throbber
Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
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`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`77486429
`
`Omega Alpha Pharmaceuticals Inc.
`OMEGA ALPHA
`
`Eugenia S. Hansen
`Hemingway & Hansen, LLP
`Suite 48001700 Pacific Avenue
`Dallas, TX 75201
`UNITED STATES
`
`ghansen@hh-ip|aw.com
`
`Appeal Brief
`
`01/17/2012
`
`FinalBriefwith Signature.pdf ( 23 pages )(344685 bytes)
`TAB A Cover.pdf ( 1 page )(19977 bytes)
`Bayer Case for Tab A.pdf ( 7 pages )(243555 bytes )
`
`Eugenia S. Hansen
`
`ghansen@hh—ip|aw.com,adavis@hh—ip|aw.com
`/es hansenl
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA451653
`ESTTA Tracking number:
`01/17/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`77486429
`Omega Alpha Pharmaceuticals Inc.
`OMEGA ALPHA
`Eugenia S. Hansen
`Hemingway & Hansen, LLP
`Suite 48001700 Pacific Avenue
`Dallas, TX 75201
`UNITED STATES
`ghansen@hh-iplaw.com
`Appeal Brief
`FinalBriefwith Signature.pdf ( 23 pages )(344685 bytes )
`TAB A Cover.pdf ( 1 page )(19977 bytes )
`Bayer Case for Tab A.pdf ( 7 pages )(243555 bytes )
`Eugenia S. Hansen
`ghansen@hh-iplaw.com,adavis@hh-iplaw.com
`/es hansen/
`01/17/2012
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
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`Filer's Name
`Filer's e-mail
`Signature
`Date
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Applicant: Omega Alpha Pharmaceuticals Inc
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`Trademark: OMEGA ALPHA (and design)
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`Serial No.: 77486429
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`Filing Date: May 29, 2008
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`)
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`) BEFORE THE
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`) TRADEMARK TRIAL
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`) AND
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`Examining Attorney: Darryl M. Spruill
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`Address: Law Office 112
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`) APPEAL BOARD
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`) ON APPEAL
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`APPELLANT’S APPEAL BRIEF
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`1 
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`TABLE OF CONTENTS
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`FACTS ............................................................................................................................ 4
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`ARGUMENT .................................................................................................................... 6
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`A. Legal Standard ...................................................................................................... 6
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`B. The Examining Attorney Erred and Should Be Reversed ...................................... 6
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`1. The Examining Attorney Erred by Assuming “Omega” is a Material or
`Substance and Rejecting Appellant’s Evidence to the Contrary ............................... 6
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`2. The Examiner’s Own Record Evidence Refutes the Assertion that Consumers
`Would Perceive “Omegas” as Health-Promoting Substances ................................ 13
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`3. The Weight of the Evidence Indicates That OMEGA ALPHA draws meaning
`from the Greek Alphabet and Literature Connotations Employing Both of The
`Letters ..................................................................................................................... 15
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`4. The Examining Attorney Failed to Consider Appellant’s Mark As a Whole ...... 15
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`5. The Design Elements of OMEGA ALPHA (and design) Cannot Be Ignored .... 17
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`6. Prior Registrations by Appellant and Third Parties of Marks Containing “Alpha”
`and “Omega” are Persuasive of Lack of Descriptiveness or Misdiscriptiveness ..... 20
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`a. Appellant’s Prior Registrations…………………………………………………….19
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`1) OMEGA ALPHA PHARMACEUTICALS (U.S. Registration 3,111,385)
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`2) Canadian Registration of OMEGA ALPHA (and design)
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`b. Third Party Registrations
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`CONCLUSION .............................................................................................................. 21 
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`2 
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`

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`TABLE OF AUTHORITIES
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`Cases
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`A.F. Gallun v.Aristocrat Products, 135 USPQ 459, 460 (TTAB 1962) ..................... 15, 16
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`Bayer Aktiengesellschaft v. Mouratidis, 2010 TTAB LEXIS 218 (TTAB May 21, 2010).
` ............................................................................................................................. 11, 12
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`In re Alp of South Beach Inc., 79 USPQ 2d 1009, 2006) ............................ 10, 10n, 11,14
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`In re Atavio Inc, 25 USPQ2d 1361 (TTAB 1992). .......................................................... 22
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`In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ 2d 1259 (Fed. Cir. 1988). .......... 10, 11, 16
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`In re Colonial Stores Inc., 394 F. 2d 549, 157 USPQ 382 (CCPA 1968) ................. 18, 19
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`In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002). ................................ 12
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`In re Save Venice N.Y., Inc., 259 F.3d 1346, 59 USPQ 2d 1778 (Fed. Cir. 2001). ......... 6
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`In re Shutts, 217 USPQ 363 (TTAB 1983) .................................................................... 19
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`In re Standard Elektrik Lorenz Aktiengesellschaft, 371 F.2d 870, 152 USPQ 563 (CCPA
`1967) ............................................................................................................................ 6
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`In re Woolrich Woolen Mills, Inc., 13 USPQ 2d 1235 (TTAB 1989) ......................... 16, 17
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`Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 916, 189 USPQ 693 (CCPA 1976) ... 21
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`Statutes
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`15 U.S.C. §1052(a) ..................................................................................................... 4, 6
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`Other Authorities
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`T.M.E.P. § 1209.03(d) ................................................................................................... 18
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`3 
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`

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`INTRODUCTION
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`Appellant has appealed the trademark Examining Attorney’s final refusal dated
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`May 22, 2011. The final refusal of Appellant’s application to register the trademark
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`OMEGA ALPHA (and design) under 15 U.S.C. §1052(a)is based on the grounds that
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`the mark consisted of or included deceptive matter in relation to the identified goods.
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`FACTS
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`Applicant/Appellant (hereinafter “Appellant”) filed an application to register the
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`mark OMEGA ALPHA (and design), in connection with goods classified in International
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`Class 005 (IC 005) on May 8, 2008. After review by the United States Patent and
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`Trademark Office (“USPTO”) Examining Attorney, the only grounds for rejection were
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`directed to the manner of identification of the goods, the claim of ownership to U.S.
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`Registration 3,111,385, OMEGA ALPHA PHARMACEUTICALS, and to clarification of
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`the filing basis. See Official Action of 10/15/2008. From April 15, 2009 through July 7,
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`2010, these three issues were the only issues raised.
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`On July 7, 2010, another official action was mailed, stating that after further
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`consideration and review, an additional rejection based on 15 U.S.C. § 1052(a) had
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`been added. See Official Action of 7/7/2010. The Examining Attorney included 58
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`attachments which pertained to searches conducted on the term “omega” and variations
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`thereof. The full office action contains 87 pages.1 Appellant responded to this Official
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`Action on January 6, 2011. With this response, Appellant submitted Exhibit 1 (Article
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`supporting the meaning of OMEGA ALPHA per the Greek letters) pp. 6-10; Exhibit 2
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`                                                            
`1 Each page referenced herein will use the page number of the 87 pages. 
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`4 
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`(Third party registrations utilizing “alpha” and “omega”) pp. 11-20; Exhibit 3 (Copy of
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`Appellant’s prior registration of OMEGA ALPHA PHARMACEUTICALS) pp. 21-22 and
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`Exhibit 4 Third party registration of “Everything from Alpha to Omega” in connection with
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`dietary supplements and evidence of use of the mark OMEGA ALPHA by the Appellant
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`on goods) pp. 23-247. Appellant argued against the deceptiveness rejection and
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`offered arguments contra to the Examining Attorney’s position. See Response to
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`Official Action of 7/7/2010 (filed 1/6/2011).
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`However, a new Examining Attorney finally rejected the application for
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`registration, deeming Appellant’s arguments “unpersuasive.” See Official Action of
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`5/22/2011. Despite Appellant’s submission of Exhibit 1(described supra) with its
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`response, the Examining Attorney stated that Appellant had presented no evidence
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`demonstrating that consumers would perceive the meaning of OMEGA ALPHA as
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`meaning “from the end to the beginning.” See Official Action of 5/22/2011 at 16.
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`Further, additional references were cited by the new Examining Attorney to internet
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`mentions of omega-3 fatty acids in various articles and advertisements. See id. at 16-
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`17. The Examining Attorney concluded that the use of “OMEGA” in Appellant’s mark
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`misdescribed the goods since all of the goods “do not feature omegas.” See id. at 17.
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`The Examining Attorney concluded that the evidence of record, “[c]ontrary to Appellant’s
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`position…” demonstrates that consumers would specifically purchase supplements on
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`the premise that the term OMEGA would denote that the goods encompass Omega
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`fatty acids based on the essential health and/or nutritional value that omegas provide for
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`both humans and pets.”
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`5 
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`Because the Examining Attorney was satisfied with the Appellant’s identification
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`of goods, the sole issue remaining is the final rejection under 15 U.S.C. §1052(a).
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`Appellants filed a Notice of Appeal on November 18, 2011.
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`A. Legal Standard
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`ARGUMENT
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`The United States Patent and Trademark Office (“USPTO”) has the burden of
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`proving that a trademark falls within a prohibition of Sec. 1052. See In re Standard
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`Elektrik Lorenz Aktiengesellschaft, 371 F.2d 870, 873, 152 USPQ 563, 566 (CCPA
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`1967). On appeal, the USPTO’s finding of fact is reviewed for substantial evidence.
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`See In re Save Venice N.Y., Inc., 259 F.3d 1346, 1351, 59 USPQ 2d 1778 (Fed. Cir.
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`2001). If the USPTO’s Examining Attorney puts forward a prima facie case, then the
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`Appellant’s rebuttal evidence is considered to determine if it sufficiently rebutted the
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`evidence of the USPTO.
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`B. The Examining Attorney Erred and Should Be Reversed
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`1. The Examining Attorney Erred by Assuming “Omega” is a Material or
`Substance and Rejecting Appellant’s Evidence to the Contrary
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`The registration of OMEGA ALPHA (and design) was finally refused on the
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`grounds that “the applied-for mark consisted of or included deceptive matter in relation
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`to the identified goods.” Appellant respectfully submits that the Examining Attorney
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`erred in refusing registration on these grounds. Because the final refusal dated May 22,
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`2011 (Official Action of 5/22/2011) augments and adopts the previous Official Action
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`dated July 7, 2010 (Official Action of 7/7/2010), both will be discussed herein.
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`6 
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`The Examining Attorney has rested the final refusal on a conclusion that “all but
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`three of the above listed goods do not feature omegas,” and failing to give weight to
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`Appellant’s prior arguments that “omega” does not signify an ingredient in any one of its
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`listed goods, but instead is an arbitrary designation when considered in connection with
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`the listed goods and when the mark as a whole, OMEGA ALPHA (and design), is
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`considered. See Response to Official Action of 7/7/2010 (filed 1/6/2011) at 3 (wherein
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`Appellant argued that Appellant’s mark does not contain the terms “omega-3,” “omega-
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`6,” or “fatty acids” and thus will be perceived as Greek letters and not as a message to
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`consumers about omega-3 fatty acids; and that the 24th letter of the Greek alphabet,
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`“omega” and the 1st letter of the Greek alphabet, “alpha” when placed together to create
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`the new designation “OMEGA ALPHA (and design)” does not describe (or “misdescribe”
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`as contended by the Examining Attorney) any ingredients whatsoever that may be
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`present in the goods). See id. at 3.
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`The Examining Attorney failed to set forth a prima facie case, because all of the
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`evidence set forth concerns omega-3 fatty acids, omega-6 fatty acids and/or other types
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`of fatty acids. The Examining Attorney erred, and therefore did not establish a prima
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`facie case, because the Examining Attorney equated the Greek letter “omega,” standing
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`alone, with “omega-[numeral] fatty acids.” This is error on the part of the Examining
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`Attorney, because there is no chemical or biological ingredient in existence which is
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`called an “omega” or “omegas” and thus the Examining Attorney’s evidence does not
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`even pertain to Appellant’s mark. Appellant argued this previously. See Response to
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`Official Action of 7/7/2010 (filed 1/6/2011) at 3 (Failing to consider the mark in its
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`entirety, the Examining Attorney contends that the term “OMEGA” in Appellant’s
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`7 
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`OMEGA ALPHA (and design) mark will be viewed as having a nutritional meaning).
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`Even though Appellant previously pointed out that the evidence provided by the
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`Examining Attorney referred only to “omega-3” fatty acids, “omega-6” fatty acids or
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`“omega-9 fatty acids” and that “OMEGA” alone had no nutritional meaning, the rejection
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`was made final.
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`Expanding upon Appellant’s previous argument, Appellant points again to
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`evidence placed in the record by the Examining Attorney. Although Appellant contends
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`that its mark has a meaning “from the end to the beginning” from the Greek letters
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`“omega” and “alpha,” (see Response to Official Action of 7/7/2010 (filed 1/6/2011) at
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`Exhibit 1) even considering the Examining Attorney’s venture into the
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`chemical/nutritional sciences with the citations to dictionaries and articles concerning
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`fatty acid chemistry and chemical nomenclature, Appellant contends that the Examining
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`Attorney has misused the chemical terminology so as to render it meaningless in the
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`context of considering the registrability of Appellant’s trademark. In chemistry, the word
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`“omega” is used to pronounce the Greek letter “ώ,” used in chemical nomenclature to
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`indicate a location of a carbon atom with respect to the molecule as a whole. For
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`example in fatty acids, which are straight-chain hydrocarbons (molecules having carbon
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`and hydrogen) having an acid carboxyl (COOH) group at one end, the Greek letters of
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`the alphabet are used to designate which carbon of the molecule is being discussed.
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`The carbon next to the carboxyl group is known as the “α” carbon, the next carbon, the
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`“β” carbon, and so forth. Since fatty acids can be of different lengths, the last carbon
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`position on the fatty acid is labeled as the "ω" [aka “omega”] carbon, from the last letter
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`in the Greek alphabet. See, e.g., Official Action Of 7/7/2010 at 50 (the Examining
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`8 
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`Attorney’s evidence consisting of the article, William E. Butler, “Omega-3 Fatty Acids -
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`Science, Efficacy, and Clinical Use in Cardiology”). With respect to fatty acids, some
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`are “unsaturated” fatty acids and some are “saturated” fatty acids. See id. at 49 (Butler
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`article cited by Examining Attorney stating that omega-3 and omega-6 fatty acids are
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`polyunsaturated fatty acids (PUFA) and differ from other fatty acids by the structure of
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`their carbon chains). As stated in Butler, PUFA have double bonds between carbons.
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`See id. To indicate the position of the double bonds in relation to the “ώ” (omega) or
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`last carbon of the fatty acid, a numeral must be placed after the “omega” designation.
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`Thus, “omega-3” fatty acids are those that have a double bond between the third carbon
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`and fourth carbon, counting from the omega position. See id. at 50. The term “omega-
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`6 fatty acids” signifies a fatty acid with a double bond between the sixth and seventh
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`carbon, counting from the omega position. Thus, the Examining Attorney’s conclusion
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`that few of Appellant’s goods contain “omegas” is incorrect. In fact, none of Appellant’s
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`goods contain “omegas” nor do any other compositions in the world contain “omegas.”
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`“Omega” (ώ) is simply a Greek letter signifying a position of a carbon, and is not a
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`substance.
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`The fact that the Examining Attorney’s own evidence refers to “omega-3 fatty
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`acids” indicates that the bolded portion of the quoted term is necessary for the term to
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`make any correct sense as a name of a substance. In fact, without the use of the “-3”
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`the term is nonsensical as a reference to a substance. Again citing the Examining
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`Attorney’s own evidence in the record, the definition for the term “omega” refers (as a
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`noun) to the last letter of the Greek alphabet and (as an adjective) to “of or
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`characterizing a chemical group or position at the end of a molecular chain…” See
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`9 
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`Official Action of 7/7/2010 at 61(excerpt from The Free Dictionary). There are many
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`possible positions for double bonds in an unsaturated molecule and the number is
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`necessary to provide an indication of the properties of the fatty acid. See id. at 50
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`(Butler article).
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`The case before this Board is not similar, therefore, to the case cited by the
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`Examining Attorney, namely, In re Budge Mfg. Co., 857 F. 2d 773, 8 USPQ 2d 1259
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`(Fed. Cir. 1988). In the Budge case, the Federal Circuit considered LOVEE LAMB in
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`connection with automotive seat covers. The Appellant for registration admitted that the
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`covers were not made of lambskin or sheepskin, but of synthetic material. Thus, the
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`court concluded that “LAMB” was misdescriptive of the goods. The Budge case is
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`inapplicable to the instant situation because, as pointed out above, there is no such
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`thing as an “omega” chemical or biological substance. Thus, no analysis can even be
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`conducted as to whether Appellant’s goods contain “omegas” or not. Thus, the three
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`pronged test used in Budge fails at the first prong for reasons of inability to apply it to
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`Applicant’s goods.
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`The Examining Attorney further cited In re Alp of S. Beach Inc., 79 w 1009 [sic.]
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`(TTAB 2006).2 Alp is also inapplicable to the present situation. In Alp, the Appellant
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`sought to register CAFETERIA for restaurant services that did not include cafeteria-style
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`service. In applying the three-pronged test for determining whether a mark is deceptive
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`under Section 2(a), this Board considered:
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`                                                            
`2 Appellant believes that the Examining Attorney intended to cite In re Alp of South Beach Inc.,
`79 USPQ 2d 1009, (TTAB 2006) and will proceed on that basis. 
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`10 
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`(1) Is the term misdescriptive of the character, quality, function, composition or use
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`of the goods (or services)?
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`(2) If so, are prospective purchasers likely to believe that the misdescription actually
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`describes the goods (or services)?
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`(3) If so, is the misdescription likely to affect the decision to purchase?
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`See In re Alp of South Beach Inc., 79 USPQ 2d 1009 (TTAB 2006)
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`Alp, like Budge, is distinguishable from the case at bar. Since “ώ” (omega) is an
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`indication of a position of a carbon atom in a molecule, not a substance, prong (1) of the
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`test cannot even be analyzed with respect to Appellant’s goods. The necessity for there
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`to be a term in the proposed mark that can be analyzed in prong (1) of the test was
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`explained by this Board in Bayer Aktiengesellschaft v. Mouratidis, slip. op., 2010 TTAB
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`LEXIS 218, 7-8 (TTAB, May 21, 2010). (Attached at TAB A) There it was stated:
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`“As a starting point for analysis, we observe that for a term to misdescribe goods, the
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`term must be merely descriptive of a significant aspect of the goods which the goods
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`could plausibly possess but in fact do not.”
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`The “starting point for analysis” referenced in Bayer cannot be determined in the
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`instant case. “Omega” cannot be merely descriptive of any significant aspect of
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`Appellant’s goods which the goods could plausibly possess, but in fact, do not. No
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`product could plausibly possess an “omega.” Unlike the cases cited by the Examining
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`Attorney or which consider the issue, when one looks up “omega” in the dictionary, one
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`obtains the definition put into evidence by Appellant and the Examining Attorney (e.g.,
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`“omega” is the last letter of the Greek alphabet). Appellant’s goods cannot be so
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`11 
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`analyzed because there is no such material as “omega” nor any adjective applicable to
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`an ingredient as an “omega” type ingredient.
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`While Bayer’s Board could determine that “Appellant's dietary supplements do
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`not contain acetylsalicylic acid otherwise known as aspirin,” this Board cannot
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`determine whether or not Appellant’s goods contain “omega" as defined in the
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`dictionary.
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`Further, the case of In re Phillips-Van Heusen Corp., 63 USPQ 2d 1047, 1051
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`(TTAB 2002), cited by the TTAB in Bayer and by the Examining Attorney in the instant
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`case, supports Appellant’s position. In Phillips, the Board affirmed the refusal to register
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`SUPER SILK in connection with clothing that did not contain silk. However, in making
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`its determination in Phillips, the Board relied upon dictionary definitions of “super” and
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`“silk” and approved the examining attorney’s logic that “super” modified “silk” which was
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`a noun. See id. In the present case, the dictionary definitions of “omega” put into the
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`record by both Appellant and the Examining Attorney define “omega” as the last letter of
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`the Greek alphabet. Following the analysis in Phillips compels a conclusion that
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`“omega” is a Greek letter, not a chemical or nutritional ingredient as is contended by the
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`Examining Attorney. The Examining Attorney is simply not supported by the record
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`evidence.3
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`Further, as is detailed below, Appellant’s mark is OMEGA ALPHA (and design)
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`and the evidence of record supports that when an observer views “OMEGA” in
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`3 The primary definitions of the words, “omega” and “alpha” respectively, are definitions of each as a
`Greek letter when they serve as nouns. Thus, when one says “OMEGA ALPHA” one is pronouncing two
`nouns in succession. This reinforces that the consumer will ascribe the Greek letter definition to them.
`Consider the hypothetical mark “ABC.” It would be nonsensical to analyze if “A” alone is a potential
`ingredient of the goods.
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`12 
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`conjunction with “ALPHA”, one would perceive Greek letters, as those two letters used
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`together connote “from the end to the beginning.” See Response to Official Action of
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`7/7/2010 (filed 1/6/2011) at Exhibit 1.
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`
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`2. The Examiner’s Own Record Evidence Refutes the Assertion that
`Consumers Would Perceive “Omegas” as Health-Promoting
`Substances
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`The Examining Attorney’s own evidence, the Butler article, differentiates between
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`the properties of “omega-3 fatty acids” and “omega-6 fatty acids,” stating that intake of a
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`disproportionate ratio of “omega-6 fatty acids” to “omega-3 fatty acids” could be
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`implicated in inflammatory disease. See Official Action Of 7/7/2010 at 50 (the
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`Examining Attorney’s evidence consisting of the article, William E. Butler, “Omega-3
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`Fatty Acids -Science, Efficacy, and Clinical Use in Cardiology”). The Examining
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`Attorney’s evidence also refers to “omega-9 fatty acids.” See id. at 82. These are
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`commonly found in animal fats such as bacon fat and lard. Although also bearing the
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`“omega” descriptor (to describe the position of the double bond relative to the last
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`carbon atom in the fatty acid), “omega-9” fatty acids are not “essential” fatty acids and
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`are made by the animal’s body. They have been implicated in “possible negative
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`health effects.” See Official Action of 7/7/2010 at 82 (emphasis added).
`
`Thus, the Examining Attorney’s conclusion that consumers would “specifically
`
`purchase supplements on the premise that the term OMEGA would denote that the
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`goods encompass Omega fatty acids based on the “essential health” and/or
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`“nutritional value” (Official Action of 5/22/2011 at 17 (emphasis added)) that omegas
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`13 
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`provide for both humans and pets” is simply a non-sequitur. Since there is no such
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`chemical substance as an “omega” (because this refers to a position of a carbon atom
`
`in a molecule, not a substance4) and even if the correct entities (e.g., omega-[numeral]
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`fatty acids) are considered, the Examining Attorney’s own evidence of record
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`establishes that not all “omega – [numeral] fatty acids” are healthy or essential and thus
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`consumers would not likely assume that Appellant’s products encompass them.
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`The evidence in the record, as a whole, does not support the Examining
`
`Attorney’s premise. Evidence that omega-9 fatty acids are not essential and potentially
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`harmful and that intake of omega-6 fatty acids, though essential, should not greatly
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`exceed the intake of omega-3 fatty acids is also a part of this record and cannot be
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`ignored.
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`Thus, even if one ignores the fact that there is no such ingredient as an “omega,”
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`the second prong of the test – whether prospective purchasers are likely to believe that
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`the misdescription actually describes the goods or services - cannot be satisfied. See
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`Alp, supra, page 11. There is no evidence that prospective purchasers would believe
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`that “omega” would be contained in products bearing the mark OMEGA ALPHA (and
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`design). Given the contradictory evidence, that not all “omega – [numeral] fatty acids”
`
`should be taken in, such a conclusion could never be reached.
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`                                                            
`4 “Omega” and “alpha” are both indicators of particular carbon atoms in fatty acid molecules. If
`it is nonsensical to consider whether Appellant’s goods contain or do not contain “alphas” then it
`is equally nonsensical to consider whether Appellant’s goods contain or do not contain
`“omegas.”
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`14 
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`There is also no evidence that if the first two prongs were somehow satisfied that
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`this would affect the purchasing decision. The three-pronged test cannot be met at any
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`level.
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`3. The Weight of the Evidence Indicates That OMEGA ALPHA draws
`meaning from the Greek Alphabet and Literature Connotations
`Employing Both of The Letters
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`Appellant’s evidence in Exhibit 1 to its Response to Official Action of 7/7/2010
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`fully rebutted the case of the Examining Attorney. Appellant’s evidence is that (1)
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`“Omega Alpha” is a combination of the last and first letters of the Greek alphabet, and
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`(2) that this term would mean “from the ending to the beginning.” Exhibit 1 details the
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`biblical and historical meaning of “alpha” and “omega” when used together.
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`In fact, the Examining Attorney also submitted evidence into the record which
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`agrees with Appellant’s premise that the primary meaning of “omega,” when used as a
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`noun, is as the last letter of the Greek alphabet. See Official Action of 7/7/2010 at 61.
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`Thus, there is substantial evidence in the record supporting Appellant’s position
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`that consumers would perceive Appellant’s mark OMEGA ALPHA (and design) as
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`referring to the Greek letters “omega” and “alpha”.
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`4. The Examining Attorney Failed to Consider Appellant’s Mark As a
`Whole
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`Appellant’s mark is OMEGA ALPHA (and design), not “omega.” Appellant
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`contends that the Examining Attorney has impermissibly dissected the mark to conclude
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`that it is misdescriptive. In determining whether a mark is deceptive, the mark must be
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`considered in its entirety. See A.F. Gallun v. Aristocrat Products, 135 USPQ 459, 460
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`15 
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`(TTAB 1962) (COPY CALF, not CALF, was the mark sought to be registered and the
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`commercial impression of a mark is necessarily derived from it as a whole; therefore the
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`unitary phrase must be considered). Though a different approach was taken in Budge,
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`supra (where the Court considered the LAMB portion of LOVEE LAMB), whichever
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`approach is used does not result in satisfaction of prong (1) of the test when one
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`considers Appellant’s mark OMEGA ALPHA (and design). Unlike in Budge and Gallun,
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`there is no single word in Appellant’s mark that standing alone is a material or ingredient
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`from which something can be fabricated or made.
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`Appellant has located no cases precisely on point to the instant case (in which
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`the Examining Attorney premised a misdescriptiveness rejection on a portion of a mark
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`(“OMEGA”) that the Examining Attorney’s own record evidence makes clear is not in
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`fact a material from which anything can be made. However, of the cases available for
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`citation, Appellant’s mark is more similar to the mark considered in In re Woolrich
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`Woolen Mills, Inc., 13 USPQ 2d 1235 (TTAB 1989) than to the marks in the cases relied
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`on by the Examining Attorney. In Woolrich, the Board reversed the refusal to register
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`WOOLRICH in connection with clothing which might not be made of wool. The
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`Examining Attorney had taken the position that a consumer would believe that the
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`clothing was rich in wool, and that therefore, the mark was misdescriptive. The Board
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`considered WOOLRICH as a whole, not just the “wool” portion, and noted “a number of
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`well-known people have had surnames beginning with "wool" or ending with "rich", e.g.,
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`Frank Woolworth, Alexander Woollcott, and Samuel Goodrich and that it was
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`permissible for the Board to consider these factors in determining consumer perception.
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` 
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`16 
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`

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`The WOOLRICH Appellant also had some other marks which had long been in use in
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`connection with wool and non-wool clothing.
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`In addition, Appellant’s prior registration for OMEGA ALPHA
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`PHARMACEUTICALS (U.S. Reg. 3,111,385), and evidence of use of that mark and the
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`mark OMEGA ALPHA (and design) is used in connection with a wide variety of
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`supplement products (Response to the Office Action of 7/7/2010 at Exhibit 4) are similar
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`factors to those found persuasive to the Board in Woolrich.
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`When one reviews the manner of use by Appellant of the mark at issue, it is even
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`clearer that the mark is generally utilized as a house mark in conjunction with another
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`mark or a product name. The use by Appellant which was put into evidence shows that
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`Appellant details the nature of the goods and the proposed application to human, pet, or
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`equine health. Thus, the manner of use further supports that the mark would not be
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`perceived by the consumer as deceptively misdescriptive.
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`5. The Design Elements of OMEGA ALPHA (and design) Cannot Be
`Ignored
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`The mark at issue in this appeal is OMEGA ALPHA (and design). However, the
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`design elements of the mark have been improperly dissected from the analysis. Only
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`one word used in the composite mark, namely OMEGA, has been analyzed and used to
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`reject Appellant’s application for registration.
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` 
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`17 
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`

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` 
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`of the capi
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`tal Greek
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`wing USSN 774886441 Draw
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`AAppellant’s mmark includdes a graphhical fancifuul depiction
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`letters ΩΩ (omega) aand Α (alpha). The enntire A is noot included iin the desiggn; rather thhe
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`left angled portion iis truncatedd and joins a depictionn of the Greeek capital lletter Ω. Thhe
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`graphic
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`is quite proominent andd exceeds in height thee lettering tto the right
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`thereof.
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`noted that Itt should be
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`Appellant’ss mark utilizzes a depicction of the
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`the Greeek letter Ω ((omega), noot the smalll letter formm ώ (omegaa) which is
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`chemicaal/nutritional literature tto denote thhe position
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`of a carbo
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`capital formm of
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`utilized in t
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`he
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`n in a fatty
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`acid, furtheer
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`distinguiishing Appeellant’s marrk from beinng indicativve of a posssible ingred
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`ient in the
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`goods.
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`TThe TMEP rrecognizes
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`that compoosite markss may be reegistrable wwhere the
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`composite containss two merelly descriptivve terms. AA compositee mark commposed enttirely
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`of the naames of possible ingreedients in thhe goods caan serve ass a trademaark. See
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`T.M.E.PP. § 1209.033(d) (citing In re Colonnial Stores IInc., 394 F.
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`(CCPA 11968) (SUGGAR & SPICCE held noot merely deescriptive off bakery pr
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` 2d 549, 1557 USPQ 3382
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`oducts); In
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`re
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`18 
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`

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`Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE held not merely descriptive of a snow
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`removal hand tool).
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`Particularly in Colonial Stores, the Court of Customs & Patent Appeals
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`recognized that an unusual association or arrangement in a mark which requires
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`analysis and rearrangement of the components to suggest the contents of the mark
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`may function as a trademark. Like the situation in Colonial Stores, where the record
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`reflected association of SUGAR & SPICE with a nursery rhyme, in the present case
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`there is evidence of record that OMEGA ALPHA (and design) is evocative of the
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`converse of a well-known biblical scripture.5
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`Here, in a situation where neither of the words of the composite mark can
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`describe or misdescribe any possible ingredients in the mark, the Examining Attorney

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