TRADEMARK
`
`04- 14248
`
`/_““$“““a
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re the application of:
`PROVIDA LABS, LLC
`
`Serial Number:
`
`76/625,541
`
`Examining Attorney: Sloan, Cynthia
`
`Filed:
`
`December 27, 2004
`
`Law Office:
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`116
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`For:
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`5 WAY METABOLIC FAT FIGHTER
`
`
`
`Commissioner for Trademarks
`Post Office Box 1451
`
`Alexandria, Virginia 22313-1451
`ATTN: TTAB
`
`APPEAL BRIEF
`
`
`Dear Sir:
`
`In accordance with 37 U.S.C. § 2.141, applicant hereby files its appeal brief
`
`appealing the January 18, 2006 decision of the Trademark Examining Attorney refusing
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`registration of the mark “5 WAY METABOLIC FAT FIGHTER” in Class 5.
`
`It
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`is believed that no additional fees are due, however,
`
`the Commissioner is
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`hereby authorized to charge any additional fees required, or credit any overpayment
`
`thereto, to Deposit Account No. 03-2030.
`
`

`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ............................................................................................ ..3
`
`I.
`
`INTRODUCTION ........................................................................................................ ..S
`
`11.
`
`FINAL REFUSAL UNDER SECTION 2(D) - LIKELIHOOD OF
`CONFUSION ........................................................................................................... ..6
`A. Standard for Likelihood of Confusion ..................................................................... ..6
`B. The Marks Differ in Sound, Appearance, Connotation and Commercial
`Impression................................................................................................................. ..6
`C. The Cases cited by the Examining Attorney are Distinguishable ......................... ..10
`
`III. FINAL REFUSAL — SECTION 2(e)(1) ................................................................. ..12
`A. Standard for Descriptiveness Under Section 2(e)(1) ............................................ ..12
`B. The Excerpts Cited By the Examiner Do Not Show Descriptive Use of the term
`“5 WAY METABOLIC FAT FIGHTER” or “FIVE WAY METABOLIC” ..... ..13
`
`IV. CONCLUSION ....................................................................................................... ..17
`
`

`
`TABLE OF AUTHORITIES
`
`Cases
`
`Bongrain Int’l [American Com. v. Delice de France, Inc.,
`811 F.2d 1479, 1 USPQ2d 1775 (Fed.Cir. 1987) ......................................................... ..12
`
`Champagne Louis Roederer S.A. v. Delicato Vineyards,
`148 F.3d 1373, 47 USPQ2d 1459 (Fed.Cir.l998) ..... .: ................................................. ..1l
`
`Coca-Cola Bottling Co. V. Joseph E. Seagram & Sons, Inc.,
`526 F.2d 556, 188 USPQ 105 (CCPA 1975) ............................................................... ..l0
`
`
`El'Torito Restaurants Incl,
`9 USPQ2d 2003 (TTAB 1998) ..................................................................................... ..l0
`
`In re Abcor Development Corp,
`588 F.2d 811, 200 USPQ 215 (CCPA 1978) ............................................................... ..12
`
`
`In re Cosvetic Laboratories Inc.,
`202 USPQ 843 (TTAB 1979) ................................................................................. ..10, 11 '
`
`,
`In re E.I. du Pont de Nemours & Co.,
`476 F.2d 1357, 177 USPQ 562 (CCPA 1973) ............................................................... ..6
`
`
`In re Entemarm’s Inc.,
`15 USPQ2d 1750 (TTAB 1990) ................................................................................... ..12
`
`In re Grand Metropolitan Foodservice, Inc.,
`30 USPQ2d 1974 (TTAB 1994) .................................................................................. ..16
`
`In re Merrill Lynch, Pierce, Fenner, and Smith, Inc.,
`828 F.2d 1567, 4 USPQ2d 1141 (Fed.Cir.I987) .......................................................... ..13
`
`In re National Data Corp,
`753 F.2d 1056, 224 USPQ 749 (Fed.Cir.1985) .............................................................. ..6
`
`In re Riddle,
`225 USPQ 630 (TTAB 1985) ....................................................................................... ..l0
`
`In re TMS Corp. of the Americas,
`200 USPQ 57 (TTAB 1978) ................................................................................... ..l2 163
`
`In re United States Shoe Com,
`229 USPQ 707 (TTAB 1985) ....................................................................................... ..l0
`
`

`
`Majestic Distilling Co., Inc.,
`315 F.3d 1311, 65 USPQ2d 1201 (Fed.Cir.2003) .......................................................... ..6
`
`Palm Bay Imports, Inc. v. Veuve Clicguot,
`396 F.3d 1369, 73 USPQ2d 1689 (Fed.Cir.2005) .......................................................... ..9
`
`Presto Products v. Nic-Pak Products,
`9 USPQ2d 1895 (TTAB 1998) ....................................................................................... ..9
`
`Statutes
`
`15 U.S.C. §10S1(b) ............................................................................................................ ..4
`
`15 U.S.C. §1052(d) ............................................................................................................ ..4
`
`Trademark Act Section 1(b) .............................................................................................. ..4
`
`Trademark Act Section 2(d) ........................................................................................ ..4, 11
`
`

`
`I. INTRODUCTION
`
`Applicant seeks registration on the Principal Register of the mark 5 WAY
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`METABOLIC FAT FIGHTER (in standard character form) for “vitamins and food
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`supplements?” Applicant has disclaimed the exclusive right to use “FAT FIGHTER”
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`apart from the mark in its entirety. At issue in this appeal is the Trademark Examining
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`Attorney’s final refusal to register the mark, based on the Examining Attorney’s
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`contention that Applicant’s mark, as applied to the services recited in the application, so
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`resembles the mark FAT FIGHTER, for “dietary supplement“ as to be likely to cause
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`mistake or to deceive under Trademark Act Section 2(d), 15 U.S.C. §1052(d) and that
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`App1icant’s proposed mark merely describes the goods under Trademark Act Section
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`2(e)(1), 15 U.S.C. §1052(e)(1). Applicant filed a timely notice of appeal appealing the
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`final refusal.
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`Because consumers and prospective consumers would be accustomed to
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`discerning between marks comprising “FAT FIGHTER” and are not likely to believe that
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`products offered under Applicant’s 5 WAY METABOLIC FAT FIGHTER mark
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`originate with, or are sponsored by, the owner of the cited registration and because
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`Applicant’s mark as disclaimed does not immediately convey information about the
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`qualities or characteristics of Applicant’s goods with the required “degree of
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`particularity” to render the mark merely descriptive, Applicant respectfully requests that
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`the Board reverse the final refusal under Sections 2(d) and 2(e)(1) of the Trademark Act
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`and pass Application Serial No. 76/625541 to allowance.
`
`' Serial No. 76625541, filed December 27, 2004. The application is based on an intent-to-use in
`commerce under Trademark Act Section 1(b), 15 U.S.C. §l051(b).
`2 Registration No. 2908134, issued on December 7, 2004.
`
`

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`II.
`
`FINAL REFUSAL UNDER SECTION 2(D) - LIKELIHOOD OF
`CONFUSION
`
`A.
`
`Standard for Likelihood of Confusion
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`A determination under Section 2(d) is based on an analysis of all of the facts in
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`evidence relevant to the factors bearing on the likelihood of confusion.
`
`§_e_§, In re E.I. du
`
`Pont de Nemours & C0,, 476 F.2d 1357, 177 USPQ 562 (CCPA 1973).
`
`_§e_e a_ls_o,
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`Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.Cir.2003).
`
`In a
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`likelihood of confusion analysis, a key consideration is the similarities/dissimilarities
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`between the marks at issue. §e_e, Id. Under this du Pont factor, the issue is whether
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`Applicant’s mark, 5 WAY METABOLIC FAT FIGHTER and the mark of the cited
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`registration, FAT FIGHTER, are similar or dissimilar when compared in their entireties
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`in terms of appearance, sound, connotation and commercial impression.
`
`In considering
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`the marks, the Board is obliged to compare the marks in their entireties. In re National
`
`Data Co§p., 753 F.2d 1056, 224 USPQ 749, 750 (Fed.Cir.1985). However, “that a
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`particular feature is descriptive... with respect to the relevant goods or services is one
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`commonly accepted rationale for giving less weight to a portion of a mark” Id
`
`B.
`
`The Marks Differ in Sound, Appearance, Connotation and
`Commercial Impression
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`In terms of appearance and sound, the marks are dissimilar. Applicant’s mark
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`includes a number (“5”) and .four words: “5 WAY METABOLIC FAT FIGHTER.” In
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`contrast, the mark that is the subject of the cited mark registration only the words, “FAT
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`FIGHTER,” and no numbers.
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`In terms of connotation, the marks are dissimilar because
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`Applicant’s mark, but not
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`registrant’s mark,
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`includes
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`the phrase
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`“5 WAY
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`METABOLIC”, which gives Applicant’s mark the connotation of a five-way valve or
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`

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`five-way switch in having multiple and different
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`routes or positions. No such
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`connotation is presented by registrant’s mark. In terms of overall commercial impression,
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`any point of similarity is outweighed by the points of dissimilarity between the marks,
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`i.e., the presence in applicant’s mark of the phrase “5 WAY METABOLIC” and the
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`absence in registrant’s mark of that phrase.
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`Moreover, as conceded by the Examiner (w_e, August 3, 2005 Office Action, p. 3)
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`the term “FAT FIGHTER” when applied to vitamins/supplements would have a
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`descriptive connotation} For example, FAT FIGHTER has been used in a descriptive, if
`not generic, sense in the following article/advertising excerpts‘:
`O
`
`“lVIen’s Fitness weight-loss adviser Jeff Volek, Ph.D., RD.,
`brings you the latest in safe, legal (available at your local GNC or
`Vitamin Shoppe), and scientifically proven fat-fighters.” (From,
`Men ’s Fitness, June 1, 2005; Brown Decl., Exh. 1).
`
`“...the Company’s patented dietary supplement that uses
`Kytabsorbe®, a liquid form of the natural fat fighter, chitosan.”
`(Vital Living Provides Update on American Stock Exchange
`Listing Status PR Newswire, January 28, 2004; Brown Decl., Exh.
`2)
`
`“They cost about $3 a glass, and supplements such as
`vitamin C, Echinacea, fat fighters, Ginseng and soy protein can be
`added.”
`
`(The Wichita Eagle, July 6, 2000, East Edition; Brown
`Decl., Exh. 3)
`
`“Take vitamin E supplements can protect you from heart
`attacks, colds, flu, cancer, diabetes and Alzheimer’s. Now there is
`preliminary evidence that vitamin E may be a potential fat fighter,
`too.”
`
`3 The Examining Attorney stated: “In addition, the wording FAT FIGHTER is descriptive of
`vitamins and supplements.”
`4 Each of the cited excerpts was previously submitted by the Examining Attorney, either with the
`August 3, 2005 or the January 18, 2006 Office Actions.
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`

`
`(The Washington Times, July 25, 1999; Brown Decl., Exh.
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`4)
`
`“Little-known facts on the food rated as the number one fat
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`fighter... and at the same time, a major cancer fighter! Better
`yet... it’s delicious!!! (Secret #84)
`from <http://liIlieross.com>,
`(Lillie ‘s
`“Souper Weight Loss Secrets”,
`printed by the Examining Attorney on January 13, 2006; Brown Decl. Exh. 5)
`
`“Do these fat fighter medicines, like the new ones you take
`before bedtime, that guarantee you will lose fat while you sleep do
`any harm? Are they really any good? Thank you.”
`(from Diet and Obesity: Interview with Dr. Samuel Klein; from the
`USATODAY.com website; Brown Decl., Exh. 6).
`
`“Description: Promotes Healing, Cleansing and has Fat Fighting
`Powers.
`For over 2000 years these natural foods have been known
`throughout the world for their healing, cleansing and fat fighting powers.”
`(From the Natural WebStore; Brown Decl., Exh. 7)
`
`“Trap Rx: This revolutionary fat fighter works by stimulating the
`digestive system, dissolving fat by purely natural means and quickly
`eliminating solidified fat molecules from the body.
`It is.a safe weight loss
`formula -that naturally aids the body to absorb less fat while creating a
`satisfying feeling of fullness”)
`(From <www.weightlossguide.com>, printed by the Examining
`Attorney on January 13, 2006; Brown Decl., Exh. 8).
`
`“Chitosan- body fat fighter, weight management”
`(from<www.nutrimart.com>, printed by the Examining Attorney
`on January 13, 2006; Brown Decl., Exh. 9)
`
`foods have been known
`“For over 2000 years these natural
`throughout the world for their healing, cleansing and fat fighting powers.”
`(from<www.evitamins.com>, printed by the Examining Attorney
`on January 13, 2006; Brown Decl., Exh. 10)
`
`_S_gg, Exhibits 1-10 to the declaration of Sarah A. Brown (“Brown Decl.”). The
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`descriptive nature of this sole point of similarity (i.e. “FAT FIGHTER”) between the
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`marks renders it less significant in a comparison of the marks. Upon seeing the two
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`

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`marks, purchasers and prospective purchasers would not assume they are similar simply
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`because they share a common descriptive term.
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`The term “S WAY METABOLIC” in Applicant’s mark is not descriptive, nor
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`highly suggestive, and has no obvious meaning as applied to the respective goods. Not
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`only is “5 WAY METABOLIC” a less suggestive tenn, but of additional importance is
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`the fact that “5 WAY METABOLIC” is the first part of Applicant’s mark. As a general
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`rule, consumers are more inclined to focus on the first part of any trademark or service
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`mark. Palm Bay Imports, Inc. v. Veuve Clicguot, 396 F.3d 1369, 73 USPQ2d 1689,
`
`1690 (Fed.Cir.2005).
`
`§_ee_ ali, Presto Products v. Nic-Pak Products, 9 USPQ2d 1895,
`
`1897 (TTAB 1998) (“It is often the first part of a mark which is most likely to be
`
`impressed upon the mind of a purchaser and remembered.”).
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`Because the phrase “FAT FIGHTER” is descriptive and because the first portion
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`of Applicant’s mark comprises “5 WAY METABOLIC”, the marks have a different
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`visual appearance, sound and connotation. As such, consumers would be accustomed to
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`discerning between marks comprising “FAT FIGHTER” and are not likely to believe that
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`products offered under Applicant’s mark originate with, or are sponsored by, the owner
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`of the cited registration.
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`

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`C.
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`The Cases cited by the Examining Attorney are Distinguishable
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`In addition, the cases cited by the Examining Attorney5 are distinguishable from
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`the instant case. For example, in the In re El Torito case,6 the Board noted that “there has
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`been no showing that the word “MACHO” has any descriptive significance or is weak as
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`a trademark in the field of foods or food services.” 9 USPQ2d at 2004. Moreover, in that
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`case, Applicant’s mark comprised registrant’s mark, “MACHO”,
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`to which only a
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`disclaimed descriptive term had been added. E.
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`Similarly, in the Coca-Cola Bottling Co. case7, the marks at issue were BENGEL
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`and BENGEL LANCER, and the Board found that the term in common, “BENGEL,”
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`was an arbitrary term as applied to the goods. 188 USPQ at 105.
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`In the United States Shoe case,8 Applicant had only made an argument that the
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`word “CAREER” was weak, when the term at issue, and common to both marks, was
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`“CAREER IMAGE.”
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`229 USPQ at 708-809.
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`In addition,
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`the Board noted that
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`Applicant's CAREER IMAGE mark was likely to be viewed as a shortened version of
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`Registrant’s CREST CAREER IMAGE mark. E. Likewise, in the In re Riddleg and Q
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`re Cosveticm cases, only names and house marks were added to the respective mark/term
`
`at issue. The Board noted that adding a name or house mark, rather than serving to avoid
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`confiision, would cause consumers to believe that the named personfbrand was in some
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`5 E ;e_.g., August 3, 2005 Office action at p. 2.
`
`6 In re El Torito Restaurants Inc., 9 USPQ2d 2003 (TTAB 1998).
`7 Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105
`(CCPA 1975).
`8 In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985).
`9 In re Riddle, 225 USPQ 630 (TTAB I985).
`
`'0 In re Cosvetic Laboratories Inc., 202 USPQ 843 (TTAB I979).
`
`I0
`
`

`
`way associated with the goods/services (“Addition of trade name or house marks to one
`
`of two otherwise confusingly similar marks does not generally serve to avoid likelihood
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`of confusion between them, such addition being, in actuality, aggravation rather than a
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`justificationf’). _S£e_, In re Cosvetic, 202 USPQ at 845.
`
`Further, in the Cosvetic case, the Board noted that Applicant had presented no
`
`evidence that
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`the term in common to both marks, “HEAD START”, was highly
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`suggestive or merely descriptive as applied to the goods and that Applicant depicted the
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`HEAD START portion of its mark in letters “many times larger” than the name
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`“COSVETIC,” such that the words “HEAD START” were clearly dominant. E.
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`The instant case is distinguishable from the cited cases, because the term “FAT
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`FIGHTER” is not arbitrary, but is, at the very least, highly descriptive if not generic, and
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`because Applicant’s mark incorporates the non-descriptive term “5 WAY METABOLIC”
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`at the beginning of its mark.
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`Balancing the du Pont factors for which there is evidence in the record, there is no
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`likelihood of confusion. S33 ;g., Champagne Louis Roederer S.A. v. Delicato
`
`Vineyard , 148 F.3d 1373, 47 USPQ2d 1459, 1460 (Fed.Cir.1998) (dissimilarity of
`
`marks alone precluded any reasonable likelihood of confusion between “CRISTAL" and
`
`“CRYSTAL CREEK” for wines). Further, even if the Examining Attorney believes that
`
`it is possible that some consumer may believe that there is an association between the
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`marks, the “statute refers to likelihood, not the mere possibility of confusion.” Bongrain
`
`ll
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`

`
`Int’! (American Corp. v. Delice de France, Inc., 811 F.2d 1479, 1 USPQ2d 1775, 1779
`
`(Fed.Cir. 1987). Applicant therefore respectfully requests that the Board reverse the
`
`refilsal based upon Section 2(d) of the Trademark Act.
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`III. FINAL REFUSAL — SECTION 2[e[§ 1]
`
`The Examining Attorney also based her final refusal on Section 2(e)(1) of the
`
`Trademark Act, contending that the mark for which registration is sought is merely
`
`descriptive of the identified goods and services. For the reasons below, Applicant
`
`respectfiilly requests that the Board reverse the refusal under Section 2(e)(1).
`
`A. Standard for Descriptiveness Under Section 2§e)(l[
`
`“A term is merely descriptive if it forthwith conveys an immediate idea of the
`
`ingredients, qualities or characteristics of the goods [or services].” In re Abcor
`
`Development Cog}, 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978)(emphasis added).
`
`Moreover, the immediate idea must be conveyed with a “degree of particularity.” Q‘;
`
`TMS Corp. of the Americas, 200 USPQ 57, 59 (TTAB l978)(“[T]he test is whether the
`
`term is so close and direct that
`
`it
`
`is apparently descriptive and generally useful
`
`in
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`approximately that form to all merchants marketing such goods (or services) or is so
`
`remote and subtle that is fanciful and not needed by other merchants of similar goods (or
`
`
`
`services.”)(citing, Stix Prods. Inc. v. Merchants and Manufacturers Inc., 160 USPQ 177
`
`(D.C.N.Y. 1968).
`
`12
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`

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`On the other hand, a term is suggestive if, when applied to the goods, it requires
`
`imagination, thought and perception to reach a conclusion as to the nature of the goods.
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`The burden is on the Examining Attorney to make a prima facie showing that the mark or
`
`word in question is descriptive from the vantage point of purchasers of an applicant’s
`
`goods and, where doubt exists as to whether a term is descriptive, such doubts should be
`
`resolved in favor of the application. In re Grand Metropolitan Foodservice, Inc., 30
`
`USPQ2d 1974, 1976 (TTAB l994)(“...any doubt with respect
`
`to the issue of
`
`descriptiveness should be resolved in Applicant’s beha1f.”).
`
`B.
`
`The Excerpts Cited By the Examiner Do Not Show Descriptive Use of
`the term “5 WAY METABOLIC FAT FIGHTER” or “FIVE WAY
`METABOLIC”
`
`In support of the Examining Attomey’s contention that the subject matter for
`
`which Applicant seeks registration is merely descriptive of the identified goods/services,
`
`the Examining Attorney submitted materials from the <www.google.com> search engine
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`(gig, January 18, 2006 Office Action, p. 4), purportedly showing “a web site featuring a
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`similar product using the same wording, 5 WAY METABOLIC FAT FIGHTER...”
`
`The excerpts submitted by the Examining Attorney, however, do not show
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`descriptive use of “5 WAY METABOLIC FAT FIGHTER,” or even “5 WAY
`
`METABOLIC.” The first five pages (as well as the seventh page) of the excerpts
`
`submitted by the Examiner are Applicant’s own advertising materials or refer to
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`Applicant’s product, and use the “5 WAY METABOLIC FAT FIGHTER” designation in
`
`a trademark sense to refer to Applicant’s product. 539, Brown Decl., 1112 and Exhibit 11
`
`

`
`thereto. The remaining excerpts cited by the Examiner (e.g. pages 6, and 8-65) do not
`
`show use of the phrase “5 WAY METABOLIC FAT FIGHTER” or “5 WAY
`
`METABOLIC,” much less in a descriptive sense.
`
`The Examining Attorney also cites the American I-Ieritage® Dictionary of the
`
`English Language“ to support her contention that the mark 5 WAY METABOLIC FAT
`
`FIGHTER is descriptive of Applicant’s goods. The Examining Attorney contends that
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`“5” refers to “the number of methods”, “WAY” refers to “a manner or method of doing
`
`something” and that “METABOLIC” refers to “of,
`
`relating to, or resulting _ from
`
`metabolism.” E, August 3, 2005 Office Action, p. 3.
`
`The issue before the Board is not whether
`
`the terms “5”, “WAY” and
`
`“METABOLIC” or “FAT FIGHTER” are merely descriptive of Applicant’s goods.
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`Rather, the issue is whether Applicant’ mark 5 WAY METABOLIC FAT FIGHTER is
`
`merely descriptive of Applicant’s goods. Although the Examining Attorney supports her
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`contention by referring to “the attached four excerpts from the Lexis/Nexis Research
`
`Database” (see, August 3, 2005 Office Action, p. 3), the cited excerpts in the August 3,
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`2005 Office Action only support that “FAT FIGHTER” is merely descriptive or generic -
`
`while the terms “METABOLIC” or “5 WAY METABOLIC” are not even mentioned.”
`
`In the context of Applicant’s mark, 5 WAY METABOLIC FAT FIGHTER, the terms
`
`“METABOLIC”, “5 WAY” or “5 WAY METABOLIC” or
`
`the mark “5 WAY
`
`” The Examining Attorney, however, only paraphrased and did not make the full definitions or
`excerpts from the American Heritage Dictionary® of record. E g., August 3, 2005 Office
`Action, p. 3.
`'2 Likewise, as noted above, the excerpts included with the January 18, 2006 Office Action also
`do not support that “5 WAY METABOLIC FAT FIGHTER” is descriptive.
`
`14
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`

`
`METABOLIC FAT FIGHTER” do not describe with reasonable specificity a quality or
`
`characteristic of Applicant’s goods.
`
`Even assuming, however, that the phrase “FAT FIGHTER” is descriptive of
`
`Applicant’s goods, the Examining Attorney has not proved that Applicant's mark in its
`
`entirety, 5 WAY METABOLIC FAT FIGHTER,
`
`is likewise merely descriptive of
`
`App1icant’s goods.
`
`For example,
`
`in the context of Applicant’s goods the word
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`“metabolic” could suggest ‘undergoing metamorphosis’ or it could suggest ‘relating to
`
`metabolism’. Also, there is no dictionary definition for “5 WAY METABOLIC.”
`
`Moreover, the word “way” may have multiple meanings in relation to Applicant’s
`
`goods. These include: a ‘thoroughfare used for transportation’; ‘an opening for passing
`
`through’; ‘that which one passes to reach some place’; ‘manner’; ‘means’; ‘aspect’;
`
`‘idiosyncrasy’; ‘distance’; ‘movement or progress along a spatial or other course’; ‘one of
`
`the lines terminating at a hydraulic or other valve—often used in attributive noun
`
`compounds with a numeral as first constituent <a four-way valve>; ‘one of the operating
`
`positions of an electric switch- used in attributive noun compounds with a numeral as the
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`first constituent <a three-way switch>; ‘participating party . . .
`
`. .. used in attributive noun
`
`compounds with a numeral as a first constituent <a three-way discussion>’
`
`; and
`
`‘condition especially with regard to health, prosperity, or future prospects. §_q§, Brown
`
`Decl., Exh. 12. Metabolic may mean ‘undergoing metamorphosis, i.e. changeable in
`
`form; and ‘relating to or worked by metabolism.’ fige, Brown Decl., Exh. 13.
`
`I5
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`

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`Further, because Applicant’s mark includes a number, the word ‘way’ brings to
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`mind an incongruent definition more similar to those including a numeral such as, ‘one of
`
`the lines terminating at a hydraulic or other va1ve- <a four-way valve>; ‘one of the
`
`operating positions of an electric switch- <a three-way switch>. Consequently, in order
`
`for purchasers and prospective customers to ascribe any connotation or meaning to the
`
`mark a multi-stage reasoning process or imagination is necessary.
`
`The evidence of record fails to show that
`
`the term describes a feature,
`
`characteristic, etc. of the goods with any degree of particularity, and, in fact, supports
`
`Applicant’s position that the term has a multitude of meanings in Applicant’s field.
`
`Applicanfs mark does not
`
`immediately convey information about
`
`the qualities or
`
`characteristics of Applicant’s goods with the required “degree of particularity.” S_ee, LIES
`
`Corp. of the Americas, 200 USPQ at 58-59.
`
`To the extent that such information may nevertheless serve to raise any doubt as
`
`to the conclusion that
`
`the term 5 WAY METABOLIC FAT FIGHTER does not
`
`immediately convey significant
`
`information about a characteristic,
`
`feature or other
`
`attribute of Applicant’s goods, such doubt is resolved, in accordance with the Board’s
`
`settled practice, in Applicant’s favor. See, g., In re Grand Metropolitan Foodservice, 30
`
`USPQ2d at 1976.
`
`I6
`
`

`
`IV. CONCLUSION
`
`Because the phrase “FAT FIGHTER” is descriptive and because the first portion
`
`of Applicant’s mark comprises “5 WAY METABOLIC”, the marks have a different
`
`visual appearance, sound, connotation and commercial impression. As such, consumers
`
`and prospective consumers would be accustomed to discerning between marks
`
`comprising “FAT FIGHTER” and are not likely to believe that products offered under
`
`Applicant’s mark originate with, or are sponsored by, the owner of the cited registration.
`
`In addition, Applicant’s mark does not immediately convey information about the
`
`qualities or characteristics of Applicant’s goods with the required “degree of
`
`particularity” to render the mark merely descriptive. To the extent that such information
`
`may nevertheless serve to raise any doubt as to the conclusion that the term “5 WAY
`
`METABOLIC FAT FIGHTER” does not immediately convey significant information
`
`about a characteristic, feature or other attribute of Applicant’s goods, such doubt is
`
`resolved, in accordance with the Board’s settled practice, in Applicant’s favor. Applicant
`
`therefore respectfully requests that the Board reverse the final refusal under Sections 2(d)
`
`and 2(e)(1) of the Trademark Act and pass Application Serial No. 76/625541 to
`
`allowance.
`
`Date: August &, 2006
`
`Respectfully submitted,
`
`CISLO & THOMAS LLP
`
`L
`
`5 1 @
`
`Daniel M. Cislo
`
`Reg. No. 32,973
`
`I-\lllV2 IIAI5
`
`on August 2006
` /6/My
`
`Sarah A. Brown, Re .
`
`
`

`
`TRADEMARK
`
`04-14248
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re the application of:
`PROVIDA LABS, LLC
`
`Serial Number:
`
`76/625,541
`
`Examining Attorney: Sloan, Cynthia
`
`Filed:
`
`For:
`
`December 27, 2004
`
`Law Office:
`
`116
`
`5 WAY METABOLIC FAT FIGHTER
`
`Commissioner for Trademarks
`
`Post Office Box 1451
`
`Alexandria, Virginia 22313-1451
`ATTN: TTAB
`
`DECLARATION OF SARAH A. BROWN IN SUPPORT OF
`
`APPLICANT’S APPEAL BRIEF
`
`1.
`
`I am an attorney admitted to practice in the State of California and before the
`
`United States Patent and Trademark Office.
`
`I am an associate in the law firm of Cislo
`
`& Thomas LLP representing Applicant Provida Labs, LLC in the above—referenced
`
`proceeding.
`
`1 make this Declaration of my own personal knowledge, or on information
`
`and belief where so stated. If called as a witness, I could and would testify competently
`
`to the truth of the matters asserted herein.
`
`

`
`2. Attached herein as Exhibit 1,
`
`is a true and correct copy of an article excerpt
`
`indicating it is from Men ’s Fitness dated June 1, 2005, from the Lexis/Nexis database
`
`and as included with the Examining Attorney’s Office Action dated August 3, 2005.
`
`3. Attached herein as Exhibit 2,
`
`is a true and correct copy of an article excerpt
`
`indicating it is from an article entitled Vital Living Provides Update on American Stock
`
`Exchange Listing Status PR Newswire dated January 28, 2004, from the Lexis/Nexis
`
`database and as included with the Examining Attorney’s Office Action dated August 3,
`
`2005.
`
`4. Attached herein as Exhibit 3,
`
`is a true and correct copy of an article excerpt
`
`indicating it
`
`is from The Wichita Eagle. East Edition dated July 6, 2000, from the
`
`Lexis/Nexis database and as included with the Examining Attorney’s Office Action
`
`dated August 3, 2005.
`
`5. Attached herein as Exhibit 4,
`
`is a true and correct copy of an article excerpt
`
`indicating it is from The Washington Times dated July 25, 1999, from the Lexis/Nexis
`
`database and as included with the Examining Attorney’s Office Action dated August 3,
`
`2005 .
`
`6. Attached herein as Exhibit 5,
`
`is a true and correct copy of an article excerpt
`
`indicating it
`
`is from Lillie’s “Souper Weight Loss Secrets” from the Internet URL
`
`<http:i/li1liecross.com> and as included with the Examining Attomey’s Office Action
`
`dated January 18, 2006 (listed as printed on January 13, 2006).
`
`7. Attached herein as Exhibit 6,
`
`is a true and correct copy of an article excerpt
`
`indicating it
`
`is from Diet and Obestity: Interview With Dr. Samuel Klein from the
`
`<USAToday.com> Internet website and as included with the Examining Attorney’s
`
`Office Action dated January 18, 2006 (listed as printed on January 13, 2006).
`
`

`
`8. Attached herein as Exhibit 7, is a true and correct copy of an excerpt indicating
`
`it is from the Natural WebSt0re Internet website and as included with the Examining
`
`Attorney's Office Action dated January
`
`18, 2006 (listed as printed on January 13,
`
`2006).
`
`9. Attached herein as Exhibit 8,
`
`is a true and correct copy of an article excerpt
`
`indicating it is from the Internet URL <www.weightlossguide.com> and as included
`
`with the Examining Attorney’s Office Action dated January 18, 2006 (listed as printed
`
`on January 13, 2006).
`
`10. Attached herein as Exhibit 9 is a true and correct copy of an article excerpt
`
`indicating it is from the Internet URL <www.nutrimart.com> and as included with
`
`the Examining Attorney’s Office Action dated January 18, 2006 (listed as printed on
`
`January 13, 2006).
`
`11. Attached herein as Exhibit 10, is a true and correct copy of an excerpt indicating
`
`it
`
`is
`
`from the Internet URL <www.evitamins.com> and as
`
`included with the
`
`Examining Attorney’s Office Action dated January
`
`18, 2006 (listed as printed on
`
`January 13, 2006).
`
`12. Attached herein as Exhibit 11,
`
`is a true and correct copy of the Trademark
`
`Assignment Abstract of Title for Trademark Application Serial No. 76625541 for 5
`
`WAY METABOLIC FIGHT FIGHTER, the subject of the instant appeal (printed from
`
`the United States Patent and Trademark Office database on August 8, 2006). The
`
`original Applicant is listed as Alchemy Worldwide, LLC and the Assignee is Provida
`
`Labs,
`
`Inc.
`
`The Internet printouts submitted by the Examining Attorney with the
`
`January 18, 2005 Office Action (namely pages 1-5 and 7 of the excerpts attached to the
`
`Office Action and also included herein in Exhibit 11)
`
`refer to Applicant’s own
`
`advertising for its 5 WAY METABOLIC FAT FIGHTER product and to references to
`
`

`
`AppIicant’s product.
`
`True
`
`and correct
`
`copies of pages
`
`from the
`
`Internet
`
`URL<www.alchemyllc.com> (printed on August 7, 2006) have also been included
`
`showing that Alchemy Worldwide and Provida Labs are affiliated.
`
`13. Attached herein as Exhibit 12,
`
`is a true and correct copy of a printout from
`
`Merriam-Webster unabridged online dictionary (regarding the word “way”), from the
`
`Internet URL <http://unabridged.merriam-webster.c0m> (printed on October 21, 2005),
`
`as included with Applicant’s response to the Office Action dated August 3, 2005.
`
`14. Attached herein as Exhibit 13,
`
`is a true and correct copy of a printout from
`
`Merriarn-Webster unabridged online dictionary (regarding the word “metaboIic”), from
`
`the Internet URL <http://unabridged.me1‘riam-webster.com> (printed on October 21,
`
`2005), as included with Applicant’s response to the Office Action dated August 3,
`
`2005.
`
`III
`
`II!
`
`//I
`
`

`
`The undersigned being warned that willful false statements and the like are
`
`punishable by fine or imprisonment, or both under 12 U.S.C. 11001 and that such
`
`willful false statements and the like may jeopardize the validity of the application or
`
`document or any registration resulting therefrom, declares that all