Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA963552
`03/29/2019
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`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
`
`Applicant
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`86905620
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`Vitamin Shoppe Procurement Services, Inc.
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`Applied for Mark
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`V THE VITAMIN SHOPPE
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`Correspondence
`Address
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`Submission
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`Attachments
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`Filer's Name
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`Filer's email
`
`Signature
`
`Date
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`JAMES E ROSINI
`HUNTON ANDREWS KURTH LLP
`200 PARK AVENUE
`NEW YORK, NY 10166
`UNITED STATES
`tmdocketny@kenyon.com
`212-309-1000
`
`Appeal Brief
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`16492 vitamin shoppe appeal brief w-cases.pdf(1985656 bytes )
`
`James E. Rosini
`
`tmdocketny@kenyon.com
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`/JER/
`
`03/29/2019
`
`

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`Attorney Docket Number: 516492.256490
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In the Matter of Trademark and Service Mark Applications
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`86905555
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`86905614
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`86905620
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`86905628
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`Vitamin Shoppe Procurement
`Services, LLC
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`Serial Nos.:
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`Applicant:
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`Int. Cls. 5, 35
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`Ex. Atty: Mark S. Tratos
`Law Office 113
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`Trademark Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`APPLICANT’S CONSOLIDATED APPEAL BRIEF
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`Applicant, Vitamin Shoppe Procurement Services, LLC (f/k/a Vitamin Shoppe
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`Procurement Services, Inc.), appeals from the Examining Attorney’s final rejection and denial of
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`reconsideration in four related applications: Serial Nos. 86905555, 86905614, 86905620, and
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`86905628. Through those applications, Applicant seeks to register several different logo designs
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`that incorporate its already registered THE VITAMIN SHOPPE brand name for an assortment of
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`goods and services in Classes 5 and 35:
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`Serial No. 86905555
`(Filed 2/11/16)
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`
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`
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`Serial No. 86905614
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`(Filed 2/11/16)
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`Classes 5, 35
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`
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`Class 35
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`
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`NY01:4444120.1
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`

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`Serial No. 86905620
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`(Filed 2/11/16)
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`Serial No. 86905628
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`(Filed 2/11/16)
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`Classes 5, 35
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`Classes 5, 35
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`(“the Subject Applications”). Recognizing the relatedness of the Subject Applications, the Board
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`has already consolidated the four pending appeals for briefing, argument, and decision.
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`
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`BACKGROUND
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`A.
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`Applicant’s Use of THE VITAMIN SHOPPE
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`Applicant1 operates more than 770 health and wellness stores across the United States
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`under the brand name THE VITAMIN SHOPPE. Response to Office Action (7/17/17) (Serial
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`No. 86905555), Exhibit A (“Jaffe Decl.,”), ¶ 7.2 At Applicant’s THE VITAMIN SHOPPE stores
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`(and at its online retail store, www.thevitaminshoppe.com), consumers can purchase an array of
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`health and wellness products,
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`including
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`laundry soaps, cleaning solutions, veterinary
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`preparations, dietetic foods and drink, nutritional and dietary supplements, meal replacement
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`
`1 Applicant, Vitamin Shoppe Procurement Services, Inc., is a wholly-owned subsidiary of
`Vitamin Shoppe Industries, Inc., which is a wholly-owned subsidiary of Vitamin Shoppe, Inc.
`See Response to Office Action (7/17/17) (Serial No. 86905555), Exhibit A, ¶ 4. For ease of
`reference, Applicant will refer to “Applicant” as the source of activities conducted for the benefit
`of its parent entity, irrespective of through which subsidiary those activities are conducted.
`2 For simplicity (and to avoid unnecessary parallel cites), unless indicated otherwise, Applicant
`throughout this brief cites to the prosecution history of Serial No. 86905555 (the first of the four
`listed applications). The four file wrappers, however, are substantively the same. Compare, e.g.,
`Response to Office Action (7/17/17) (Serial No. 86905555), Exhibit A with Response to Office
`Action (6/16/17) (Serial No. 86905614), Exhibit A; Response to Office Action (7/17/17) (Serial
`No. 86905620), Exhibit A; and Response to Office Action (7/17/17) (Serial No. 86905628),
`Exhibit A. Specific record page citations in this brief correlate to the pages of the PDF files
`accessible through the TSDR system.
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`2
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`

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`
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`bars, weight loss preparations, toiletries, housewares, aromatherapy products, and health and
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`beauty aids, to name just a few. See id., ¶ 3; see also id. at Ex. 6. Roughly 25 million consumers
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`visit Applicant’s THE VITAMIN SHOPPE stores every year, generating more than $1.1 B in
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`annual sales and securing Applicant’s position as one of the largest retailers of health and
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`wellness products in the United States. See id., ¶¶ 9, 10, 12, 15.
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`Applicant has used its THE VITAMIN SHOPPE name to identify its goods and retail
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`store services since 1977, a period that spans more than forty years. Jaffe Decl., ¶ 3. During that
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`time—and continuing today—Applicant has actively promoted its brand, advertising THE
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`VITAMIN SHOPPE through traditional consumer outlets, in trade publications, and at public
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`sports, health, and wellness events. See id., ¶ 13. Applicant spends about $15 M a year on
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`advertising featuring THE VITAMIN SHOPPE mark. See id., ¶¶ 8, 13-14, 19, Exs. 6, 9.
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`As a result of Applicant’s extensive use and promotion of THE VITAMIN SHOPPE,
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`both consumers and the trade associate the mark exclusively with Applicant. Jaffe Decl., ¶ 25.
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`To Applicant’s knowledge, no media outlets refer to anyone other than Applicant as “THE
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`VITAMIN SHOPPE,” nor is any other health and wellness store (and certainly no entity of any
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`significance) regularly using that phrase. See id., ¶ 22. To the contrary, both the media and
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`those in the trade exclusively use “THE VITAMIN SHOPPE” to refer to Applicant, using
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`different names to refer to other health and wellness stores, both specifically and in general. See
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`id., ¶¶ 16-18, 20-21, Exs. 7-8, 10-12. Likewise, if you search the Internet for “THE VITAMIN
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`SHOPPE” (or “THE VITAMIN SHOP”) using the Google search engine, your search will return
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`page after page of “hits” that refer solely to Applicant. See id., ¶¶ 23-24, Exs. 13-15.
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`3
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`To protect its rights in its brand, Applicant registered THE VITAMIN SHOPPE with the
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`Trademark Office back in August 2001, securing two block-letter registrations for the mark that
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`cover an assortment of health and wellness goods and services in Classes 3, 5, and 35:
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`Reg. No. 2481640
`(Filed 12/2/99)
`(Registered 8/28/01)
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`Class 3
`
`Non-medicated skin treatment creams, hair shampoos
`and bath and shower gels; and aromatherapy oils
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`
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`Class 5
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`Vitamins, vitamin and mineral supplements, and
`nutritional supplements
`
`
`
`
`
`
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`Class 35
`
`Reg. No. 2481906
`
`(Filed 12/2/99)
`(Registered 8/28/01)
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`Retail store services, mail order catalog services and
`online retail store services provided via a global
`computer network
`featuring vitamins, nutritional
`supplements, books, herbal products, aromatherapy
`products, bath and shower products, skin treatment
`creams, and related items
`
`Response to Office Action (7/17/17), pp. 602-607. In both applications, Applicant disclaimed the
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`exclusive right to use “Vitamin” (apart from the mark as shown) and submitted evidence (which
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`the Office accepted) under Section 2(f) that the mark as a whole had acquired distinctiveness.
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`See id. Both of these registration have since been acknowledged incontestable. See id.
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`
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`In the years following, Applicant also successfully registered the logo it was using for its
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`business (THE VITAMIN SHOPPE SINCE 1977 & Design). When required, Applicant again
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`supported registration by showing that THE VITAMIN SHOPPE had acquired distinctiveness:
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`Reg. No. 2737734
`(Filed 12/4/2000)
`(Registered 7/15/03)
`
`
`
`Section 2(f) as to
`THE VITAMIN
`SHOPPE
`
`Class 3
`
`Non-medicated skin treatment creams, hair shampoos and
`bath and shower gels; complementary and alternative
`medicine products, namely, aromatherapy oils and lotions,
`aromatherapy bath oils, joint creams, facial and body
`soaps, scrubs, cleansers, creams and gels, foot scrubs,
`creams, lotions, sprays and gels and massage oils, gels,
`lotions and creams
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`Class 5
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`Vitamins and vitamin, mineral and nutritional supplements
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`Class 16
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`Catalogs
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`featuring vitamins, nutritional supplements,
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`4
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`

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`
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`Reg. No. 2737735
`(Filed 12/4/2000)
`(Registered 7/15/03)
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`Section 2(f) as to
`THE VITAMIN
`SHOPPE
`
`
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`Reg. No. 3183591
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`(Filed 1/26/06)
`(Registered 12/12/06)
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`Section 2(f) as to the
`entire mark
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`
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`Reg. No. 3186751
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`(Filed 1/26/06)
`(Registered 12/19/06)
`(Cancelled 7/21/17)
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`Section 2(f) as to the
`entire mark
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`
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`Reg. No. 3241641
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`(Filed 1/30/06)
`(Registered 5/15/07)
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`Section 2(f) as to the
`entire mark
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`
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`
`
`
`
`
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`
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`complementary and alternative medicine products, books,
`herbal products, aromatherapy products, bath and shower
`products, skin treatment creams, and related items
`
`
`
`
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`Class 35
`
`Retail store services, mail order catalog services and
`online retail store services provided via a global computer
`network
`featuring vitamins, nutritional supplements,
`complementary and alternative medicine products, books,
`herbal products, aromatherapy products, bath and shower
`products, skin treatment creams, and related items
`
`
`
`
`
`Class 35
`
`Retail store services, mail order catalog services and
`online retail store services provided via a global computer
`network
`featuring vitamins, nutritional supplements,
`complementary and alternative medicine products, books,
`herbal products, aromatherapy products, bath and shower
`products, health and beauty products, skin treatment
`creams, and related items
`
`
`
`
`
`Class 16
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`Catalogs, newsletters and magazines featuring vitamins,
`nutritional supplements, complementary and alternative
`medicine products, books, herbal products, aromatherapy
`products, bath and shower products, skin treatment creams
`and related items
`
`
`
`
`
`Class 3
`
`Non-medicated skin treatment creams, hair shampoos and
`bath and shower gels; aromatherapy oils and lotions;
`aromatherapy bath oils; facial and body soaps, scrubs,
`cleansers, creams and gels; foot scrubs, creams, lotions,
`sprays and gels; and massage oils, gels, lotions and
`creams
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`Class 5
`
`
`
`Vitamins and vitamin, mineral, dietary and nutritional
`supplements; Complementary and alternative medicine
`products, namely, aromatherapy oils and
`lotions,
`aromatherapy bath oils, joint creams, scrubs, cleansers,
`creams and gels, foot scrubs, creams, lotions, sprays and
`gels and massage oils, gels, lotions and creams
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`5
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`

`

`
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`Id/ at 608-19; Response to Office Action (11/18/16), p. 13. Each of these registrations is also
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`incontestable (except, as noted above, Reg. No. 3186751, which was recently cancelled). See id.
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`B.
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`The Subject Applications
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`A few years ago, Applicant updated its logo, moving from a classic oval to a more
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`modern look. Use of the core THE VITAMIN SHOPPE element, however, remained the same:
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`
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`Jaffe Decl., ¶¶ 2, 8, Ex. 6. To protect its updated logo, Applicant filed the Subject Applications
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`(Serial Nos. 86905555, 86905614, 86905620, and 86905628), which present the mark in a range
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`of configurations (e.g., sometimes horizontal, sometimes with a tagline) and cover a range of
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`goods and services. By and large, however, the goods and services at issue in the Subject
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`Applications match those for which Applicant has already obtained protection through its
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`incontestable THE VITAMIN SHOPPE block-letter marks, as highlighted below:
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`
`
`
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`(U.S. Reg. Nos. 2481640, 2481906)
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`(Serial No. 86905555)
`
`
`
`Class 5 Vitamins, vitamin and mineral supplements,
`and nutritional supplements
`
`nutritional
`vitamins,
`namely,
`preparations,
`Veterinary
`supplements, preparations for aiding digestion and preventing
`and treating gas, preparations for treatment of hip and joint
`pain, and calming and anxiety nutritional supplements; dietetic
`food and nutritional substances, namely, vitamins,
`minerals, dietary and nutritional supplements for weight
`loss, diet, sports nutrition, body building, muscle gain and
`training; dietary supplement drinks, namely, nutritional
`supplements for bodybuilding; dietary supplements in the
`nature of weight loss powders; nutritional supplements in the
`form of non-fruit meal replacement bars and powders and
`nutritional supplements in the form of non-chocolate meal
`replacement bars and powders; chocolate-based meal
`replacement powders for weight loss purposes; nutritional
`supplement meal replacement powders for boosting energy;
`food for babies; material for stopping teeth, dental wax;
`disinfectants; preparations for destroying vermin; fungicides,
`herbicides
`
`Class 35 Retail store services, mail order catalog
`services and online retail store services
`
`Retail store services, mail order catalog services and
`online retail store services provided via a global computer
`
`6
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`

`

`
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`provided via a global computer network
`featuring vitamins, nutritional supplements,
`books, herbal products, aromatherapy products,
`bath and shower products, skin
`treatment
`creams, and related items
`
`network featuring vitamins, vitamin, mineral, dietary and
`nutritional supplements, weight loss supplements, foods,
`beverages and sports performance drinks; promoting public
`awareness of health and nutrition.
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`As before, Applicant has disclaimed the exclusive right to use “Vitamin” (apart from the mark as
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`shown) and submitted evidence under Section 2(f) that the phrase THE VITAMIN SHOPPE has
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`acquired distinctiveness. See Response to Office Action (7/17/17), pp. 50-625 (proof of acquired
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`distinctiveness) ; Response to Office Action (2/18/18), p. 5 (disclaimer).
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`Nonetheless, the Examining Attorney has refused registration. Notwithstanding
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`Applicant’s long use and previous registration of the phrase, the Examining Attorney believes
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`THE VITAMIN SHOPPE is generic for the services in Class 35. Specifically, the Examining
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`Attorney claims the relevant consuming public would supposedly understand “THE VITAMIN
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`SHOPPE” primarily to “refer[] to an establishment that sells a variety of natural substances or
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`preparations that are essential or necessary to ensure health or healthy growth.” Office Action
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`(3/25/18), p. 4. The Examining Attorney further postulates that if purchasers do, in fact,
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`understand “THE VITAMIN SHOPPE” primarily to refer to this particular type of retail
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`establishment, the phrase would consequently also be generic for any “vitamins [or] nutritional
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`supplements” that were included within the identification of goods for Class 5. See id.
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`The Examining Attorney’s assertion of genericness is based primarily on a textual
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`analysis of the mark (notably, the separate definitions of “Vitamin” and “Shop”), see Office
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`Action (8/16/17), pp. 5-7—an argument that essentially boils down to a claim that all of the
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`registrations previously issued by the Office to Applicant were simply wrong. The Examining
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`Attorney also relies in part on a smattering of documents pulled from the depths of the Internet
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`and the Nexis database (some from almost thirty years ago), including blogs, question forums,
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`crime blotters, and a few web pages that appear to have been auto-created in response to the
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`7
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`Examining Attorney’s Internet search. See, e.g., id. at pp. 26, 40, 43, 52, 55, 61, 80, 87, 118.
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`Notably, though, the Examining Attorney did not cite any examples of significant (or really,
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`any) businesses holding themselves out to be a “vitamin shop”; major media outlets or
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`publications regularly using “vitamin shop” to refer to health and wellness stores in general;
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`third-party applications or registrations that include “Vitamin Shop” as a generic term (either in
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`the mark or in the description of services); or direct evidence of how most consumers use the
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`phrase. That is, the Examining Attorney did not offer any proof that the relevant consuming
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`public today understands the designation “Vitamin Shoppe” (or “Vitamin Shop”) primarily to
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`refer to the genus of services at issue, which is the operative test. Cf. TMEP, § 1209.01(c)(i).
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`C.
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`The Robertson Genericness Study
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`In response to the Examining Attorney’s contention that Applicant’s THE VITAMIN
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`SHOPPE mark is suddenly generic for the same retail store services and goods already protected
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`by Applicant’s incontestable block-letter registrations, Applicant has argued (and continues to
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`maintain here) that although “THE VITAMIN SHOPPE” may be descriptive for certain of those
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`services, consumers primarily understand the phrase to function as an indicator of source and
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`not as the generic designator for a particular “type” of retail establishment. The evidence
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`Applicant submitted during prosecution in support of this position (and on which Applicant
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`continues to rely) included Applicant’s ownership of its incontestable block-letter registrations
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`for essentially the same goods and services; Applicant’s exclusive, widespread, and long use and
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`promotion of the mark; the lack of regular third-party or media use of the phrase as a generic
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`descriptor (in contrast with their pervasive use of “Vitamin Shoppe” to refer solely to Applicant);
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`and a competing textual analysis of the applied-for mark. See generally Response to Office
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`Action (7/17/17), pp. 34-625; Response to Office Action (2/16/18), pp. 9-89.
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`8
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`In addition, though, Applicant submitted direct evidence that consumers do not
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`understand “THE VITAMIN SHOPPE” primarily to refer to a type of establishment that sells
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`dietary or nutritional supplements, such as vitamins, minerals, or weight management products.
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`This further, direct proof of non-genericness came from a consumer survey (“the Robertson
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`Study”) that was conducted during prosecution by an independent survey expert whose sole task
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`was to evaluate scientifically whether the phrase at issue could truly be considered generic.
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`1.
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`The Design of the Robertson Study
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`Historically, two surveys designs have been used to assess genericness—the “Teflon” and
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`“Thermos” models. See, e.g., Jay, E. Deborah, “Genericness Surveys in Trademark Disputes:
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`Evolution of Species,” The Trademark Reporter, Vol. 99 (2009), 1122; Lifeguard Licensing
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`Corp. v. Kozak, 2017 WL 908199, *1 (S.D.N.Y. 2017); see also, e.g., In re Booking.com B.V.,
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`2016 WL 1045672, *12 (TTAB 2016) (explaining that a “Teflon” or “Thermos” survey is the
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`“typical genericness survey”) (non-precedential),3 reversed sub nom, Booking.com B.V. v. Matal,
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`278 F.Supp.3d 891 (E. D. Va. 2017) (considering new evidence). The Board recently suggested,
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`however, that “Teflon surveys are only appropriate ... in a case where the question is whether a
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`coined or arbitrary mark has become generic.” Frito-Lay North America, Inc. v. Princeton
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`Vanguard, LLC, 124 USPQ2d 1184, 1196 (TTAB 2017). Thus, where (as here) the phrasing is
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`descriptive, a “Thermos” survey is the appropriate design to assess genericness directly.
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`In a “Thermos” study, the survey researcher first identifies the group of respondents—the
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`“relevant public”; cf. TMEP, §1209.01(c)(i)—whose views are relevant to the inquiry. Then, the
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`researcher describes the good(s) or service(s) that are of interest and asks individual respondents
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`how they refer to them. If a significant percentage of respondents answer the key question by
`
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`3 In accordance with Section 101.03 of the Trademark Trial and Appeal Board Manual of
`Procedure, Applicant has appended copies of any cited non-precedential opinions to this brief.
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`9
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`

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`
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`referencing the designation under consideration, that lends support to the conclusion that the
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`relevant public likely understands the designation primarily to refer to the genus of the goods or
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`services. See McCarthy on Trademarks and Unfair Competition, § 12:15 (5th ed. 2018); see also
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`Jay at 1123-25. Conversely, if most respondents volunteer other terms, while at the same time
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`admitting to being aware of use of the designation in question as a brand, that suggests the
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`designation is primarily non-generic and functions as a source-identifier. See id.
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`The principal drawback of a “Thermos” study is that consumers familiar with a brand
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`name for a good or service “may answer [the question] with the trademark and drop what they
`
`consider to be a generic name, because it's so obvious to them.” McCarthy, § 12:15. This is the
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`well-known “COKE” duality problem. If you ask survey respondents what they call “a
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`sweetened, brown, carbonated beverage,” many will say “a COKE” rather than “a cola,” even
`
`though most of them likely do not consider “COKE” a generic term. For that reason, one risk of
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`a “Thermos” survey is that genericness “may be overestimated.” See Nightlight Systems, Inc. v.
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`Nitelites Franchise Systems, Inc., 2007 WL 4563873, *5 (N.D. Ga. 2007) (citing Simonson,
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`Itamar, “An Empirical Investigation of the Meaning and Measurement of ‘Genericness,’” The
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`Trademark Reporter, Vol. 84 (1994) at 202). To combat that effect, it is recommended that
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`follow-up questions be asked to “ferret out” misplaced brand responses. McCarthy, § 12:15.
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`With the above in mind, Applicant retained Dr. Brian Robertson, the lead survey
`
`researcher at Market Decisions Research, and asked him to design and conduct a “Thermos”
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`study to assess whether the relevant public understands “THE VITAMIN SHOPPE” primarily to
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`refer to the genus of the subject services (indicating genericness) or to function as an indicator of
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`source (proving non-genericness and trademark significance). See Request for Reconsideration
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`(9/21/18), Ex. A (“Robertson Decl.”), ¶¶ 1, 9-11. Dr. Robertson is an independent researcher
`
`10
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`

`
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`with more than thirty years of experience in the survey field and he has been qualified in federal
`
`court as an expert in survey research methodology and design. See id., ¶¶ 2-8.
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`For his study, Dr. Robertson surveyed 407 adults across the county who indicated they
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`were “familiar with, or have shopped at, a store that primarily sells dietary or nutritional
`
`supplements, such as vitamins, minerals, or weight management products.” See Robertson Decl.,
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`Ex. A (“Robertson Rep.”), p. 2.4 This qualifying description generally matches the scope of the
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`“retail store” services that are at issue in the Subject Applications (i.e., “[r]etail store services …
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`featuring vitamins, vitamin, mineral, dietary and nutritional supplements, weight loss
`
`supplements”), making this group the “relevant public” for assessing genericness. Cf. Jay, pp.
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`1123-24, 1151 (the original “Thermos” survey, which tested whether “thermos” was generic for
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`a vacuum-insulated container used to keep beverages and food hot or cold, “was conducted with
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`adults in the United States who were ‘familiar with containers that keep the contents hot or
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`cold’”); In re Country Music Assoc., Inc., 100 USPQ2d 1824, 1832 (TTAB 2011) (broadly
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`defining the relevant public as “listeners of country western music”); see also Lifeguard
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`Licensing, 2017 WL 908199 at *5 (whether a mark that is used with a mass-marketed product is
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`considered generic should be assessed among those in the general public who are familiar with
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`the product, not just among past or prospective purchasers) (citing authority).5
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`Respondents who qualified as members of the “relevant public” were then asked what
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`they “generally call the TYPE of store that primarily sells dietary or nutritional supplements”—a
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`4 A total of 494 respondents were interviewed. Those who answered that they were not “familiar
`with, or have shopped at, a store that primarily sells dietary or nutritional supplements” were
`screened out, leaving 407 members of the relevant public. See Robertson Rep., pp. 3, 5, 7.
`5 Although Applicant believes the relevant public comprises those who are “familiar with, or
`have shopped at, a store that primarily sells dietary or nutritional supplements,” the data suggest
`that even if a more limited universe is examined—i.e., only those who have shopped at this type
`of store—the results are essentially the same. See, e.g., Robertson Rep., Ex. B, p. 3 (compare
`cross-tab results for “Have … shopped at any store” (n=342) with “Overall” line (n=407)).
`
`11
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`

`

`
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`classic “Thermos” genericness question. See Robertson Rep., p. 18 (Q2); cf. McCarthy, § 12:15.
`
`Those same respondents were then asked a series of follow-up questions, including whether they
`
`were familiar with THE VITAMIN SHOPPE, to enable Dr. Robertson to analyze better their
`
`earlier responses. See Robertson Rep., pp. 19-21 (Q3-Q10); accord McCarthy, § 12:15.
`
`2.
`
`The Results of the Robertson Study
`
`The results of the Robertson Study were conclusive and prove without question that
`
`consumers do not understand “THE VITAMIN SHOPPE” primarily to refer to the type of retail
`
`store that sells dietary or nutritional supplements, such as vitamins, minerals, or weight
`
`management products. In other words, the phrase “THE VITAMIN SHOPPE” is not generic.
`
`Among the relevant public (n=407), only 21 respondents (5.2%) said they call that type of store a
`
`“vitamin shoppe” or a “vitamin shop.” See Robertson Rep., Ex. B (“Data Comp.”), p. 3. And
`
`notably, all but one of the respondents in that group was already familiar with Applicant’s THE
`
`VITAMIN SHOPPE retail stores, see id., which suggests that most of the respondents who
`
`answered the “type of store” question (Q2) generically were very likely giving Applicant’s brand
`
`name in response (like “COKE”). Cf. McCarthy, § 12:15; see also Robertson Rep., pp. 3, 8.
`
`In contrast, the largest group of consumers (n=100) (24.6%) said they call a store that
`
`sells dietary or nutritional supplements a type of “health” store. See Robertson Rep., pp. 3, 8;
`
`Data Comp., p. 3. And unlike the case with those who said “Vitamin Shoppe” in response to the
`
`genericness question (Q2), the percentage of respondents who gave a “health” store response was
`
`roughly the same regardless of whether they knew of Applicant’s THE VITAMIN SHOPPE
`
`stores, lending strong support to the conclusion that most (if not all) of the “Vitamin Shoppe”
`
`answers given to the genericness question (Q2) were references to Applicant’s brand:
`
`12
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`

`

`
`
`Answer to Q2
`
`Relevant Public
`(n=407)
`
`Familiar with
`THE VITAMIN
`SHOPPE (n=278)
`
`Unfamiliar with
`THE VITAMIN
`SHOPPE (n=129)
`
`“Vitamin Shoppe” or
`“Vitamin Shop”
`
`5.2% (n=21)
`
`7.2% (n=20)
`
`0.8% (n=1)
`
`A “Health” Store
`
`24.6% (n=100)
`
`24.5% (n=68)
`
`24.8% (n=32)
`
`See Data Comp., p. 3
`
`Instructively, a similar pattern can be seen with respect to “GNC,” a brand used with the
`
`largest chain of stores that primarily sell dietary or nutritional supplements. See Jaffe Decl., ¶
`
`21, Ex. 11 (at page 17). Seventeen percent (n=69) of the relevant public (n=407) said they call
`
`this type of store a “GNC,” even though GNC unquestionably is a brand. See Data Comp., p. 3.
`
`However, if you focus solely on respondents who said they were unfamiliar with GNC stores
`
`(n=69), that percentage drops considerably—down to just 2.9% (n=2), which, as with VITAMIN
`
`SHOPPE, shows that the first number undoubtedly was inflated due to the “COKE” effect:
`
`Answer to Q2
`
`“GNC”
`
`Relevant Public
`(n=407)
`
`17.0% (n=69)
`
`Familiar with
`GNC (n=338)
`
`19.8% (n=67)
`
`Unfamiliar with
`GNC (n=69)
`
`2.9% (n=2)
`
`A “Health” Store
`
`24.6% (n=100)
`
`26.6% (n=90)
`
`14.5% (n=10)
`
`See Data Comp., p. 3
`
`Thus, the Robertson Study shows that almost no one in the relevant public (<1%) who is
`
`unfamiliar with THE VITAMIN SHOPPE calls “a store that primarily sells dietary or nutritional
`
`supplements, such as vitamins, minerals, or weight management products” a “vitamin shoppe”
`
`(or a “vitamin shop”). See Data Comp., p. 3. If the phrase “VITAMIN SHOPPE” were truly the
`
`generic name of this type of store, that number should have been significantly larger. And
`
`even among all respondent who said “vitamin shoppe” in responses to Q2 (n=21) (so, regardless
`
`of their familiarity with THE VITAMIN SHOPPE), the level of “generic” responses is still
`
`13
`
`

`

`
`
`extremely low, both in absolute terms (5.2%) and in comparison to answers for “GNC” (17.0%)
`
`(which obviously is not generic) and for “health” store (24.6%), which clearly is generic.
`
`Further information relevant to this inquiry can also be gleaned from respondents’
`
`answers to Q6, which asked whether respondents were familiar with THE VITAMIN SHOPPE
`
`stores. See Robertson Rep., p. 20 (Q6). Of those in the relevant public (n=407), 278 respondents
`
`(68.3%) said they knew of Applicant’s THE VITAMIN SHOPPE stores. See id., p. 10; Data
`
`Comp., p. 8. That means that the percentage of respondents who understood “Vitamin Shoppe”
`
`to be the name of Applicant’s stores outweighed those who considered the phrase a generic
`
`identifier by a factor of at least ten-to-one (68.3% to 5.2%), and likely closer to ninety-to-one
`
`given that most “Vitamin Shoppe” answers to Q2 were likely references to Applicant’s brand.6
`
`These results provide compelling proof that “VITAMIN SHOPPE” is not generic for a
`
`type of retail store that primarily sells dietary or nutritional supplements. Again, the sole
`
`purpose of the Robertson study was to test for genericness—it was not meant to be, nor was it, a
`
`secondary meaning study; see Robertson Rep., p. 5 (survey was designed to test “genericness”);
`
`see also McCarthy, § 12:15; Jay at 1122-25 (a “Thermos” study tests whether a phrase is “being
`
`used generically by the general public”); Booking.com, 2016 WL 1045672 at *12—and the
`
`results were unequivocal. Compare Data Comp., pp. 3, 8 (showing “genericness” levels of
`
`between 0.8% and 5.2% for “VITAMIN SHOPPE” and an “awareness” level of about 68%) with
`
`Amermican Thermos Prods. Co. v. Aladdin Indus., Inc., 207 F. Supp. 9, 21-22 (D. Conn. 1962)
`
`
`6 If we assume that the percentage of respondents unfamiliar with THE VITAMIN SHOPPE but
`who referred to the type of store in question as a “Vitamin Shop” (0.8%) reflects the “true” level
`of generic response to Q2 (that is, after accounting for the “COKE” effect), that would suggest
`that within the relevant public, about three people (out of more than four hundred) arguably
`consider the phrase generic. This is to be contrasted with the 278 people who said they were
`familiar with THE VITAMIN SHOPPE stores—leading to a ratio of more than 90-to-1.
`
`14
`
`

`

`
`
`(finding “THERMOS” generic where roughly 75% of survey respondents identified the type of
`
`product as a “thermos” whereas only 12% of respondents identified THERMOS as a trademark).
`
`3.
`
`The Examining Attorney Improperly Dismissed the Robertson Study
`
` As discussed, Dr. Robertson designed his survey as “a thermos type study” to test
`
`whether consumers consider “THE VITAMIN SHOPPE” generic for a type of retail
`
`establishment that primarily sells dietary or nutritional supplements—the very issue the
`
`Examining Attorney raised. See Robertson Rep., p. 5 (“Research Objectives”); Robertson Decl.,
`
`¶¶ 1, 9-11; cf., e.g., Office Action (3/25/18), p. 4 . Dr. Robertson was not testing for “acquired
`
`distinctiveness,” which requires a different test. Cf., e.g., TMEP, § 1212.06(d) (a survey testing
`
`for acquired distinctiveness must reveal whether “the consuming public associates the proposed
`
`mark with a single source”) (emphasis in original). Furthermore, there can be no dispute that the
`
`Robertson Study was properly submitted to the Office and discussed in depth in Applicant’s
`
`Request for Reconsideration. See Request for Reconsideration (9/21/18), pp. 6-57.
`
`Nonetheless, the Examining Attorney refused to consider the Robertson Study. The
`
`Examining Attorney simply claimed that the Robertson Study was supposedly “intended to show
`
`that ‘THE VITAMIN SHOPPE’ has acquired distinctiveness,” and then, based on that erroneous
`
`assertion, disregarded the survey as “moot.” See Reconsideration Letter (11/5/18), p. 3. The
`
`Examining Attorney, however, cited no evidence or authority in support of his claim that Dr.
`
`Robertson’s “Thermos” study was irrelevant to genericness. Rather, the Examining Attorney—
`
`in a single sentence at the end of the Reconsideration Letter; see id.— simply proclaimed the
`
`survey to be such, allowing him to ignore the import of the survey results. See id.
`
`
`
`15
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`

`

`
`
`ARGUMENT
`
` “The critical issue in genericness cases is wh