Monday, May 19, 2014

TTAB Reverses 2(a) Deceptiveness Refusal of "BODY MINT & Design" for Dietary Supplements

The Board tossed out a Section 2(a) refusal to register the mark BODY MINT & Design for "dietary supplements; dietary supplements for promoting personal hygiene," finding that the word "mint" neither misdescribes the goods, nor is likely to affect consumer's purchasing decisions. In re Hawaiian Organics, L.L.C., Serial No. 85505232 (May 12, 2014) [not precedential].

The Examining Attorney argued that "mint" misdescribes the goods because applicant's supplements admittedly do not contain mint. Applicant maintained that the word has a broader meaning that the contents of the plant: it also may refer to the flavoring. Applicant's specimens of use refer to the scent of mint.

Applicant also pointed to its two existing registrations for BODY MINT in standard character form for legally identical goods, but the Board noted that there is no time limit on contestability for Section 2(a) claims and therefore these prior registration do not overcome the refusal. However, the Examining Attorney accepted the registrations as evidence of acquired distinctiveness of the term "body mint," and that fact strengthens applicant's argument that the word "mint" would not be misdescriptive of the goods.

The Board then considered whether consumers would likely believe the misdescription [assuming that "mint" is misdescriptive], and whether that would materially affect the purchasing decision. The Examining Attorney submitted several website pages referencing the health benefits of mint. Applicant provided a declaration from its "Member Manager," stating that despite sales of two million units of its goods, not one consumer has complained regarding the presence or absence of mint.

The Board concluded that the applicant had rebutted the PTO’s evidence that the mark misdescribes the goods. Moreover, as to the other two prongs of the Section 2(a) test, it found that, although the examining attorney established that consumers expect mint to provide health benefits, there was “scant evidence” that mint is often taken in the form of a dietary supplement, or that “when advertised with deodorant ‘mint’ refers to actual mint content as opposed to mint ‘flavoring’ or suggestiveness as would fit within the dictionary definition, nor that this is likely to affect consumers’ decisions.”

Therefore the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment:  If the first prong of the test was not met (misdescriptiveness), why discuss the second and third prongs?

Text Copyright John L. Welch 2014.


At 11:35 AM, Anonymous Anonymous said...

This whole case is confusing. It's 2f, so applicant was fine in saying it's descriptive or misdescriptive. So the decision hinged on whether its deceptively misdescriptive, and the board say no because MINT is suggestive of a flavor?? Isn't that the whole point, isn't that WHY it's deceptive? I buy this specifically because it's mint flavored. I am missing something, clearly.
Anyways, I noted from the prosecution history that this was withdrawn from publication by OG specifically to overrule the examiner's initial decision, i.e. the EA did not issue this refusal, but the OG reviewer made her.. and ultimately, she lost. I know the EA's are held accountable for such errors, I wonder if the OG reviewers are. This decision by the OG cost the applicant $$, time and hassle. Seems there's quite a misunderstanding of the refusal by those in a superior position. (And, this may explain why the EA's evidence was "scant".. frustrated, angry, lack of motivation?)


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