’s …”38
• A person interviewed in an article in the Arkansas Democrat-Gazette
explained that you would never find tobacco or alcohol products “at a
vitamin shop.”39
• A Newark Star-Ledger article stated, “Look for lucuma powder and
coconut nectar in a vitamin shop or health food store.”40
• An Orange County Register article stated, “Some of Thomas Licata’s
earliest memories are of working in his father’s health food and vitamin
shop …”41
• An article in The Oregonian explained that protein power is “found in
the nutrition section of most natural food stores as well as well-stocked
vitamin shops …”42

34 Id. at 42.
35 Id. at 43.
36 Id. at 44.
37 Id. at 46.
38 Id. at 49.
39 Id. at 52.
40 Id. at 54.
41 Id. at 55.
42 Id. at 56.
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• A New York Times article refers to a person who “found a part-time job
at a vitamin shop.”43
• A Baltimore Sun article mentioned that supplements aiming to improve
sexual performance “are available at drugstores, groceries and vitamin
shops …”44
• A Tampa Tribune article described a person as “a 31-year-old vitamin
shop owner from Idaho …”45
• A San Diego Union-Tribune article explained that a product “is sold in
drugstores, vitamin shops and some department stores …”46
• A Newsday article referred to businesses as “the hair braiding places,
the shoe stores, the vitamin shops.”47
The evidence of record contains dozens more examples of generic uses of “vitamin
shop” similar to those shown above. These come from all sorts of articles, but in every
instance “vitamin shop” (or the plural form) is used generically to identify a type of
retail store. The examples that specifically refer to GNC vitamin shops leave no doubt
that these uses relate to the same type of business operated by Applicant.48
This evidence clearly and convincingly shows that a vitamin shop is a type of store.
Applicant does not seriously dispute this fact, noting the “reams of evidence of third
party use of ‘vitamin shop’ …”49 Applicant argues that this evidence comes from the

43 Id. at 57.
44 Id. at 59.
45 Id. at 66.
46 Id. at 74.
47 Id. at 102.
48 See supra n.32.
49 13 TTABVUE 20.
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“depths of the Internet and the Nexis database,”50 but offers no evidence to refute or
contradict the extensive evidence of generic use of the phrase “vitamin shop.”51
Applicant makes two arguments in its attempt to overcome the overwhelming
evidence that “vitamin shop” is generic for the identified goods and services. First,
Applicant argues that “shoppe” is different enough from “shop” for consumers to have
different understandings of “vitamin shop” and “vitamin shoppe.” Second, Applicant
offers a survey that purports to show that “The Vitamin Shoppe” is not generic.
B. Shoppe and Shop
Applicant makes much of the fact that its mark includes the word “shoppe” rather
than “shop.”52 This argument proves too much, because even the evidence most
favorable to Applicant shows that shoppe is a generic term for a shop or store. Oxford
English dictionary, for example, defines shoppe as “a deliberately archaic spelling of
shop, used in the hopes of imbuing a store with old-fashioned charm or quaintness.”53
The American Heritage dictionary defines shoppe as “a variant of shop.”54 Merriam-
Webster dictionary does not even include a separate entry for the word shoppe, but
instead lists it as an alternative spelling of shop.55

50 Id. at 8.
51 The Examining Attorney also presented evidence the terms “vitamin” and “shop” are
generic. Office Action dated August 16, 2017 at 11-17. Applicant does not appear to contest
this point, but instead argues that the composite phrase “The Vitamin Shoppe” is not generic.
13 TTABVUE 20-21.
52 13 TTABVUE 18-19.
53 (North American English edition) Office Action dated August 16, 2017 at 14.
54 Office Action dated May 18, 2016 at 10.
55 Id. at 9.
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Applicant argues that “shoppe” is “a deliberately archaic spelling of shop for
quaint effect, i.e., as a proper noun or trademark/trade name.”56 One of the dictionary
definitions, the Oxford English dictionary, supports the first part of this assertion,
but there is no evidence showing that “shoppe” is used as a proper noun or as a
trademark. In addition, there is no evidence that Applicant’s stores are old-fashioned
or quaint. It follows, therefore, that Applicant is either using the word “shoppe” in a
misleading way or that it merely uses “shoppe” as a different spelling of “shop.” There
is no evidence to support an inference that consumers understand the word “shoppe”
as used by Applicant to mean anything other than a shop or store.
We note, too, that the words “shoppe” and “shop” sound exactly the same. The
phonetic equivalent of a generic term may likewise be found generic, see, e.g., In re
Stanbel Inc., 16 USPQ2d 1469 (TTAB 1990) (ICE PAK for reusable ice substitute the
equivalent of the generic “ice pack”) aff’d without pub. op., 20 USPQ2d 1319 (Fed. Cir.
1991), and we find that if “vitamin shop” is generic, then the identically sounding
“vitamin shoppe” is also generic. One reason generic terms are not protected as
trademarks is to ensure competitors have access to the words they need to identify
the type of goods or services they offer. Dranoff-Perlstein Assocs. v. Sklar, 967 F.2d
852, 857 (3d Cir. 1992) (“Generic terms are denied trademark protection because
granting one firm their exclusive use would place competitors at a serious competitive
disadvantage.”). To extend Applicant’s trademark rights to the phrase “The Vitamin

56 13 TTABVUE 19.
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Shoppe” would create doubts concerning the rights of competitors to refer to their
businesses as vitamin shops.
Applicant’s argument boils down to a claim that it uses as a mark THE VITAMIN
SHOPPE for a vitamin shop, or perhaps more accurately, for a chain of many vitamin
shops. Some consumers may understand the phrase “The Vitamin Shoppe,” as used
by Applicant, as a trademark or as part of composite trademarks Applicant uses for
its chain of vitamin shops. Indeed, the evidence submitted by the Examining Attorney
includes at least two articles in which “vitamin shop” was used generically while “The
Vitamin Shoppe” was used to identify Applicant. A 1993 article in the New York
Times refers to “The Vitamin Shoppe” as a “Manhattan-based vitamin shop …”57
Another article initially refers generically to “pharmacies and vitamin shops,” but
later refers specifically to “The Vitamin Shoppe, a national retail chain …”58 These
documents show that some consumers may understand “The Vitamin Shoppe” as a
trademark for a chain of vitamin shops. We found only two examples to support this
view, which is not enough to indicate that the primary meaning of “The Vitamin
Shoppe” is as a trademark.59

57 Office Action dated August 16, 2017 at 116.
58 Id. at 61.
59 It must be noted that we found a number of references to “GNC vitamin shops,” which
confirms that the generic uses of “vitamin shop” were referencing the type of business that
offers the goods and services identified in the four pending applications. See supra n.31. One
of the two references to The Vitamin Shoppe is from 1993 and is of very limited probative
value here.
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Applicant owns six trademark registrations that include the phrase “The Vitamin
Shoppe,” including two registrations for this phrase alone. The validity of those
registrations is not at issue here, and the USPTO is required to evaluate Applicant’s
current “trademark applications for compliance with each and every eligibility
requirement, including non-genericness …” In re Cordua Rests., Inc., 823 F.3d 594,
118 USPQ2d 1632, 1635 (Fed. Cir. 2016). In the Cordua Restaurants case, the
applicant sought registration of a stylized version of the word “Churrascos,” but
registration was refused on the ground that the word is generic. 118 USPQ2d at 1633-
34. The applicant owned a registration for the same word in standard characters and
argued that this prior registration was evidence the word was not generic. The
Federal Circuit disagreed because “this proceeding does not involve a challenge to the
‘321 Registration and the CHURRASCOS word mark.” Id. at 1634. The court
explained that “whether or not the term “churrascos” was generic when it was
registered, we, like the Board, must evaluate the evidence in the present record to
determine whether there is sufficient evidence to establish that it is ineligible.” Id. at
1635. The same reasoning applies here.
Applicant also argues that the Examining Attorney’s decision “boils down to a
claim that all of the registrations previously issued by the Office to Applicant were
simply wrong.”60 That is incorrect, as shown by the Federal Circuit’s analysis in the
Cordua Restaurants case. We are required to apply the statutory rules to each
application and cannot treat a decision in a prior examination as binding on the

60 13 TTABVUE 8.
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examination of later applications. The sole question presented to the Board in these
appeals is whether the phrase “The Vitamin Shoppe” is generic for the goods and
services identified in the four applications. Based on the evidence of record, we find
that it is. It is irrelevant that Applicant obtained prior registrations of marks that
included the same phrase without having to disclaim the phrase. In re Shinnecock
Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009) (“Applicant’s
allegations regarding similar marks are irrelevant because each application must be
considered on its own merits.”); In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some
characteristics similar to Nett Designs’ application, the PTO’s allowance of such prior
registrations does not bind the Board or this court.”).
Applicant also notes that numerous marks with the word “shoppe” have been
registered without a requirement that this term be disclaimed.61 The question
presented here is whether the phrase “The Vitamin Shoppe” is generic for Applicant’s
goods and services. Use of the word “shoppe” in other registered trademarks does not
shed light on this issue. Again, it is well settled that each case must be decided on
its own facts, based on the particular mark, the particular goods or services, and the
particular record in each application. In re Nett Designs, 57 USPQ2d at 1566.

61 13 TTABVUE 21 (referring to “evidence of 70 live registrations of SHOPPE marks where
SHOPPE was not even disclaimed”).
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C. The Survey Evidence Is Irrelevant, Ambiguous and Inconclusive
Applicant submitted a Thermos-style survey that it claims shows the phrase “The
Vitamin Shoppe” is a trademark.62 We begin by noting that the phrase “The Vitamin
Shoppe” consists of an article (the) and two generic terms (vitamin and shoppe).
Applicant argues that the phrase as a whole is a distinctive trademark, but this is
not a scenario where a coined term or phrase is alleged to have become generic.63 This
case presents the opposite question—whether a generic phrase has become a
distinctive mark.
We have held that consumer surveys are irrelevant in this context.
Surveys might help in determining whether a designation
that started life as a mark now is understood to be the
thing itself, but they can have no probative value where the
issue is the meaning of terms as a lexical matter. Where,
as here, the question is not whether a term has become
generic through common use, consumer surveys are not
relevant.
In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, *41 (TTAB 2019); see also Frito-
Lay N. Am., Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184, 1196 (TTAB 2017).
Based on these precedents, we are inclined to give little, if any, weight to the survey
offered by Applicant.
The evidence of consumer use in the record shows that the phrase “the vitamin
shop” is generic. Applicant points out that none of this evidence shows use of the

62 Request for Reconsideration dated September 21, 2018 at 12-57. We discuss this survey
below.
63 Applicant concedes this point. 13 TTABVUE 10 (noting that this is not “a case where the
question is whether a coined or arbitrary mark has become generic”). Applicant argues the
phrase “The Vitamin Shoppe” is descriptive, not generic.
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phrase “The Vitamin Shoppe” in a generic fashion.64 Dictionary evidence covers that
gap by showing that “shoppe” is a different spelling of “shop” and that any different
meaning of the “shoppe” variant is not relevant here. In short, the other evidence of
record shows clearly and convincingly that “The Vitamin Shoppe” is generic for the
goods and services identified in the applications at issue here.
Though our precedents hold that a survey is not relevant here, for the sake of
completeness, we will evaluate Applicant’s survey to determine whether it sheds any
light on the issues before us. We begin with a general discussion of the type of survey
Applicant’s expert conducted and then turn to the details of the survey.
1. The Thermos Survey Format
Applicant retained Dr. Brian Robertson, who conducted a Thermos-type survey.
In this type of survey, participants are asked what they would call a particular type
of product or service.65 In the original Thermos survey, potential participants were
first asked the screener question: “Are you familiar with the type of container that is
used to keep liquids, like soup, coffee, tea and lemonade, hot or cold for a period of
time?” Thermos Prods. Co. v. Aladdin Indus., 207 F. Supp. 9, 21 n.8 (D. Conn. 1962).
Those who answered yes were then asked the following key questions:
• If you were going to buy one of these containers tomorrow—that is, the type
that keeps food and beverages hot or cold—what type of store would you
select to make your purchase? What would you ask for—that is, what would
you tell the clerk you wanted?

64 13 TTABVUE 20-21.
65 Vincent N. Palladino, Assessing Trademark Significance: Genericness, Secondary Meaning
and Surveys, 92 TRADEMARK REP. 857 (2002).
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• Can you think of any other words that you would use to ask for a container
that keeps liquids hot or cold?
• If you were going to describe one of these containers to a friend of yours—
what words would come to your mind first to describe a container that keeps
liquids hot or cold?
• What do you call this (these) containers?
Id. Participants in the Thermos survey were later asked the following two brand-
related questions:
• Do you know the names of any manufacturers who make these containers
that keep liquds [sic] hot or cold?
• Can you name any trade-marks or brand names that are used on these
containers?
Id.
The first series of questions was included to elicit from participants generic terms
for the product, while the two follow-up questions were used to elicit brand responses
that could be used to eliminate brand responses given to the first series of questions.
For example, if a participant responded with “thermos” or “thermos bottle” to one or
more of the first questions, that might mean the word thermos was used and
understood as a generic term by the respondent. But if the same person later listed
“Thermos” as a manufacturer or a brand for the product, such a response might
suggest the participant was not providing a generic term in response to the first series
of questions.66

66 Id. at 874-75.
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Before we turn to Applicant’s survey, there are certain characteristics of the
Thermos survey format worth noting. First, if there are a number of alternative
generic terms for the product or service at issue, a Thermos survey is likely to
understate the degree of generic meaning of some, and perhaps all, the generic
terms.67 Thus, the Thermos-type survey can lead to inconclusive results when there
are more than a few possible generic terms for the goods or services. For example,
high results for one generic term are not evidence that other terms that produced
lower response rates are not also generic. See, e.g., Nestle Co. v. Chester's Mkt., Inc.,
571 F. Supp. 763, 776 (“All the Sorensen study could prove was that chocolate chip is
a generic term just as a similar study in the Thermos case proved that thermos is a
generic term. … Surely the [Thermos] study did not prove that vacuum bottle is not
a generic term, as in this case it did not prove that Toll House is not a generic term
for cookies.”).
Second, the brand-related follow up questions in the Thermos survey are not
always effective at reducing ambiguity because respondents may use a term
generically in response to all questions in the survey.68 A Thermos-type survey can
be useful in identifying potentially generic terms, and it may even help show which
generic terms are more frequently used by consumers. Beyond that, a Thermos survey
may prove nothing.

67 Id.
68 Palladino, 92 TRADEMARK REP at 874-75.
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Applicant argues the Thermos survey may overstate the generic nature of dual
use trademarks.69 A dual use mark, as the phrase is used here, refers to a trademark
that some, perhaps most, consumers understand to be a brand, but that is also widely
used as a generic term. A Thermos survey may not work well for such marks because
of the poor differentiation between the questions intended to elicit generic responses
and those intended to elicit brand responses. In a dual use scenario, many consumers
may offer the dual use mark as a response to all the questions. Differences in response
rates may not mean much in this situation, but may merely confirm that the mark is
used generically by some consumers and understand as a brand by some consumers.
These appeals do not present dual use or hybrid marks. The marks typically
identified as examples of this phenomenon include COKE, JELLO, KLEENEX and
BAND-AID.70 All of these marks began life as trademarks. Perhaps some consumers
also use these marks as generic terms in some contexts. The present appeals,
however, raise a different issue. The phrase “the vitamin shop” is clearly generic, but
Applicant argues that a different spelling of the phrase (i.e., “The Vitamin Shoppe”)
is not generic. If Applicant is correct, then it is not a dual use scenario, but rather
one where consumers differentiate between “the vitamin shop” and “The Vitamin

69 13 TTABVUE 12 (“The principal drawback of a ‘Thermos’ study is that consumers familiar
with a brand name for a good or service ‘may answer [the question] with the trademark and
drop what they consider to be a generic name, because it’s so obvious to them.’”) (citing
MCCARTHY, § 12:15). Applicant used the Coke trademark as an example of a dual use mark,
but offered no evidence about actual consumer understanding or use of the Coke mark.
70 See, e.g., Ralph H. Folsom and Larry L. Teply, Trademarked Generic Words, 89 YALE LAW
J. 1323, 1344-45 (1980) (using KLEENEX, COKE and BAND-AID as examples of hybrid
trademarks); E.I. duPont de Nemours & Co. v. Yoshida International, Inc., 393 F. Supp. 502,
185 USPQ 597, 616 (EDNY 1975) (the Teflon survey used COKE and JELLO marks).
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Shoppe.” That is not what happens in a dual use or hybrid mark scenario where
exactly the same word is allegedly used as a brand and a generic term. There is no
reason to believe that a Thermos-type survey would overstate the generic results for
the phrase “The Vitamin Shoppe.” In fact, the opposite is true. As we explained above,
a Thermos-type survey may undercount the genericness of this phrase if there are a
number of generic terms for the type of store operated by Applicant. We find that
outcome more likely than the undercounting suggested by Applicant, particularly
given some of the other flaws with Dr. Robertson’s survey. The fact that credible
arguments can be made for both overstating and understating results illustrates the
inherent ambiguity in the Thermos-type survey format.
2. Applicant’s Thermos-Type Survey
There are several differences between Applicant’s survey and the original
Thermos survey. In the original Thermos survey, participants were asked four
different questions that might produce a generic term in response. That repetition
gave participants four opportunities to offer a generic term, which might reduce the
undercounting problem noted above. In the Thermos survey, participants also were
asked if they could think of any other words for the product. The original Thermos
survey used a number of questions to elicit generic responses from respondents.
The survey conducted by Dr. Robertson asked only one operative question: “What
do you generally call the type of store that primarily sells dietary or nutritional
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supplements?”71 No follow ups or probes were used. No other questions were included
to elicit additional generic terms from participants. In the Robertson survey,
respondents were given only one chance to provide a possibly generic response. See,
e.g., Elliot v. Google Inc., 45 F. Supp. 3d 1156, 1169 (D. Ariz. 2014) (criticizing a
Thermos-type survey that “asked only one substantive question”).
There is nothing inherently wrong with Dr. Robertson’s structure, but it does
increase the survey’s tendency to understate generic responses. For example, what if
there are five generic terms consumers often use to identify this type of store? If each
of these terms is used with equal frequency, Dr. Robertson’s survey should produce
about a 20% response rate for each of those generic terms. What if one of those terms
is used more often by consumers than the other four generic terms. We might get
substantially higher results for the more popular term than for the others.
Dr. Robertson’s survey was conducted online. We do not have the actual responses,
but from the explanation in his report, we assume participants typed in an answer to

71 Request for Reconsideration dated September 21, 2018 at 25, 41. Dr. Robertson used the
following screening question: “Are you familiar with, or have you ever shopped at, a store
that primarily sells dietary or nutritional supplement, such as vitamins, minerals, or weight
management products?” Id. at 24. This screening question is too broad. Mere familiarity with
stores that sell these types of products does not make one a relevant consumer of Applicant’s
goods and services. Indeed, of the 407 participants who answered yes to the screener
question, only 342 reported that they had ever shopped in such a store. That means 65
persons screened into this survey may not have been relevant consumers, because we only
know that they were familiar with such stores. Familiarity does not make one an actual or
prospective customer. Other consumers may be familiar with stores that sell goods they
would never buy. It was error to include persons who were merely familiar with the type of
store operated by Applicant. We cannot tell what impact this error had on the survey, but it
another reason to question the reliability of the resulting data.
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the operative question.72 Dr. Robertson’s report shows that 5.2% of participants
answered the operative question with “Vitamin Shoppe or Vitamin Shop.”73 How
many participants actually responded with “Vitamin Shoppe”? Dr. Robertson does
not say. The other evidence of record shows widespread generic use of “vitamin shop,”
so it would be helpful to know what specific answers were given to this question. Dr.
Robertson should not have combined all such responses into the category of “Vitamin
Shoppe or Vitamin Shop,” given that Applicant argues one of these phrases is a brand
(Vitamin Shoppe) but effectively concedes the other may be generic (vitamin shop).
We also note that another 8.4% of participants answered “Vitamin Store” to the
operative question.74 Because the question used the term “store,” we believe that
responses of “vitamin store” should be combined with the “vitamin shop” responses.75
Indeed, since Applicant admits to the “reams” of evidence showing that “vitamin
shop” is generic,76 why didn’t Dr. Robertson combine responses of “vitamin shop” and
“vitamin store,” then compare those combined responses to participants who
answered “Vitamin Shoppe” to the operative question? That comparison would be
helpful in determining what, if anything, Dr. Robertson’s survey proves.

72 Id. at 22 (explaining the survey methodology). As explained below, the omission of actual
survey responses raises additional questions about the reliability of Dr. Robertson’s
conclusions.
73 Id. at 43.
74 Id.
75 The dictionary definitions in the record all indicate that a “shop” and a “shoppe” are types
of stores. See supra notes 52-54.
76 13 TTABVUE 20.
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We read the Robertson survey as showing 13.6% of respondents provided an
answer to the operative question that is consistent with the evidence of record
showing that the phrase “vitamin shop” is generic. The highest “generic” response
rate was 24.6% for the group that included responses with “health” plus some other
term.77 Responses that included “nutrition” plus some other term were 7.6%.78 These
results are striking for two reasons.
First, these groupings show that Dr. Robertson combined all responses that
included “health” into a single category. He also combined all responses that included
“nutrition” into a single category. But he put responses that included “vitamin” into
two categories. When we combine the “vitamin” responses, we get a 13.6% response
rate, which is almost double that for the “nutrition” responses. The operative question
included the word “nutritional” but did not include the word “vitamin,” which makes
the different results even more striking.79 On balance, we find the responses to the
operative question appear consistent with the other evidence of record. That is,
Applicant’s survey results are consistent with the phrase “vitamin shop” being
generic. Dr. Robertson’s summary of the responses to the operative question follow.80

77 Request for Reconsideration dated September 21, 2018 at 43.
78 Id.
79 The screening question included the word “vitamins,” but the operative question did not.
We do not suggest this had a huge impact, but it does highlight the importance of the
difference between the “vitamin” and “nutrition” responses to the operative question.
80 Id. at 25.
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The follow-up brand-related questions do little to change our view of this evidence.
In the original Thermos study, two brand-related follow up questions were used. Both
were open-ended, not leading. Dr. Robertson again deviated from the Thermos model.
After asking his single operative question—that is, the one quoted above—he asked,
“Can you identify by name any examples of this type of store? Which store names do
you know?”81 We cannot help but wonder why Dr. Robertson used an open-ended
question that allows for multiple responses here, but sought only a single response to
the operative question that was designed to elicit generic responses. Whether
intended or not, this structure is likely to understate generic responses and overstate
brand responses.
To make matters worse, we don’t know what specific answers were given to the
open-ended follow-up question because Dr. Robertson again only identified the

81 Id. at 26, 41.
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combined “Vitamin Shoppe or Vitamin Shop” responses.82 Dr. Robertson effectively
treats all of these responses as brand answers, but does not provide the raw data that
would allow us to determine how many participants actually answered “Vitamin
Shoppe.” If most of the responses in this group answered “vitamin shop,” then it is
impossible to determine what they meant by that response. We suspect, given the
other evidence of record, that many, perhaps most, of the respondents in the “Vitamin
Shoppe or Vitamin Shop” category answered “vitamin shop” to both the operative
question and to the open-ended brand question. If so, the results are completely
ambiguous.83
Dr. Robertson didn’t stop with this more open-ended brand-related question. He
went on to ask a series of leading questions about specific companies in the relevant
market. Participants were asked, “Are you familiar with ________ (a store that
primarily sells dietary or nutritional supplements)?” The following store names were
used with this question: Better Day, General Nutrition Center or GNC, Nutrishop,
and The Vitamin Shoppe. Note that in this instance, the online form would have
provided the name “The Vitamin Shoppe” to participants. Over 68% of respondents
said yes, they were familiar with The Vitamin Shoppe.

82 Id. at 43.
83 These problems go the heart of the conclusions offered by Dr. Robertson, because he used
the alleged brand responses in “Vitamin Shoppe or Vitamin Shop” group to eliminate almost
all the generic responses from the same group. Id. at 20, 26-27. If most of the responses in
these groups were “vitamin shop,” then Dr. Robertson’s analysis is deeply flawed. Because
we do not have the data needed to evaluate this critical issue, we cannot determine whether
Dr. Robertson’s primary conclusions are entitled to any weight.
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This result provides some support for Applicant’s position. If 68% of relevant
consumers are familiar with The Vitamin Shoppe stores, that is evidence the phrase
is distinctive. There are, however, a number of reasons to question this result. First,
if 68% of participants were familiar with The Vitamin Shoppe, why did only 21%
identify “Vitamin Shoppe or Vitamin Shop” as a name of this type of store? In fact,
we don’t even know what portion of the 21% actually gave “Vitamin Shoppe” as an
answer to the open-ended store name question. Some, maybe most, answered
“vitamin shop” to that question. But even if nearly all used “Vitamin Shoppe” in
response to that question, why were more than three times more persons familiar
with the store name when prompted?
There are other somewhat perplexing results from Dr. Robertson’s survey. For
example, when asked how often they shopped at The Vitamin Shoppe, 251
respondents answered that they had shopped at a The Vitamin Shoppe store within
the last year.84 Yet when asked for names of this type of store, only 86 respondents
gave “Vitamin Shoppe or Vitamin Shop” as an answer. It seems strange that only
about a third of the persons who had shopped at the store in the last year named it
when asked.
There is one explanation for these responses. Perhaps many of the respondents
used “Vitamin Shoppe or Vitamin Shop” generically throughout this survey. Perhaps
many participants did not take any note of the different spelling in the leading
question “Are you familiar with The Vitamin Shoppe (a store that primarily sells

84 Id. at 52.
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dietary or nutritional supplements)?” Participants had already been asked the same
question three times (i.e., with three other store names used) before they were
presented with this one, and the two immediately prior versions of this question
included store names that were not familiar to most participants.85 Perhaps by that
point in this online survey participants were not reading carefully enough to notice,
or to place much significance upon, the different spelling of the word “Shoppe” in this
leading question.
We give little weight to the Robertson survey. We treat the 68% of respondents
who expressed familiarity with The Vitamin Shoppe stores as some evidence
supporting Applicant’s position. But given the survey’s flaws, the lack of data
concerning actual responses given to the survey questions, and the inconsistencies in
the results, we find this evidence falls far short of raising doubts as to the genericness
of the phrase “The Vitamin Shoppe.”
D. The Disclaimer Requirement and Applicant’s Longstanding
Trademark Use
Applicant uses the phrase “The Vitamin Shoppe” as part of composite marks for
its stores and for many of the goods sold in those stores. Applicant has used “The
Vitamin Shoppe” for over 40 years and argues that its brand must be distinctive as a
result of such long use and promotion.86 However, even long and successful use of a

85 Id. at 46-47.
86 13 TTABVUE 3-4.
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term does not automatically convert a generic term into a non-generic term. In re
Helena Rubinstein, Inc., 410 F.2d 438, 161 USPQ 606, 609 (CCPA 1969).
The disclaimer requirement imposed here was appropriate, because Applicant
does not have exclusive rights in the phrase “The Vitamin Shoppe.” To allow
registration without a disclaimer would place Applicant’s competitors at risk if they
identify their stores a “vitamin shop,” or “the vitamin shop.” That result is
unacceptable given the evidence of record.
The predecessor of our primary reviewing court noted long ago the risk one takes
when it uses a generic term to identify its goods or services.
While it is always distressing to contemplate a situation in
which money has been invested in a promotion in the
mistaken belief that trademark rights of value are being
created, merchants act at their peril in attempting, by
advertising, to convert common descriptive names, which
belong to the public, to their own exclusive use. Even
though they succeed in the creation of de facto secondary
meaning, due to lack of competition or other happenstance,
the law respecting registration will not give it any effect.
Weiss Noodle Co. v. Golden Cracknel and Specialty Co., 290 F.2d 845, 129 USPQ 411,
414 (CCPA 1961) (the alleged mark was “a hyphenated, phonetically spelled version
of the Hungarian word” for the goods). Applicant’s use of the generic phrase “The
Vitamin Shoppe” for over 40 years does not make the phrase distinctive. In re Cordua
Rests., Inc., 118 USPQ2d at 1632. If Applicant wants to register its composite marks,
it must disclaim “The Vitamin Shoppe” rather than just “Vitamin” in each
application.
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Decision: The refusals to register based on Applicant’s refusal to enter the
required disclaimer in the ’555, ’614, ’620, and ’628 applications are affirmed.
However, this decision will be set aside if Applicant submits the required disclaimer
in each application to the Board within 30 days from the date of this decision.
Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g).87

87 The proper format for the disclaimer in each application is: “No claim is made to the
exclusive right to use THE VITAMIN SHOPPE apart from the mark as shown.” See TMEP
§ 1213.08(a)(i).