Rodale Inc.

Trademark Trial and Appeal Board

Jul 25, 2006

No. 78369245 (T.T.A.B. Jul. 25, 2006)

Mailed:
July 25, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Rodale Inc.
________

Serial No. 78369245
_______

Jody H. Drake, Kevin G. Smith and Gary D. Krugman of
Sughrue Mion, PLLC for Rodale Inc.

Mrs. A.D. Saunders, Trademark Examining Attorney, Law
Office 109 (Dan Vavonese, Managing Attorney).
_______

Before Bucher, Grendel and Holtzman, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Supplemental
Register of the mark NUTRITION BULLETIN (in standard
character form) for services recited in the application (as
amended) as “providing information in the field of health
and diet via a web site on the Internet,” in Class 44.1

1 Serial No. 78369245, filed February 17, 2004. The application
is based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a), and April 2002 is alleged to be the date of
first use of the mark anywhere and the date of first use of the
mark in commerce. As originally filed, the application sought
THIS OPINION IS CITABLE
AS PRECEDENT OF THE
TTAB
Ser. No. 78369245
2
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the Supplemental Register on the ground that it is generic
and therefore incapable of functioning as a mark for the
recited services. Trademark Act Section 23, 15 U.S.C.
§1091.
The appeal is fully briefed, but no oral hearing was
requested. We affirm the refusal to register.
To be registrable on the Supplemental Register, the
matter sought to be registered must be “capable of
distinguishing applicant’s goods or services.” Trademark
Act Sections 23(a), 23(c). “Generic terms are common names
that the relevant purchasing public understands primarily
as describing the genus of goods or services being sold.
They are by definition incapable of indicating a particular
source of the goods or services.” In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed.

registration of the mark on the Principal Register. After the
Trademark Examining Attorney issued a first Office action
refusing registration on the ground of mere descriptiveness under
Trademark Act Section 2(e)(1), applicant amended the application
to one seeking registration on the Supplemental Register. The
application also has been amended to include applicant’s claim of
ownership of six prior registrations, i.e., Nos. 2974874,
2984357, 2914031, 2956178, 2920260 and 2937172. For the first
time in its reply brief, applicant has offered to disclaim
BULLETIN apart from the mark as shown.

Ser. No. 78369245
3
Cir. 2001)(citations omitted). Because they are incapable
of identifying source, generic terms are not registrable on
the Supplemental Register.
Our primary reviewing court has stated:

The determination of whether a mark is generic
is made according to a two-part inquiry:
“First, what is the genus of the goods or
services at issue? Second, is the term sought
to be registered ... understood by the relevant
purchasing public primarily to refer to that
genus of goods or services?”

In re Dial-A-Mattress Operating Corp., supra, 57 USPQ2d at
1810, quoting from H. Marvin Ginn Corp. v. Int’l Ass’n of
Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530
(Fed. Cir. 1986). The Office bears the burden of
establishing genericness based on clear evidence of generic
use. In re American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832 (Fed. Cir. 1999). “Any competent source
suffices to show the relevant purchasing public’s
understanding of a contested term, including purchaser
testimony, consumer surveys, dictionary definitions, trade
journals, newspapers and other publications.” In re Dial-
A-Mattress Operating Corp., supra, 57 USPQ2d at 1810.
Where (as in this case) the matter sought to be registered
is a phrase (rather than a compound word), the Office must
provide more than mere dictionary definitions showing the
Ser. No. 78369245
4
genericness of the component words; “it must conduct an
inquiry into ‘the meaning of the disputed phrase as a
whole.’” Id., quoting from In re American Fertility
Society, supra, 51 USPQ2d at 1836.
The evidence of record in this case includes the
following. Applicant’s specimen of use is a printout of a
page from its menshealth.com website, under the general
heading “Nutrition.” (The other available headings or
pages are listed as “Fitness,” “Sex,” “Health,”
“Lifestyle,” and “Weight Loss.”) The page bears the
headline “Nutrition Bulletin January/February 2004” with
the subhead “Nutrition news you can use.”
Also of record is the following dictionary definition
of “nutrition”:2

1. The process of nourishing or being
nourished, especially the process by which a
living organism assimilates food and uses it
for growth and for replacement of tissues. 2.
The science or study that deals with food and
nourishment, especially in human beings. 3. A
source of nourishment; food.

Also of record is the following dictionary definition
of “bulletin”:3

2 The American Heritage Dictionary of the English Language (3d
ed. 1992).

3 The American Heritage Dictionary of the English Language (3d
ed. 1992).
Ser. No. 78369245
5

1. A brief report, especially an official
statement on a matter of public interest issued
for immediate publication or broadcast. 2. A
brief update or summary of current news, as on
television or radio or in a newspaper. 3. A
periodical, especially one published by an
organization or society. 4. A printed
program, especially one listing the order of
worship for a religious service: a church
bulletin.

The Trademark Examining Attorney has submitted two
NEXIS articles showing uses of “nutrition bulletin” in the
press. These are (emphasis added):

Parents and the corporations that increasingly
write the national menu need to take heed: the
products the children are ingesting are making
them sick. Here is a sampling from a buffet of
recent unhappy nutrition bulletins: ...
Austin Statesman-American (December 31, 1998);

Born in Lyons, N.Y., Mr. Dapolito graduated
from the Crane School of Music at the State
University of New York at Potsdam. He was
employed full time as senior assistant editor
of a food and nutrition bulletin published by
MIT’s International Food and Nutrition Program
at its Center for International Studies.
The Boston Globe (August 9, 1990).

Also of record are the following excerpts from seven
Internet web pages showing uses of “nutrition bulletin”
Ser. No. 78369245
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(emphasis added):

The MSUE on-line bulletin office provides
educators with additional nutrition bulletins
that may be ordered in hard copy.
(Michigan State University);

To receive free occasional special mailings of
nutrition bulletins, please e-mail your name,
address...
(Dr. Arnold J. Susser);

Between the food commercials you see on TV
every day and the many nutrition bulletins and
reports you hear about on the news every night,
you get a huge amount of information about the
fats that you eat...
(HowStuffWorks);

The site leads you to several food and
nutrition bulletins several of which you can
read or print online.
(Washburn County (WI));

Mayo Clinic Online – Reliable source for health
information. Includes nutrition bulletins and
recipes too.
(Pauline Haass Public Library);

The American Association of Advertising
Agencies submitted a review of “popular” U.S.
Department of Agriculture (USDA) nutrition
bulletins, describing them as “lacking
persuasion, dull, colorless, and, in some
cases, atrocious.”
(Nutrition Today Feb. 1994); and

Get ideas from magazines, parents, friends,
nutrition bulletins, Beef Ambassador Fact
Sheets and meat publications.
(2004 Louisiana 4-H Beef Poster Contest Rules
and Regulations).

Ser. No. 78369245
7
As noted above (in footnote 1), applicant has
submitted claims of ownership of six prior registrations,
all of them registered on the Supplemental Register. Our
review of the Office’s records4 shows that these
registrations are as follows:
- Registration No. 2914031, of the mark WEIGHT-LOSS
BULLETIN (BULLETIN disclaimed) for “magazine feature and
section in the fields of health, fitness, diet, exercise
and lifestyle,” in Class 16;
- Registration No. 2920260, of the mark SEX BULLETIN
(BULLETIN disclaimed) for “magazine section featuring
information in the fields of health, fitness, diet,
exercise and lifestyle,” in Class 16;
- Registration No. 2937172, of the mark MUSCLE
BULLETIN (BULLETIN disclaimed) for “magazine columns and
sections in the field of health, fitness, diet, exercise
and lifestyle,” in Class 16;

4 Applicant has not submitted copies of these registrations (nor
even printouts from the Office’s automated database), but has
merely summarized them in its main brief. However, the Trademark
Examining Attorney has not objected to applicant’s reliance on
the prior registrations, and in her brief she has presented
substantive arguments regarding the prior registrations.
Although an appropriate practice would have been for applicant to
submit copies or printouts of the registrations to enable our
review thereof, we nonetheless shall consider the registrations
for whatever probative value they might have in this case.

Ser. No. 78369245
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- Registration No. 2956178, of the mark WEIGHT LOSS
BULLETIN (BULLETIN disclaimed) for “providing information
in the fields of physical fitness, exercise and maintaining
a healthy lifestyle; providing electronic newsletters in
the field of health, fitness, diet, exercise and
lifestyle,” in Class 41;
- Registration No. 2974874, of the mark MUSCLE
BULLETIN (BULLETIN disclaimed) for “providing information
in the field of fitness, exercise and lifestyle,” in Class
41; and
- Registration No. 2984357, of the mark NUTRITION
BULLETIN (BULLETIN disclaimed) for “magazine column and
sections in the fields of health, fitness, diet, exercise
and lifestyle,” in Class 16.
Applicant relies on these registrations, and in
particular on Registration No. 2984357 (NUTRITION BULLETIN
for class 16 goods), as evidence in support of its claim
that NUTRITION BULLETIN likewise is registrable on the
Supplemental Register for the recited services in the
present application. The Trademark Examining Attorney
contends, in response, that the marks and the goods or
services depicted in the prior registrations are
distinguishable from the mark and services of the present
application and that, in any event, the decisions of
Ser. No. 78369245
9
previous Trademark Examining Attorneys are not binding on
the Board, and the present application must be decided on
its own merits.
Our analysis begins with a determination of the genus
of the services at issue. See H. Marvin Ginn, supra. We
find in this case that the genus of services is
commensurate with applicant’s recitation of services in the
application, i.e., “providing information in the field of
health and diet via a web site on the Internet.”
We next must determine whether the purchasing public
understands NUTRITION BULLETIN to refer to the genus of
services at issue. See H. Marvin Ginn, supra. We note,
first, that the dictionary definition of “nutrition” quoted
above includes “the science or study that deals with food
and nourishment, especially in human beings.” We find that
this definition of “nutrition” directly applies to and is a
name for “the field of health and diet” to which
applicant’s recitation of services refers, and that
NUTRITION therefore is the generic name of the subject
matter of applicant’s information services.
We further note that the dictionary definition of
“bulletin” quoted above includes “a brief update or summary
of current news, as on television or radio or in a
newspaper.” We find that this definition of “bulletin”
Ser. No. 78369245
10
directly applies to and names the “providing information”
aspect of applicant’s recited services. Although the
dictionary definition does not specifically mention the
Internet as a medium through which “bulletins” may be
disseminated, we see no reason to exclude it as such a
medium; indeed, the evidence of record, discussed infra,
shows that the Internet in fact is such a medium through
which bulletins are disseminated. We therefore find that
BULLETIN is a generic name for the form taken by
applicant’s “providing information” services and the manner
in which the services are rendered.
In addition to finding that each of the words
NUTRITION and BULLETIN are generic as applied to the genus
of services at issue, we also find, as we must under
American Fertility, supra, that the phrase NUTRITION
BULLETIN as a whole is generic for the services. The two
NEXIS excerpts and the seven Internet page excerpts quoted
above show that informational reports on the subject of
nutrition are referred to generically as “nutrition
bulletins.” Several of the excerpts specifically show that
such nutrition bulletins are disseminated or made available
via the Internet. We find that the quoted excerpts suffice
to establish that NUTRITION BULLETIN, as a whole, is and
would be understood by purchasers to refer to the genus of
Ser. No. 78369245
11
services at issue here, i.e., the service of “providing
information in the field of health and diet via a web site
on the Internet.”
Although we admit that we are somewhat troubled by the
fact that applicant already has obtained various
Supplemental Register registrations of BULLETIN marks,
including NUTRITION BULLETIN (BULLETIN disclaimed) for
“magazine column and sections in the fields of health,
fitness, diet, exercise and lifestyle” in Class 16, we
nonetheless find, based on the clear evidence of
genericness which is present in this case, that NUTRITION
BULLETIN is generic for the services recited in applicant’s
application. Although consistency in examination is a goal
of the Office, the decisions of previous Trademark
Examining Attorneys are not binding on us, and we must
decide each case based on the evidence presented in the
record before us. In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564 (Fed. Cir. 2001).
In this case, the evidence of record establishes the
genericness of NUTRITION BULLETIN as applied to applicant’s
services. We therefore find that NUTRITION BULLETIN is
incapable of distinguishing applicant’s services, and that
Ser. No. 78369245
12
it therefore is not registrable on the Supplemental
Register.5

Decision: The refusal to register on the Supplemental
Register is affirmed.

5 Applicant’s proffered disclaimer of BULLETIN would not alter
our decision or the result herein.