Wednesday, July 13, 2016

WYHA? BEST PROTEIN Merely Descriptive of Nutritional Supplements, Says TTAB

The Board affirmed a Section 2(e)(1) refusal of the mark BEST PROTEIN, finding it merely descriptive of "dietary and nutritional supplements" [PROTEIN DISCLAIMED]. Applicant BPI Sports asserted that some imagination and/or forethought would be required to determine the meaning of the mark, but the Board disagreed. Would you have appealed? In re BPI Sports, LLC, Serial No. 86414907 (July 11, 2016) [not precedential].

Examining Attorney Eric Sable relied on dictionary definitions of "best" and "protein," and on product labels showing that protein is a common, heavily promoted ingredient of dietary and nutritional supplements (many of the products having "protein" in their names). The term PROTEIN is prominently displayed in applicant's own "fact sheet" and is an ingredient of applicant's supplements. The examining attorney also submitted website pages showing use of "best protein" in connection with those products.

Applicant BPI feebly argued that some thought or imagination is required in order to determine the mark's meaning in relation to its goods:

...the Examiner negates to mention that the cited Oxford Dictionary also states that “best” is defined to mean “most enjoyable” and “most appropriate, advantageous, or well advised.” Applicant submits that consumer (sic) can simply find that Applicant’s product is a “most enjoyable” dietary and nutritional supplement or a “most appropriate” or “well advised” dietary and nutritional supplement; neither of which would merely describe “the desirable quality of the goods” as asserted by the Examiner.

The Board, however, observed that laudatory terms are generally merely descriptive, and it had no doubt that BEST PROTEIN merely describes applicant's products because it identifies an ingredient thereof.

Finally, applicant pointed to several registrations for marks including the word PROTEIN for supplements, but the Board pointed out once again that the Board is not bound by decisions of examining attorneys in other cases. Each application must be examined on its own merits.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2016.


At 7:28 AM, Blogger Brad Salai said...

I don't know the circumstances of this case. It is possible that the lawyer(s) told the clients that they had virtually no chance of success and the clients insisted on pursuing the appeal anyway.

But even then, we have a separate responsibility not to continue to prosecute frivolous cases. Judge Markey (CCPA judge and fighter pilot) used to warn the bar that they had a responsibility to reevaluate cases at every stage, and stop when the case became unjustifiable. He would sanction lawyers for bringing an appeal even if the case might have been justified initially.

I know the board can't do this, but the principle remains valid, and we don't have to continue to pursue a hopeless case just because our clients insist. We have a responsibility that goes beyond that.

So, no, I wouldn't have.

At 10:46 AM, Blogger John L. Welch said...

It makes no sense to day that the TTAB should be bound by prior examination decisions. That would result in the law being set by the least capable examining attorneys. Just because some individual examining attorneys made bad decisions, never reviewed by the Board, shouldn't tie the hands of the TTAB.

At 12:15 PM, Blogger Brad Salai said...

To me, prior registration decisions are not evidence of anything, at most they might be precedent, but if you look at them that way, they wouldn't bind the Board which is at a higher level. I'm with the Board on this issue.

At 9:50 AM, Anonymous Freiburger said...

The comment to which I'm responding, which was the second comment to which John's comment at 10:46 was also responding, is gone now. In any event, I believe third-party registrations, whether offered by an examining attorney in support of a descriptiveness refusal or by the applicant to argue against that refusal -- are "evidence" in the sense that they may tend to support or negate the refusal. That is, they're something to be considered but are in no way dispositive.

At 10:42 AM, Anonymous Anonymous said...

John - I wasn't suggesting that the decisions of examiner should be legally binding precedent but that they should be persuasive evidence. The board has a whole host of decisions they cite to that allow them to summarily dismiss evidence used against the examiner, that if offered by the examiner would have been accepted on the merits. As for bad examiner's that's not an excuse - if a bad judge issues a decision it's still binding. That's the consequence of having a job that matters. You're essentially arguing that precedence is a bad idea because there might be some bad decisions.


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