Thursday, December 10, 2009

TTAB Deems "EVITAMINS" Merely Descriptive of On-line Vitamin Services, But Not Generic

Applicant Twin Associates faced twin refusals to register its mark EVITAMINS for catalog and on-line services featuring vitamins and dietary supplements: genericness and mere descriptiveness. Twin argued, alternatively, that its mark is either inherently distinctive or has acquired distinctiveness. The Board served up the bitter pill of defeat. In re Twin Associates, LC dba EVitamins, Serial No. 77443720 (November 24, 2009) [not precedential].

Genericness: The question was whether the relevant consumers [the general public] would understand the term EVITAMINS to refer to the genus at issue ["the sale of vitamins and vitamin-related products"]. [Why not a sub-genus: sale of vitamins via the Internet? - ed.].

Examining Attorney Steven W. Jackson contended that the "Board has repeatedly held that when the prefix 'e' ... is coupled with a generic word or term for electronic goods and/or services, then the entire mark is generic." [E.g., ESERVER, ETICKET]. The Board, however, noted that in those two cases there was "significant use" of the terms by others.

A term may be generic "even if applicant is the only entity using the term." [E.g., ATTIC for sprinklers]. Moreover, the Board "can consider the individual terms in the mark to determine if the entire mark is generic."

Here, "we have relatively little evidence ... to show that the term EVITAMINS is generic. *** We have no evidence that the term or even an equivalent term is used to refer to applicant's services or similar services." [The Board just said none is needed -ed.].

And so the Board reversed the genericness refusal. [Not very convincingly - ed.]

Mere Descriptiveness The Board had no trouble finding EVITAMINS to be merely descriptive under Section 2(e)(1). Dictionary definitions showed that the prefix "E" indicates "the electronic or internet nature of an item of service." And, of course, vitamin means vitamin.

Acquired Distinctiveness: Twins' proofs here were feeble and,one might say, in need of supplementation. Its advertising figures (max of $165,000 in 2007) were "relatively modest." Website visitors numbered 4 to 6 million per month, but no context was provided for these figures. Moreover, even if these numbers were more significant, they do not show that customers view the term EVITAMINS as a source identifier. In short, there was "no evidence to conclude how these visitors arrived at applicant's website and how many of them recognize applicant's term as a trademark."

Of course, the fact that Applicant may be the only entity using the term EVITAMINS does not mean that the term has acquired distinctiveness. And Applicant's use of the mark for five years likewise does not alone establish the term's source-identifying significance.

And so the Board affirmed the Section 2(e)(1) refusal.

TTABlog note: I think EVITAMINS is generic for on-line vitamin sales. In re Gould, 5 USPQ2d 1110 (Fed. Cir. 1987), applies to compound words and says that dictionary definitions alone may suffice to show that a term is generic.

Text Copyright John L. Welch 2009.


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