WYHA? TTAB Finds "5 DAY FASTING DIET" Merely Descriptive of Nutritionally Balanced Prepared Meals

The Board affirmed a Section 2(e)(1) refusal of 5 DAY FASTING DIET, finding the proposed mark to be merely descriptive of nutritionally balanced prepared meals for medical use sold only after consultation with a doctor. Applicant L-Nutra feebly argued, inter alia, that the word "fast" could not immediately describe its goods because the word has 37 different dictionary meanings. Not so fast, said the Board. In re L-Nutra, Inc., Serial No. 88757432 (December 3, 2021) [not precedential] (Opinion by Judge Christopher Larkin).

L-Nutra insisted that a consumer could not, just by looking at the mark, understand that the goods require a medical consultation. The Board pointed out, however, that "these arguments reflect an all-too-common and fundamental misunderstanding of the test for mere descriptiveness, but they are particularly troubling here because Applicant’s counsel is not writing them on a clean slate." The Board had rejected the same arguments in two other appeals filed by L-Nutra: for the proposed marks 1 DAY FASTING DIET and FASTING BAR. As the Board pointed out in both prior decisions, "the fact that the word 'fast' 'may have other meanings in different contexts is not controlling.'”

We must consider the meaning of the word FASTING, the gerund form of the verb “fast,” in the context of the goods identified in the application, and not, as Applicant has now argued three times, in the abstract.

The Board again found that the word FASTING in the proposed mark describes a feature or attribute of the goods identified in the application, “namely, that they are . . . to be consumed . . . while ‘eat[ing] sparingly or abstain[ing] from certain foods.’” In sum, the word FASTING is descriptive of the identified goods, as are the other words in the proposed mark. 

L-Nutra also maintained that Examining Attorney Jillian R. Cantor’s evidence regarding the use of the constituent words of the mark was insufficient to show descriptiveness because, "as Applicant claims ad nauseam," each of the articles in the record "does not use the Mark in a descriptive fashion in connection with the Applicant’s goods." The Board rejected the same argument in the FASTING BAR case.

As the Board bluntly put it, “[t]hat is not the law.” Id. “‘There is no requirement that the Examining Attorney prove that others have used the mark at issue or that they need to use it, although such proof would be highly relevant to an analysis under Section 2(e)(1).’” *** The “‘fact that Applicant may be the first or only user of a term does not render that term distinctive, if it otherwise meets the standard’ for descriptiveness.” 

Finally, L-Nutra pointed to a number of FAST-formative marks for various goods in class 5, but the Board pointed out for the umpteenth time that each case must be decided on its own evidentiary record, noting that "[m]arks that are merely descriptive or generic do not become registrable simply because other seemingly similar marks appear on the register."

The Board had no doubt that the proposed mark is descriptive of the goods, and so it affirmed the refusal to register.

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Text Copyright John L. Welch 2021.