Nexagen USA, LLC

Trademark Trial and Appeal Board

Mar 10, 2008

No. 78506267 (T.T.A.B. Mar. 10, 2008)

Mailed: March 10, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Nexagen USA, LLC
________

Serial No. 78506267
_______

John M. Skeriotis of Brouse McDowell for applicant.

Sue Carruthers, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Hairston, Holtzman, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Nexagen USA, LLC, seeks registration of the mark
XTRACTS (standard characters) on the Supplemental Register
for “nutraceuticals for use as dietary supplements, herbal
weight loss supplements, and nutritional and herbal
supplements.” International Class 5.1
The examining attorney issued a final refusal to
register under Trademark Act § 23, 15 U.S.C. § 1091, on the
ground that applicant’s mark “is the generic name for a key
ingredient of the goods identified by the proposed mark,”
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 78506267
2
and therefore ineligible for registration on the
Supplemental Register.2
Applicant appealed. Both applicant and the examining
attorney filed briefs.
We affirm.
I. Record on Appeal
In support of the refusal to register, the examining
attorney submitted the following relevant evidence:
• A dictionary definition of “extract” which states in
relevant part:

o ex tract
....
2. A concentrated preparation of the essential
constituents of a food, a flavoring, or another
substance; a concentrate: maple extract;

• 14 stories from the Lexis/Nexis database – showing
various extracts used as dietary supplements or as an
ingredient of dietary supplements; and

• Pages from six websites (including applicant’s).

II. Issue on Appeal
At the outset, we note that applicant states the issue
on appeal as “whether the mark XTRACTS is generic of
[a]pplicant’s goods listed in the ... application.”

1 Filed October 26, 2004, based on first use and use in commerce
at least as early as May 1, 2003.
2 The application was originally filed seeking registration on
the Principal Register. Following an initial refusal of
registration on the ground of mere descriptiveness, Trademark Act
§ 2(e)(1), applicant amended to seek registration on the
Serial No. 78506267
3
Applicant’s Br. at 4. Nonetheless, throughout its
argument, applicant maintains that the mark is not “merely
descriptive, much less generic,” and cites cases concerning
descriptiveness. Applicant’s Br. at 7-9.
To be clear, the sole issue on appeal is genericness.
Applicant’s amendment to seek registration on the
Supplemental Register was not made in the alternative, nor
was there any indication that applicant wished to preserve
the opportunity to argue that its mark was eligible for a
Principal Registration. See TRADEMARK MANUAL OF EXAMINING
PROCEDURE (TMEP) §§ 816.04; 1212.02(c) (5th ed. 2007).
Following the amendment, the examining attorney promptly
withdrew her previously-asserted refusal to register on the
basis of descriptiveness under Trademark Act § 2(e)(1)3, and
correctly so, because descriptiveness is not a ground for
refusal of registration on the Supplemental Register.
Trademark Act § 23(a).
Accordingly, we address only whether applicant is
entitled to a Supplemental Registration in view of the
examining attorney’s genericness refusal. Nonetheless, we

Supplemental Register, at which point registration was refused on
the basis that the mark is generic.
3 Applicant’s amendment to the Supplemental Register was made
after the first Office action, and the descriptiveness refusal
was neither made final nor was it repeated. Therefore, the issue
is not even subject to appeal. Trademark Act § 20; 15 U.S.C.
§ 1070; Trademark Rule 2.141.
Serial No. 78506267
4
have fully considered all of the evidence and applicant’s
brief, construing them where possible as arguments that
XTRACTS is not a generic designation for the identified
goods.
III. Applicable Law
A mark is a generic name if it refers to the class,
genus, or category of goods or services on or in connection
with which it is used. In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir.
2001), citing In re Merrill Lynch, Pierce, Fenner & Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987);
H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc.,
782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
The critical issue in genericness cases is
whether members of the relevant public primarily
use or understand the term sought to be protected
to refer to the genus of goods or services in
question. See, e.g., Department of Justice,
Federal Bureau of Investigation v. Calspan Corp.,
578 F.2d 295, 299, 198 USPQ 147, 149 (CCPA 1978);
Maremont Corp. v. Air Lift Co., 463 F.2d 1114,
1118, 174 USPQ 395, 398 (CCPA 1972); In re
Automatic Radio Mfg. Co., 404 F.2d 1391, 1394-95,
160 USPQ 233, 235-36 (CCPA 1969). Determining
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?

H. Marvin Ginn Corp., 228 USPQ at 530.
Serial No. 78506267
5
As the examining attorney correctly explains, “[a]
term that serves as the common descriptor of a key
ingredient, characteristic or feature of the goods is also
generic.... A term need not relate solely to the name of
the goods in order to be held incapable of serving as an
indicator of origin.” Examining attorney’s Br. at 5,
citing, inter alia, Roselux Chem. Co., Inc. v. Parsons
Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627 (CCPA
1962)(SUDSY generic for ammonia); In re Helena Rubenstein,
Inc., 410 F.2d 438, 161 USPQ 606 (CCPA 1969)(PASTEURIZED
generic for face cream); In re Sun Oil Co., 426 F.2d 401,
165 USPQ 718 (CCPA 1970)(CUSTOM BLENDED generic for
gasoline); In re Hask Toiletries, 223 USPQ 1254 (TTAB
1984)(HENNA ‘N’ PLACENTA generic for hair conditioner); cf.
In re Nat’l Patent Dev. Corp., 231 USPQ 823 (TTAB
1986)(ULTRA PURE incapable of being a trademark for
interferons for medical use).
The reason generic terms cannot be trademarks is
“plain:”
To allow trademark protection for generic terms,
i.e., names which describe the genus of goods
being sold, even when these have become
identified with a first user, would grant the
owner of the mark a monopoly, since a competitor
could not describe his goods as what they are.

Serial No. 78506267
6
Merrill Lynch, 4 USPQ2d at 1142, quoting CES Publ’g Corp.
v. St. Regis Publ’n, Inc., 531 F.2d 11, 188 USPQ 612, 615
(2d Cir. 1975).
The examining attorney has the burden of establishing
by clear evidence that a mark is generic and thus
unregistrable. Merrill Lynch, 4 USPQ2d at 1143. Evidence
of the relevant public’s understanding of a term may be
obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers, and
other publications. In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
IV. Discussion
A. What is the Genus of Goods?
Applicant’s goods are identified as “nutraceuticals
for use as dietary supplements, herbal weight loss
supplements, and nutritional and herbal supplements.” We
find that the genus of goods is cogently specified by
applicant’s identification of goods. See, e.g., In re Reed
Elsevier Prop., Inc., 77 USPQ2d 1649, 1654 (TTAB 2005)("we
consider applicant's identification as largely defining the
genus of services involved in this case"), aff'd 482 F.3d
1376, 82 USPQ2d 1378 (Fed. Cir. 2007).
In construing this genus, we first start with the term
“nutraceuticals,” of which applicant’s diet, weight loss,
Serial No. 78506267
7
nutritional, and herbal supplements are sub-categories.
Neither applicant nor the examining attorney have submitted
evidence of the meaning of this term, so we take notice of
the following definition:
nu·tra·ceu·ti·cal ...
n. A food or naturally occurring food
supplement thought to have a beneficial effect on
human health.

THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, (4th ed.
2006)(online version).4 Thus, applicant’s identified
supplements will be construed for this purpose to be such
supplements which are either “food or naturally occurring
food supplement[s].”
B. Does Applicant’s Mark Primarily Refer to the
Genus?

The examining attorney asserts that XTRACTS is the
phonetic equivalent of the word “extracts,” and that the
phonetic equivalent of a generic term may likewise be found
generic. Examining Attorney Br. at 4-5. Applicant does
not contest either point, and we fully agree with the
examining attorney. See In re Hubbard Milling Co., 6
USPQ2d 1239 (TTAB 1987)(MINERAL-LYX generic for “molasses-
based dietary feed supplement for livestock animals

4 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
Serial No. 78506267
8
containing minerals”). To hold otherwise would allow the
registration of inconsequentially altered generic terms,
although they are understood by the relevant purchasers as
generic words.
In this case, XTRACTS is a minimal variation of the
word “extracts.” The words are phonetically identical, and
highly similar in appearance, differing only in the absence
of the initial letter “e” from applicant’s mark. These
differences do not change the meaning or overall impression
of the mark, and purchasers would immediately recognize
XTRACTS to be the equivalent of “extracts.” We therefore
start with the premise that if “extracts” is generic for
the identified goods, applicant’s mark is likewise generic.
The examining attorney argues that “extracts” is used
as a common descriptor of a significant ingredient of
applicant’s goods, and is therefore generic.
The examining attorney’s Internet and Lexis/Nexis
evidence demonstrates that extracts of herbs and similar
materials are widely used in the nutraceuticals market as a
key ingredient or the only ingredient of dietary, weight
loss, and nutritional supplements. A few examples follow:

format or have regular fixed editions. In re Red Bull GmbH, 78
USPQ2d 1375, 1377 (TTAB 2006).
Serial No. 78506267
9
• “Astragalus Plus Extract” is advertised for use
“as an herbal dietary supplement,”5

• VirtuVites advertises “a complete line of herbs
and herbal extracts to support a healthy
lifestyle. .... Please enjoy these all-natural
additions to our extensive selection of
supplements.6

• “Pure Herbal Extracts™ has established itself as
one of the World leaders in producing premium
herbal extract products. You might be unfamiliar
with our brand name, but we supply many of the
World’s herbal extracts brands with their own
label products. ... [W]e are using the latest
research to create in demand health supplements
to cater for [sic] the widest markets possible.”7

• “Did you know? Extracts of miatake mushrooms
(sold as supplements) may be helpful in reducing
the side effects of chemotherapy, boosting immune
system function and fighting cancer.8

• “Brewers yeast ... is sold as a dietary
supplement and can be a source of B. Vitamins.
There are also nutritional yeasts, ... which are
cultivated for use as supplements. Vegemite and
Marmite are yeast extracts sold as nutrient-rich
dietary supplements.”9

• “Supplement makers have promoted artichoke
extract for a variety of ills....”10

• “The company agreed in October to pay a $2
million civil penalty to settle federal
allegations that it made false claims about two

5 http://healthpricer.com/supplements/now_foods/astragalus_plus-
_extract/product_info_153213.html (11/22/06).
6 www.firtuvites.com/Categories/herbs/herbs&extracts.htm
(1/22/2006).
7 http://pureherbalextracts.com (11/22/2006).
8 The Times Union, p. D2 (Albany, New York 3/28/2006)
9 The San Diego Union-Tribune, p. E2 (3/22/06).
10 North Jersey Media Group, Inc., p. C1 (1/31/06).
Serial No. 78506267
10
dietary supplements: a seaweed extract and a
weight-loss product.”11

• “The supplements use extracts from animal
products[,] glucosamine from crab and shrimp
shells, chondroitin from cow windpipes.”12

• “In the vitamin and supplement industry, some
companies already have permission from the FDA to
make ‘function’ claims about cherry juice
extract. Enzymatic Therapy Inc., ... has
permission to say its cherry fruit extract
supplements ‘supports the integrity or health of
capillaries...’”13

It is clear from these excerpts (and others in the
record) that natural extracts are a key – or sole –
ingredient of many dietary, nutritional, and weight-loss
supplements, and that the term “extracts” refers to the
genus defined above.
Moreover, the evidenced generic use by competitors is
strong evidence of the generic use of the term as applied
to applicant’s goods. It is likewise apparent that the
ultimate purchasers of supplements are widely exposed to
such generic use, and would view applicant’s mark as
another example of such use. Indeed, applicant admits that
its products contain “one or more types of extracts,”

11 Akron Beacon Journal Sec. D, p. 3 (1/28/2006).
12 Los Angeles Times, Part F, p. 3 (12/26/2006).
13 The Washington Post, Financial, D02 (10/28/2005).
Serial No. 78506267
11
Applicant’s Br. at 7, as is clear from applicant’s web
site.14
Applicant does not dispute this evidence, but argues
instead that “the mark XTRACTS does not immediately convey
the identity of the type of extract with the degree of
particularity to render the mark descriptive, much less
generic.” Applicant’s Br. at 7. Applicant argues, quoting
RJR Foods, Inc. v. Ocean Spray Cranberries, Inc., 174 USPQ
244 (TTAB 1972)(GRAPE-BERRY not descriptive of beverages
including of grape juice, cranberry juice, and water),15
that “‘A mark that tells consumers that Applicant’s goods

14 Applicant’s XTRACTS line of supplements includes several
products, at least several of which comprise extracts: “Xceed
Multi™ Next Generation ... is enriched with ... herbal extracts
... to build health and ensure adequate nutrition, especially
during dieting.” “Carotene-Curcumin Complex: Fat-soluble
vegetable and herb extracts aid in protecting cell membranes.”
Mood Harmonix™ Next Generation is our all-natural mood elevator
and brain tonic.... It contains nutrients and herbal extracts
that boost mental functions and mood.” www.nexagenusa.com/guest-
/en_US/m_prod_xtracts_water.aspx (11/22/2006); www.nexagenusa-
.com/guest/en_US/m_prod_xtracts_sky.aspx (11/22/2006).
15 RJR Foods was a descriptiveness case arising under Trademark
Act § 2(e)(1). Nonetheless, to the extent that the Board found
applicant’s mark to be not descriptive, that mark was also not
generic. We agree with the examining attorney that RJR Foods is
of little relevance because the marks at issue in RJR Foods and
in this case are very different in kind. “‘GRAPE-BERRY’ is a
composite term which has no specific meaning; there is no such
thing as a ‘grape-berry.’” Examining Attorney Br. at 6. The
same is not true of “extracts.” Further, RJR Foods must be read
together with our more recent statement that “[t]o the extent ...
RJR Foods sets forth a rule ... that in order to be held merely
descriptive, a term must describe with absolute exactness an
ingredient of the product, we decline to follow that rule.” In
re Entenmann’s, Inc., 15 USPQ2d 1750, 1751 (TTAB 1990), aff’d,
90-1495 (Fed. Cir. 1991).
Serial No. 78506267
12
include[] one or more ingredients falling in a class of
ingredients, but fails to convey any information about the
particular member of that class included in the composition
is not’ generic.” Applicant’s Br. at 8. It is thus
applicant’s position that the mark is not generic because
it does not inform the consumer what kind of extract is in
its supplements. We disagree. By focusing on its actual
goods, rather than the goods identified in the application
and the genus of goods to which they belong, applicant
misses the point.
We acknowledge that most of the evidence submitted by
the examining attorney shows the word “extract” with a
modifier to indicate the precise type of extract that is
being referred to. As applicant suggests, its proposed
mark does not name any particular kind of extract. The
evidence of record indicates that applicant uses its mark
on a line of supplements, each of which may incorporate a
different extract, although the current formulae may
change. But the use of the word “extract” – without naming
a specific extract – is not so vague as to remove the word
from its generic meaning. The meaning of “extract” is
clear as it is used widely through the relevant market, and
in connection with many different modifiers. Even though
the mark may not tell the consumer everything about the
Serial No. 78506267
13
supplement, or even everything about the extract which is
an ingredient thereof, it is nonetheless clear that
prospective purchasers would immediately understand that
the supplement in question contained an extract, a fact
which is widely advertised.
This case is similar to In re Analog Devices Inc., 6
USPQ2d 1808 (TTAB 1988), aff’d 10 USPQ2d 1879 (Fed. Cir.
1989)(unpublished)(holding ANALOG DEVICES generic for a
variety of electronic equipment):
Applicant argues that [ANALOG DEVICES] is too
nebulous and vague to be commercially useful for
competitors of applicant to use to describe any
products. However, while we readily concede that
the category of products which the term “analog
devices” names encompasses a wide range of
products in a variety of fields, we do not
believe this fact enables such a term to be
exclusively appropriated by an entity for
products, some of which fall within that category
of goods. For example, while terms such as
“digital devices,” “computer hardware,” “computer
software” and “electronic devices,” just to name
a few, may be broad and even nebulous terms,
nevertheless, these terms may not be exclusively
appropriated but must be left for all to use in
their ordinary generic sense.

Id. at 1810.
With respect to the case at bar, we know that an
“herbal extract,” is an extract prepared from herbs. But
the term “extract” does not lose any of its meaning if the
word “herbal” is deleted. While we may not know everything
about the specific extract involved, “extract” alone is
Serial No. 78506267
14
just as relevant to the genus whether it is modified by the
name of what is extracted or not. At least to the extent
applicant’s identified goods include “herbal supplements,”
it is clear that such goods encompass herbal extracts.
Moreover, the evidence of record clearly indicates that
herbal extracts are in fact commonly used as the main – if
not only – ingredient of “herbal supplements.”
For a given good, there may be a number of terms which
are generic. Clairol, Inc. v. Roux Distrib. Co., Inc., 280
F.2d 863, 126 USPQ 397, 398 (CCPA 1960). Generic terms may
exist at different levels of specificity. For example, for
automobiles, “sports car,” and “car” are likely to be found
generic terms, although one is certainly more specific than
the other. The broader term “car” is no less generic for
an automobile than is “sports car,” even though “car” names
– with less specificity – a larger class of things than
“sports car.” Likewise, the fact that “extracts” (or its
equivalent XTRACTS) is a broader term than “herbal
extracts” or the name of a particular extract does not
prevent it from being generic. Indeed, the injury to
competition from registration of “extracts” is potentially
broader than the injury which would result from
registration of, for instance, “astragalus extract” (a
specific herbal extract mentioned in the evidence), because
Serial No. 78506267
15
it could preempt descriptive use by others of the term as
applied to any extract, not merely a specific one.
V. Conclusion
After careful consideration of the evidence and
argument of record, we conclude that XTRACTS is a generic
term for “nutraceuticals for use as dietary supplements,
herbal weight loss supplements, and nutritional and herbal
supplements,” and that the mark is therefore ineligible for
registration on the Supplemental Register.
Decision: The refusal under Trademark Act § 23 is
affirmed.