Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA329649
`ESTTA Tracking number:
`01/29/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91185473
`Plaintiff
`Bayer Aktiengesellschaft
`Jennifer Fraser
`Connolly Bove Lodge & Hutz LLP
`The Nemours Building, 1007 North Orange Street
`Wilmington, DE 19899
`UNITED STATES
`trademarks@cblh.com, chillson@cblh.com, bstaley@cblh.com
`Brief on Merits for Plaintiff
`Christina M. Hillson
`trademarks@cblh.com, jfraser@cblh.com, chillson@cblh.com,
`bstaley@cblh.com
`/cmh/
`01/29/2010
`OA Brief.pdf ( 31 pages )(1238022 bytes )
`OA Brief ExhA.pdf ( 7 pages )(583846 bytes )
`OA Brief ExhB_1.pdf ( 60 pages )(3927526 bytes )
`OA Brief ExhB_2.pdf ( 54 pages )(12681762 bytes )
`OA Brief ExhB_3.pdf ( 75 pages )(4192815 bytes )
`OA Brief ExhB_4.pdf ( 89 pages )(3270646 bytes )
`OA Brief ExhB_5.pdf ( 64 pages )(3929502 bytes )
`OA Brief ExhC.pdf ( 24 pages )(457343 bytes )
`OA Brief ExhD.pdf ( 27 pages )(717067 bytes )
`OA Brief ExhE.pdf ( 5 pages )(369562 bytes )
`OA Brief ExhF.pdf ( 77 pages )(28097702 bytes )
`OA Brief ExhG.pdf ( 4 pages )(331831 bytes )
`OA Brief ExhH.pdf ( 4 pages )(274283 bytes )
`OA Brief ExhI.pdf ( 28 pages )(1538059 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARKOFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Tn re:
`Trademark Application Serial No.: 77/208,071
`
`Filed: June 17, 2007
`
`Mark: ORGANIC ASPIRIN
`
`:
`
`Opposition No.: 91185473
`
`Published in the
`Official Gazette:
`
`June 3, 2008
`
`BAYER AKTIENGESELLSCHAFT,
`Opposer,
`
`V.
`
`STAMATIOS MOURATIDIS,
`Applicant.
`
`OPPOSER’S BRIEF
`
`Attorney Docket No. 1426-1735
`
`Jennifer Fraser
`Christina M. Hillson
`Connolly Bove Lodge & Hutz LLP
`P. O. Box 2207
`Wilmington, DE 19801
`(302) 658-9141
`Attorneys for Opposer
`
`

`

`TABLE OF CONTENTS
`
`IDENTIFICATION OF PARTIES AND NATURE AND STATUSOF CASE... 1
`
`IL.
`
`DESCRIPTION OF THE RECORD uu... ceccccecsessesseeeteecnscssesnssesessesaesesesaeeessseaepees 2
`
`IQ,
`
`STATEMENT OF THE ISSUESwee eecececesestececeneeeeecesseeteceessesseeessssrssesecssenees 4
`
`IV.
`
`RECITATION OF THE FACTS wo cccsccseescneseecteeseseceeeessesseeeseecteseessesastesseaeeees 5
`
`ARGUMENT |... ceccccssceseseeneeecsecseeeetecsessecssesectecsersreaeesaensecsecsesessessesnessessenesseneas 11
`
`LEGAL STANDARD .W.u.ccccccssessensesneessenseeseaeeseetaeeasecaeeceseaecseceeseaesauensesneneenensess 11
`
`APPLICANT’S MARKIS DECEPTIVE... ccccccscsccecteseetessssisessserssenestnssreaees 13
`
`1.
`
`ORGANIC ASPIRIN is Misdescriptive of the Character, Quality,
`Function, Composition or Use of the Goods Because Applicant’s Goods
`Do Not Contain ASpirin.... cc ccccscsccceescesssccseecenecesseeesreteeeeseesaeeneeenesnesnees 14
`
`Prospective Purchasers are Likely to Believe That the Misdescription
`Actually Describes the Goods Because the Mark Includes the Term
`ASPIRIN and There are Supplements on the Market That Contain
`ASPITIN voce eeccceetcesecesessescesecenecseecteeeseeeeeeecaeecneeseneeeeneesenescreseaeseaaseneeaeenesses 15
`
`The Misdescription is Likely to Affect the Decision to Purchase Because
`Aspirin has Certain Health Benefits .0......cccccsccscssessessssessseeeeeteseeeeeenes 18
`
`APPLICANT’S MARKIS AT LEAST DECEPTIVELY MISDESCRIPTIVE.. 20
`
`1.
`
`ORGANICASPIRIN is Misdescriptive of the Character, Quality,
`Function, Composition or Use of the Goods Because Applicant’s Goods
`Do Not Contain ASpirit.....ccccccecsecccscsnccteecstesecseecsteccseseteesestaeeneseesnees 20
`
`Prospective Purchasers are Likely to Believe that the Misdescription
`Actually Describes the Goods Because the Mark Includes the Term
`ASPIRIN and There are Supplements on the Market That Contain
`ASPIUTID ececccecsesssestscsesersccssscnsesseessesesasecessesseesseesessaecsesesesaesesesesssnstensensenes 21
`
`OTHER FACTORS WEIGH AGAINST REGISTRATION OF ORGANIC
`ASPIRIN FOR DIETARY SUPPLEMENTSS... cccsssesseesersessrteesectersesseseeensens 21
`
`APPLICANT’S ADVERTISING, PRODUCT CONTAINER INFORMATION,
`OR WEBSITE INFORMATION DOES NOT MITIGATE POTENTIAL
`CONSUMER DECEPTIONwu ecccccccssscersesssssccsesseeessessrensereresnecnereessssserntens 23
`
`it
`
`

`

`F,
`
`APPLICANT INTENDED TO ADOPT A MARK WHICH CONVEYS THE
`IMPRESSION THAT HIS GOODS CONTAIN ASPIRIN uc ecccecssseerenesseteeerens 24
`
`V 1,
`
`SUMMARY eee eee eR PRS CES O UCR ESSERE COCO ROSOCOECES CSS RSOCRSSOSOCOOUCOCS SUES COS eeeC OTOL eereceerere eres eriveer rere) 25
`
`iti
`
`

`

`Cases
`
`IDEX OF CASES
`
`Bayer Co. v. United Drug Co., 272 F. 505 (D.C.NVY. 1921) cccccccccsscscessssesssevsstscsscsscssesveseessens 5
`
`Bishop v. Flournoy, 319 Fed. Appx. 897, 900, 2009 U.S. App.
`LEXIS 7378, *6 (Fed. Cir, May 15, 2009) occ ccsecseeseseeesessssesssecsscssesessecsssecsesseseeeeesessssssseeses 12
`
`Evans Products Co. v. Blise Cascade Corp.,
`218 USPQ (BNA) 160 (TTAB 1983) oo. ccccsccsetstecsteesssesssessssesessersssesecseseesesscsesevsvsesssnesssseveses 24
`
`In re ALP ofS. Beach, Inc.,
`79 USPQ2d (BNA) 1009 (TTAB 2006) oo. ccccccsccsesetetstssscserscsseecsesesssscsesscsesavssssseescsessassessens 14
`
`In re Broyhill Furniture Indus., Inc.,
`60 USPQ2d 1511, n. 4 CTTAB 2001) oc ccessseseneteescssteesseessseevssssssecseaseesssersensesesees 5, 6,9
`
`In re Budge Mfg. Co., Inc.,
`857 F.2d 773, 8 USPQ2d (BNA) 1259 (Fed. Cir, 1988) wccccccssccsssecsssssressssessssnes 11, 15, 21, 23
`
`In re Intex Plastics Corp.,
`215 USPQ (BNA) 1045 (TTAB 1982) .occccsscscsessesststscsscseesssssesscsessssescesssesscsseeessssvensentsess 14
`
`In re Organik Techs.,
`41 USPQ2d (BNA) 1690 (TTAB 1997)... cccccccssesesetssersseeessecsssesessscscsesevstsevevansessses 9, 16, 20
`
`In re Phillips-Van Heusen Corp.,
`63 USPQ2d (BNA) 1047 (TTAB 2002)... cccccccsetsssssscsnecessesesscsesssersessessesssesesstsneans 14, 17, 23
`
`In re Shapely, Inc.,
`231 USPQ (BNA) 72 (TTAB 1986) oc ccccesecseescsstetecsstssssssseseressessesessesecssesseesseeeesesesaess 14, 16
`
`In re Shniberg,
`79 USPQ2d (BNA) 1309 (TTAB 2006) oo... ccccscssesssssssessssssssssssserecsesssecscssssesscseesssssnsevsvsvscsesans 23
`
`In re Victoria Principal Productions, Inc.,
`78245283, 2009 T.T.A.B. LEXIS 233, at *26 (T.T.A.B. March 25, 2009) vo... ccccccescsssseneees 20
`
`R. Neumann & Co. v. Bon-Ton Auto Upholstery, Inc.,
`140 USPQ (BNA) 245 (C.C.P.A. 1964) ccccccccsessessseesssssssssseescssssesesesesessscsussssesesessseases 13, 25
`
`R, Neumann & Co. v. Overseas Shipments, Inc.,
`326 F.2d 786, 140 USPQ (BNA) 276 (CCPA 1964) .ccccccssecscsesessssssesscsscsesscssssvscsssssssssscsesesees 14
`
`Ritchie v. Simpson,
`170 F.3d 1092 (Fed. Cir, 1999) oo. ceccccesssessessssssssesesssecseeecssseesescessasssssesevsseusessvsussenessssaees 12
`
`iv
`
`

`

`Tanners' Council ofAmerica, Inc. v. Samsonite Corp.,
`204 USPQ (BNA) 150 (TTAB 1979) i iecccsecseescteterecsersectevtestsccsetsestscsestestesssssesereesneees 14, 23
`
`Tanners’ Council ofAmerica, Inc. v Gary Inds., Inc.,
`440 F.2d 1404 (C.C.PA. L971) oc eccceeneceneesetesteeenesseeneessecsessectesnsenaessesseseesenesisereeaeeneenees 13
`
`Universal Oil Prods, Co. v. Rexall Drug and Chem. Co.,
`463 F.2d 1122, 174 USPQ (BNA) 458, 459 (C.C.P.A. 1972) .ociccscsessetsetseteeneeseeeseneenenes 12,13
`
`Statutes
`
`15 U.S.C. § 1052(8) cc ecccscsecscesensecsecsectersesseseceesseceeeectecsecsaetseneeeresesseeesecaesssesessescseesateasaas 1,11
`
`15 U.S.C. § LOS2(€)L). ee eeccccssesteeseesesteeseseceecnssnessetsstestecsaeeeseseeectesesesieesesaseaesseesseesnes 1,11, 21
`
`37 CLEAR. § 1.22(8) cccceccsccscssscssesecssensecsevsessesessessesssessessessescsenesssessesssseeesssesesresssesssesatesssseeateass 2
`
`37 CLELR. § 2.122(a) veccccsscesescesseeteeseeneeneeneessseeseetesteneesecsessecsseceeesecsessesnaeeresseesessenesnsseaeessaeaeeaenees 3
`
`Other Authorities
`
`The American Heritage Dictionaryfor the English Language,
`Fourth Edition, Houghton Mifflin Company.....ccscssessssecssescsessetestssiessnesesssessessesssereees 3,5
`
`Rules
`
`Fed. R. of Evidence 201... cc cccsccesscteseesssstecsestenesscsesenectenessesecesensstesssseessssneesssceseesecssssesseeeas 3
`
`T.MLE.P. § 1203.02... ceccccccssessseseesecsecssenecsecseteccssesssessecsesssetesseeaesseseesesecsessecsessussessenateneeseneneeney 11
`
`T.M.E.P. § 1203.02 (A)(i) c.cccecccssccesssseessssssevsectscsersessctecsesssstecsseeessessessaseesesesaseessesseseessesesessess 24
`
`T.MLE.P. § 1203.02(A)G) ..ceccccccsccsceessececsecensccsenscsecsenseeesssersessesseenscesessssasesecasssesseteesnssesssnesees 18
`
`T.MLE.P. § 1203. O2(f) (1) cece ecceccesceeseesecnseseeessecsersecseneesectevsestecsreneessesssssaseesseneseesaesseesessenesessass 23
`
`T.MLE.P. § 1209.04. eiccccccsccseesseseceecseceescecseecssenecsecseneesesuecseeaeeseseesesessessecsesnecseceeerseseneegs 11, 23
`
`

`

`I.
`
`IDENTIFICATION OF PARTIES AND NATURE AND STATUS OF CASE
`
`Bayer Aktiengesellschaft, a German joint stock company, (“Opposer”or “Bayer”)
`
`respectfully submits this Brief in support of its Opposition to Stamatios Mouratidis’
`
`(“Applicant”) application for registration of the mark ORGANIC ASPIRIN onthe Principal
`
`Register for “dietary supplements for human consumption” in International Class5,
`
`Application Serial No. 77/208,071 (the ““071 Application”). Applicant filed the ‘071
`
`Application on June 17, 2007. The application was approved for publication on May 14, 2008
`
`and was publishedin the Official Gazette on June 3, 2008.
`
`Bayertimely filed a Notice of Opposition on July 29, 2008 because Applicant’s mark is
`
`deceptive under 15 U.S.C. § 1052(a) and deceptively misdecriptive under 15 U.S.C. §
`
`1052(e)(1). Applicant answered the Notice of Opposition on September8, 2008.
`
`Opposer requested that the Board participate in the discovery conference which was
`
`held on October 14, 2008. The Board issued an Order on October 16, 2008 that contained two
`
`factual stipulations agreed to by the parties, detailed Board resources available to the parties,
`
`and emphasized the need to follow the Board’s regulations (Order Re Discovery Conference,
`
`TTABVue Document No. 6).
`
`Bayer submitted its Notice of Reliance on August 3, 2009 duringits testimony period
`
`(TTABVue Document No. 13). Applicant did not submit any evidence and thus Bayerdid not
`
`submit any rebuttal evidence.
`
`

`

`Il.
`
`DESCRIPTION OF THE RECORD
`
`The evidence of record consists of the following evidence introduced by Opposer. The
`
`parties stipulated to the introduction of Internet evidence by way of Notice of Reliance. (See
`
`August 3, 2009 Order granting Opposer’s consented Motion, TTABVue DocumentNo.12).
`
`Applicant did not introduce any evidence. The following evidence was submitted in the Notice
`
`of Reliance:
`
`e Bayer U.S. Trademark Registration Nos.
`2,063,685; 3,345,876; and 2,065,441.
`(B00600-B00605).!
`
`e Various web pageprintouts and Printed
`Publication excerpts.
`
`e Applicant’s Responses to Requests for
`Admissions. (abbreviated as “RA”’)
`
`e Applicant’s Responses to Interrogatories.
`(abbreviated as “RI’’)
`
`e Documents produced by Applicant during
`discovery and authenticated by discovery OA
`responses
`
`e Physicians Desk Reference (“PDR”)
`excerpts. (B00524-B00599),
`
`Exhibit
`
`Exh. A
`
`Exh. B
`
`Exh, C
`
`Exh. D
`
`Exh. E
`
`Exh. F
`
`Additionally, pursuant to 37 C.F.R. § 1.22(a), the ‘071 Application is of record.
`
`The parties also entered into the following stipulations:
`
`(1) Applicant’s goods do not contain acetylsalicylic acid;
`
`' Bayerrefers to documents in the Notice of Reliance by document production numbers in the format B0000X,for
`Bayer-produced documents, or OAOOX, for documents produced by Applicant.
`* Order Re Discovery Conference, TTABVue Document No.6.
`
`

`

`(2) acetylsalicylic acid is a synthetic chemical compound;? and
`
`(3)to allow the introduction of Internet evidence accompanied by a Notice of
`
`Reliance.*
`
`Asstated in the Notice of Reliance, and pursuant to 37 C.F.R. § 2.122(a) and Fed. R. of
`
`Evidence 201, it is also respectfully requested that the Board take judicial notice of the
`
`following:
`
`Exhibit
`
`Exh. G
`
`Exh. H
`
`e The term “organic” means “simple, healthful,
`and close to nature: an organiclifestyle.”
`(See The American Heritage Dictionaryfor
`the English Language, Fourth Edition,
`Houghton Mifflin Company
`
`e The term “aspirin” means“[a] white,
`crystalline compound,
`CH3COOC6H4COOH,derived from
`salicylic acid and commonly usedin table
`form to relieve pain and reduce fever and
`inflammation.
`It is also used as an
`antiplatelet agent. Also called acetylsalicylic
`acid.” (See The American Heritage
`Dictionaryfor the English Language, Fourth
`Edition, Houghton Mifflin Company
`
`3 Order Re Discovery Conference, TTABVue Document No.6.
`* The Stipulation was acknowledged by the Board at TTABvue DocumentNo.12.
`
`

`

`Wl.
`
`STATEMENT OF THE ISSUES
`
`Whether Applicant’s proposed mark ORGANIC ASPIRIN for“dietary supplements for
`
`human consumption”is deceptive and deceptively misdescriptive. Bayer contends that
`
`because Applicant’s Supplements do not contain aspirin, the mark is misdescriptive of the
`
`goods and purchasersare likely to believe the misdescription, and such misdescriptionis likely
`
`to affect purchasing decisions.
`
`

`

`IV.
`
`RECITATION OF THE FACTS
`
`Bayer and its related companies are engaged in the development, manufacture,
`
`distribution and sale of a wide variety of pharmaceutical products, dietary supplements,
`
`nutritional supplements, vitamin supplements and mineral supplements, amongother products.
`
`(Exh. A at B00600-B00605; Exh. B at BO0508-B00523; Exh. F at BO0524-B00599). Bayer
`
`currently sells aspirin containing and non-aspirin containing products, including supplements.
`
`(Exh. A at BO0600-B00605; Exh. B at BO0508-B00523; Exh. F at BO0524-B00599). Bayer
`
`once owned the trademark ASPIRIN in the United States, which was deemed generic in the
`
`United States by the courts in 1921.
`
`(See Bayer Co. v. United Drug Co., 272 F. 505 (D.C.N.Y.
`
`1921); see also Exh. B at BO0068-B00069; Exh. C at RA 31-34). As such, Bayerhasa real
`
`interest in this proceeding andbelievesthat it will be damaged if the ORGANIC ASPIRIN
`
`markis registered.
`
`The term “aspirin” means“[a] white, crystalline compound, CH3COOC6H4COOH,
`
`derived from salicylic acid and commonly usedin tablet form to relieve pain and reduce fever
`
`and inflammation. It is also used as an antiplatelet agent. Also called acetylsalicylic acid.”
`
`(Exh. D at Supplemental RI 15; Exh. H at The American Heritage Dictionaryfor the English
`
`Language, Fourth Edition, Houghton Mifflin Company; Jn re Broyhill Furniture Indus., Inc.,
`
`60 USPQ2d 1511, 1514, n. 4 (TTAB 2001) (stating Board mayproperly take judicial notice of
`
`entries in dictionaries and other standard reference works)). Aspirin, acetylsalicylic acid,is a
`
`synthetic compoundandis not naturally occurring. (Parties’ stipulation, TTABVue Document
`
`No. 6). In the United States, aspirin is a generic term for the chemical acetylsalicylic acid.
`
`(Exh. C at RA 31-34). Acetylsalicylic acid has certain health benefits that have been
`
`recognized by the FDA and studies have shownthat aspirin consumption benefits the heart.
`
`(Exh. C at RA 39; 41; 93; Exh. B at B00001-B00018; B00029-B00034 (FDA); B00180-
`
`

`

`B00184 (FDA); B00245-B00282 (Aspirin Foundation website); BO0290-B00292 (article about
`
`FDA); B00416-B00426; B00430-B00444 (LEXIS excerpts)).
`
`Manyproducts on the market today contain aspirin, including over-the-counter
`
`(“OTC”) products such as supplements. (Exh. B at B00245-B00282 (Aspirin Foundation web
`
`pages); B00508-B00523; Exh. F at B00524-B00599). Consumers choose between products
`
`that contain aspirin and thosethat are “aspirin-free” and manufacturers commonlylabeltheir
`
`products as containing aspirin or as “aspirin free.” (Exh. F at BO0579 (2007 PDRproduct
`
`guide)),
`
`Applicantfiled the ‘071 Application for the ORGANIC ASPIRIN markfor use on or in
`
`connection with “dietary supplements for human consumption.” (June 17, 2007 Application
`
`for ORGANIC ASPIRIN mark). Applicant’s date of claimed first use in commerce is April
`
`26, 2007 and Applicant has made no claim of acquired distinctiveness for ORGANIC
`
`ASPIRIN.(id.).
`
`Despite the fact that Applicant has labeled his Supplements “ORGANIC ASPIRIN”
`
`and wants to register the ORGANIC ASPIRIN markfor dietary supplements, Applicant admits
`
`his Goods do not contain aspirin. (Exh. C at RA 43-44; Exh. D at Supplemental RI 2).
`
`Applicant’s Goods do contain meadowsweet, white willow, calcium carbonate, and hawthorne
`
`berry. (Exh. D at Supplemental RI 2; Exh. C at RA 53-56). Although these ingredients may
`
`contain salicylates, salicylates, by themselves, are not aspirin. Salicylates can be used to create
`
`the chemical acetylsalicylic acid, or aspirin (Exh. B at BO0063; BO0068; Exh. C at RA 31-34).
`
`In explaining aspirin’s heart healthy benefits, Applicant’s website states that aspirin wasfirst
`
`manufactured by “chemically modifying extracts of’ one of the ingredients of Applicant’s
`
`Goods. (Exh. B at B00063; see also BO0068).
`
`

`

`Not only do Applicant’s Supplements admittedly not contain aspirin, it is unclear
`
`exactly what the Supplements do contain because Applicant does notlist the amount of each
`
`ingredient used in the Supplements on his productlabels and,in fact, calls it his “proprietary
`
`formula.” (Exh. E at OA0004, authenticated Exh. C at RA 100; Exh. B at B00168). Evenif
`
`requested, Applicant will not disclose the composition of the Goods andwill not provide
`
`assays on the composition of his Goods. (Exh. D at Supplemental RI 42; Exh. C at RA 95),
`
`The only thing that is knownfor certain is that Applicant’s Goods do not contain aspirin.
`
`(Exh. C at RA 43-44; RA 31-34; Order Re Discovery Conference, TTABVue DocumentNo.
`
`6)
`
`The mislabeling of Applicant’s Supplements with the term “aspirin” is especially
`
`misleading because of the recognition by the FDA ofthe health benefits of aspirin.
`
`(Exh. C at
`
`RA 75; 93; Exh. B at BO0001-B00006; B00063-B00064;). Applicant advertises his Goods as
`
`though they do contain an “organic” form of aspirin and, according to Applicant, his “Organic
`
`Aspirin capsules [are] sold to promote cardiovascular health and general well being in healthy
`
`individuals.” (Exh. D at RI 11; Exh. E at OA0002 authenticated at Exh. C at RA 98).
`
`Applicant claims on his labels that the ingredients in his Goods“offer cardiovascular benefits”
`
`(Exh. E at OA0004 authenticated at Exh. C at RA 100) and that Applicantis “dedicated to
`
`providing the best botanical cardioprotective alternative to industrially synthesized
`
`medications.” (Exh. B at B00063). Rather than aspirin, the Goods may contain a precursor of
`
`aspirin, salicylate (Exh. B at B00063), that is not regulated by the FDA andthe statements
`
`made by Applicant regarding these ingredients have not been reviewed by the FDA.
`
`(Exh. C at
`
`RA 57-64; 72-73; Exh. B at B00168). The FDA has never determined that Applicant’s Goods
`
`or the ingredients contained in Applicant’s Goods offer cardiovascular benefits, as has been
`
`

`

`determined with regard to aspirin. (Exh. C at RA 39; 41; 57-64; 72-73; 93; Exh. B at B00001-
`
`B00018; B00029-B00034 (FDA); B00168; B00180-B00184 (FDA); B00245-B00282 (Aspirin
`
`Foundation website); BO0290-B00292 (article about FDA); B00416-B00426; B00430-B00444
`
`(LEXISexcerpts)).
`
`Applicant markets his Goods to consumers whoare interested in keeping theirhearts
`
`healthy and who have heart health concerns. (Exh. C at RA 29-30; 94). In fact, Applicant
`
`draws many parallels between his Goods’ ingredients and actualaspirin, stating that “aspirin
`
`(aka acetylsalicylic acid) owes its name to Spiraea Ulmaria [meadowsweet, an ingredient of
`
`Applicant’s Goods] (the a in aspirin is for acetyl, and the spir for Spiraea).” (Exh. B at
`
`B00068; B00074). Applicant advertises the supplements sold under ORGANIC ASPIRIN as
`
`“cardioprotective capsules.” (Exh. C at RA 3-4),
`
`Applicant also claims on his website that his Goods haveanti-clotting effects, anti-
`
`inflammatory action, reduce bloodlipids, and alleviate hypertension. (Exh. B at BO0063).
`
`However, the FDA has not evaluated any statements on his website or product containers (Exh.
`
`C at RA 72-73; Exh. E at OA0004, authenticated Exh. C at RA 100; Exh. B at B00168), the
`
`FDAdoesnot regulate his products (Exh. C at RA 69-71, 74; Exh. B at BO0011), and the FDA
`
`does not regulate the ingredients in Applicant’s Goods (Exh. C at RA 57-64). The FDA has
`
`approvedaspirin for certain treatments and conditions (Exh. C at RA 75; 93; Exh. B at
`
`B00001-B00006; B00063-B00064) and aspirin is commonly knownas a treatment for
`
`conditions such as inflammatory diseases (Exh. B at B00105). In contrast, no medical
`
`conditions can be treated by any of Applicant’s Goods (Exh. D at Supplemental RI 10; Exh. B
`
`at BO0168), The FDA is charged with the responsibility of protecting the public and in
`
`carrying out this responsibility regulates products containing aspirin. (Exh. C at RA 65-68).
`
`

`

`The public relies on FDA approval regulations and recall information (Exh. B at B00190-
`
`B00233; B00287-B00289; B00244). Organic products are becoming more and more
`
`commonplace in the U.S. marketplace, including organic supplements.
`
`(Exh. B at B00049-
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`B00062; B00107-B00162; B00293-B00401; B00405-B00414; Exh. F at B00562-B00574).
`
`Applicant’s mark combines the term “ASPIRIN”with the term “ORGANIC.” The
`
`term “organic” means“simple, healthful, and close to nature: an organic lifestyle.” (Exh. D at
`
`Supplemental RI 25; Exh. G at 3(d); In re Broyhill Furniture Indus., Inc., 60 USPQ2d 1511,
`
`1514 n. 4 (TTAB 2001) (statingit is settled the Board may properly take judicial notice of
`
`entries in dictionaries and other standard reference works)). Thus, the mark ORGANIC
`
`ASPIRIN suggests the associated Goods have to do with nature and health, contain aspirin, and
`
`thus are likely to be attractive to the typical purchaser. (Exh. C at RA 14-15); See also, In re
`
`Organik Techs., 41 USPQ2d (BNA) 1690, 1694 (TTAB 1997) (finding purchasing decision of
`
`those seeking environmentally friendly products would be strongly affected bybelief that the
`
`goods are “organic”). There has been a proliferation of organic goods in the U.S. marketplace
`
`in recent years, including organic supplements, (Exh. B at B00049-B00062; B00107-B00162;
`
`B00293-B00401; B00405-B00414; Exh. F at B00562-B00574). Applicant’s relevant
`
`consumer would be a typical person, not one with specialized knowledgein the field of
`
`chemistry.
`
`The ‘071 Application is not limited to any channel of commerce and can besold to any
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`class of consumer. (See June 17, 2007 Application for ORGANIC ASPIRIN mark; April 26,
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`2008 TRAM snapshotof application at publication). Applicant currently sells his supplements
`
`at his website at www.organicaspirin.com. (Exh. C at RA 7-10). However, at least tworetail
`
`outlets, a pharmacy and a health food store, have inquired as to carrying Applicant’s goods.
`
`

`

`(Exh. E at OA0005, authenticated at Exh. C at RA 101-2; Exh. E at OA0006, authenticatedat
`
`Exh. C at RA 103-4). Applicant has advertised the offer to sell his Goods wholesale. (Exh. D
`
`at RI54). Additionally, access to Applicant’s website is not restricted to chemists or medical
`
`personnel. (Exh. C at RA 86-91). Applicant admits he has received inquiries regarding the
`
`ingredients in his Goods, even by chemistry students. (Exh. C at Supplemental RA 80; Exh. D
`
`at Supplemental RI 40). Applicant’s consumer would be a typical person, not one with
`
`specialized knowledge,
`
`(Exh. C at RA 86-91),
`
`The evidence adduced by Opposer and presented here strongly supports a finding that
`
`Applicant’s ORGANIC ASPIRIN mark is deceptive and deceptively misdescriptive of his
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`Supplements. Accordingly, the ‘071 Application should be refused registration.
`
`10
`
`

`

`V.
`
`ARGUMENT
`
`A. Legal Standard
`
`Bayer provided significant evidence demonstrating that the proposed mark ORGANIC
`
`ASPIRIN is deceptive and misdescriptive. Section 2(a) of the Lanham Act prohibits
`
`registration of a trademark which consists of “deceptive” matter. 15 U.S.C. § 1052(a). A mark
`
`must be considered in relation to the goodsor services identified in the application when
`
`determining whetherit is deceptive or deceptively misdescriptive. T.M.E.P. § 1209.04. The
`
`U.S. Court of Appeals for the Federal Circuit has articulated the test for determining
`
`deceptiveness under Section 2(a) as: 1) whether the term is misdescriptive of the character,
`
`quality, function, composition or use of the goods; 2) whether prospective purchasersare likely
`
`to believe that the misdescription actually describes the goods; and 3) whether the
`
`misdescriptionis likely to affect the decision to purchase. In re Budge Mfg. Co., Inc., 857 F.2d
`
`773, 8 USPQ2d (BNA) 1259, 1260 (Fed. Cir. 1988). Deceptiveness under Section 2(a) is an
`
`absolute bar to registration. T.M.E.P. § 1203.02. Because Applicant’s markis deceptive,it is
`
`respectfully requested that registration be refused.
`
`If the first two elements above are met, the markis at least “deceptively
`
`misdescriptive” under Section 2 (e) (1) of the Lanham Act. 15 U.S.C. § 1052 (e) (1).
`
`Applicant’s mark is also deceptively misdescriptive because his Goods do not contain aspirin
`
`and the consumeris likely to believe they do. A markrefused registration pursuant to Section
`
`2 (e) (1) of the Lanham Act “may beregistrable under Section 2(f) upon a showing of acquired
`
`distinctiveness.” T.M.E.P. § 1209.04. Applicant has not claimed acquired distinctiveness.
`
`11
`
`

`

`Section 13 of the Lanham Actbroadly sets forth who may opposea registration.”
`
`Ritchie v. Simpson, 170 F.3d 1092, 1095 (Fed. Cir. 1999) (recognizing that Section 13 is the
`
`starting point in determining standing in an opposition proceeding and that the statute
`
`establishes a broad class of persons whoare proper opposers). There are, however, two other
`
`judicially created requirements for standing under 2(a). An opposerhas to plead and prove
`
`facts that show it has (1) a “real interest” in this proceeding and (2) a “reasonable basis” for a
`
`belief that it will suffer damageif the markis registered. Bishop v. Flournoy, 319 Fed, Appx.
`
`897, 900, 2009 U.S. App. LEXIS 7378, *6 (Fed. Cir. May 15, 2009); se also Ritchie, 170 F.3d
`
`at 1095,
`
`The Federal Circuit has explained “this is not a rigorous requirement, as statutory
`
`standing requires only that the party seeking cancellation reasonably believe thatit is likely to
`
`be damagedbytheregistration.” Bishop, 319 Fed. Appx. at 900. To establish a “real interest”
`
`a party has to show thatit has a direct and personal stake in the outcomeofthe opposition.
`
`Ritchie, 170 F.3d at 1095. Additionally, an opposer can establish a reasonablebasisfor its
`
`belief of damage in several ways, including by alleging a pecuniary interest in the mark or by
`
`alleging that it has a trait or characteristic that is directly implicated by the proposed mark. See
`
`id. at 1098; Universal Oil Prods. Co. v. Rexall Drug and Chem. Co., 463 F.2d 1122, 174
`
`USPQ (BNA)458, 459 (C.C.P.A. 1972).
`
`Even classes of persons offended by deceptive marksare likely to have standing under
`
`these liberal requirements. See Ritchie, 170 F.3d at 1097 (holding that an opposerhas “a real
`
`° Section 13 provides, in part: Any person whobelieves that he would be damagedbytheregistration of a mark
`upon the principal register may, upon paymentofthe prescribed fee, file an opposition in the Patent and
`Trademark Office.... 15 U.S.C. § 1063.
`
`12
`
`

`

`interest, a personal stake, in the outcome of the proceeding and is more than a mere
`
`intermeddler [because] his concerns are shared by a large numberof people, perhaps even the
`
`vast majority of the American public). Where an opposer’s pecuniary interest is the basis for
`
`its belief that damage will result from registration, it is even morelikely to meet theseliberal
`
`requirements. See Universal Oil, 174 USPQ at 459 (reasoning that a parent corporation had
`
`established standing becauseofthe potential of financial injury to its subsidiary); Tanners’
`
`Council ofAmerica, Inc. v Gary Inds., Inc., 440 F.2d 1404, 1406 (C.C.P.A. 1971) (holding that
`
`a trade association had established a pecuniary interest and therefore standing on the basis that
`
`the markis deceptive or deceptively misdescriptive). Bayer sells aspirin and non-aspirin
`
`products including pharmaceutical preparations and nutritional supplements, and believes that
`
`it will be harmed byregistration of Applicant’s mark.
`
`B. Applicant’s Markis Deceptive
`
`Applicant seeks registration of the name ORGANIC ASPIRIN for his non-aspirin
`
`Supplements. It is clear that when an applicant uses a word in its proposed mark which
`
`mislabels the goods, the proposed mark is deceptive: “Wefindit difficult to escape the
`
`conclusion that denominating a product as something whichit is not is deceptive and
`
`deceptively misdescriptive.” R. Neumann & Co. v. Bon-Ton Auto Upholstery, Inc., 140 USPQ
`
`(BNA) 245, 247 (C.C.P.A. 1964). The proposed ORGANIC ASPIRIN markis deceptive
`
`and/or deceptively misdescriptive of Applicant’s Goods because the Supplements do not
`
`contain aspirin.
`
`This Board has consistently held that when, asin this case, the proposed markis
`
`misleading to consumers based on the identified goods and/or services, that mark is deceptive
`
`and/or deceptively misdescriptive and the application has been refused registration. See, e.g.,
`
`13
`
`

`

`Inre ALP ofS. Beach, Inc.,79 USPQ2d (BNA) 1009 (TTAB 2006) (affirming a refusal to
`
`register CAFETERIA forrestaurant services because cafeteria services were not offered); Jn re
`
`Phillips-Van Heusen Corp., 63 USPQ2d (BNA) 1047 (TTAB 2002) (finding SUPER SILKis
`
`deceptively misdescriptive for clothing madeofsilk-like fabric); Jn re Shapely, Inc., 231
`
`USPQ (BNA) 72 (TTAB 1986) (holding SILKEASEdeceptive as applied to clothing not made
`
`of silk); R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786, 140 USPQ (BNA)276
`
`(CCPA 1964) (refusing DURA-HYDEas deceptive for shoes madeof a plastic material having
`
`a leather-like appearance); In re Intex Plastics Corp., 215 USPQ (BNA) 1045 (TTAB 1982)
`
`(holding TEXHYDEdeceptive as applied to synthetic fabric for use in the manufacture of
`
`furniture, upholstery, luggage, etc.); Tanners’ Council ofAmerica, Inc. v. Samsonite Corp., 204
`
`USPQ (BNA) 150 (TTAB 1979) (finding SOFTHIDEdeceptive for imitation leather material).
`
`In this case, Applicant’s Supplements do not contain aspirin and thus the mark ORGANIC
`
`ASPIRIN is deceptive and at least deceptively misdescriptive.
`
`1. ORGANIC ASPIRINis Misdescriptive of the Character, Quality, Function,
`Composition or Use of the Goods Because Applicant’s Goods Do Not Contain
`Aspirin
`
`Applicant has admitted his Supplements do not contain aspirin and thus the phrase
`
`“organic aspirin” is misdescriptive of Applicant’s Goods. There is no such ingredient as
`
`“organic aspirin.” Aspirin is a synthetic chemical compound whichisartificially created by
`
`man and whichis not naturally created. For this reason alone, Opposer has metthefirst prong
`
`of the test.
`
`Applicant’s Goods do contain meadowsweet, white willow, calcium carbonate, and
`
`hawthorne berry. These ingredients in Applicant’s Supplements might contain salicylates;
`
`however,this is not certain because Applicant does not allow any analysis of his Supplements
`
`14
`
`

`

`and provides no specifics regarding his “proprietary formula.” (Exh. E at OA0004
`
`authenticated at Exh. C at RA 100; Exh. B at BO0168; Exh. D at Supplemental RI 42; Exh. C
`
`at RA 95). Even if the Supplements do contain salicylates, aspirin (acetylsalicylic acid) is not
`
`the sameas salicylates. The term “aspirin” means:
`
`“Ta] white, crystalline compound, CH3COOC6H4COOH,derived from salicylic
`acid and commonly usedin tablet form to relieve pain and reduce fever and
`inflammation. It is also used as an antiplatelet agent. Also called
`acetylsalicylic acid.” (Exh. D at Supplemental RI 15).
`
`It is clear that ORGANIC ASPIRIN is misdescriptive of the character, quality,
`
`function, composition and/or use of Applicant’s Goods because the Supplements do not
`
`contain aspirin.
`
`2. Prospective Purchasers are Likely to Believe That the Misdescription Actually
`Describes the Goods Because the Mark Includes the Term ASPIRIN and
`There are Supplements on the Market That Contain Aspirin
`
`Manyproducts on the market today contain aspirin, including OTC products.
`
`(Exh. B
`
`at B00245-00282; B00508-B00523; Exh. F at B00524-B00599). Consumersdistinguish
`
`between products that contain aspirin and those that are “aspirin-free” and manufacturers
`
`commonly label their products as containing aspirin or as “aspirin free.” (Exh. F at B00579);
`
`see Inre Budge Mfg. Co. Inc., 857 F.2d 773, 775, 8 USPQ2d (BNA) 1259, 1261 (Fed. Cir.
`
`1988) (considering evidence from Examining Attorney that seat covers can be made from
`
`lambskin and affirming Board’s finding that LOVEE LAMBfor automobile seat covers made
`
`from synthetic fibe