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 In re BPI Sports, LLC, Serial No. 86414907 (July 11, 2016) [not precedential].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.

At 4:26 PM, Anonymous K Soule said...

No, I would not have appealed the final action of the United States Patent and Trademark Office (USPTO) issued on August 4, 2015.
The USPTO issued the final action, a Section 2(e)(1) refusal, to the applicant, BPI Sports, LLC, in response to BPI’s application (serial no. 86414907) to register the mark “BEST PROTEIN” with a disclaimer of the word “protein” apart from the mark as shown. The applicant filed the application under 15 U.S.C. §1051(b)with a bona fide intention to use the trademark for dietary and nutritional supplements.
The USPTO issued a refusal under 15 U.S.C. §1052(e)(1) (“Lanham Act §2(e)(1)”) because the mark “when used in connection with the goods of the applicant is merely descriptive…of them.” A mark is ineligible for federal protection through registration on the principal register when it merely describes the goods.
The examiner notes that a mark is descriptive if it “’consists merely of words descriptive of the qualities, ingredients, or characteristics of’ the goods or services related to the mark.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251 (Fed. Cir. 2012), quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173 (Fed. Cir. 2004).
The examiner first looks to the plain English definition of the terms “BEST” and “PROTEIN.” The examiner defines “best” as “of the most excellent, effective, or desirable type or quality,” a verbatim definition as provided in the Merriam-Webster Dictionary. The examiner advises that “best” is merely laudatory. As McCarthy explains, “Marks that are merely laudatory and descriptive of the alleged merit of a product are also regarded as being descriptive.... Self-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods.” McCarthy, Thomas J., 2 McCarthy on Trademarks and Unfair Competition §11:17 (4th ed. 1996).
“Protein” is defined by the dictionary as “any of numerous, highly varied organic molecules constituting a large portion of the mass of every life form and necessary in the diet of all animals… that supply essential amino acids to the body.” The applicant recognizes the generic nature of the term “protein” as it applies to the applicant’s goods and has already provided a disclaimer of the term.
Generally, if the individual components of a mark are descriptive of the good, the combination of the components results in a composite mark that remains descriptive and unregisterable. In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012). Marks have been consistently refused as merely descriptive under §2(e)(1) when the term “best” is combined with other merely descriptive language. In re Boston Beer Co. L.P., 198 F.3d 1370 (Fed. Cir. 1999). Here, protein has already been disclaimed as generic, and combining the generic term “protein” with the laudatory term “best” does not elevate “BEST PROTEIN” beyond descriptive.
Given the above considerations, I would not have appealed the USPTO Examiner’s final action denying registration of the term “BEST PROTEIN.” Because the applicant filed under §1(b), an intent to use application, there is no need to discuss attempting to gain some protection through registration on the Supplemental Register because the mark must be in use before even being considered for the Supplemental Register and the applicant has not yet used the mark. I would advise BPI that if it did not desire to come up with a new mark, the company is still permitted to use the mark (though I would want to do an availability search to make sure there were no obviously barring marks), but that they would not have nationwide priority or federal protection. I would have encouraged BPI to choose a new mark and not to appeal the final action because the term “BEST PROTEIN” is merely descriptive of the goods.


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