Ultimate Nutrition, Inc.v.Nxcare, Inc.

Trademark Trial and Appeal Board

Jan 4, 2008

No. 91176206 (T.T.A.B. Jan. 4, 2008)

Brown/Lykos
Mailed: January 4, 2008

Opposition No. 91176206

Ultimate Nutrition, Inc.,

v.

Nxcare, Inc.

Before Quinn, Drost and Mermelstein, Administrative
Trademark Judges.

By the Board:
This case now comes before the Board for consideration
of applicant’s motion for summary judgment (filed August 1,
2007). The motion is contested.
Applicant seeks registration of the mark CREATINE-D2T
for “dietary supplements” in International Class 5, alleging
a bona fide intent to use the mark in commerce.1 On March
13, 2007, opposer filed a notice of opposition alleging that
CREATINE is generic in relation to “dietary supplements” and
without entry of a disclaimer of that term, the application
is not entitled to registration under Section 6 of the
Lanham Act.

1 Application No. 76657818, filed April 3, 2006.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91176206
2
In its notice of opposition, opposer pleaded ownership
of its registration for CREATINE SUPREME for “nutritional
products, namely dietary supplements” in International Class
5.2 In its answer, applicant denied the salient allegations
of the notice of opposition and asserted various affirmative
defenses, including the following: ”[w]hen a compound word
is formed by hyphenating two words or terms, one of which
would be unregistrable alone, no disclaimer is necessary”
(paragraph 13) and “[a] disclaimer of the word CREATINE in
Applicant’s application for the mark CREATINE-D2T would be
improper and is not required” (paragraph 15).
Applicant has moved for summary judgment on the grounds
that a disclaimer of the term CREATINE is not required as a
matter of law, as pled in the affirmative defenses noted
above. We grant applicant’s motion.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine issue of material fact, and that it
is entitled to summary judgment as a matter of law. See

2 Registration No. 2407205, issued November 12, 2000, Sections 8
and 15 affidavits acknowledged and accepted. Opposer’s
registration includes a disclaimer of the exclusive right to use
the word CREATINE apart from the mark as shown.

Opposition No. 91176206
3
Celotex Corp. v. Catrett, 477 U.S. 317 (1986). The
nonmoving party must be given the benefit of all reasonable
doubt as to whether genuine issues of material fact exist,
and the evidentiary record on summary judgment, and all
inferences to be drawn from the undisputed facts, must be
viewed in the light most favorable to the nonmoving party.
See Opryland USA, Inc. v. Great American Music Show, Inc.,
970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
Based on the record and the arguments of the parties,
we find that applicant has met its burden of demonstrating
that there are no genuine issues of material fact with
respect to entry of a disclaimer, and that applicant is
entitled to judgment in its favor as a matter of law.
Neither party disputes any material issue of fact
relevant to applicant’s motion.
Trademark Act Section 6(a), 15 U.S.C. §1056(a),
provides that “the Director may require the applicant to
disclaim an unregistrable component of a mark otherwise
registrable” in its entirety. Merely descriptive and
generic matter in a mark are unregistrable and therefore
subject to disclaimer unless the matter is merged together
with distinctive elements of the mark in such a manner that
the resulting composite is “unitary” and can not be divided
into separable elements. See In re Omaha National Corp.,
819 F.2d 1117, 2 USPQ2d 1859, (Fed. Cir. 1987). Thus, a
Opposition No. 91176206
4
defendant in such an opposition may prevail by establishing
that the matter, even if descriptive, generic or otherwise
unregistrable, is part of a unitary, composite mark or
element that is registrable as a whole.
Factors in determining whether matter in a mark is
considered part of a unitary mark or registrable element
include 1) whether it is physically connected by lines or
other design features; 2) the relative location of the
respective elements; and 3) the meaning of the terminology
as used on or in connection with the goods or services.
Dena Corp. v. Belvedere International Inc., 950 F.2d 1555,
1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991). When a
compound word mark is formed by hyphenating two words or
terms, one of which would be unregistrable alone, the mark
is deemed unitary and no disclaimer is necessary. See “X”
Laboratories, Inc. v. Odorite Sanitation Service of
Baltimore, Inc., 106 USPQ 327, 329 (Comm’r Pat. 1955)
(requirement for a disclaimer of “TIRE” deemed unnecessary
in application to register TIRE-X for a tire cleaner); TMEP
§1213.05(a)(ii).

Opposition No. 91176206
5
Here, opposer asserts that since CREATINE is generic,3
a disclaimer of the term is required in the applied-for mark
CREATINE-DT2. However, applicant’s mark consists of a
compound word mark comprised of the terms CREATINE and DT2
physically connected by a hyphen. Unlike opposer’s mark,
CREATINE SUPREME, none of the terms in applicant’s mark
stand alone. Based upon all relevant factors, the
components in applicant’s mark, including the hyphen, merge
in such a way that CREATINE loses its separate, descriptive
significance, forming a compound mark with a single, unitary
significance. See In Re Grass GMBH, 79 USPQ2d 1600, 1604
(TTAB 2006). Finally, we note that registration of
CREATINE-D2T is recognition of applicant’s rights in the
entire mark, and neither creates nor recognizes rights in
any components of the mark apart from each other. Trademark
Act Section 6(b), 15 U.S.C. §1056(b); see “X” Laboratories,
Inc., 106 USPQ at 329.
Viewing all doubt and inferences in a light most
favorable to opposer, we conclude that there is no genuine
issue of material fact, and that applicant is entitled to
judgment as a matter of law. Therefore, applicant’s motion

3 We need not determine whether CREATINE is descriptive or
generic for “dietary supplements,” but for the sake of this
motion we presume it to be. “Even if the term CREATINE is
considered descriptive or generic, the mark is … formed by
hyphenating two words, thereby creating a unitary mark.”
Applicant’s Brief at 3.
Opposition No. 91176206
6
for summary judgment is granted and the opposition is
dismissed with prejudice.