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
`1700 PACIFIC AVENUE, SUITE 4800
`DALLAS, TX 75201
`UNITED STATES
`
`ghansen@hh—ip|aw.com, adavis@hh-ip|aw.com
`
`Reply Brief
`
`03/29/2012
`
`Combined Brief and Exhibit.pdf ( 25 pages )(2237302 bytes )
`
`Eugenia S. Hansen
`
`ghansen@hh-ip|aw.com
`/es hansenl
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA464503
`ESTTA Tracking number:
`03/29/2012
`
`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
`1700 PACIFIC AVENUE, SUITE 4800
`DALLAS, TX 75201
`UNITED STATES
`ghansen@hh-iplaw.com, adavis@hh-iplaw.com
`Reply Brief
`Combined Brief and Exhibit.pdf ( 25 pages )(2237302 bytes )
`Eugenia S. Hansen
`ghansen@hh-iplaw.com
`/es hansen/
`03/29/2012
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`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
`
`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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`Examining Attorney: Darryl M. Spruill
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`Address: Law Office 112
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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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`) APPEAL BOARD
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`) ON APPEAL
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`REPLY BRIEF OF APPELLANT OMEGA ALPHA PHARMACEUTICALS, INC.
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................................. 4
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`REPLY TO EXAMINING ATTORNEY'S STATEMENT OF FACTS ................................. 4
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`REPLY TO EXAMINING ATTORNEY'S ISSUE ON APPEAL…………………………......8
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`REPLY TO EXAMINING ATTORNEY'S ARGUMENT………………………………………8
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`A. Neither “OMEGA ALPHA” nor “OMEGA” Misdescribes the Character, Quality,
`Function, Composition, Or Use of the Dietary, Nutritional, And/Or Herbal
`Supplement Goods.. .............................................................................................. 8
`
`B. Prospective Purchasers Are Not Likely to Believe That “OMEGA ALPHA and
`Design” Actually Describes the Goods, Namely, Dietary, Nutritional, And/Or
`Herbal Supplements Encompassing Omega Fatty Acids, Nor is the Alleged
`Misdescription Likely to Affect a Significant Portion Of the Relevant Consumers’
`Decision To Purchase Goods. ............................................................................. 10
`
`C. The Examining Attorney’s Rejection of the Greek Letter Significance As Not Being
`Supported By The Evidence is Clearly Erroneous; The Examining Attorney’s
`Argument in the Brief Regarding Other Greek Letters is Improper and Should
`be Stricken. ......................................................................................................... 13
`
`CONCLUSION .............................................................................................................. 20
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`Cases
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`TABLE OF AUTHORITIES
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`AMF, Inc. v. American Leisure Products, 177 USPQ 278 (CCPA 1973)………………..17
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`Bayer Aktiengesellschaft v. Mouratidis, 2010 TTAB LEXIS 218
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`(TTAB May 21, 2010)………………………………………………………...15, 15n.7 & 8
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`In re Colonial Stores Inc. 394 F.2d 549, 157 USPQ 382 (CCPA 1968…………………..19
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`In re Int'l Taste, Inc., 53 USPQ2d 1604, 1606 (TTAB 2000)……………………………..17
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`In re Nett Designs Inc., 57 USPQ 1564 (Fed. Cir. 2001)…………………………………18
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`In re Pop Pack, 2011 TTAB LEXIS 107……………………………………………………..18
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`In re Sunmarks, 32 USPQ2d 1470 (TTAB) 1994)……………………………………..…18
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`
`
`Statutes and Regulations
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`15 U.S.C. §1052(a) ......................................................................................................... 4
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`37 C.F.R. §2.142(2)d……………………………………………………………………….7, 15
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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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`March 9, 2012. The final refusal of Appellant’s application to register the trademark
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`OMEGA ALPHA (and Design) in connection with dietary, nutritional, and herbal
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`supplements, was made by the Examining Attorney on the grounds that the applied-for
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`mark consists of or includes deceptive matter in relation to the identified goods under
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`Trademark Act §2(a), 15 U.S.C. §1052(a). Appellant filed a Notice of Appeal on
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`November 18, 2011 and duly filed its opening brief on January 17, 2012. The
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`Examining Attorney mailed his opening brief to Appellant on March 9, 2012. This Reply
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`Brief responds to the Examining Attorney’s March 9, 2012 opening brief.
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`REPLY TO EXAMINING ATTORNEY’S STATEMENT OF FACTS
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`The Examining Attorney’s statement of facts concerning the period from May 29,
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`2008 to January 6, 2011 omits, or incorrectly characterizes, a few facts which Appellant
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`believes are important. After the application was filed on May 29, 2008, there was
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`active prosecution in the case and written and oral communications with the initial
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`Examining Attorney. The Office mailed two office actions and the applicant (now
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`Appellant) successfully responded to all the issues raised therein.1 The first time a
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`rejection of Appellant’s mark on the grounds of deceptive misdescription was made was
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`                                                            
`1 Appellant takes issue with the Examining Attorney’s characterization of Appellant’s goods as a
`“laundry list of goods.” The list of Appellant’s goods is not at issue in this appeal. As stated in
`the Examining Attorney’s own fact section, “Next on May 5, 2010, examining attorney accepted
`applicant’s amended identification of goods.”
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`4 
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`on July 7, 2010, more than two years after the trademark application was filed and after
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`a change in Examining Attorneys. Moreover, not only had this rejection not been made
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`previously in the instant case, but it had not been made in the prosecution of another
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`trademark, now registered to and owned by the same applicant, namely the mark
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`OMEGA ALPHA PHARMACEUTICALS (U.S. Registration Number 3111385, registered
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`July 4, 2006).2 Appellant disputes the Examining Attorney’s statement that Appellant
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`did not submit evidence (with its response dated January 6, 2011) to support its
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`arguments. In fact, Appellant submitted evidence (Exhibit 1 to the 1/6/2011 response at
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`pp. 6-9) consisting of a print-out from the Internet concerning “Alpha and Omega” and
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`its meaning, which evidence supplemented dictionary definitions already placed in the
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`record by the Examining Attorney concerning the meaning of “omega.” 3 Appellant’s
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`evidence defined the symbols “Α” and “Ω” as the first and last letters of the Classical
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`(Ionic) Greek Alphabet, and also supported the meaning advocated by Appellant:
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`
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`Despite Appellant’s evidentiary submission on January 6, 2011, the Examining
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`Attorney contended that the applicant (now Appellant) did not present evidence
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`demonstrating that consumers would perceive the meaning of the proposed mark,
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`OMEGA ALPHA (and Design), as meaning “from the end to the beginning.” Appellant’s
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`                                                            
`2 Further, no such rejection had been made in the concurrent prosecution of the word mark
`OMEGA ALPHA (SN 77486441), also now on appeal due to a delayed rejection on the grounds
`of deceptive misdescriptiveness.
`3 Page 61 of the Official Action dated July 7, 2010.
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`5 
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`use of the Greek letters in the mark at issue employs the letters in the reverse order of
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`the order discussed in the submitted evidence, but Appellant’s evidence is still
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`probative. Appellant’s evidence contains the definitions of the Greek letters “Alpha” and
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`“Omega,” and a reasonable inference can be made as to the meaning of “OMEGA
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`ALPHA” from the definition of “ALPHA OMEGA” given in this evidence. Further,
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`Appellant disagrees with the Examining Attorney’s present characterization of the Final
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`Refusal. The Examining Attorney, only now in his brief, has added language indicating
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`the Final Refusal was not solely based on the Examining Attorney’s premise that some
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`of Appellant’s goods do not contain “omegas.” The Examining Attorney now states that
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`the refusal was maintained because “the term OMEGA in applicant’s mark would be
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`viewed by the relevant purchasing consumer as denoting OMEGA in relation to fatty
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`acids (3, 6 or 9) which provide health benefits in relation to dietary, nutritional
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`and/or herbal supplements.” (emphasis added to new characterization in Examining
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`Attorney’s brief). In fact, the Final Refusal, verbatim, was stated as follows: “Examining
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`Attorney disagrees with applicant and maintains that the proposed mark is deceptive
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`because it contains the term OMEGA, and that all but three of the above listed goods do
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`not feature omegas.” (Examining Attorney’s Final Refusal of May 22, 2011 at pp. 15-
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`16).
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`When the Examining Attorney did use “omega” in conjunction with “fatty acids”
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`further on in the Final Refusal on pages 15-16, he still neglected to use the numerals
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`which Appellant pointed out in its Opening Brief are critical to defining a nutritional
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`substance per se. The Examining Attorney specifically stated:
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`OAPH 200 TMUS – S/N 77486429 
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`As can be seen from the language used by the Examining Attorney in the Final
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`Refusal, no inclusion of a numeral indicating a position of a double bond was used.
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`Rather the Examining Attorney incorrectly and imprecisely stated that “Omega Fatty
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`Acid” or “omegas” were only present in three of the applicant’s goods and consumers
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`were likely to believe this misdescription. This variance between the language used in
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`the Final Refusal and the language now used in the Examining Attorney’s brief is of
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`moment because Appellant based its brief on the actual language used by the
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`Examining Attorney to finally refuse the application for registration, not the language in
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`the Examining Attorney’s brief that might be viewed to alter the grounds of the final
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`refusal.4 It is required that the appeal be based on the actual grounds of the final
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`refusal. (Cf. 37 C.F.R. §2.142(d)).
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`                                                            
`4 If the Examining Attorney is attempting to bolster the basis for the Final Refusal in the brief,
`Appellant contends this is improper.
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`7 
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`REPLY TO EXAMINING ATTORNEY’S ISSUE ON APPEAL
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`Appellant believes the Issue on Appeal, as phrased by the Examining Attorney is
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`incorrect. Appellant submits that the Issue is more accurately presented as:
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`Whether the proposed mark as a whole, OMEGA ALPHA (and
`Design), as used in connection with dietary, nutritional and/or herbal
`supplements, is deceptively misdescriptive under Trademark Act §2(a), 15
`U.S.C. §1052(a), due to the alleged omission from the supplements of
`“omegas” or “omega fatty acids,” taking into account whether or not such
`substances exist and are plausible ingredients of such supplements, and
`whether the Final Refusal should be reversed or maintained.
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`
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`REPLY TO EXAMINING ATTORNEY’S ARGUMENT
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` 
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`A. Neither “OMEGA ALPHA nor “OMEGA” Misdescribes the Character, Quality,
`Function, Composition, Or Use Of The Dietary, Nutritional, And/Or Herbal
`Supplement Goods.
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` 
`
`First, Appellant points out that the Examining Attorney did not explicitly reject
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`Appellant’s mark on the grounds that “OMEGA ALPHA” was misdescriptive.5 Rather,
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`the Examining Attorney based the rejection on part of the mark, “OMEGA” being
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`allegedly misdescriptive. The rejection was not based upon Appellant’s mark as a
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`whole, OMEGA ALPHA and Design. In response to Appellant’s opening brief, the
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`Examining Attorney now characterizes the rejection as due to “OMEGA ALPHA” being
`
`                                                            
`5 It should be noted that the mark at issue in this appeal is OMEGA ALPHA (and Design). The
`design elements of the mark as a whole will be discussed later in this Reply. The design
`elements have been ignored by the Examining Attorney in his brief.
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`8 
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`misdescriptive. Since this ground was never stated nor argued, Appellant requests that
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`the Examining Attorney’s contentions on this point be rejected.6
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`Second, with respect to the actual rejection made by the Examining Attorney,
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`that “OMEGA” misdescribes the goods, the Examining Attorney’s argument has not
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`responded to Appellant’s opening brief, Section B (1), which is well-supported by the
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`record. Appellant pointed out in its opening brief that there is no such substance as an
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`“omega” or an “omega fatty acid.” The Examining Attorney did not respond to this.
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`Indeed, the Examining Attorney’s own evidence of record supports Appellant’s
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`contention that the term “omega” is a reference in chemistry and food science to the
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`position of a double bond relative to the last carbon atom in a fatty acid and that use of
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`a numeral to indicate the double bond position is mandatory.to name the fatty acid and
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`to indicate and distinguish its properties. (See William E. Butler, “Omega-3 Fatty
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`Acids…” (originally attached to the Official Action of 7/7/2010, previously cited in
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`Appellant’s brief, and attached hereto as Exhibit A for convenience))
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`There is no evidence in the record that “omegas” or “omega fatty acids” is an
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`ingredient which any of the goods on Appellant’s list can possibly contain. Rather the
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`evidence of record shows that “omega” is a term in chemistry describing the end
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`chemical group, and is not exclusive to describing fatty acids. The Examining Attorney
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`has cited in his brief, for support of his contentions, a dictionary definition from the
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`record:
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`                                                            
`6 Appellant addressed the failure of the Examining Attorney to consider its mark as a whole.
`See Appellant’s Opening Brief at pp. 15-17. The Examining Attorney has not responded to this
`section of Appellant’s brief.
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`9 
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`The dictionary definition supports Appellant’s position, not the Examining
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`Attorney’s position. The Examining Attorney is clearly erroneous in his contention that
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`the term “omega” refers to a fatty acid, or is or could be an ingredient, because the
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`evidence of record instead shows that ‘omega-[numeral] fatty acid” must be used for
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`there to be any correct chemical or correct nutritional meaning. Therefore, Appellant
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`urges this Board to reverse the Examining Attorney’s Final Refusal.
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`B. Prospective Purchasers Are Not Likely To Believe That “OMEGA ALPHA and
`Design” Actually Describes The Goods, Namely, Dietary, Nutritional, And/Or
`Herbal Supplements Encompassing Omega Fatty Acids, Nor Is the Alleged
`Misdescription Likely To Affect A Significant Portion Of The Relevant
`Consumers’ Decision To Purchase Goods.
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` 
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`In reply to the Examining Attorney’s alleged “evidence from the Internet outlining
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`the health benefits and importance of Omega Fatty Acids …and the material purchasing
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`decision consumers make,” Appellant contends that such evidence is not effective or
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`persuasive evidence of the premise advanced by the Examining Attorney.
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`Every article cited by the Examining Attorney utilizes the terminology “omega-3
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`fatty acids”; “omega-3 FAs” or “omega-3” as a descriptor for “oils” or “fatty acids.” The
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`same thing is true for the references to “omega-6” and “omega-9.” As pointed out by
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`Appellant in its opening brief, the term “omega” MUST be used with a numeral (as is
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`done in the Examining Attorney’s evidence, but not by the Examining Attorney) because
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`10 
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`the numeral is critical to denoting the position of the double bond in the molecule in
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`relation to the final carbon atom. (See Appellant’s Opening Brief at 13). The evidence
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`in the record indicates that the numeral defines and differentiates the properties of the
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`substances. Yet in the face of this evidence, the Examining Attorney persists in
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`referring to “OMEGA fatty acids.” Consumers looking for a nutritional supplement
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`containing a particular type of fatty acid would look for an “omega-3 fatty acid” or an
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`“omega-6 fatty acid” as recommended by their doctor, nutritionist, or by scientific or
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`popular literature such as is in the record. Since the evidence of record indicates that
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`one fatty acid may provide different benefits from another because of the position of the
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`double bond in the molecule, and that some fatty acids provide no benefit or are
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`detrimental, consumers would need to select the appropriate fatty acid supplement to
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`serve their needs. All of this evidence in the record makes clear that that numeral is
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`consistently used by the public to denote the fatty acid ingredient of a nutritional
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`supplement. Appellant’s mark does not utilize any numerals because it does not refer
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`to fatty acids but instead to the Greek letters OMEGA and ALPHA.
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`In addition, the Examining Attorney erroneously summarizes the evidence by
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`stating “All of the evidence demonstrates that OMEGA fatty acids provide vital health
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`benefits to both humans and pets.” (emphasis added) The Examining Attorney ignores
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`the evidence in the record to the contrary, as discussed on pages 13-14 of Appellant’s
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`brief and fails to respond to Appellant’s brief on this point. That evidence indicates that
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`omega-9 fatty acids are not “essential,” are made by the animal’s body, and have been
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`implicated in possible negative health effects. Further, the evidence of record indicates
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`that intake of omega-6 fatty acids (though essential) should not greatly exceed intake of
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`11 
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`omega-3 fatty acids. Therefore, the Examining Attorney’s summary is clearly
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`erroneous.
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`As far as the evidence from dictionaries relied upon by the Examining Attorney’s
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`brief, The Free Dictionary (page 60 of OA of 7/7/10) supports Appellant’s position in that
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`the only definition of “omega” as a noun is as the last letter of the Greek alphabet.”
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`The definition from Merriam Webster for “omega-3”, reproduced below, characterizes
`the term as an adjective and supports that to refer to a fatty acid, the numeral is
`necessary. The “omega” definition above does not address fatty acids specifically.
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`Since it is the Examining Attorney’s contention that “OMEGA” is misdescriptive of
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`an ingredient or the absence thereof in Appellant’s goods, then the Examining
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`Attorney’s premise requires that the term be a noun for only then could it possibly be an
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`12 
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`ingredient of anything. In fact as a noun per the dictionary definitions of record,
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`“omega” can only be a Greek letter. The evidence of record does not support the
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`Examining Attorney’s rejection and in fact supports Appellant’s. Therefore, the Final
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`Refusal should be reversed.
`
`C. The Examining Attorney’s Rejection of the Greek Letter Significance As Not
`Being Supported By the Evidence is Clearly Erroneous; The Examining
`Attorney’s Argument in the Brief Regarding other Greek Letters Is Improper
`and Should be Stricken.
`
`The Examining Attorney has contended that the Appellant’s argument as to the
`
`Greek letter significance of “OMEGA ALPHA” is without merit. The Examining Attorney
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`now contends that the Office accepted the premises that OMEGA is the 24th letter and
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`ALPHA is the 1st letter of the Greek alphabet, and that the terms may be defined as the
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`End and the Beginning respectively. However, the Examining Attorney maintains that
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`no evidence was submitted that consumers would perceive the meaning “from the end
`
`to the beginning.” Contrary to the Examining Attorney’s contentions, Appellant
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`submitted the following evidence as Exhibit 1 to the Response dated January 6, 2011:
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`13 
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`The evidence submitted by Appellant is the same type of evidence submitted by
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`the Examining Attorney to the record – information print-outs from the Internet. In
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`addition, the dictionary definitions submitted by the Examining Attorney to the record are
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`clearly persuasive on the meaning of Omega (last letter of the Greek alphabet). Though
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`the Examining Attorney has virtually ignored the “ALPHA” part of Applicant’s mark,
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`Applicant’s evidence concerning Alpha and Omega defined the words as the first and
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`last letters of the Greek alphabet. The evidence submitted by Appellant is sufficient to
`
`show that Alpha and Omega has meant from biblical times “from the beginning to the
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`end.” Therefore, the evidence supports that when faced with OMEGA ALPHA, a
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`consumer would likely perceive LAST to the FIRST or “from the end to the beginning.”
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`Certainly, if a consumer views the juxtaposition of two Greek letters and attempts to
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`determine the meaning of such letters, the primary definitions of the terms “OMEGA”
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`and “ALPHA” in dictionaries are as Greek letters. The weight of the evidence is that a
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`consumer would perceive two Greek letters placed adjacent one another. If further
`
`meaning was sought as to the particular letters and how they are used in the mark, the
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`evidence of record supports that the famous biblical passages referencing Alpha
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`Omega as “from the beginning to the end” would be used to discern the meaning of
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`OMEGA ALPHA as “from the end to the beginning.”
`
`The Examining Attorney has further presented and requested judicial notice be
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`taken of definitions concerning some other Greek letters never before discussed in this
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`trademark prosecution, namely BETA, BETA-TEST and IOTA.
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`14 
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`First, Appellant request that this newly-presented evidence be stricken as being
`
`untimely. This evidence is not in the record of the prosecution. 37 C.F.R. §2.142(2)(d)
`
`prohibits either the appellant or the Examining Attorney from introducing additional
`
`evidence after an appeal is filed.
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`Should the evidence be accepted for consideration by the Board, Appellant
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`submits that it is wholly irrelevant. The significance or lack thereof of terms not used in
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`the mark on appeal has no bearing on the issue in this case.
`
`Finally, the Examining Attorney’s argument that when “beta” or “iota” are used in
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`“different contexts” they connote something other than Greek letters is not persuasive to
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`deciding the issue before this Board. This argument can easily be turned in Appellant’s
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`favor - OMEGA ALPHA and Design as used by Appellant in a “different context”
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`connotes the source and origin of the goods and not whether the goods may contain the
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`non-existent components “omegas” or “alphas.”
`
`With respect to the Bayer case, discussed by the Examining Attorney,7 Appellant
`
`previously addressed Bayer in its Opening Brief. The “starting point” required by Bayer
`
`is that in order for a given term to misdescribe the goods, the term must be merely
`
`descriptive of a significant aspect of the goods which the goods could “plausibly
`
`possess,” but do not. See Appellant’s Opening Brief at 11. This is not the case here
`
`since “omega” is not a substance that can plausibly be possessed by the goods.8
`
`                                                            
`7 Bayer Aktiengesellschaft v. Mouratidis, 2010 TTAB LEXIS 218 (TTAB May 21, 2010).
`8 In Bayer, the contention that “organic aspirin” did not exist differs from the issue here. Aspirin
`exists. “Omegas” do not exist. None of the terms in Appellant’s mark OMEGA ALPHA & design
`identifies a plausible substance.
`
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`15 
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`

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`Appellant submitted a great deal of evidence into the record illustrating
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`Appellant’s mark in use. Appellant’s mark is clearly being used as a trademark.
`
`Appellant pointed out in its opening brief that the mark is being used with a graphical
`
`fanciful depiction of the capital Greek letters Ω (omega)9 and Α (alpha) as follows.10
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`
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`The manner of Appellant’s use has not been refuted or even addressed by the
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`Examining Attorney in his brief. The fact that there is a design element to this mark has
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`been essentially ignored by the Examining Attorney, except for some cursory remarks.
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`(See footnote 11). The manner of use by Appellant further supports that the mark
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`would be perceived by the consumer as Greek letters used as a brand for the products.
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`(See also page 17-18 of Appellant’s Opening Brief). In addition, Appellant has a U.S.
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`registration for OMEGA ALPHA PHARMACEUTICALS, U.S. Registration 3,111,385,
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`                                                            
`9 Ω in capital form is not used in chemistry to denote the end carbon; rather it is customary to
`use the lower case form or “ώ”, which further indicates that Appellant’s mark employs the Greek
`letters as an arbitrary trademark.
`10 Appellant submitted evidence of Appellant’s manner of use of the mark on various products
`as Exhibit 4 to the response dated 1/6/2011. On page 25 et. seq, it can be seen that the mark
`at issue in this appeal is in use as a house mark for a vast line of products. The products have
`other marks and/or product names which differentiate one product from another.
`
`OAPH 200 TMUS – S/N 77486429 
`
`16 
`
`

`
` 
`
`and a Canadian registration for the mark at issue. While the Examining Attorney
`
`counters that each case is decided on its own merits, this does not refute that
`
`Appellant’s prior use and registrations have been regarded by those perceiving them
`
`(including the public and other Examining Attorneys) as not-misdescriptive.
`
`None of the cases cited by the Examining Attorney indicate that the prior
`
`registration of the Appellant cannot be considered as a circumstance. Further, the
`
`desire for consistency by the Trademark Office, and that doubt should be decided in
`
`favor of the applicant, discussed in these cases, support Appellant’s position in this
`
`case. The Examining Attorney cited AMF, Inc. v. American Leisure Products, 177
`
`USPQ 278 (CCPA 1973) for the proposition that other registrations have little
`
`evidentiary value. However, the Court in AMF did give great weight to the opposer’s
`
`own registrations to establish a “family of marks”, reversing the Board on that point.
`
`Therefore, the case supports the Appellant in that its own registrations should be
`
`considered with respect to descriptiveness or misdescriptiveness. (The Court agreed
`
`that the existence of third-party registrations did not have great weight in a likelihood of
`
`confusion analysis, not at issue here). The Examiner further cited In re Int’l Taste, Inc.,
`
`53 USPQ2d 1604, 1606 (TTAB 2000). In that case, the issue was whether an applicant
`
`should be required to disclaim “Hollywood.” The Board commented that it had no way
`
`to verify the claim that others either had or had not been required to disclaim
`
`“Hollywood” from the evidence in the record and that it had to decide the case on its
`
`facts and on the record. The Board further commented that the Office does strive for
`
`consistency, if there is any doubt as to the primary significance of “Hollywood,” doubt
`
`should be resolved in favor of the applicant. The Board reversed the Examining
`
`OAPH 200 TMUS – S/N 77486429 
`
`17 
`
`

`
` 
`
`Attorney. See id. In the present case, any doubt about OMEGA ALPHA (and Design)
`
`should also be resolved in favor of the Appellant. In re Sunmarks, 32 USPQ2d 1470
`
`(TTAB 1994) is a case in which a likelihood of confusion issue was before the Board.
`
`The applicant noted that prior similar applications had not been opposed by the
`
`registrant of the cited mark. While stating that each case had to be decided on its own
`
`record and merits, the Board did state that it was “troublesome to refuse registration
`
`when applicant already owns registrations for the identical mark for the same or similar
`
`goods.” However, with respect to the likelihood of confusion issue (not present in the
`
`instant case), the case would be independently evaluated. In re Nett Designs Inc., 57
`
`USPQ 1564 (Fed. Cir. 2001), concerned affirmation of a disclaimer requirement, not at
`
`issue here. While the third party registrations were not conclusive, they were accepted
`
`as part of the evidence as a whole. In re Pop Pack, 2011 TTAB LEXIS 107 also
`
`considered third party registrations, but found them of little value in determining the
`
`issue in that case as to whether the mark was generic. The Examining Attorney also
`
`has referred on page 12 of his brief to a case for which no citation is provided,
`
`stating that cancellation of a mark as being generic was held warranted in that case.
`
`Although Appellant is unable to review the case without the citation thereto, it believes
`
`that the issue in the case as described by the Examining Attorney differed from that
`
`before this Board.
`
`The Examining Attorney has not responded to Appellant’s argument that OMEGA
`
`ALPHA (and Design), as whole, is the mark at issue. Even if “omega” could be an
`
`ingredient (which Appellant has demonstrated it could not because it does not exist), a
`
`composite mark (OMEGA ALPHA) stands in a different position than OMEGA alone.
`
`OAPH 200 TMUS – S/N 77486429 
`
`18 
`
`

`
` 
`
`See, e.g., In re Colonial Stores Inc, 394 F.2d 549, 157 USPQ 382 (CCPA 1968)
`
`(SUGAR & SPICE not merely descriptive of bakery products). (Discussed further at
`
`page 18 of Appellant’s Opening Brief).
`
`The Examining Attorney failed to adequately respond to Section 5 of Appellant’s
`
`Opening Brief which addressed the fact that the design elements of Appellant’s mark
`
`have not been considered in the present misdescriptiveness rejection. 11 Specifically,
`
`the graphics which have a fanciful depiction of the capital Greek letters Ω and Α as
`
`discussed on pages 17-18 of Appellant’s Opening brief, reinforce the meaning of
`
`OMEGA ALPHA as referring to Greek letters, arbitrary in reference to Appellant’s
`
`goods, not as possible ingredients of products. While the Examining Attorney now
`
`states that the term OMEGA has primary significance in the mark, there is no
`
`justification for this conclusion. The “ALPHA” portion of the mark is just as prominent as
`
`the OMEGA portion of the mark. When one also considers the graphical design, the Α
`
`design is larger and in that sense more prominent than the Ω design.
`
`                                                            
`11 On page 8 of the Examining Attorney’s Brief, it is merely stated “[A]pplicant’s arguments
`regarding the terms Omega and Alpha retaining their Greek letter significance, and that the
`combination of the two letters as [sic.] a design is without merit.” Further, there is a statement
`on page 9 that applicant’s mark was completely reviewed and considered in its entirety and “as
`a result” the “stylization of the (2) Greek letters Omega and Alpha is not that distinctive, so as to
`overcome the primary significance of the term OMEGA in the proposed mark.”
`
`OAPH 200 TMUS – S/N 77486429 
`
`19 
`
`

`
`CONCLUSION
`
`For the above reasons, Appellant respectfully submits that that the Examining
`
`Attorney’s Final Refusal is clearly erroneous and requests that it be reversed, and
`
`Appellant's mark be allowed and passed to publication. The Examining Attorney has
`
`not responded to several of Appellants arguments nor refuted the evidentiary support
`
`therefor. Therefore, Appellant submits that the evidence in the record supports its
`
`position of registrability of the mark OMEGA ALPHA (and Design)
`
`
`
`Respectfully submitted,
`
`Eugenia S. Hansen
`
`ATTORNEY FOR APPELLANT,
`Texas Bar Member
`
`Hemingway & Hansen, LLP
`1700 Pacific Avenue
`
`Suite 4800
`
`Dallas, Texas 75201
`
`(214) 292-8302
`
`Fax: 214 739-5209
`
`OAPH 200 TM US — S/N 77486429
`
`20
`
`

`
`
`
`EXHIBIT AEXHIBIT A
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`EXHIBIT A
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