Wednesday, October 15, 2014

Test Your TTAB Judge-Ability: Is KETOSIS ESSENTIALS Merely Descriptive of Nutritional Supplements?

The USPTO refused registration of the mark KETOSIS ESSENTIALS, deeming it merely descriptive of nutritional supplements [KETOSIS disclaimed], under Section 2(e)(1). The examining attorney asserted that the constituent words describe the goods, and that the combination adds no new meaning. Applicant pointed out that it owns ten existing registrations for marks containing the word ESSENTIALS for nutritional supplements. How do you think this came out? In re Healthy Directions, LLC, Serial No. 85485512 (September 23, 2014) [not precedential].

Ketosis is a condition characterized by an elevated concentration of ketone bodies in the body's tissues and fluids, and is often a complication of diabetes. Applicant, by its disclaimer, acknowledged that KETOSIS is descriptive of the goods.

The examining attorney provided dictionary definitions of "essential," as well as nine third-party registrations for ESSENTIALS-formative marks and one ESSENTIAL-FORMATIVE mark, either on the Supplemental Register or with a disclaimer of ESSENTIALS, all for supplements.

The Trademark Examining Attorney argues that inasmuch as Applicant is providing supplements that contain essential vitamins, minerals and/or other nutrients for individuals dealing with elevated ketone levels, or ketosis, no imagination is required to understand the nature of the goods, and hence, the mark is merely descriptive.

Applicant's ten registered marks included JOINT ESSENTIALS [JOINT disclaimed], CRANBERRY ESSENTIALS [CRANBERRY disclaimed], and CHOLESTEROL ESSENTIALS [CHOLESTEROL disclaimed]. It argued that its ten registrations were more probative than those cited by the examining attorney because its marks were in the same form as the applied-for mark.

The Board noted that one dictionary definition of "essential," in adjectival form, referred to a substance that is not synthesized by the body in a quantity sufficient for normal health and growth
(e.g., essential amino acids). But it observed that when the word "essential" is used as a plural noun and as the second component of KETOSIS ESSENTIALS, "the information conveyed is not so immediate."

The registrations made of record indicated that the USPTO has not been consistent in its treatment of the word "essentials" for vitamins and supplements. Having a "not insignificant level of residual doubt" regarding the descriptiveness of the applied-for mark, the Board resolved that doubt in favor of applicant, and it reversed the refusal to register.

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Text Copyright John L. Welch 2014.


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