From: Johnson, Don
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`Sent: 1/28/2015 2:15:19 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 85943027 - OMEGA SOUL - D 155/13 - EXAMINER BRIEF
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`*************************************************
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`Attachment Information:
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`Count: 1
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`Files: 85943027.doc
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
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`U.S. APPLICATION SERIAL NO. 85943027
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`MARK: OMEGA SOUL
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`*85943027*
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`CORRESPONDENT ADDRESS:
` MARIJAN STEPHAN HUCKE
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`GENERAL TRADEMARK INFORMATION:
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`http://www.uspto.gov/trademarks/index.jsp
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`TTAB INFORMATION:
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`http://www.uspto.gov/trademarks/process/appeal/index.js
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` HUCKE & HUCKE
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` AN DER FUCHSKAUL 14
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` PULHEIM, 50259 GERMANY
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`APPLICANT: Nikos Alexakis AG
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`CORRESPONDENT’S REFERENCE/DOCKET NO:
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` D 155/13
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`CORRESPONDENT E-MAIL ADDRESS:
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` office@u-tm.com
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`Nikos Alexakis AG (hereinafter referred to as “Applicant”) has appealed the Office’s partial refusal to
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`register the mark “OMEGA SOUL” (in standard characters) for use in Class 5 with “nutritional
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`supplements.” Trademark Act Section 2(a), 15 U.S.C. §1052(a).
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`I.
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`FACTS
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`On May 27, 2013, Applicant applied for registration on the Principal Register of the wording
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`“OMEGA SOUL” (in standard characters) for use in Class 5 with “nutritional supplements.”
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`On July 17, 2013, the Office initially partially refused registration of the mark pursuant to Trademark
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`Act Section 2(a) because the mark consists of or includes deceptive matter in relation to nutritional
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`supplements in Class 5, notified Applicant about prior pending application U.S. Serial No. 85421303,
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`required the disclaimer of the word “OMEGA” with respect to the identified goods in Class 5, required
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`an amendment to the identification of goods in Class 5 to avoid the Trademark Act Section 2(a)
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`deceptiveness refusal, which amendment required Applicant to indicate that its nutritional supplements
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`contain in significant part omega fatty acids, and required Applicant to submit a written statement
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`verifying that its nutritional supplements contain in significant part omega fatty acids.
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`On January 17, 2014, in its Response to Office action, Applicant noted that prior pending application
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`U.S. Serial No. 85421303 had been abandoned, argued against the deceptiveness refusal as to its
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`nutritional supplements, admitted its nutritional supplements do not contain omega fatty acids in
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`significant part, did not amend its Class 5 identification of goods to include a representation that its
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`nutritional supplements contain omega fatty acids in significant part, and disclaimed the exclusive right
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`to use “OMEGA” apart from the mark as shown.
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`On February 5, 2014, the Office acknowledged that prior pending application U.S. Serial No.
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`85421303 had been abandoned, and maintained and made final the deceptiveness refusal as to
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`Applicant’s nutritional supplements pursuant to Trademark Act Section 2(a).
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`On August 5, 2014, in its Request for Reconsideration after Final Action, which was filed with its
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`appeal to the Board, Applicant argued against the deceptiveness refusal as to its nutritional
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`supplements.1
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`On September 12, 2014, the examining attorney denied Applicant’s Request for Reconsideration.
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`Applicant’s appeal resumed on September 29, 2014.
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`II.
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`ISSUE
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`WHETHER THE APPLIED-FOR-MARK IS DECEPTIVE AS APPLIED TO THE CLASS 5 GOODS IN THE
`APPLICATION
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`III.
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`ARGUMENT
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`As the Court of Appeals for the Federal Circuit explained in In re Budge Mfg. Co., 857 F.2d
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`773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988), the test for whether a mark consists of or
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`comprises deceptive matter is:
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` (1) Whether the applied-for mark consists of or contains a term that misdescribes the
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`character, quality, function, composition, or use of the goods;
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`1 The examining attorney notes that refusal on appeal pertains to class 5 only and were the applicant to be
`unsuccessful in its appeal, class 5 would be deleted from the application and class 28 would be approved for
`publication, which is contrary to the advisory in the Final action. 37 C.F.R. §2.65(a)(1),
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` (2) If so, are prospective purchasers likely to believe that the misdescription actually
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`describes the goods;
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` (3) If so, is the misdescription likely to affect a significant portion of the relevant consumers’
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`decision to purchase the goods.
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`See also In re E5 LLC, 103 USPQ2d 1578 (TTAB 2012) (holding a mark consisting of the alpha symbol and
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`letters “CU” deceptive for dietary supplements not containing copper, a common ingredient in dietary
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`supplements, which evidence showed is referred to as CU).
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`A. THE APPLIED-FOR-MARK CONSISTS OF OR CONTAINS A TERM THAT MISDESCRIBES THE
`COMPOSITION OF THE GOODS
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`The goods at issue here are nutritional supplements. Applicant’s applied-for mark – OMEGA
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`SOUL – includes the term “OMEGA,” which indicates the goods contain omega fatty acids, a group of
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`fats that are thought by a substantial number of consumers to have health benefits. See Office action
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`dated July 17, 2013, at 4-17, 44-55. Regarding the health benefits of these substances, the National
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`Institutes of Health recognized that “Omega-3 fatty acids are a group of polyunsaturated fatty acids that
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`are important for a number of functions in the body.” Id. at 48. The National Institutes of Health
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`identified some of the functions for which Omega-3 fatty acids are important as “muscle activity, blood
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`clotting, digestion, fertility, and cell division and growth.” Id. The National Institutes of Health further
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`explained that one type of omega-3 fatty acid “is important for brain development and function” and
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`that another is “an ‘essential’ fatty acid, meaning that people must obtain it from food or supplements
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`because the human body cannot manufacture it.” Id.
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`The evidence of record from www.webmd.com and www.en.wikipedia.org confirms the
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`accuracy of these statements. WebMD stated:
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`Nutritionists call omega-3 and omega-6 fatty acids ‘essential’ fats for good
`reason. The human body needs them for many functions, from building healthy
`cells to maintaining brain and nerve function. Our bodies cannot produce them.
`The only source is food. These polyunsaturated fats are important for another
`reason. There is growing evidence that they help lower the risk of heart disease.
`Some studies suggest these fats also protect against type 2 diabetes, Alzheimer’s
`disease, and age-related brain decline.
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`See Final Office action dated February 5, 2014, at 2.
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`Wikipedia identified other health benefits, stating that “Omega-3 fatty acids also have mild
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`antihypertensive effects,” and that “[s]ome evidence suggests that people with certain circulatory
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`problems, such as varicose veins, may benefit from the consumption of EPA and DHA [types of omega-3
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`fatty acids], which may stimulate blood circulation, increase the breakdown of the fibrin, a compound
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`involved in clot and scar formation, and, in addition, may reduce blood pressure.” See Office Action
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`dated July 17, 2013, at 5.
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`With respect to the extent of Americans’ use of omega fatty acids, the National Institutes of
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`Health noted that, “[a]ccording to the 2007 National Health Interview Survey, which included a
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`comprehensive survey on the use of complementary health approaches by Americans, fish oil/omega-
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`3/DHA supplements are the nonvitamin/nonmineral, natural product most commonly taken by adults,
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`and the second most commonly taken by children.” Id. at 50.
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`1. OMEGA INDICATES THE IDENTIFIED GOODS CONTAIN OMEGA FATTY ACIDS
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`The evidence of record shows that it is common in the nutritional supplements industry for
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`products with OMEGA in their names to include omega fatty acids and that, as a result, consumers have
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`come to expect the inclusion of such ingredient when the word OMEGA is used on labels of nutritional
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`supplements. Specifically, this evidence shows that companies in the nutritional supplements industry
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`use the word OMEGA in their advertisements of nutritional supplements containing omega fatty acids to
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`market their products. This evidence contradicts Applicant’s argument that the word OMEGA without
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`the accompanying numerals -3, -6, and/or -9 does not signify omega fatty acids, but that OMEGA only
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`refers to omega fatty acids when used in conjunction with the numerals -3, -6, and/or -9.
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`For example, the attachment at pages 29 and 31 to the Office action dated July 17, 2013,
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`show a VitaminShoppe advertisement containing depictions of bottles of Nordic Naturals Ultimate
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`Omega and Nordic Naturals Ultimate Omega + CoQ10, respectively, which products contain omega fatty
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`acids but do not contain any of the numerals that applicant inaccurately contends are always on
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`nutritional supplements containing omega fatty acids.
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`Similarly, the attachment at page 44 to the Office action dated July 17, 2013, shows a Great
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`HealthWorks advertisement containing a depiction of bottles of OMEGAXL, which product contains
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`omega fatty acids but does not contain any of the cited numerals.
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`Likewise, the evidence of record includes an AllStarHealth advertisement containing
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`depictions of bottles of VEGA Vega – Antioxidant Omega Oil Blend and BARLEAN’S Omega Swirl Flax Oil
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`Strawberry Banana, respectively, which contain omega fatty acids but do not contain any of the cited
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`numerals. See Final Office action dated February 5, 2014, at 5-6.
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`See also a GNC advertisement depicting a bottle of Nordic Naturals Ultimate Omega, id. at 7,
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`a VitaminShoppe advertisement containing depictions of bottles of Nordic Naturals Ultimate Omega
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`Minis, Nordic Naturals Ultimate Omega 1000 MG, and Nordic Naturals Ultimate Omega Xtra 1000 MG,
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`id. at 8, and a GNC advertisement depicting a bottle of Nordic Naturals Ultimate Omega Liquid, id. at 9,
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`all of the foregoing products contain omega fatty acids, but none of the portions of the marks used to
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`denote the goods contain any of the numerals that applicant contends always accompany the word
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`OMEGA to signify omega fatty acids.
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`In the last cited VitaminShoppe advertisement, the depictions of omega fatty acid products
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`using the word “OMEGA” without the numerals -3, -6, and/or -9 are intermixed with depictions of two
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`omega fatty acid products that do use one or more of the numerals that Applicant relies upon, revealing
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`the fact that, in the context of the nutritional supplements industry, the word “OMEGA” without the
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`numerals -3, -6, and/or -9 is clearly a substitute for “OMEGA-3,” “OMEGA-6,” and/or “OMEGA-9.” Id. at
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`8.
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`2. “OMEGA SUPPLEMENTS” ARE A GENUS OF GOODS
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`In addition, the evidence from www.luckyvitamin.com, www.vitaminshoppe.com, and
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`www.gnc.com shows that a search of “omega supplements” will return a list of the venders’ omega fatty
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`acid products with and without any specific reference to the type, be it -3, -6, or -9. This evidence shows
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`that “omega supplements” are a genus of goods. Id. at 10-12, 24-25.
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`Moreover, the evidence from http://www.swansonvitamins.com/q?kw=omega
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`http://www.naturemade.com/search-results?query=omega, and
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`http://www.amazon.com/s/ref=nb_sb_noss_2/178-7521211-9416111?url=search-alias%3Dhpc&field-
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`keywords=%22omega%20supplements%22 shows that a search of “omega” alone on nutritional
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`supplement industry websites will return a list of the venders’ omega fatty acid products with and
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`without any specific reference to the type, be it -3, -6, or -9. This evidence also shows that “omega
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`supplements” are a genus of goods and contradicts Applicant’s contention that consumers will not
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`perceive OMEGA as a substance. See Denial of Request for Reconsideration dated September 12, 2014
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`at 2-9.
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`3. APPLICANT’S OWN EVIDENCE SHOWS OMEGA INDICATES THE IDENTIFIED
`GOODS CONTAIN OMEGA FATTY ACIDS
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`Applicant’s own evidence states that OMEGA may refer to omega fatty acids. The
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`attachments at pages 11 and 12 to Applicant’s Request for Reconsideration dated September 12, 2014,
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`are webpages from Wiktionary, the free dictionary, which state: “Omega also may refer to: . . . Omega-3
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`fatty acid, Omega-6 fatty acid, [and] Omega-9 fatty acid.” This evidence is consistent with Applicant’s
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`disclaimer of the word “OMEGA” as to its use with nutritional supplements and with Applicant’s
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`statement in its Response to Office Action that “applicant intends to introduce new products which do
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`contain omega fatty acids in the future.” See Response to Office action dated January 17, 2014
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`(Response to the Information Requirement).
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`B. PROSPECTIVE PURCHASERS ARE LIKELY TO BELIEVE THAT THE MISDESCRIPTION
`ACTUALLY DESCRIBES THE GOODS
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`Consumers would be likely to believe this misdescription in the mark, because the evidence
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`of record from commonly used internet sources including Vitamin Shoppe, Great HealthWorks,
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`AllStarHeealth, and GNC shows that it is common in applicant’s nutritional supplements industry for
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`products with OMEGA in their names and without the numerals -3, -6, or -9 in their names to include
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`omega fatty acids and that, as a result, consumers have come to expect such ingredient when the word
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`OMEGA is used on labels of nutritional supplements. Specifically, this evidence shows other companies’
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`advertisements of nutritional supplements containing omega fatty acids and their use of the word
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`OMEGA without the numerals -3, -6, or -9 to market their products. See Office action dated July 17,
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`2013, at 29, 31, 44; Final Office action dated February 5, 2014, at 5-9.
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`C. THE MISDESCRIPTION IS LIKELY TO AFFECT A SIGNIFICANT PORTION OF THE RELEVANT
`CONSUMERS DECISION TO PURCHASE THE GOODS
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`A misdescriptive ingredient would be material to the purchasing decision of a significant
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`portion of the relevant consumers when the evidence demonstrates that the misdescription would
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`make the product or service more appealing or desirable to prospective purchasers. See In re White
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`Jasmine LLC, 106 USPQ2d at 1392 (citing In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1698-99
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`(TTAB 1992)); TMEP §1203.02(d).
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`In the present case, the health benefit evidence discussed above in Section III.A shows that
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`nutritional supplements with omega fatty acids are more appealing or desirable because a large number
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`of consumers believe that they have health benefit effects related to, for example, muscle activity,
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`blood clotting, digestion, fertility, and cell division and growth. See Office action dated July 17, 2013, at
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`4-17, 44-55; Final Office action dated February 5, 2014, at 2. The evidence from Wikipedia.com notes
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`other potential benefits, stating that “omega-3 fatty acids have gained popularity for children with
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`[attention deficit hyperactivity disorder and autism spectrum disorder]” and that research suggests that
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`omega-3 fatty acids may have some anti-inflammatory benefits. Also the Great HealthWorks
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`advertisement for OMEGAXL suggests health benefits in the areas of infant nutrition, cardiovascular
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`disease, asthma, chronic pain relief, and cell aging. See Office action dated July 17, 2013, at 44-47. As a
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`result of these potential health benefits from the use of omega fatty acids, fish oil/omega-3/DHA
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`supplements were the nonvitamin/nonmineral natural product most commonly taken by American
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`adults, and the second most commonly taken by American children in 2007. See Office action dated July
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`17, 2013, at 50. Thus, the misdescription of Applicant’s products as “OMEGA” is highly likely to induce
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`potential purchasers interested in obtaining these health benefits to buy Applicant’s products.
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`D. APPLICANT’S AGRUMENTS ARE UNPERSUSIVE
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`The evidence of record contradicts Applicant’s argument that, because Applicant’s mark
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`does not include an accompanying numeral, consumers will perceive Applicant’s mark as a Greek letter,
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`not as a message to consumers about omega-3 fatty acids.
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`Applicant relies on the non-precedential decision of the Trademark Trial and Appeal Board
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`in In re Omega Alpha Pharmaceuticals Inc., Application Serial Nos. 77486429 and 77486441 (March 26,
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`2013), which found that “the examining attorney had failed to demonstrate that applicant’s marks –
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`OMEGA ALPHA (in standard characters) and OMEGA ALPHA & design – are deceptive when used in
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`connection with the identified goods (i.e., a variety of nutritional/herbal supplements). That finding,
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`however, was based on a lack of evidence in the record of “the term OMEGA [being] used to describe an
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`ingredient of a nutritional supplement.” The record in this case is very different, as the referenced
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`evidence establishes.
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`Applicant also argues that, if the definition of OMEGA is not a Greek letter, then it means “of or
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`characterizing a chemical group or position at the end of a molecular chain.” Applicant’s Brief at 4.
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`However, applicant’s argument overlooks the evidence that Applicant itself introduced, that being the
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`Wiktionary, free dictionary evidence showing that, in addition to other meanings, “Omega also may
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`refer to: . . . Omega-3 fatty acid, Omega-6 fatty acid, [and] Omega-9 fatty acid. See Applicant’s Request
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`for Reconsideration dated September 12, 2014, at 11-12. The meaning of words clearly depends on
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`context. The context in this case is nutritional supplements. In this context, OMEGA refers to Omega-3
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`fatty acid, Omega-6 fatty acid, [and] Omega-9 fatty acid. Descriptiveness is determined in relation to the
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`goods for which registration is sought. Therefore, the fact that a term may have different meaning in a
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`different context is not controlling. See In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012,
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`(finding that TALENT ASSURANCE does not present a double entendre such that “the merely descriptive
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`significance of the term [TALENT] is lost in the mark as a whole”).
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`Applicant argues that, under the OMEGA SOUL mark, it currently markets the product Garcinia
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`Cambogia, which Applicant contends immediately communicates to the consumer what the product
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`contains, i.e., Garcinia Cambogia. However, as the AllStarHealth advertisement containing depictions of
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`bottles of VEGA Vega – Antioxidant Omega Oil Blend and BARLEAN’S Omega Swirl Flax Oil Strawberry
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`Banana and the VitaminShoppe advertisement containing depictions of bottles of Nordic Naturals
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`Ultimate Omega + CoQ10 show, nutritional supplement advertisements may include wording in addition
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`to the word OMEGA to indicate that, in addition to omega fatty acids, the goods contain an additional
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`ingredient, such as CoQ10. See Final Office action dated February 5, 2014, at 5-6; Office action dated
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`July 17, 2013, at 5. Therefore, consumers purchasing OMEGA SOUL Garcinia Cambogia would be led to
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`believe they were purchasing a nutritional supplement containing both ingredients when in fact they
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`would be receiving merely a weight loss supplement that does not contain any of the health benefits of
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`omega fatty acids, clearly and materially deceiving them into purchasing something that did not contain
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`the beneficial ingredients which they sought.
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`Applicant also argues that the examining attorney failed to consider Applicant’s mark as a
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`whole. To the contrary, as with the above-referenced Ultimate Omega and OMEGAXL marks, the word
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`OMEGA identifies the composition of the goods – omega fatty acids – and the other wording in the mark
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`or other part of a compound mark (e.g., Ultimate or XL) is the source indicator. Thus, to the nutritional
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`supplements consumer, OMEGA identifies the composition of the goods and SOUL serves as the source
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`indicator. “It is well-established that a mark may be found deceptive on the basis of a single deceptive
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`term that is embedded in a larger mark,” and a disclaimer of the deceptive matter cannot obviate a
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`refusal under Trademark Act § 2(a) on the ground that the mark consists of or comprises deceptive
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`matter. In re White Jasmine, 106 USPQ2d at 1391-92 n.22 (citing Am. Speech-Language-Hearing Ass’n v.
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`Nat’l Hearing Aid Society, 224 U.S.P.Q. 798, 808 (TTAB 1984) and In re Charles S. Loeb Pipes. Inc., 190
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`U.S.P.Q. 238, 241 (TTAB)).
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`In support of its application for registration, Applicant also points to several third-party
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`registrations that include the term OMEGA and that are for use with dietary and nutritional
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`supplements. However, prior decisions and actions of other trademark examining attorneys in
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`registering other marks have little evidentiary value and are not binding upon the USPTO or the
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`Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re Midwest Gaming & Entm’t LLC, 106
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`USPQ2d 1163, 1165 n.3 (TTAB 2013) (citing In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d
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`1564, 1566 (Fed. Cir. 2001)). Each case is decided on its own facts, and each mark stands on its own
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`merits. See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973).
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`IV.
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`CONCLUSION
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`Applicant applied for registration on the Principal Register of the wording “OMEGA SOUL”
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`(in standard characters) for use in Class 5 with nutritional supplements. Applicant admitted in its
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`Response to Office action that its Class 5 nutritional supplements do not contain omega fatty acids in
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`significant part.
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`Applicant’s applied-for mark is deceptive because it contains a term -- OMEGA -- that misdescribes
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`the composition of the goods and is likely to lead prospective consumers to believe that the goods
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`contain an ingredient that it does not contain and affect a significant portion of the relevant consumers’
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`decision to purchase the goods.
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`For the foregoing reasons, the refusal to register pursuant to Trademark Act Section 2(a), 15 U.S.C.
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`§1052(a) should be affirmed.
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`Respectfully submitted,
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`/Donald Johnson/
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`Examining Attorney
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`Law Office 104
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`(571) 272-7831
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`don.johnson@uspto.gov
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`Chris Doninger
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`Managing Attorney
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`Law Office 104