Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`
`
`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
`1700 PACIFIC AVENUE, SUITE 4800
`DALLAS, TX 75201
`UNITED STATES
`
`03/29/2012
`
`ghansen@hh-ip|aw.com
`
`Reply Brief
`
`Rep|yBriefFina|WithExhibit.pdf ( 24 pages )(2220495 bytes )
`
`Eugenia S. Hansen
`
`ghansen@hh-ip|aw.com
`/es hansenl
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA464524
`ESTTA Tracking number:
`03/29/2012
`
`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
`1700 PACIFIC AVENUE, SUITE 4800
`DALLAS, TX 75201
`UNITED STATES
`ghansen@hh-iplaw.com
`Reply Brief
`ReplyBriefFinalWithExhibit.pdf ( 24 pages )(2220495 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
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant: Omega Alpha Pharmaceuticals Inc.
`
`Trademark: OMEGA ALPHA
`
`Serial No.: 77486441
`
`
`
`Filing Date: May 29, 2008
`
`
`
`
`
`
`
`
`
`
`
`
`
`Examining Attorney: Darryl M. Spruill
`
`Address: Law Office 112
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`)
`
`) BEFORE THE
`
`) TRADEMARK TRIAL
`
`) AND
`
`) APPEAL BOARD
`
`) ON APPEAL
`
`REPLY BRIEF OF APPELLANT OMEGA ALPHA PHARMACEUTICALS, INC.
`
`OAPH 100 TMUS – S/N 77486441 
`
`1 
`
`

`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................................. 4
`
`REPLY TO EXAMINING ATTORNEY'S STATEMENT OF FACTS ................................. 4
`
`REPLY TO EXAMINING ATTORNEY'S ISSUE ON APPEAL…………………………......8
`
`REPLY TO EXAMINING ATTORNEY'S ARGUMENT………………………………………8
`
`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” 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 .............................................................................................................. 19
`
`OAPH 100 TMUS – S/N 77486441 
`
`2 
`
`

`
`TABLE OF AUTHORITIES
`
`Cases
`
`AMF, Inc. v. American Leisure Products, 177 USPQ 278 (CCPA 1973)………………..16
`
`Bayer Aktiengesellschaft v. Mouratidis, 2010 TTAB LEXIS 218
`
`(TTAB May 21, 2010)………………………………………………………...15, 15n.7, 16n.8
`
`In re Colonial Stores Inc. 394 F.2d 549, 157 USPQ 382 (CCPA 1968…………………..18
`
`In re Int'l Taste, Inc., 53 USPQ2d 1604, 1606 (TTAB 2000)………………………….…..17
`
`In re Nett Designs Inc., 57 USPQ 1564 (Fed. Cir. 2001)……………………………….…17
`
`In re Pop Pack, 2011 TTAB LEXIS 107…………………………………………………17-18
`
`In re Sunmarks, 32 USPQ2d 1470 (TTAB) 1994)…………………………………………17
`
`
`
`Statutes and Regulations
`
`15 U.S.C. §1052(a) ......................................................................................................... 4
`
`37 C.F.R. §2.142(2)d…………………………………………………………………….…7, 15
`
`
`
`OAPH 100 TMUS – S/N 77486441 
`
`3 
`
`

`
`
`
`INTRODUCTION
`
`Appellant has appealed the trademark Examining Attorney’s final refusal dated
`
`March 9, 2012. The final refusal of Appellant’s application to register the trademark
`
`OMEGA ALPHA in connection with dietary, nutritional, and herbal supplements, was
`
`made by the Examining Attorney on the grounds that the applied-for mark consists of or
`
`includes deceptive matter in relation to the identified goods under Trademark Act §2(a),
`
`15 U.S.C. §1052(a). Appellant filed a Notice of Appeal on November 18, 2011 and duly
`
`filed its opening brief on January 17, 2012. The Examining Attorney mailed his opening
`
`brief to Appellant on March 9, 2012. This Reply Brief responds to the Examining
`
`Attorney’s March 9, 2012 opening brief.
`
`REPLY TO EXAMINING ATTORNEY’S STATEMENT OF FACTS
`
`The Examining Attorney’s statement of facts concerning the period from May 29,
`
`2008 to January 6, 2011 omits, or incorrectly characterizes, a few facts which Appellant
`
`believes are important. After the application was filed on May 29, 2008, there was
`
`active prosecution in the case and written and oral communications with the initial
`
`Examining Attorney. The Office mailed two office actions and the applicant (now
`
`Appellant) successfully responded to all the issues raised therein.1 The first time a
`
`rejection of Appellant’s mark on the grounds of deceptive misdescription was made was
`
`                                                            
`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.”
`
`OAPH 100 TMUS – S/N 77486441 
`
`4 
`
`

`
`on July 7, 2010, more than two years after the trademark application was filed and after
`
`a change in Examining Attorneys. Moreover, not only had this rejection not been made
`
`previously in the instant case, but it had not been made in the prosecution of another
`
`trademark, now registered to and owned by the same applicant, namely the mark
`
`OMEGA ALPHA PHARMACEUTICALS (U.S. Registration Number 3111385, registered
`
`July 4, 2006).2 Appellant disputes the Examining Attorney’s statement that Appellant
`
`did not submit evidence (with its response dated January 6, 2011) to support its
`
`arguments. In fact, Appellant submitted evidence (Exhibit 1 to the 1/6/2011 response at
`
`pp. 5-9) consisting of a print-out from the Internet concerning “Alpha and Omega” and
`
`its meaning, which evidence supplemented dictionary definitions already placed in the
`
`record by the Examining Attorney concerning the meaning of “omega.” 3 Appellant’s
`
`evidence defined the symbols “Α” and “Ω” as the first and last letters of the Classical
`
`(Ionic) Greek Alphabet, and also supported the meaning advocated by Appellant:
`
`
`
`Despite Appellant’s evidentiary submission on January 6, 2011, the Examining
`
`Attorney contended that the applicant (now Appellant) did not present evidence
`
`demonstrating that consumers would perceive the meaning of the proposed mark,
`
`OMEGA ALPHA, as meaning “from the end to the beginning.” Appellant’s use of the
`
`                                                            
`2 Further, no such rejection had been made in the concurrent prosecution of the word mark
`OMEGA ALPHA (and Design) (SN 77486429), also now on appeal due to a delayed rejection
`on the grounds of deceptive misdescriptiveness.
`3 Page 60 of the Official Action dated July 7, 2010.
`
`OAPH 100 TMUS – S/N 77486441 
`
`5 
`
`

`
`Greek letters in the mark at issue employs the letters in the reverse order of the order
`
`discussed in the submitted evidence, but Appellant’s evidence is still probative.
`
`Appellant’s evidence contains the definitions of the Greek letters “Alpha” and “Omega,”
`
`and a reasonable inference can be made as to the meaning of “OMEGA ALPHA” from
`
`the definition of “ALPHA OMEGA” given in this evidence. Further, Appellant disagrees
`
`with the Examining Attorney’s present characterization of the Final Refusal. The
`
`Examining Attorney, only now in his brief, has added language indicating the Final
`
`Refusal was not solely based on the Examining Attorney’s premise that some of
`
`Appellant’s goods do not contain “omegas.” The Examining Attorney now states that
`
`the refusal was maintained because “the term OMEGA in applicant’s mark would be
`
`viewed by the relevant purchasing consumer as denoting OMEGA in relation to fatty
`
`acids (3, 6 or 9) which provide health benefits in relation to dietary, nutritional
`
`and/or herbal supplements.” (emphasis added to new characterization in Examining
`
`Attorney’s brief). In fact, the Final Refusal, verbatim, was stated as follows: “Examining
`
`Attorney disagrees with applicant and maintains that the proposed mark is deceptive
`
`because it contains the term OMEGA, and that all but three of the above listed goods do
`
`not feature omegas.” (Examining Attorney’s Final Refusal of May 22, 2011 at page 15).
`
`When the Examining Attorney did use “omega” in conjunction with “fatty acids”
`
`further on in the Final Refusal on pages 16-17, he still neglected to use the numerals
`
`which Appellant pointed out in its Opening Brief are critical to defining a nutritional
`
`substance per se. The Examining Attorney specifically stated:
`
`OAPH 100 TMUS – S/N 77486441 
`
`6 
`
`

`
`
`
` 
`
`As can be seen from the language used by the Examining Attorney in the Final
`
`Refusal, no inclusion of a numeral indicating a position of a double bond was used.
`
`Rather the Examining Attorney incorrectly and imprecisely stated that “Omega Fatty
`
`Acid” or “omegas” were only present in three of the applicant’s goods and consumers
`
`were likely to believe this misdescription. This variance between the language used in
`
`the Final Refusal and the language now used in the Examining Attorney’s brief is of
`
`moment because Appellant based its brief on the actual language used by the
`
`Examining Attorney to finally refuse the application for registration, not the language in
`
`the Examining Attorney’s brief that might be viewed to alter the grounds of the final
`
`refusal.4 It is required that the appeal be based on the actual grounds of the final
`
`refusal. (Cf. 37 C.F.R. §2.142(d)).
`
`                                                            
`4 If the Examining Attorney is attempting to bolster the basis for the Final Refusal in the brief,
`Appellant contends this is improper.
`
`OAPH 100 TMUS – S/N 77486441 
`
`7 
`
`

`
`REPLY TO EXAMINING ATTORNEY’S ISSUE ON APPEAL
`
`Appellant believes the Issue on Appeal, as phrased by the Examining Attorney is
`
`incorrect. Appellant submits that the Issue is more accurately presented as:
`
`Whether the proposed mark as a whole, OMEGA ALPHA, 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.
`
`
`
`REPLY TO EXAMINING ATTORNEY’S ARGUMENT
`
` 
`
`A. Neither “OMEGA ALPHA nor “OMEGA” Misdescribes the Character, Quality,
`Function, Composition, Or Use Of The Dietary, Nutritional, And/Or Herbal
`Supplement Goods.
`
` 
`
`First, Appellant points out that the Examining Attorney did not explicitly reject
`
`Appellant’s mark on the grounds that “OMEGA ALPHA” was misdescriptive. Rather, the
`
`Examining Attorney based the rejection on part of the mark, “OMEGA” being allegedly
`
`misdescriptive. The rejection was not based upon Appellant’s mark as a whole,
`
`OMEGA ALPHA. In response to Appellant’s opening brief, the Examining Attorney now
`
`characterizes the rejection as due to “OMEGA ALPHA” being misdescriptive. Since this
`
`OAPH 100 TMUS – S/N 77486441 
`
`8 
`
`

`
`ground was never stated nor argued, Appellant requests that the Examining Attorney’s
`
`contentions on this point be rejected.5
`
`Second, with respect to the actual rejection made by the Examining Attorney,
`
`that “OMEGA” misdescribes the goods, the Examining Attorney’s argument has not
`
`responded to Appellant’s opening brief, Section B (1), which is well-supported by the
`
`record. Appellant pointed out in its opening brief that there is no such substance as an
`
`“omega” or an “omega fatty acid.” The Examining Attorney did not respond to this.
`
`Indeed, the Examining Attorney’s own evidence of record supports Appellant’s
`
`contention that the term “omega” is a reference in chemistry and food science to the
`
`position of a double bond relative to the last carbon atom in a fatty acid and that use of
`
`a numeral to indicate the double bond position is mandatory.to name the fatty acid and
`
`to indicate and distinguish its properties. (See William E. Butler, “Omega-3 Fatty
`
`Acids…” (originally attached to the Official Action of 7/7/2010, previously cited in
`
`Appellant’s brief, and attached hereto as Exhibit A for convenience))
`
`There is no evidence in the record that “omegas” or “omega fatty acids” is an
`
`ingredient which any of the goods on Appellant’s list can possibly contain. Rather the
`
`evidence of record shows that “omega” is a term in chemistry describing the end
`
`chemical group, and is not exclusive to describing fatty acids. The Examining Attorney
`
`has cited in his brief, for support of his contentions, a dictionary definition from the
`
`record:
`
`                                                            
`5 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.
`
`OAPH 100 TMUS – S/N 77486441 
`
`9 
`
`

`
`
`
`The dictionary definition supports Appellant’s position, not the Examining
`
`Attorney’s position. The Examining Attorney is clearly erroneous in his contention that
`
`the term “omega” refers to a fatty acid, or is or could be an ingredient, because the
`
`evidence of record instead shows that ‘omega-[numeral] fatty acid” must be used for
`
`there to be any correct chemical or correct nutritional meaning. Therefore, Appellant
`
`urges this Board to reverse the Examining Attorney’s Final Refusal.
`
`B. Prospective Purchasers Are Not Likely To Believe That “OMEGA ALPHA”
`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.
`
` 
`
`In reply to the Examining Attorney’s alleged “evidence from the Internet outlining
`
`the health benefits and importance of Omega Fatty Acids …and the material purchasing
`
`decision consumers make,” Appellant contends that such evidence is not effective or
`
`persuasive evidence of the premise advanced by the Examining Attorney.
`
`Every article cited by the Examining Attorney utilizes the terminology “omega-3
`
`fatty acids”; “omega-3 FAs” or “omega-3” as a descriptor for “oils” or “fatty acids.” The
`
`same thing is true for the references to “omega-6” and “omega-9.” As pointed out by
`
`Appellant in its opening brief, the term “omega” MUST be used with a numeral (as is
`
`done in the Examining Attorney’s evidence, but not by the Examining Attorney) because
`
`OAPH 100 TMUS – S/N 77486441 
`
`10 
`
`

`
`the numeral is critical to denoting the position of the double bond in the molecule in
`
`relation to the final carbon atom. (See Appellant’s Opening Brief at 13). The evidence
`
`in the record indicates that the numeral defines and differentiates the properties of the
`
`substances. Yet in the face of this evidence, the Examining Attorney persists in
`
`referring to “OMEGA fatty acids.” Consumers looking for a nutritional supplement
`
`containing a particular type of fatty acid would look for an “omega-3 fatty acid” or an
`
`“omega-6 fatty acid” as recommended by their doctor, nutritionist, or by scientific or
`
`popular literature such as is in the record. Since the evidence of record indicates that
`
`one fatty acid may provide different benefits from another because of the position of the
`
`double bond in the molecule, and that some fatty acids provide no benefit or are
`
`detrimental, consumers would need to select the appropriate fatty acid supplement to
`
`serve their needs. All of this evidence in the record makes clear that that numeral is
`
`consistently used by the public to denote the fatty acid ingredient of a nutritional
`
`supplement. Appellant’s mark does not utilize any numerals because it does not refer
`
`to fatty acids but instead to the Greek letters OMEGA and ALPHA.
`
`In addition, the Examining Attorney erroneously summarizes the evidence by
`
`stating “All of the evidence demonstrates that OMEGA fatty acids provide vital health
`
`benefits to both humans and pets.” (emphasis added) The Examining Attorney ignores
`
`the evidence in the record to the contrary, as discussed on pages 13-15 of Appellant’s
`
`brief and fails to respond to Appellant’s brief on this point. That evidence indicates that
`
`omega-9 fatty acids are not “essential,” are made by the animal’s body, and have been
`
`implicated in possible negative health effects. Further, the evidence of record indicates
`
`that intake of omega-6 fatty acids (though essential) should not greatly exceed intake of
`
`OAPH 100 TMUS – S/N 77486441 
`
`11 
`
`

`
`omega-3 fatty acids. Therefore, the Examining Attorney’s summary is clearly
`
`erroneous.
`
`As far as the evidence from dictionaries relied upon by the Examining Attorney’s
`
`brief, The Free Dictionary (page 60 of OA of 7/7/10) supports Appellant’s position in that
`
`the only definition of “omega” as a noun is as the last letter of the Greek alphabet.”
`
`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.
`
` 
`
` 
`
` 
`
`Since it is the Examining Attorney’s contention that “OMEGA” is misdescriptive of
`
`an ingredient or the absence thereof in Appellant’s goods, then the Examining
`
`Attorney’s premise requires that the term be a noun for only then could it possibly be an
`
`OAPH 100 TMUS – S/N 77486441 
`
`12 
`
`

`
`ingredient of anything. In fact as a noun per the dictionary definitions of record,
`
`“omega” can only be a Greek letter. The evidence of record does not support the
`
`Examining Attorney’s rejection and in fact supports Appellant’s. Therefore, the Final
`
`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
`
`now contends that the Office accepted the premises that OMEGA is the 24th letter and
`
`ALPHA is the 1st letter of the Greek alphabet, and that the terms may be defined as the
`
`End and the Beginning respectively. However, the Examining Attorney maintains that
`
`no evidence was submitted that consumers would perceive the meaning “from the end
`
`to the beginning.” Contrary to the Examining Attorney’s contentions, Appellant
`
`submitted the following evidence as Exhibit 1 to the Response dated January 6, 2011:
`
` 
`
` 
`
` 
`
`OAPH 100 TMUS – S/N 77486441 
`
`13 
`
`

`
` 
`
`The evidence submitted by Appellant is the same type of evidence submitted by
`
`the Examining Attorney to the record – information print-outs from the Internet. In
`
`addition, the dictionary definitions submitted by the Examining Attorney to the record are
`
`clearly persuasive on the meaning of Omega (last letter of the Greek alphabet). Though
`
`the Examining Attorney has virtually ignored the “ALPHA” part of Applicant’s mark,
`
`Applicant’s evidence concerning Alpha and Omega defined the words as the first and
`
`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
`
`end.” Therefore, the evidence supports that when faced with OMEGA ALPHA, a
`
`consumer would likely perceive LAST to the FIRST or “from the end to the beginning.”
`
`Certainly, if a consumer views the juxtaposition of two Greek letters and attempts to
`
`determine the meaning of such letters, the primary definitions of the terms “OMEGA”
`
`and “ALPHA” in dictionaries are as Greek letters. The weight of the evidence is that a
`
`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
`
`evidence of record supports that the famous biblical passages referencing Alpha
`
`Omega as “from the beginning to the end” would be used to discern the meaning of
`
`OMEGA ALPHA as “from the end to the beginning.”6
`
`                                                            
`6 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 is without merit.” No discussion of the
`mark as a whole, OMEGA ALPHA, is provided by the Examining Attorney.  
`
`OAPH 100 TMUS – S/N 77486441 
`
`14 
`
`

`
`The Examining Attorney has further presented and requested judicial notice be
`
`taken of definitions concerning some other Greek letters never before discussed in this
`
`trademark prosecution, namely BETA, BETA-TEST and IOTA.
`
`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.
`
`Should the evidence be accepted for consideration by the Board, Appellant
`
`submits that it is wholly irrelevant. The significance or lack thereof of terms not used in
`
`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
`
`“different contexts” they connote something other than Greek letters is not persuasive to
`
`deciding the issue before this Board. This argument can easily be turned in Appellant’s
`
`favor - OMEGA ALPHA as used by Appellant in a “different context” connotes the
`
`source and origin of the goods and not whether the goods may contain the 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
`
`                                                            
`7 Bayer Aktiengesellschaft v. Mouratidis, 2010 TTAB LEXIS 218 (TTAB May 21, 2010).
`
`OAPH 100 TMUS – S/N 77486441 
`
`15 
`
`

`
`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
`
`Appellant submitted a great deal of evidence into the record illustrating
`
`Appellant’s mark in use. Appellant’s mark is clearly being used as a trademark.
`
`The manner of use by Appellant further supports that the mark would be
`
`perceived by the consumer as Greek letters used as a brand for the products. (See
`
`also page 17-18 of Appellant’s Opening Brief). In addition, Appellant has a U.S.
`
`registration for OMEGA ALPHA PHARMACEUTICALS, U.S. Registration 3,111,385,
`
`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.
`
`                                                            
`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 identifies
`a plausible substance.
`
`OAPH 100 TMUS – S/N 77486441 
`
`16 
`
`

`
`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
`
`Attorney. See id. In the present case, any doubt about OMEGA ALPHA 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
`
`OAPH 100 TMUS – S/N 77486441 
`
`17 
`
`

`
`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, 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. 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).
`
`OAPH 100 TMUS – S/N 77486441 
`
`18 
`
`

`
`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 Appe|lant’s 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.
`
`Respectfully submitted,
`
`A . I
`
`ugenia 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 100 TM US -- S/N 77486441
`
`19
`
`

`
`EXHIBIT A
`
`EXHIBIT A
`
`             
`
`

`
`httpimm-vxii.iouchcardio|og3r.comfariiclesfomeqa-3-faily-acids-science-efiicacy-ancl-clinical-use-cardiology
`ElF"fDBf2D1D D1215:-'-12 F'lv1
`
`
`
`SIEMENS I
`
`What if you ::i::11ld acqllire a
`full—vol11n1e echo in
`
`.
`
`a single heartl}ea1'1.?
`
`:.~,|t 0 u C $1
`‘WCARDIOLOGY
`independent i'n_sighr For medical .-:ps:.-r:1aJi.=:t.s
`
`E Cleveland Clinic ‘.-1'? J‘
`
`Home
`
`Journals
`
`Case Reports
`
`ProI:lucts8cServices
`
`Events Media Partners
`
`
`
`ardiovascular Risk I::=- lJn1ega—3 Fatty Acids—.'_-"science, Efficacy, and... ::=-
`
`
`
`SEARCH SITE
`Z
`
`login I register
`
`:13
`
`y
`
`E mp?“ Cardhmg
`u
`I
`W“-"'“ E‘ !“3"" 2
`-
`
`
`
`Dmega—3 Fatty Acids—Scien-Ce, Efficacy, and Clinical Use in Cardiology
`Butler William E
`£5 Cardb Lra.n:w'ar E‘-lt'rea5'e 2&5‘?
`u Is e : uy
`P H h d Jl 200?
`__
`2: Cleownloadarticle
`
`_
`
`l C A
`'3
`-"--.-
`Eu
`................................................................................................................................................................................ ..
`
`7 Specialities‘
`"'""'""'"""""'""'""'""'""'""'""'""""""""""'
`Aortic Disorders
`arrhythmia
`Atherosclerosis
`
`5"Cardiac Imaging
`5"Cardiac Surgery
`Cardiovascular Risk
`5"Cholesterol Management
`5"Prevention ofcardiovascular Risk
`5..Comnar,,f, Anew Disease
`5"Diabetes
`
`‘" Heart Failure
`wealth
`ype EDSIDH
`, H
`rt
`_
`Interuentional Cardiology
`MI
`Pulmonary Arterial Hypertension
`
`Studies have shown that omega—3 fatty acids (Fns) can promote cardiovascular health by both primary
`and secondary prevention oF cardiac disease, and most notably by reducing Fatal cardiovascular events
`including sudden cardiac death (SCD). For example, recent evidence from secondary prevention trials has
`suggested that intake oF Ei5Umg,I'day oF omega-3 FAs can reduce the risk of coronary heart disease (CHD)
`events by 25% and SCD by about 45°.-’o.1 Furthermore, of the three known omega-3 FAs there is evidence
`that eicosapentanoic acid (EPA) is particularly biologically important. Given the strength of the evidence,
`
`REGISTER TODAY!
`
`
`_.
`
`7 Events:
`............
`....................................................
`
`blood levels of omega—3 Fns may have value as biomarkers to evaluate risk For cardiovascular events,
`leading to opportunities For earlier intervention in high-risk cases.
`
`""
`" "-
`__,/
`HIHFI 3-?
`
`
`
`What Are lJmega—3 Fatty Acids?
`Omega-3 FAs, like omega-6 FAS, are a type of polyunsaturated FA (PUFA) that the body is unable to
`synthesize and that must, therefore, be obtained through the diet. The omega-3 FAS are distinguished
`From other classes of FAs by the structure of their carbon chains. FAs are chains oF carbon atoms that are
`
`E D R
`II
`
`

`
`httpiililiiu-1-\-xi-i.louchcardiolog3-'.comfar1icleefomeqa-3-fally-acids-5cience-eflicacy-ancl-clinical-use-cardiology
`EI?i'DEf2D1D 01:15:42 PM
`
`1U 11
`5!
`ti
`I
`b
`'3
`15 1?
`15
`14
`12 13
`13
`19 2D 21 22 23 24 25
`26 27'' 28 29 30 31
`
`International Society of
`H|=-Irl Rlfi!-Ifidrl-II (15HR}
`16 July 2010
`
`International Academy of
`°"‘“°'°9“"”"’
`24 July 2,310
`
`European Society of
`Cardiology (ESE)
`5 august 2010
`
`
`
`Follow us on
`
`I
`
`I
`
`I
`
`Paper
`abstract
`Submission
`[0 FBI presentations]
`
`Se I
`P '
`
`5 In
`5'
`
`
`
`||f!E5H_[|['u
`
`from other classes or FAs by th