Merrell Pharma-ceuticals Inc.

Trademark Trial and Appeal Board

Aug 17, 2006

No. 78404543 (T.T.A.B. Aug. 17, 2006)

Mailed:
August 17, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Merrell Pharmaceuticals Inc.
________

Serial Nos. 78404542 and 78404543
_______

Susan Upton Douglass of Fross Zelnick Lehrman & Zissu, P.C.
for Merrill Pharmaceuticals Inc.

Michael G. Lewis, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).1
_______

Before Seeherman, Hairston and Cataldo, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

On April 20, 2004, Merrell Pharmaceuticals applied to
register the marks CITRUCEL FIBERSHAKE (Application Serial
No. 78404542) and FIBERSHAKE (Application Serial No.
78404543) for goods which were ultimately identified as
“laxatives and fiber dietary supplements.” Both

1 The current Examining Attorney took over responsibility for
the applications with the preparation and filing of the appeal
briefs.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser Nos. 78404542 and 78404543
2
applications were initially filed pursuant to Section 1(b)
of the Trademark Act, asserting a bona fide intention to
use the marks in commerce; applicant subsequently filed
Allegations of Use for both marks, alleging first use and
first use in commerce as of April 21, 2005.
The Examining Attorney issued a final refusal of
registration with respect to the application for CITRUCEL
FIBERSHAKE pursuant to Section 6(a) of the Trademark Act,
15 U.S.C. §1056(a), requiring a disclaimer of FIBERSHAKE on
the ground that it is merely descriptive of applicant’s
goods, and is therefore an unregistrable component of the
mark. With respect to the application for FIBERSHAKE, the
Examining Attorney issued a final refusal of registration
pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark is merely
descriptive.
Applicant and the Examining Attorney have filed appeal
briefs. An oral hearing was not requested.
Because both appeals involve the same issue, namely,
whether FIBERSHAKE is merely descriptive of laxatives and
fiber dietary supplements, and because the records in each
application are essentially the same, we are deciding both
appeals in a single opinion.
Ser Nos. 78404542 and 78404543
3
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods or services. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not
immediately convey an idea of each and every specific
feature of the applicant’s goods or services in order to be
considered to be merely descriptive; rather, it is enough
that the term describe one significant attribute, function
or property of the goods or services. In re H.U.D.D.L.E.,
216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338
(TTAB 1973). Whether a term is merely descriptive is
determined not in the abstract, but in relation to the
goods or services for which registration is sought, the
context in which it is being used on or in connection with
the goods or services, and the possible significance that
the term would have to the average purchaser of the goods
or services because of the manner of its use; that a term
may have other meanings in different contexts is not
controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979).
Ser Nos. 78404542 and 78404543
4
In support of his position that FIBERSHAKE is merely
descriptive, the Examining Attorney has made of record
excerpts from a number of various websites showing use of
the term “fiber shake,” including the following:
Pumpkin Fiber Shake
Great Starter Shake in the Morning.
Fast and Easy to Make
www.recipezaar.com

Figure 8 weight loss program
...
4 products make it simple
1 Go Easy! Protein Shake with INNER G-
Pex, chocolate & vanilla
2 Just Go! Orange Fiber Shake
www.arbonne.com

INTESTINAL CLEANSE 5 to 7 Days
...
8:30 to 10:30 AM: First Herb Bulk shake
(at least 1+1/2 hour after breakfast).
Mix 1 scoop in 8 oz of H2O or apple
juice. Remember to drink 8 oz. of
water immediately after your fiber
shake.
...
1:00 to 3:00 PM: Early Afternoon Second
Fiber Shake (At least 1-1/2 hour after
lunch.)
Remember: Drink 8 oz. of water
immediately after your fiber shake.
www.camdenclay.com

Soluble Products
Nutritional Beverage Mix Checklist
...
Healthy Lifestyle
...
High Fiber Shake Mix
Mix with Cold Water or Milk
(lists flavors Chocolate, Strawberry,
Vanilla, Plain)
www.solubleproducts.com
Ser Nos. 78404542 and 78404543
5

GoLEAN Essentials: High Protein & High
Fiber
Fule [sic] your weight and fitness
goals with Kashi GoLEAN Natural High
Protein High Fiber Shakes, Delicious
and Nutritious, GoLEAN shakes provide
30 grams (when mixed with 1 cup of fat
free milk) of high quality protein and
7 grams of satisfying fiber….
www.mothernature.com

Nutrition Shakes Products
Diet Shakes
Energy Shakes
High-Fiber Shakes
www.health-checker.com

The Examining Attorney has also made of record
dictionary definitions for “fiber” and “shake,”2 the most
pertinent of which are:
Fiber: Coarse, indigestible plant
matter, consisting primarily of
polysaccharides such as cellulose, that
when eaten stimulates intestinal
peristalsis. In this sense, also
called bulk, roughage.

Shake: a. See milk shake b. A beverage
in which the ingredients are mixed by
shaking.

In addition to the foregoing evidence, we note that
applicant has identified its goods as laxatives and fiber
dietary supplements (emphasis added), and that applicant’s

2 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.

Ser Nos. 78404542 and 78404543
6
specimen of use describes its goods as “methylcellulose
fiber therapy for regularity.”
We have no doubt that the individual words “fiber” and
“shake” in applicant’s marks describe significant
characteristics or features of the goods. Fiber is clearly
a major ingredient of applicant’s fiber dietary supplement.
In fact, applicant has acknowledged the descriptiveness of
FIBER: “the term FIBER is descriptive as being an
ingredient of the laxative and nutritional supplement,” and
“The term FIBER describes an ingredient of the nutritional
supplements.” Brief, p. 4. The word SHAKE, too, is
descriptive, in that applicant’s product is consumed in the
form of a shake. Applicant states that its goods are a
powdered laxative, rather than a shake, such that the
product “is not literally a ‘fiber shake,’ but rather, a
laxative containing fiber, that can be combined with other
ingredients and so processed to become a shake.” Brief,
p. 5. While this argument might have some applicability if
the refusal were that FIBERSHAKE is a generic term for
applicant’s powder, the question before us in this appeal
is whether the term is merely descriptive. When FIBERSHAKE
is viewed in connection with the goods, a FIBERSHAKE powder
or a FIBERSHAKE mix, the descriptive nature of FIBERSHAKE,
or SHAKE per se, is readily apparent; consumers would
Ser Nos. 78404542 and 78404543
7
immediately understand that FIBERSHAKE describes a powder
or mix for making a fiber shake. Moreover, the evidence of
record shows that third parties use “fiber shake” or
“shake” to describe goods that are powders that are
combined with liquid to make a shake. See, for example,
“High Fiber Shake Mix” on the www.solubleproducts.com
website. Thus, “shake” is understood by consumers, in the
context of these goods, to describe that the goods are a
powder or mix that makes a “shake.”
When these two descriptive words, FIBER and SHAKE, are
combined, the resulting term FIBERSHAKE continues to have a
merely descriptive meaning, i.e., it immediately tells
consumers that applicant’s goods make a shake that has
fiber as a primary ingredient. No imagination or thought
is required to reach this conclusion; the evidence shows
that “fiber shake” is a recognized term for such shakes.3
Applicant argues that, although the term “fiber shake”
may be used by third parties, applicant’s mark FIBERSHAKE
is a unitary term that applicant has coined. We assume
that when applicant asserts that its mark is coined, it is

3 Applicant has pointed out that some of the Internet evidence
submitted by the Examining Attorney uses the term “fiber shakes”
(plural) rather than “fiber shake.” While there is sufficient
evidence of “fiber shake” per se to support our conclusion that
FIBERSHAKE is merely descriptive, we consider the evidence of
“fiber shakes” relevant to show how the public would perceive
applicant’s mark.
Ser Nos. 78404542 and 78404543
8
referring to the fact that applicant spells FIBERSHAKE
without a space between “fiber” and “shake.” We are not
persuaded by this argument. The absence of a space between
“fiber” and “shake” does not create a different meaning or
perception of FIBERSHAKE. Although in applicant’s mark the
two words, “fiber shake,” are run together so that there is
no space between them, consumers would still readily
recognize that FIBERSHAKE consists of these two words. The
commercial impression that FIBERSHAKE is simply the words
FIBER SHAKE is emphasized by the specimen showing
applicant’s use of the mark, which depicts FIBERSHAKE with
a capitalized “F” and “S” and with the other letters in
lower case, such that consumers would view the mark as
being the separate words FIBER SHAKE. Moreover, in a
Google search summary submitted by applicant, most of the
listings that refer to applicant’s product depict the mark
as “FiberShake,” with the “F” and “S” capitalized and the
remaining letters in lower case, indicating that various
websites view the mark as consisting of the two words.
Thus, consumers would understand FIBERSHAKE, when used in
connection with a laxative and dietary fiber supplement
sold in powder form, to have the same meaning as FIBER
SHAKE, namely, a powder that makes a fiber shake. See In
re Planalytics Inc., 70 USPQ2d 1453 (TTAB 2004).
Ser Nos. 78404542 and 78404543
9
Applicant argues that the USPTO has registered other
SHAKE marks that include descriptive words because they
were found to be unitary terms. We do not consider the
third-party marks that applicant has made of record to be
analogous to the present situation. In any event, a
similar argument to that of applicant herein was made by
the applicant in In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564 (Fed. Cir. 2001). What the Court said in that
decision, at 57 USPQ2d 1566, is equally applicable here:
The Board must decide each case on its
own merits. In re Owens-Corning
Fiberglas Corp., 774 F.2d 1116, 1127,
227 USPQ 417, 424(Fed. Cir. 1985). 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.

Needless to say, this court encourages
the PTO to achieve a uniform standard
for assessing registrability of marks.
Nonetheless, the Board (and this court
in its limited review) must assess each
mark on the record of public perception
submitted with the application.
Accordingly, this court finds little
persuasive value in the registrations
that Nett Designs submitted to the
examiner or in the list of registered
marks Nett Designs attempted to submit
to the Board.

Finally, applicant points out that the search the
Examining Attorney conducted was for “fiber shake” as two
words, not the single word FIBERSHAKE. Applicant also
Ser Nos. 78404542 and 78404543
10
asserts that, on the other hand, the Google search that it
conducted for the single term FIBERSHAKE retrieved “dozens
of listings for the applicant and its FIBERSHAKE product,
and no third-party references.” Brief, p. 8. As a result,
applicant claims that “the public can, and does,
differentiate between the words ‘fiber shake’ or ‘fiber
shakes’ and the mark that applicant uses and seeks to
register, FIBERSHAKE.” Brief, p. 8.
As a general rule, a party cannot take a merely
descriptive term and obtain exclusive rights to it by
misspelling it, or depicting it as a compound word, i.e.,
without a space. See, in particular, the following cases,
in which the deletion of a space between words did not
prevent the combined term from being found merely
descriptive (or generic): In re Gould Paper Corp., 834
F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE
generic for a wipe for cleaning television and computer
screens); In re Abcor Development, supra, (GASBADGE at
least descriptive for gas monitoring badges; three judges
concurred in finding that term was the name of the goods);
In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977)
(BREADSPRED descriptive for jams and jellies that would be
a spread for bread); In re Perkin-Elmer Corp., 174 USPQ 57
(TTAB 1972) (LASERGAGE merely descriptive for
Ser Nos. 78404542 and 78404543
11
interferometers utilizing lasers). As noted previously,
the commercial impression conveyed by applicant’s mark is
of the two words, FIBER SHAKE, which have merely been
combined. Thus, even without a space in the mark, the
public will still view FIBERSHAKE as a descriptive term.4
In view of the foregoing, we find that FIBERSHAKE is
merely descriptive of laxatives and fiber dietary
supplements.
Decision: The refusal to register FIBERSHAKE—Serial
No. 78404543—is affirmed. The refusal to register CITRUCEL
FIBERSHAKE—Serial No. 78404542--in the absence of a
disclaimer is also affirmed. However, if within thirty
days of the mailing of this decision applicant submits the
required disclaimer of FIBERSHAKE, our decision in Serial
No. 78404542 will be set aside.

4 It is not clear to us whether applicant is also asserting
that the public has come to recognize FIBERSHAKE, when shown as a
single word, as applicant’s trademark. To the extent that
applicant is contending that FIBERSHAKE is not merely descriptive
because it has acquired distinctiveness as a trademark, we note
that applicant has not claimed that its marks are entitled to
registration pursuant to the provisions of Section 2(f) of the
Trademark Act, and therefore this question is not before us.