The Sunrider Corp.

Trademark Trial and Appeal Board

May 24, 2001

No. 75218404 (T.T.A.B. May. 24, 2001)

5/24/01
Paper No. 22
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Sunrider Corporation, dba Sunrider International
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Serial No. 75/218,404
_______
Mavis Gallenson of Ladas & Parry for The Sunrider
Corporation, dba Sunrider International.
Patricia M. Evanko,1 Senior Attorney, Law Office 112 (Janice
O’Lear, Managing Attorney).
_______
Before Seeherman, Wendel and Rogers, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
The Sunrider Corporation, dba Sunrider International,
has appealed from the final refusal of the Trademark
Examining Attorney to register SR as a trademark for the
following goods:
Astringents for health purposes; food
supplements; nutritional supplements,
namely, health bars; herbal powders;
1 Ms. Evanko initially examined the application, but the file
was subsequently transferred twice to other Examining Attorneys.
Ms. Evanko prepared the Examining Attorney’s brief.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/218,404
2
vitamins, herbal supplements and
mineral supplements in all forms
including tablets, capsules, liquids
and powder; dietary food supplements;
dietary supplements; fiber supplements;
nutritional powder; teas for health
purposes; nutritional supplements,
namely acidophilus; herb food
concentrates for health purposes; mouth
drop supplements for health purposes;
nutritional fiber bars for health
purposes; chlorophyll electrolyte
drinks; bee pollen for nutritional
uses; and alfalfa for nutritional uses;
all for health purposes.2
Registration has been finally refused 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
of the identified goods. The Examining Attorney contends
that the letters SR are an abbreviation commonly used in
the medical field to refer to a “sustained release” version
of a product, and that applicant’s mark, if used with its
identified goods, would describe a significant feature of
the goods, namely, that they have sustained release
effects.
Applicant and the Examining Attorney have filed appeal
briefs, and applicant has filed a reply brief.3 It is noted
2 Application Serial No. 75/218,404, filed December 24, 1998,
and asserting a bona fide intention to use the mark in commerce.
The application as originally filed also included goods in
Classes 29 and 30, but these classes were subsequently divided
out of the application.
3 In its reply brief, in the last paragraph on page 2, applicant
states that it “shall forward further authorities under separate
Ser No. 75/218,404
3
that with its reply brief applicant has submitted
additional evidence. Trademark Rule 2.142(d) provides that
the record in the application should be complete prior to
the filing of an appeal, and that if, after an appeal is
filed, the applicant or the Examining Attorney wishes to
introduce additional evidence, a request may be filed with
the Board to remand the application for further
examination. Because applicant did not comply with the
rule, the additional evidence submitted with the reply
brief has not been considered. However, we have taken
judicial notice of the listings from the 1997 edition of
cover to support this point.” On April 6, 2001, (with a
certificate of mailing dated April 3), almost one month after the
filing of its reply brief on March 9, 2001, (with a certificate
of mailing dated March 5), applicant filed a “supplemental brief”
which includes argument and evidence. This filing is not
authorized by the rules, nor did applicant seek leave to file it.
Accordingly, the supplemental brief has not been considered.
We further point out that, even if leave had been sought, it
would not have been granted. Trademark Rule 2.142(b)(1) provides
that the applicant may file a reply brief within 20 days from the
date of mailing of the Examining Attorney’s brief. The Examining
Attorney’s brief was mailed on December 19, 2000, and on
January 10, 2001, with a certificate of mailing dated January 5,
applicant requested a 60-day extension of time to file it,
stating that counsel had not had an opportunity to confer with
applicant due to the Christmas season. The Board granted the
request, and allowed applicant until March 5 to file its reply
brief. Thus, even without the difficulties caused by the
Christmas season, applicant was granted three times the normal
period allowed for filing a reply brief. Applicant has given no
reason why it could not submit all its arguments with its reply
brief, which we note is five pages long. As for the evidence
attached to the supplemental brief, this is manifestly untimely,
for the same reasons discussed in our opinion in regard to
evidence submitted with applicant’s reply brief.
Ser No. 75/218,404
4
the Acronyms, Initialisms & Abbreviations Dictionary which
applicant submitted with its appeal brief.4
An oral hearing was not requested.
A term is merely descriptive, and therefore
unregistrable under Section 2(e)(1), if it immediately
conveys knowledge of the ingredients, qualities, or
characteristics of the goods with which it is used. In re
Gyulay, 820 F.2d 1216 (Fed. Cir. 1987). The question of
whether a particular term is merely descriptive is not
decided in a vacuum, but in relation to the goods on which,
or the services in connection with which, it is used. In
re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
See also, In re Abcor Development Corporation, 588 F.2d
811, 200 USPQ 215 (CCPA 1978).
The Examining Attorney has submitted dictionary
evidence5 that SR is an acronym for “sustained release” and
that the public has been exposed to the use of this acronym
in connection with various pharmaceutical products, as
shown by excerpts of articles taken from the NEXIS data
base, including the following:
4 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
5 Acronyms, Initialisms & Abbreviations Dictionary, 18th ed.,
1994.
Ser No. 75/218,404
5
The sustained release formulation,
Wellbutrin SR, introduced in 1996,
boosted sales of bupropion beyond $200
million in 1997 alone.
“The Herald-Sun,” (Durham, NC) May 19,
1999
Ritalin pills come in a range of chalky
colors according to their strength:
lemon yellow for 5 milligrams, pale
green for 10, light yellow for 20, and
white for 20-SR or “sustained release.”
“Chicago Tribune,” February 14, 1999
The drug, which is also sold as an
antidepressant called Wellbutrin SR
(the initials stand for sustained
release) lessens the desire to smoke….
“Money,” January 1999
The company spent 12 years and $17
million developing Procan SR, a
sustained-release drug used to treat
heart rhythm irregularities.
“The Record,” (Bergen County, NJ)
September 6, 1998
The sustained-release form of
Wellbutrin—known as Wellbutrin SR—was
introduced in late 1996 and boosted
that drug’s sales from $126.3 million
to more than $200 million last year.
“The Herald-Sun,” (Durham, NC)
April 22, 1998
The effects of the sustained-release
version of Ritalin, called Ritalin-SR,
take place much slower and less
dramatically….
“The Detroit News,” March 8, 1998
Try another type of anti-depressant.
Wellbutrin-SR (sustained release) and
Serzone seem to have a lower incidence
of sexual dysfunction….
“Milwaukee Journal Sentinel,”
September 22, 1997
Ser No. 75/218,404
6
Applicant does not dispute that SR is an abbreviation
for sustained release. However, applicant argues that the
NEXIS articles all refer to prescription drugs rather than
the goods for which applicant seeks registration, and
therefore the Examining Attorney has not shown that
“sustained release” is a characteristic of the applied-for
goods. Applicant states that its mark “is being used in
connection with various health products, including drinks,
powders and supplements, none of which contains, or are
advertised by Applicant to contain, ‘sustained release’
capabilities.” Brief, p. 9-10.
Subsequently the Examining Attorney submitted evidence6
that certain of the goods identified in the application,
albeit not the drinks, powder and supplements, are items
which may have sustained release.7 The evidence includes
6 After the filing of applicant’s appeal brief the Examining
Attorney requested remand of the application to make additional
evidence of record. Because the Examining Attorney showed good
cause for the request, in that she was newly assigned to the
application, the Board granted the request for remand.
7 The Examining Attorney pointed out, in her brief, that because
applicant specifically did not discuss its vitamins, the refusal
on the basis of mere descriptiveness was appropriate because the
mark was descriptive of, at the very least, vitamins. The
Examining Attorney stated that if applicant had asserted that
none of its goods, including vitamins, had sustained release, the
mark would have been refused as deceptively misdescriptive.
It should be noted that, after the Examining Attorney’s Office
Action on remand, applicant was given an opportunity to file a
supplemental appeal brief, and chose not to do so.
Ser No. 75/218,404
7
the following NEXIS references:
“The two cornerstone supplements for me
are a high-quality sustained-release
daily multiple vitamin and mineral
combination, and garlic….”
“Austin American-Statesman,”
January 29, 1999
Niacin can lower your blood cholesterol
and perhaps help ward off heart
disease. You don’t need a prescription
to get it…. “Nobody should take
sustained-release niacin unless a
physician is following them
carefully….”
“Orlando Sentinel Tribune,” August 2,
1990
But the highest potency vitamin made
today is still produced by his company,
Chalpin added. The sustained-release
vitamin, call Ultimate Plus….
“Arizona Business Gazette,” May 25,
1990
On another occasion I became panic
stricken when I saw that I was out of
Vitamin E sustained-release capsules
and the health food store was closed
for the night.
“Los Angeles Times,” January 24, 1986
The Examining Attorney also made of record excerpts
from “shopping” websites offering “Sustained Release B
Complex Tablets”, “Sustained Release Buffered C Tablets”,
“Sustained Release Multi Vits & Mins Tablets”;8 “Super C
Complex Sustained Release”, “Shot-O-B-12 5000 mcg Sustained
Release” (B-12), “Ultra-Two Sustained Release”
8 www.sofcom.com.
Ser No. 75/218,404
8
(multivitamin and mineral formula);9 and melatonin (“1.5
milligram, sustained release”).10 In addition, the website
for the Zenith Nutritional System11 states that “Sustained-
releasing vitamins also increase the percentage of the
vitamin absorbed. …We find in ZENITH a unique system of
sustained-releasing the water-soluble vitamins. ZENITH’s
unique vegetable oil sustained-release system allows these
nutrients to be released slowly in the stomach and small
intestine, and evenly over a 4 to 8 hour period. This
provides maximum absorption and utilization. Other systems
of sustained-release may not work as well.”
We find that the evidence amply demonstrates that
sustained-release is a characteristic of at least some of
the goods identified in applicant’s application, namely,
vitamins and mineral supplements. Moreover, the evidence
also shows that the consuming public would regard SR as an
acronym for “sustained-release,” such that the term SR
would immediately and directly convey to such purchasers
information about a characteristic of the goods, i.e., that
they are sustained-release products. Although we agree
with applicant that the NEXIS evidence shows SR used in
connection with medications, the distinction between these
9 vitaclick.com, offering Nature’s Plus products.
10 www.webadprod.com, advertising WorldWide Labs products.
Ser No. 75/218,404
9
goods and those of applicant is really a legal one, having
to do with whether or not they are regulated by the Food
and Drug Administration. On a practical level, consumers
would view both drugs and applicant’s identified goods as
products used to maintain or improve health. Because of
their familiarity with SR for widely disseminated
pharmaceutical products such as Ritalin (a drug for hyper-
active children) and Wellbutrin (an antidepressant),
consumers, seeing SR on vitamins and the like, would
immediately recognize the term to indicate that they are
sustained-release products.
In reaching this conclusion, we have considered
applicant’s argument that SR has a number of meanings, as
shown by the large number of listings for this term in the
acronyms dictionary. However, as noted previously, the
determination of whether a term conveys a particular
meaning is decided not in the abstract, but in relation to
the goods on which the term is used. Thus, the fact that,
for example, SR means Stripe Rot, Sinus Rhythm or Search
and Rescue, does not take away from its connotation of
“sustained release” when used with vitamins. Nor are
consumers likely to ascribe the meanings applicant has
11 www.zenith4theplanet.com.
Ser No. 75/218,404
10
suggested: Starting Relay, Stomach Rumble, Stoichiometric
Ratio, Strontium, Steroid Receptor and Systemic Resistance.
Because of the newspaper articles publicizing that SR is
used to describe sustained-release pharmaceutical products,
and the fact that sustained-release is a selling point for
vitamins and minerals, we have no doubt that consumers will
understand SR, if used on applicant’s identified goods, as
referring to the sustained-release characteristic of the
vitamins and minerals.
We would also point out that the present situation
differs from In re WSI Corporation, 1 USPQ2d 1570 (TTAB
1986), in that the record herein consists not only of the
acronyms dictionary, but of substantial NEXIS evidence
showing that SR has been used, in articles in newspapers
and periodicals in general circulation, to mean “sustained
release.”
We have also considered applicant’s argument that the
mark was intended to be an abbreviation of its house mark,
SUNRIDER, and its trade name, The Sunrider Corporation.
Whatever applicant’s intention may be, it has applied for
the mark as simply the typed letters SR. If a registration
were to issue to applicant for this mark, it would be free
to use SR without the word Sunrider, such that consumers
would view it as a descriptive term for its sustained
Ser No. 75/218,404
11
release products.12 Obviously if applicant had the
exclusive right to use SR for goods such as vitamins, it
would have a negative impact on competition. (Section 7 of
the Trademark Act, 15 U.S.C. 1057, provides that a
certificate of registration of a mark upon the Principal
Register is prima facie evidence of the registrant’s
exclusive right to use the registered mark in commerce on
the goods specified in the certificate.)
Finally, applicant attempts to draw an analogy to case
law involving surname refusals in order to show that its
mark is not merely descriptive. Suffice it to say that we
do not regard the evidence herein as showing mere “sporadic
and/or coincidental use.” Rather, the evidence
unequivocally demonstrates that there has been widespread
public exposure to SR as meaning “sustained release” with
respect to pharmaceutical products. Further, as noted
above, the evidence shows that certain of applicant’s
12 Applicant has also stated, at p. 3 of its reply brief, that
its goods will only be sold by its distributors on a one-to-one
basis, that its buyers are educated people who have to “take the
trouble to seek out SR products for purchase,” and that its
products are priced at a premium and thus not meant for the mass
market. However, even if such facts would have some effect on
our determination of descriptiveness (and we fail to see how the
fact that its consumers may be educated or purchasers of premium
products would detract from their viewing SR as meaning sustained
release, since educated people would be more likely to understand
what SR means), applicant has not limited its identification to
particular trade channels or classes or consumers.
Ser No. 75/218,404
12
goods, including vitamins, are products which can be sold
in a sustained-release formulation. As a result, consumers
will immediately understand, when they see SR in connection
with vitamins and the like, that a characteristic of the
goods is that they are sustained-release products.
Accordingly, we find that SR is merely descriptive of such
goods. Further, registration is properly refused if the
applied-for mark is descriptive of any of the goods for
which registration is sought. In re Analog Devices Inc., 6
USPQ2d 1808 (TTAB 1988), aff’d. unpub. op. 871 F.2d 1097,
10 USPQ2d 1879 (Fed. Cir. 1989); In re Canron, Inc.¸ 219
USPQ 820 (TTAB 1983).
Decision: The refusal of registration is affirmed.