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
`
`77486441
`
`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
`
`Fina|BriefWithSignature.pdf ( 22 pages )(143924 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
`ESTTA451621
`ESTTA Tracking number:
`01/17/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`77486441
`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
`FinalBriefWithSignature.pdf ( 22 pages )(143924 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
`
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant: Omega Alpha Pharmaceuticals Inc.
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`Trademark: OMEGA ALPHA
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`Serial No.: 77486441
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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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`APPELLANT’S APPEAL BRIEF
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`1 
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` 
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`

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`TABLE OF CONTENTS
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`
`INTRODUCTION ............................................................................................................. 4
` 
`FACTS ............................................................................................................................ 4
` 
`ARGUMENT .................................................................................................................... 6
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`A. Legal Standard ...................................................................................................... 6
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` 
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` 
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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. Prior Registrations by Appellant and Third Parties of Marks Containing “Alpha”
`and “Omega” are Persuasive of Lack of Descriptiveness or Misdescriptiveness .... 19
`a. Appellant’s Prior Registrations……………………………………………………..19
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`1) OMEGA ALPHA PHARMACEUTICALS (U.S. Registration 3,111,385)…….19
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`2) Canadian Registration of OMEGA ALPHA (and design)……………………..19
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`b. Third Party Registrations…………………………………………………………20
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`CONCLUSION .............................................................................................................. 20 
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`2 
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`

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`Cases
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`TABLE OF AUTHORITIES
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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 (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). .......................................................... 21
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`In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ 2d 1259 (Fed. Cir. 1988). .... 10, 11, 15, 16
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`In re Colonial Stores Inc., 394 F. 2d 549, 157 USPQ 382 (CCPA 1968) ................. 17, 18
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`In re Phillips-Van Heusen Corp., 63 USPQ 2d 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
`
`In re Shutts, 217 USPQ 363 (TTAB 1983) .................................................................... 17
`
`In re Standard Elektrik Lorenz Aktiengesellschaft, 371 F.2d 870, 152 USPQ 563 (CCPA
`1967) ............................................................................................................................ 6
`
`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)....20
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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) ................................................................................................... 17
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`3 
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` 
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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 under 15 U.S.C. §1052(a) is based on the grounds that the mark
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`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, in connection with goods classified in International Class 005 (IC
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`005) on May 29, 2008. After review by the United States Patent and Trademark Office
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`(“USPTO”) Examining Attorney, the only grounds for rejection were directed to the
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`manner of identification of the goods, the claim of ownership to U.S. Registration
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`3,111,385, OMEGA ALPHA PHARMACEUTICALS, and to clarification of the filing
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`basis. See Official Action of 10/15/2008. From April 15, 2009 through July 7, 2010,
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`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 86 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. 5-9; Exhibit 2
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`1 Each page referenced herein will use the page number of the 86 pages. 
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` 
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`4 
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`

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`(Registrations utilizing “alpha” and “omega”) pp. 10-19; Exhibit 3 (Copy of Appellant’s
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`prior registration of OMEGA ALPHA PHARMACEUTICALS) pp. 20-21 and Exhibit 4
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`Third party registration of “Everything from Alpha to Omega” in connection with dietary
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`supplements and evidence of use of the mark OMEGA ALPHA by the Appellant on
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`goods) pp. 22-222. Appellant argued against the deceptiveness rejection and offered
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`arguments contra to the Examining Attorney’s position. See Response to Official Action
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`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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` 
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`5 
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`

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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
`
`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
`
`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 was finally refused on the grounds that “the
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`applied-for mark consisted of or included deceptive matter in relation to the identified
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`goods.” Appellant respectfully submits that the Examining Attorney erred in refusing
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`registration on these grounds. Because the final refusal dated May 22, 2011 (“Official
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`Action of 5/22/2011”) augments and adopts the previous Official Action dated July 7,
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`2010 (“Official Action of 7/7/2010”), both will be discussed herein.
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` 
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`6 
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`

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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 is considered. See
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`Response to Official Action of 7/7/2010 (filed 1/6/2011) at 2 (wherein Appellant argued
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`that Appellant’s mark does not contain the terms “omega-3,” “omega-6,” or “fatty acids”
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`and thus will be perceived as Greek letters and not as a message to consumers about
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`omega-3 fatty acids; and that the 24th letter of the Greek alphabet, “omega” and the 1st
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`letter of the Greek alphabet, “alpha” when placed together to create the new designation
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`“OMEGA ALPHA” does not describe (or “misdescribe” as contended by the Examining
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`Attorney) any ingredients whatsoever that may be present in the goods). See id. at 2.
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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 because there is no chemical or
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`biological ingredient in existence which is called an “omega” or “omegas” and thus the
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`Examining Attorney’s evidence does not even pertain to Appellant’s mark. Appellant
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`argued this previously. See Response to Official Action of 7/7/2010 (filed 1/6/2011) at 2
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`(Failing to consider the mark in its entirety, the Examining Attorney contends that the
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`term “OMEGA” in Appellant’s OMEGA ALPHA (and design) mark will be viewed as
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`having a nutritional meaning). Even though Appellant previously pointed out that the
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`7 
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`evidence provided by the Examining Attorney referred only to “omega-3” fatty acids,
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`“omega-6” fatty acids or “omega-9 fatty acids” and that “OMEGA” alone had no
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`nutritional meaning, the rejection 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 chemical sciences
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`with the citations to dictionaries and articles concerning fatty acid chemistry and
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`chemical nomenclature, Appellant contends that the Examining Attorney has misused
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`the chemical terminology so as to render it meaningless in the context of considering
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`the registrability of Appellant’s trademark. In chemistry, the term “omega” is used to
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`pronounce the Greek letter “ώ” used in chemical nomenclature to indicate a location of
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`a carbon atom with respect to the molecule as a whole. For example in fatty acids,
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`which are straight–chain hydrocarbons (molecules having carbon and hydrogen) having
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`an acid carboxyl (COOH) group at one end, the Greek letters of the alphabet are used
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`to designate which carbon of the molecule is being discussed. The carbon next to the
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`carboxyl group is known as α, the next carbon β, and so forth. Since fatty acids can be
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`of different lengths, the last carbon position on the fatty acid is labeled as a "ω" [aka
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`“omega”], the last letter in the Greek alphabet. See, e.g., Official Action of 7/7/2010 at
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`49 (the Examining Attorney’s evidence consisting of the article, William E. Butler,
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`“Omega-3 Fatty Acids -.Science, Efficacy, and Clinical Use in Cardiology”). With
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`respect to fatty acids, some are “unsaturated” fatty acids and some are “saturated” fatty
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` 
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`8 
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`

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`acids. See id. at 48 (Butler article cited by Examining Attorney stating that omega-3 and
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`omega-6 fatty acids are polyunsaturated fatty acids (PUFA) and differ from other fatty
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`acids by the structure of their carbon chains). As stated in Butler, PUFA have double
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`bonds between carbons. See id. at 49. To indicate the position of the double bonds in
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`relation to the omega or last carbon of the fatty acid a numeral must be placed after the
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`“omega” designation. Thus, “omega-3” fatty acids are those that have a double bond
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`between the third carbon and fourth carbon, counting from the omega position. See id.
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`The term “omega-6 fatty acids” signifies a fatty acid with a double bond between the
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`sixth and seventh carbon, counting from the omega position. Thus, the Examining
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`Attorney’s conclusion that few of Appellant’s goods contain “omegas” is incorrect. In
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`fact, none of Appellant’s goods contain “omegas” nor do any other compositions in the
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`world contain “omegas.” “Omega” (ώ) is a Greek letter simply signifying a position of a
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`carbon, and is not a 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 to 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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`Official Action of 7/7/2010 at 60(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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`9 
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`necessary to provide an indication of the properties of the fatty acid. See id. at 49
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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
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`[sic.](TTAB 2006).2 Alp is also inapplicable to the present situation. In Alp, the
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`Appellant sought to register CAFETERIA for restaurant services that did not include
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`cafeteria-style service. In applying the three-pronged test for determining whether a
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`mark is deceptive under Section 2(a), this Board considered:
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`(1) Is the term misdescriptive of the character, quality, function, composition or
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`use of the goods (or services)?
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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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` 
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`10 
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`

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`(2) If so, are prospective purchasers likely to believe that the misdescription
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`actually 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 (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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`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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` 
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`11 
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`

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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
`
`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, the evidence of record supports that when an
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`observer views “OMEGA” in conjunction with “ALPHA”, one would perceive Greek
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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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`

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`letters, as those two letters used together connote “from the end to the beginning.” See
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`Response to Official Action of 7/7/2010 (filed 1/6/2011) at Exhibit 1.
`
`
`
`2. The Examiner’s Own Record Evidence Refutes the Assertion that
`Consumers Would Perceive “Omegas” as Health-Promoting
`Substances
`
`The Examining Attorney’s own evidence, the Butler article, differentiates between
`
`the properties of “omega-3 fatty acids” and “omega-6 fatty acids,” stating that intake of a
`
`disproportionate ratio of “omega-6 fatty acids” to “omega-3 fatty acids” could be
`
`implicated in inflammatory disease. See Official Action of 7/7/2010 at 49 (the
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`Examining Attorney’s evidence consisting of the article, William E. Butler, “Omega-3
`
`Fatty Acids - Science, Efficacy, and Clinical Use in Cardiology”. The Examining
`
`Attorney’s evidence also refers to “omega-9 fatty acids.” See id. at 81. These are
`
`commonly found in animal fats such as bacon fat and lard. Although also bearing the
`
`“omega” descriptor (to describe the position of the double bond relative to the last
`
`carbon atom in the fatty acid), “omega-9” fatty acids are not “essential” fatty acids and
`
`are made by the animal’s body. They have been implicated in “possible negative
`
`health effects.” See Official Action of 7/7/2010 at 81 (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
`
`goods encompass omega fatty acids based on the “essential health” and/or
`
`“nutritional value” (Official Action of 5/22/2011 at 17 (emphasis added)) that omegas
`
`provide for both humans and pets” is simply a non-sequitur. Since there is no such
`
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`13 
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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]
`
`fatty acids) are considered, the Examining Attorney’s own evidence of record
`
`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.
`
`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
`
`harmful and that intake of omega-6 fatty acids, though essential, should not greatly
`
`exceed the intake of omega-3 fatty acids is also a part of this record and cannot be
`
`ignored.
`
`Thus, even if one ignores the fact that there is no such ingredient as an “omega,”
`
`the second prong (whether prospective purchasers are likely to believe that the
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`misdescription actually describes the goods or services ) of the test cannot be satisfied.
`
`See Alp, supra p. 11. There is no evidence that prospective purchasers would believe
`
`that “omega” would be contained in products bearing the mark OMEGA ALPHA Given
`
`the contradictory evidence, that not all “omega – [numeral] fatty acids” should be taken
`
`in, such a conclusion could never be reached.
`
`                                                            
`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
`
`this would affect the purchasing decision. The three-pronged test cannot be met at any
`
`level.
`
`3. The Weight of the Evidence Indicates That OMEGA ALPHA draws
`meaning from the Greek Alphabet and Literature Connotations
`Employing Both of The Letters
`
`Appellant’s evidence in Exhibit 1 to its Response to Official Action of 7/7/2010
`
`fully rebutted the case of the Examining Attorney. Appellant’s evidence is that (1)
`
`“Omega Alpha” is a combination of the last and first letters of the Greek alphabet and
`
`(2) that this term would mean “from the ending to the beginning.” Exhibit 1 details the
`
`biblical and historical meaning of “alpha” and “omega” when used together.
`
`In fact, the Examining Attorney also submitted evidence into the record which
`
`agrees with Appellant’s premise that the primary meaning of “omega,” when used as a
`
`noun, is as the last letter of the Greek alphabet. See Official Action of 7/7/2010 at 60.
`
`Thus, there is substantial evidence in the record supporting Appellant’s position
`
`that consumers would perceive Appellant’s mark OMEGA ALPHA as referring to the
`
`Greek letters “omega” and “alpha.”
`
`4. The Examining Attorney Failed to Consider Appellant’s Mark As a
`Whole
`
`Appellant’s mark is OMEGA ALPHA, not “omega.” Appellant contends that the
`
`Examining Attorney has impermissibly dissected the mark to conclude that it is
`
`misdescriptive. In determining whether a mark is deceptive, the mark must be
`
`considered in its entirety. See A.F. Gallun v.Aristocrat Products, 135 USPQ 459, 460
`
` 
`
`15 
`
`

`
`(TTAB 1962) (COPY CALF, not CALF, was the mark sought to be registered and the
`
`commercial impression of a mark is necessarily derived from it as a whole; therefore the
`
`unitary phrase must be considered). Though a different approach was taken in Budge,
`
`supra (where the Court considered the LAMB portion of LOVEE LAMB), whichever
`
`approach is used does not result in satisfaction of prong (1) of the test when one
`
`considers Appellant’s mark OMEGA ALPHA Unlike in Budge and Gallun, there is no
`
`single word in Appellant’s mark that standing alone is a material or ingredient from
`
`which something can be fabricated or made.
`
`Appellant has located no cases precisely on point to the instant case (in which
`
`the Examining Attorney premised a misdescriptiveness rejection on a portion of a mark
`
`(“OMEGA”) that the Examining Attorney’s own record evidence makes clear is not in
`
`fact a material from which anything can be made). However, of the cases available for
`
`citation, Appellant’s mark is more similar to the mark considered in In re Woolrich
`
`Woolen Mills, Inc.,13 USPQ 2d 1235 (TTAB 1989) than to the marks in the cases relied
`
`on by the Examining Attorney. In Woolrich, the Board reversed the refusal to register
`
`WOOLRICH in connection with clothing which might not be made of wool. The
`
`Examining Attorney had taken the position that a consumer would believe that the
`
`clothing was rich in wool, and that therefore, the mark was misdescriptive. The Board
`
`considered WOOLRICH as a whole, not just the “wool” portion, and noted that
`
`WOOLRICH “a number of well-known people have had surnames beginning with "wool"
`
`or ending with "rich", e.g., Frank Woolworth, Alexander Woollcott, and Samuel Goodrich
`
`and that it was permissible for the Board to consider these factors in determining
`
` 
`
`16 
`
`

`
`consumer perception. The WOOLRICH Appellant also had some other marks which
`
`had long been in use in connection with wool and non-wool clothing.
`
`In addition, Appellant’s prior registration for OMEGA ALPHA
`
`PHARMACEUTICALS (U.S. Reg. 3,111,385), and evidence of use of that mark and the
`
`mark OMEGA ALPHA (and design) is used in connection with a wide variety of
`
`supplement products (Response to the Office Action of 7/7/2010 at Exhibit 4) are similar
`
`factors to those found persuasive to the Board in Woolrich. When one reviews the
`
`manner of use by Appellant of the mark at issue, it is even clearer that the mark is
`
`generally utilized as a house mark in conjunction with another mark or a product name.
`
`Appellant also uses a form of the mark which includes a graphical fanciful depiction of
`
`the capital Greek letters Ω (omega) and Α (alpha). (Appellant has separately applied to
`
`register the stylized mark in another application (SN 7746441) which is also currently on
`
`appeal). This manner of use also supports the meaning of the words as being the
`
`Greek letters Ω (omega) and Α (alpha). See Exhibit 4 of Response to Official Action of
`
`7/7/2010. It should be noted that Appellant’s mark utilizes a depiction of the capital form
`
`of the Greek letter “Ω” (omega), not the lower case form “ώ” (omega) which is used in
`
`the chemical/nutritional literature to denote the position of a carbon in a fatty acid,
`
`further distinguishing Appellant’s mark from being indicative of a possible ingredient in
`
`the goods. The use by Appellant, which is a part of the record evidence before this
`
`Board, shows that Appellant details the nature of the goods and the proposed
`
`application to human, pet, or equine health. Thus, the manner of use further supports
`
`that the mark would not be perceived by the consumer as deceptively misdescriptive.
`
` 
`
`17 
`
`

`
`The TMEP recognizes that composite marks may be registrable, even if the
`
`composite contains two merely descriptive terms. A composite mark composed entirely
`
`of the names of possible ingredients in the goods can serve as a trademark. See
`
`T.M.E.P. § 1209.03(d) (citing In re Colonial Stores Inc., 394 F. 2d 549, 157 USPQ 382
`
`(CCPA 1968) (SUGAR & SPICE held not merely descriptive of bakery products); In re
`
`Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE held not merely descriptive of a snow
`
`removal hand tool).
`
`Particularly in Colonial Stores, the Court of Customs & Patent Appeals
`
`recognized that an unusual association or arrangement in a mark which requires
`
`analysis and rearrangement of the components to suggest the contents of the mark may
`
`function as a trademark. Like the situation in Colonial Stores, where the record
`
`reflected association of SUGAR & SPICE with a nursery rhyme, in the present case
`
`there is evidence of record that OMEGA ALPHA is evocative of the converse of a well-
`
`known biblical scripture.5
`
`Here, in a situation where neither of the words of the composite mark can
`
`describe or misdescribe any possible ingredients in the mark, the Examining Attorney
`
`has considered only the “OMEGA” portion of this mark, and not the “ALPHA,” See
`
`Response to Official Action of 7/7/2010 (dated 1/6/2011) at 3 (Appellant’s prior
`
`argument).
`
`                                                            
`Exhibit 1 to Appellant’s Response to Official Action of 7/7/2010 (dated 1/6/2011) at 6 evidences
`the scripture “ I am the Alpha and the Omega – the first and the last” from the Book of
`Revelation of the Bible. 
`
` 
`
`18 
`
`

`
`5. Prior Registrations by Appellant and Third Parties of Marks
`Containing “Alpha” and “Omega” are Persuasive of Lack of
`Descriptiveness or Misdescriptiveness
`
`Appellant submitted evidence that Appellant, and others, have successfully
`
`registered marks containing “omega” and “alpha” and this provides substantial and
`
`sufficient support for registration of OMEGA ALPHA in connection with the goods in IC
`
`005 listed by Appellant.

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