Master Supplements, Inc.Download PDFTrademark Trial and Appeal BoardNov 16, 2016No. 86749584 (T.T.A.B. Nov. 16, 2016) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: November 16, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Master Supplements, Inc. _____ Serial Nos. 86749576 and 867495841 _____ Eric P. Mirabel, Esq., for Master Supplements, Inc. Tracy Whittaker-Brown, Trademark Examining Attorney, Law Office 111, Robert L. Lorenzo, Managing Attorney. _____ Before Zervas, Ritchie and Kuczma, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: Master Supplements, Inc. (“Applicant”) seeks registration on the Principal Register of the following proposed standard character marks, BIOACTIVE CFU for “Probiotic nutraceuticals for use as a dietary supplement which contain both lactobacillus and bifidobacteria strains” and BIOACTIVE PROBIOTIC for “Probiotic 1 These appeals involve common questions of law and fact and the records are substantially similar. Accordingly, we consolidate and decide both appeals in this single decision. See In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009); TBMP § 1214 (2014). Citations are to the record in application Serial No. 86749576 unless otherwise noted. Serial No. Nos. 86749576 and 86749584 - 2 - Nutraceuticals for use as a dietary supplement containing both lactobacillus and bifidobacteria,” both in International Class 5.2 The Examining Attorney determined that BIOACTIVE CFU and BIOACTIVE PROBIOTIC are merely descriptive of Applicant's identified goods, and refused registration pursuant to Section 2(e)(1) of the Trademark Act on the ground that the proposed marks are merely descriptive. After the refusals were made final, Applicant appealed. Briefs have been filed by both Applicant and the Examining Attorney. We affirm the refusals to register. Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), prohibits the registration of a mark which, when used on or in connection with the goods of the applicant, is merely descriptive of them. A term is merely descriptive if it immediately conveys knowledge of a significant quality, characteristic, function, feature or purpose of the goods or services it identifies. See, e.g., In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Determining the descriptiveness of a mark is done in relation to an applicant's identified goods and/or services, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use; that a term may have other meanings in different contexts is not controlling. See In re 2 Application Serial Nos. 86749576 and 86749584 were both filed on September 8, 2015, based upon an allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Serial No. Nos. 86749576 and 86749584 - 3 - Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). Further, descriptiveness of a mark is not considered in the abstract. In re Bayer Aktiengesellschaft, 82 USPQ2d at 1831. The question is whether someone who knows what the goods or services are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). The record includes the following evidence: Definitions of “BIOACTIVE”: - “of or relating to a substance that has an effect on living tissue.”3 - “having an effect upon a living organism, issue, or cell. Biologically active.”4 - “of or relating to a substance that has an effect on living tissue.”5 Uses of “BIOACTIVE”: - Book entitled “Bioactive Goods in Promoting Health Probiotics and Prebiotics.”6 - Book entitled “Bioactive Foods in Promoting Health.”7 - Article entitled “Probiotics and Prebiotics as a Bioactive Component of Functional Food.”8 3 The Free Dictionary, December 22, 2015 Office Action. 4 www.medicinenet.com, December 22, 2015 Office Action. 5 The American Heritage Dictionary of the English Language (5th ed. 2015), December 22, 2015 Office Action. 6 www.sciencedirect.com, December 22, 2015, Office Action. 7 www.sciencedirect.com, December 22, 2015 Office Action. 8 www.nih.gov, December 22, 2015, Office Action. Serial No. Nos. 86749576 and 86749584 - 4 - - Article entitled “Calories in Bioactive Nutrients Probiotic” referencing bioactive whey protein powder.9 Definitions of “PROBIOTIC”: - “denotes use of microorganisms to benefit health.” 10 - “A dietary supplement containing live bacteria or yeast that supplements normal gastrointestinal flora, given especially after depletion of flora caused by infection or ingestion of an antibiotic drug.”11 - “A microbe that protects its host and prevents disease. The best-known probiotic is Lactobacillus acidophilus, which is found in yogurt, acidophilus milk, and supplements. Probiotics counter the decimation of helpful intestinal bacteria by antibiotics. Probiotics given in combination with antibiotics are therefore useful in preventing antibiotic-associated diarrhea. The yeast S. boulardii and three strains of Lactobacillus have also been shown to be useful in this regard.”12 Uses of PROBIOTIC”: Probiotics and prebiotics as a bioactive component of functional food.13 About Master Supplements, Inc. In 2003, Randolph S. Porubcan set out to create a probiotic that was more powerful and effective than anything else on the market.14 Uses of “CFU”: - Instructions for counting Colony Forming Units (CFUs): “CFU PLATE COUNT PROCEDURE Count the colonies on each plate. Average the counts within a dilution. This gives the CFU/gram.”15 9 www.myfitnesspal.com, December 22, Office Action. 10 www.medical-dictonary.thefreedictionary.com, December 20, 2015 Office Action, application Serial No. 86749584. 11 Id. 12 Rx.ist.com, December 20, 2015 Office Action, application Serial No. 86749584. 13 www.ncbi.nlm.nih.gov, December 20, 2015 Office Action, application Serial No. 86749584. 14 https://www.master-supplements.com/, December 20, 2015 Office Action, application Serial No. 86749584. 15 www.master-supplements.com, December 22, 2015 Office Action. Serial No. Nos. 86749576 and 86749584 - 5 - - Advertisement for applicant’s dietary supplements:16 - An electronic display for purchase of the goods stating, “This powerful blend contains 7 antimicrobial strains of probiotics, 6 billion CFU's per capsule.”17 - “Got A Question About Probiotics? Ask Dr. Greg”; WHAT’S A CFU/G? Dr. Greg: It’s an industry-wide term. It’s the way we measure probiotic potency. The CFU stands for colony-forming units… 10 BILLION CFU? 25 BILLION CFU? MORE IS BETTER RIGHT? Dr. Greg: I’ve seen crazy-high CFUs out there. It doesn’t necessarily mean they are better, the point is quality – not quantity!”18 BIOACTIVE CFU “Nutraceutical” is defined as “a specially treated food, vitamin, mineral, herb, etc., that you eat or drink in order to improve your health.”19 A definition of “bioactive” is 16 www.supersup.com, December 22, 2015 Office Action. 17 www.bioactivenutrients.com, December 22, 2015 Office Action. 18 www.up4probiotics.com, January 23, 2016 Final Office Action. 19 From merriam-webster.com. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). We take judicial notice of the definition of “nutraceutical.” Serial No. Nos. 86749576 and 86749584 - 6 - “having an effect upon a living organism, issue, or cell. Biologically active.”20 The term “BIOACTIVE” hence informs purchasers, who are members of the general public, that Applicant’s goods include biologically active components. Applicant allows that “the term ‘bioactive,” may be descriptive.”21 The second term in the proposed mark, “CFU,” is defined as “Colony Forming Units,” and is a measure of probiotic potency, according the statement by Dr. Greg mentioned above. CFU indicates that there is a level of probiotic potency and therefore bioactivity. Applicant’s contention that “the term ‘CFU’ is an acronym capable of different meanings, and it does not immediately convey ‘colony forming units’ (and the Examiner has not shown otherwise), and it is therefore not descriptive”22 is not persuasive. “That a term may have other meanings in different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y , 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)). The proposed mark therefore is a combination of two merely descriptive terms. When two descriptive terms are combined, the determination of whether the composite mark also has a descriptive significance turns upon the question of whether the combination of terms evokes a new and unique commercial impression. See Duopross Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753 (Fed. Cir. 2012) (SNAP SIMPLY SAFER merely descriptive for “medical devices, 20 www.medicinenet.com, December 22, 2015, Office Action. 21 Applicant’s brief at 1, 4 TTABVUE 2. 22 Id. Serial No. Nos. 86749576 and 86749584 - 7 - namely, cannulae; medical, hypodermic, aspiration and injection needles; medical, hypodermic, aspiration and injection syringes”); In re Positec Group Ltd., 108 USPQ2d 1161, 1163 (TTAB 2013) (SUPERJAWS merely descriptive for a variety of machine and hand tools, including jaws).23 A combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a unique, nondescriptive meaning. See In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO- RAKE held not merely descriptive of a snow removal hand tool). Because the combination of the two terms in Applicant’s proposed mark does not evoke a new and unique commercial impression or create a unitary mark, the proposed mark is merely descriptive of features of the goods. BIOACTIVE PROBIOTIC As noted above, “bioactive” informs purchasers that Applicant’s nutraceuticals include biologically active components. PROBIOTIC, defined as a microorganism that benefits heath, is a term which is in Applicant’s identification of goods; the goods are identified as probiotic nutraceuticals. Thus, each term identifies a feature or characteristic of the goods, i.e., that the goods contain biologically active compounds that are microorganisms that benefit heath. The combination of the two individual terms does not evoke a new and unique commercial impression or create a unitary mark. The proposed mark is therefore merely descriptive of features of the goods. 23 Applicant therefore is incorrect in its contention that the combination of the subject terms, even if both descriptive, form a protectable mark simply because “words which could not individually become a trademark may become one when taken together.” Applicant’s brief at 1, 4 TTABVUE 2. Serial No. Nos. 86749576 and 86749584 - 8 - Decision: The refusals to register the proposed mark BIOACTIVE CFU and the proposed mark BIOACTIVE PROBIOTIC are both affirmed. Copy with citationCopy as parenthetical citation