Calpis Co., Ltd.

Trademark Trial and Appeal Board

May 31, 2001

No. 75621635 (T.T.A.B. May. 31, 2001)

5/31/01 Paper No. 10
UNITED STAT
Tradem
I
S
David Toren of Brown &
Carol A. Spils, Tradem
(Jerry Price, Managing
Before Wendel, Bucher
Judges.
Opinion by Bucher, Adm
Calpis Co., Ltd.
“milk, namely cows’ mi
butter, sour milk beve
fermented milk,” in In
Registration has
the mark LACTO TRIPEPT
1 Application Serial
1999. The application i
fide intention to use th
application contained ad
Examining Attorney in tw
30 and 32), it appears a
application fees for the
notice of appeal, applic
appeal. Accordingly, th
in every respect as if a
Class 29 alone, the loweTHIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
DEB
ES PATENT AND TRADEMARK OFFICE
________
ark Trial and Appeal Board
________
n re Calpis Co., Ltd.
________
erial No. 75/621,635
_______
Wood, LLP for Calpis Co., Ltd.
ark Examining Attorney, Law Office 101
Attorney).
_______
and Holtzman, Administrative Trademark
inistrative Trademark Judge:
seeks to register LACTO TRIPEPTIDE for
lk, sheep milk, goat milk, milk powder,
rages, lactic acid beverages and
ternational Class 29.1
been finally refused on the ground that
IDE is merely descriptive within the
Number 75/621,635, filed on January 14,
s based upon applicant’s claim of a bona
e mark in commerce. Although the original
ditional goods classified by the Trademark
o other classes (i.e., International Classes
s if applicant has never paid the required
se additional classes. Similarly, with its
ant approved fees for only a single class on
is application, on appeal, is being handled
single class application in International
st numbered class in ascending order.
Serial No. 75/621,635
- 2 -
meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1). Applicant and the Trademark Examining Attorney
have filed briefs, but an oral hearing was not requested.
It is well settled that a term is considered to be merely
descriptive within the meaning of Section 2(e)(1) of the
Trademark Act, if it immediately conveys information about an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services with which it is being
used. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987); and In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 217-18 (CCPA 1978). It is not necessary that a
term describe all of the properties or functions of the goods
or services in order for it to be considered to be merely
descriptive thereof; rather, it is sufficient if the term
describes a significant attribute or idea about them. On the
other hand, the immediate idea must be conveyed with some
“degree of particularity.” In re Entenmann’s Inc., 15 USPQ2d
1750, 1751 (TTAB 1990), aff’d 90-1495 (Fed. Cir. Feb. 13,
1991); In re TMS Corporation of the Americas, 200 USPQ 57, 59
(TTAB 1987).
Furthermore, 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. Thus, "[w]hether
consumers could guess what the product [or service] is from
Serial No. 75/621,635
- 3 -
consideration of the mark alone is not the test." In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). We
must look to the context in which the term is being used on or
in connection with those 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. In
re Bright-Crest Ltd., 204 USPQ 591, 593 (TTAB 1979).
However, a mark is suggestive if, when the goods or
services are encountered under the mark, a multistage
reasoning process, or the utilization of imagination, thought
or perception, is required in order to determine what
attributes of the goods or services the mark indicates. See
In re Abcor Development Corp., supra at 218, and In re Mayer-
Beaton Corp., 223 USPQ 1347, 1349 (TTAB 1984). As has often
been stated, there is a thin line of demarcation between a
suggestive mark and a merely descriptive one, with the
determination of which category a mark falls into frequently
being a difficult matter involving a good measure of
subjective judgment. See In re Atavio, 25 USPQ2d 1361 (TTAB
1992) and In re TMS Corporation of the Americas, supra at 58.
The distinction, furthermore, is often made on an intuitive
basis rather than as a result of precisely logical analysis
susceptible of articulation. See In re George Weston Ltd.,
228 USPQ 57, 58 (TTAB 1985).
Serial No. 75/621,635
- 4 -
The Trademark Examining Attorney maintains that the mark
LACTO TRIPEPTIDE immediately conveys information with respect
to an ingredient of applicant’s goods.
In support of her interpretation of the term LACTO, the
Trademark Examining Attorney attached to the original Office
action LEXIS/NEXIS® excerpts referring to the “lacto
vegetarian” in dietary terms as one who avoids all animal
produce but consumes milk products. Consistent with this
contextual usage, we take judicial notice from multiple
dictionary entries that the prefix “lacto-” in the combined
form indicates “milk,” and not surprisingly, shares the same
Latin stem “lact” as the words “lactate,” “lactation” and
“lactose.”2
In response, applicant argues that this scientific or
technical meaning of the term “lacto” with regard to the milk
products listed above “ … is not likely to be appreciated by
the average customer.” (applicant’s brief, p. 2).
Furthermore, applicant cited to a number of third-party
registrations in its response to the first Office action, and
to some additional registrations in its brief, where the term
“Lacto,” makes up the initial component of composite marks
2 The American Heritage Dictionary of the English Language,
1975, p. 732.
Serial No. 75/621,635
- 5 -
used in connection with milk products and the term “Lacto,”
was not disclaimed.3
In the second Office action, the Trademark Examining
Attorney attached multiple NEXIS® excepts which mention
“tripeptide” molecules. This usage pertains broadly at the
level of molecular biology to the break down of essential
amino acids from all types of protein molecules, including but
not limited to those molecules found in milk products.
Similar to its arguments as to the word “lacto,”
applicant admits that the term TRIPEPTIDE might well describe
one of many different amino acid compounds contained in these
goods. According to applicant:
“[A]rguing that TRIPEPTIDE describes the goods
is akin to arguing that “cement powder”
describes houses. The word TRIPEPTIDE does not
carry any meaning for the average customer and
would be appreciated by the consumer to
represent source and not an ingredient of the
goods.”
(applicant’s brief, p. 3).
Furthermore, applicant argues that even if the individual
components of its mark are descriptive, here the combination
3 Because the Trademark Examining Attorney has not objected to
the form of submission of these listed registrations, we consider
them to be of record. However, in many of the composite marks cited
by applicant, the absence of a disclaimer is of little probative
value herein. This is true because in many of the listed marks, the
“LACTO-“ portion of a mark is merged so as to be considered unitary,
in which case no disclaimer of a descriptive element is required.
See TMEP §1213.06(a).
Serial No. 75/621,635
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of words is stronger than the sum of the two components.
Applicant contends that the Trademark Examining Attorney has
failed to meet her burden of proof with respect to the mere
descriptiveness of the mark LACTO TRIPEPTIDE, as a whole.
Applicant points to the fact that the Trademark Examining
Attorney has made of record no evidence of competitors’
descriptive use of the term or, in fact, of any third-party
usage of the term “lacto tripeptide.” Rather, applicant
argues that one must conduct a multistage reasoning process to
connect the term LACTO TRIPEPTIDE to the listed dairy
products.
We find that each of these words is highly suggestive, if
not merely descriptive, of an attribute of these goods.
However, the combination of these two words creates a new term
for which, on this record, we must conclude there is no use in
the scientific literature. The Trademark Examining Attorney
has produced no evidence of usage in the United States of the
combined term “lacto tripeptide” by others in the food or
beverage field, in the scientific community or in the general
media.4
4 The one exception is a publication for food manufacturers
published in the United Kingdom. This article lists dietary
supplements and “functional food products” acknowledged by the
Japanese Ministry of Health and Welfare. Clearly, even if this
reflects a single instance of usage in Europe and/or Japan, this
does not reflect usage in the United States.
Serial No. 75/621,635
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The Examining Attorney’s position appears to be little
more than speculation about the nature of the feature and/or
the ingredient of applicant's goods referenced by the term
“Lacto Tripeptide.” Accordingly, on the basis of the limited
record before us, we find insufficient evidence to hold the
term LACTO TRIPEPTIDE, as a whole, merely descriptive when
used in connection with applicant’s dairy products. Based
upon this record, a multistage reasoning process or
imagination would be necessary in order for customers or
prospective purchasers of these milk-based products to
conclude anything meaningful about the features or ingredients
of such goods. The term LACTO TRIPEPTIDE, when used in
connection with foods and beverages derived from animal milk,
has not been shown to immediately or directly describe any
significant aspect of applicant's particular goods.
Moreover, to the extent that there may be any doubt as to
whether applicant's mark is merely descriptive or suggestive
of its goods, we consider it appropriate to resolve such doubt
in the favor of applicant. Then upon publication of
applicant’s mark, any person who believes that she would be
damaged by the registration of the mark will have the
opportunity to file an opposition thereto. See In re Merrill
Lynch, Pierce, Fenner, and Smith inc., 828 F.2d 1567, 4 USPQ2d
1141 (Fed. Cir. 1987); In re Morton-Norwich Products, Inc.,
Serial No. 75/621,635
- 8 -
209 USPQ 791 (TTAB 1981); and In re Gourmet Bakers, Inc., 173
USPQ 565 (TTAB 1972).
Decision: The refusal to register under Section 2(e)(1)
is hereby reversed, but a Notice of Allowance should issue for
this mark as to the goods listed in International Class 29,
the only class for which a filing fee appears to have been
paid.