Wakunaga of America Co. Ltd.

Trademark Trial and Appeal Board

Jan 16, 2002

No. 75256050 (T.T.A.B. Jan. 16, 2002)

1/16/02

Paper No. 15
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Wakunaga of America Co. Ltd.
________

Serial No. 75/256,050
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Mario A. Martella of Beehler & Pravitt for Wakunaga of
America Co. Ltd.

Joyce A. Ward, Trademark Examining Attorney, Law Office 105
(Thomas Howell, Managing Attorney).
_______

Before Cissel, Hohein and Rogers, Administrative Trademark
Judges.

Opinion by Cissel, Administrative Trademark Judge:
On March 11, 1997, applicant filed the above-
identified application to register “AGED GARLIC EXTRACT” on
the Principal Register for “specially processed garlic in
liquid and powder form, namely for use as a food supplement
and a vitamin,” in Class 5. The basis for filing the
application was applicant’s claim of use of the mark in
commerce in connection with the specified goods since
December 7, 1990.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/256,050
2
The specimen of use submitted by applicant with the
application has filed it is a label for a container of
Kyolic dietary supplement. The label notes that
applicant’s garlic cloves “undergo a unique aging process.”
Under the heading of “INGREDIENTS,” and the label lists
“Aged Garlic Extract Powder, Whey, and Magnesium Stearate.”
An asterisk next to the term applicant seeks to register
indicates that “Aged Garlic Extract” refers to a “SPECIAL
GARLIC PREPARATION.”
The Examining Attorney refused registration under
Section 2(e)(1) of the Lanham Act, 15 U.S.C. Section 1052
(e)(1), on the ground that the term applicant and seeks to
register is merely descriptive of the goods identified in
the application. In addition, she noted that the term
applicant seeks to register appears to be generic as
applied to these goods, and advised applicant that under
those circumstances, she could not recommend that the
application be amended to seek registration on the
Principal Register under the provisions of Section 2(f) of
the Act or on the Supplemental Register.
Applicant responded to the refusal to register by
arguing that its use since 1990 established
distinctiveness, and that the Examining Attorney had not
met her burden of proof in establishing that the term is
Ser No. 75/256,050
3
generic in connection with the goods specified in the
application. Applicant did not, however, amend the
application to seek registration under the provisions of
Section 2(f) of the Act.
The Examining Attorney was not persuaded by the
arguments presented by applicant in response to the refusal
to register. In her second Office Action, she repeated and
made final the refusal to register under Section 2(e)(1) of
the Act on the ground that the term sought to be registered
is merely descriptive of the goods specified in the
application. In support of the refusal, she submitted
dictionary definitions of the component words which are
combined to form the term applicant seeks to register.
Citing entries from The American Heritage Dictionary of the
English Language, Third Edition, 1992, Houghton Mifflin
Co., she noted that “aged” was defined as “to cause to
mature or ripen under controlled conditions”; that “garlic”
was identified as “an onionlike plant (Allium sativum) of
southern Europe having a bulb that breaks up into separable
cloves with a strong, distinctive odor and flavor The bulb
of this plant”; and that “extract” as “a concentrated
preparation of the essential constituents of a food, a
flavoring, or another substance; a concentrate.” She
stated that
Ser No. 75/256,050
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“[b]ased on the applicant’s description of
the goods and the information contained on the
applicant’s product literature[,] the Examining
Attorney must conclude that the primary ingredient
of the applicant’s supplements is a concentrate
of garlic, allium sativum, which has been matured
under controlled conditions. In other words, the
primary ingredient of applicant’s goods is AGED
GARLIC EXTRACT. The wording comprising the
applicant’s mark is literally the generic name of
an ingredient of the goods.”

In addition to the dictionary definitions and plain
meaning of the words which are combined to form term
applicant seeks to register, the Examining Attorney
submitted copies of pages from a Web site featuring
information provided by a van door of applicant’s Kyolic
brand nutritional products, and as well as copies of pages
from applicant’s own website. This evidence shows many
examples of how applicants and that other entity use the
term “aged garlic extract.” The following are typical
examples, taken from just five of the many pages submitted
by the examining attorney:
Each to garlic extract is a form of garlic
produced from a unique aging process… the garlic used
in each to garlic extract is also originally grown…
studies have suggested that supplementing once diet
with aged garlic extract may be beneficial. Some
promising data includes reports that aged garlic
extract: may afford protection against…

Various studies have suggested that aged garlic
extract and its active compounds may inhibit the
synthesis of fatty acids and cholesterol…

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Various sell culture studies have suggested that
aged garlic extract and its constituents may inhibit
the growth of human breast cancer cells… that a
possible anti-carcinogenic effects of age garlic
extract and its constituents may be due to their
ability to reduce the rate of activation of chemical
carcinogens…

Studies have also suggested that aged garlic
extract may be a promising adjuvant to cancer therapy…

Each garlic extract has been and is still being
extensively researched by the National Cancer
Institute.

Studies have suggested that aged garlic extract
mitigates infectious diseases through enhancement of
the immune system. Specifically, aged garlic extract
appears to enhance natural killer sell activity… aged
garlic extract was also found to minimize the
immunosuppression induced by UVB radiation… age garlic
extract was found to enhance the preventive effect of
an influenza vaccine… aged garlic extract and its
constituents may inhibit the growth of Candida
albicans…

Each garlic extract and its active compounds may
protect the liver from toxicity… aged garlic extract
may help to protect the body from heavy metal
poisoning… When each garlic extract was combined with
red blood cells it prevented late, Mercury and
aluminum from destroying them. When no aged garlic
extract was headed to the blood samples, these heavy
metals ruptured the red blood cells.

Several studies have suggested that aged garlic
extract, in conjunction with other nutritional
factors, may help to alleviate fatigue and various
complaints from athletes and those with colds or
various internal diseases. Each garlic extract
provides nutrients and a protein fraction, which may
be conducive to the growth of the beneficial bacteria

It has also been suggested that aged garlic
extract may possess an anti—rancidity ability… each
garlic extract may protect lymphocytes … the garlic
extract may protect liver microsomal membranes… aged
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garlic extract may also be responsible for its
cardioprotective effect against the anti—carcinogenic
drug.

Aged garlic extract may ameliorate learning
behaviors… aged garlic extract was found to delay the
manifestation of learning and memory impairments…
because H. garlic extract has demonstrated antioxident
protective effects… a garlic extract restrained the
aging speed… in each garlic extract also prolong the
survival and enhanced the branching of cultured
neurons…

Under the heading of “REDENT DISCOVERIES ON AGED

GARLIC EXTRACT,” applicant’s website notes that

Aged garlic extract has been presented at an
array of scientific meetings. Most recently, each
garlic extract was presented… studies presented
suggested that age garlic extract could decrease the
formation of notrosamines… each garlic extract was
presented at…

Under the heading of “SAFETY OF AGED GARLIC EXTRACT,”

applicant’s website stated that

The safety of aged garlic extract has been well
established by several preclinical and clinical
toxicity tests… each to garlic extract is almost
without toxicity… tests have all confirmed the safety
of aged garlic extract.

As a result of the natural aging process,
Kyolic, one of the most scientifically researched
garlic supplements, has little in common with the
other two types of garlic products. Kyolic is a
special aged garlic extract rather than any commercial
food additive or flavor in. As a natural plant
extract it contains the nutritional benefits of the
plant, only in a more concentrated for. Kyolic is
organic playground and aged naturally.

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Kyolic illuminates the odor through natural aging
and is the only truly odor was garlic product
available today.

On the last day of the six-month period for its
response, applicants filed both a Notice of Appeal and a
Request for Suspension and Remand of the application, which
was accompanied by additional evidence applicants asserted
demonstrates that the term it seeks to register is not
merely descriptive, much less generic.
Included in this submission were copies of pages from
a 1963 dictionary listing meanings for the individual words
which make up the term sought to be registered. These
meanings are different from the ones provided by the
Examining Attorney from the 1992 dictionary she used. They
show, for example, a bad “aged” can be used as a verb form
meeting “to grow older,” and as an adjective meaning “well
advanced to reduction of a basic level-use of topographical
features.” Applicant argued that the evidence submitted by
the examining attorney is somehow not probative because
applicant began using the combined term “AGED GARLIC
EXTRACT” two years before the dictionary used by the
examining attorney was published, and that, in any event,
the additional meanings shown in the additional dictionary
excerpts submitted by applicant show that the term is
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“totally non-descriptive of anything,” much less a generic
term for applicant’s products.
Applicant also submitted additional pages from its own
homepage and the homepage of its vendor, and as well as
partial results of various computer searches showing “aged
garlic extract” used in connection with products made by
applicant. Applicant argued that when the term is used,
and is only in reference to applicant’s goods.
The Board instituted the appeal, but suspended action
on it and remanded the application to the Examining
Attorney for reconsideration in light of the additional
evidence and arguments provided by applicant.
The examining attorney issued an office action stating
that consideration of the additional arguments and evidence
did not convince her to withdraw the refusal to register,
and the application was returned to the board for
resumption of action on the appeal. Applicant filed a
brief and the examining attorney filed a responsive brief.
Applicant file their applied brief, asserting, among
other things, that the brief of the examining attorney was
not timely filed, and that the Board should not consider
it.
At the outset, we deny applicants requested to
disregard the examining attorney’s brief. Contrary to
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applicants contention, the brief in question was timely
filed. The Board sent applicants brief to the examining
attorney on May 18, 2001. Trademark rule to. In 142 (D.)
provides that the examining attorney has 60 days after
applicants brief is said to her to respond. In the instant
case, the examining attorney mailed her brief on July 17,
2001, exactly 60 days after she was sent applicants brief.
She clearly complied with the rule.
Turning, then, to the merits of this appeal, we note
that THE ONLY ISSUE BEFORE THE BOARD IS WHETHER “AGED
GARLIC EXTRACT” is merely descriptive of “specially
processed garlic in liquid and powder form, mainly for use
as a food supplement and a vitamin.” As noted above, an
applicant never amended the application to seek
registration on the Supplemental Register or on the
Principal Register under the provisions of Section 32(f).
even if applicant had made either such amendment, on this
record, registration would plainly not be justified.
The test for mere descriptiveness under section
2(e)(1) of the Lanham acted as well settled. The term is
merely descriptive of the goods with which it is used if it
immediately and forth with conveys information about a
significant ingredient, quality, characteristic, feature,
Ser No. 75/256,050
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function, purpose or use of the goods. In re Bright-Crest,
Ltd., 2001 USPQ 591 (TTAB 1979).
“AGED GARLIC EXTRACT” he is merely descriptive of the
goods identified in the application because the term is the
name of the main ingredient of applicants goods. As the
specimen label indicates, applicants goods are capsules
combining aged garlic extract, whey and magnesium stearate.
And although the product does contain of these two other
substances, it is nonetheless referred to as “aged garlic
extract.”
The record makes it abundantly clear that the term is
used as the name of the substance, which is used as a
dietary supplement. No imagination is required in order to
understand the nature of the goods from consideration of
the term in connection with the goods. No incongruency or
double entendre and he’s created by combining the
descriptive words which together make up the term. That
different meanings would be ascribed to the words which
make up this term in other circumstances is not
determinative of the issue before us in this appeal, which
Is whether the term is merely descriptive in connection
with the goods specified in the application.
The fact that the sources of the examples of highly
descriptive or generic use of this combined term or
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applicant itself and applicants vendor does not alter this
conclusion. As the examining attorney points out in her
brief, and the term would still be considered merely
descriptive even if applicants were the only one to use it
descriptive lake in connection with the specified goods.
National Shooting Sports Foundation, Inc., 219 USPQ 1018
(TTAB 1983).
The evidence of record shows that “AGED GARLIC
EXTRACT” is the name of the primary ingredient of
applicants product. As such, it is incapable of acquiring
distinctiveness in connection with that substance. The
examining attorney was correct in advising applicants that
amendment to the supplemental register or claiming
registrability on the principal register under section Add
to (asset) of the Act would be improper. In under these
circumstances, a mere claim of five years of exclusive use
could hardly constitute an acceptable showing that this
term functions as an indication of the source of applicants
dietary supplement, rather than as the name of the primary
ingredient of it.
Decision: The refusal to register is affirmed.

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