Wednesday, October 03, 2007

TTAB Affirms Descriptiveness Refusal of "METABOLIC BALANCE" in Six Classes

The TTAB deep-sixed a Section 66(a) request for extension of protection seeking registration of the mark METABOLIC BALANCE. The Board found the mark merely descriptive of health and nutrition-related goods and service in six classes, and affirmed the PTO's Section 2(e)(1) refusal. In re Metabolic Balance GmbH, Serial No. 79009729 (September 10, 2007) [not precedential].

Examining Attorney Mary Rossman maintained that METABOLIC BALANCE describes the subject matter of Applicant's prerecorded media and the purposes and uses of the programs, informational materials, blood analyzing instruments and services. She relied on dictionary definitions, third-party websites, NEXIS articles, third-party registrations containing disclaimers of the word METABOLIC, a now-cancelled registration in which the term "metabolic balance" is used in the identification of goods, and excerpts from Applicant's own English-language website.

In an attempt to counter-balance that mound of evidence, Applicant asserted that "metabolic balance" usually refers to a condition of the human body, and that it would take "imagination or multistage reasoning to associate the attributes of a healthy body to the particular goods and services in the identification."

Applicant acknowledged, however, that its goods and services "are intended to promote a healthy body through healthy and balanced nutrition." The Board concluded that the mark METABOLIC BALANCE "immediately and directly conveys to prospective consumers that a major characteristic of the goods and services is to create and/or maintain metabolic balance."

Applicant took issue with various portions of the PTO's evidence, but to no avail. It argued that the Office failed to show that the word "metabolic balance" are in use by others as a descriptive name for the goods and services, but the Board pointed out that a term is still descriptive even if the Applicant is the only one using it for the particular goods and services. In other words, just because an Applicant is the first or only one to use a term as a mark does not mean that the term is not descriptive.

The Board therefore affirmed the refusal to register.

TTABlog questions: Should one who seeks registration via a Section 66(a) request for extension of protection be called a "requestor" or an "applicant"? Answer: Applicant.

Is this mark eligible for the Supplemental Register? No. See Section 68(a)(4). It's the Principal Register or nothing for REPs.

Text Copyright John L. Welch 2007.


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