Tuesday, March 31, 2020

TTABlog Test: Is "PERFORMANCE" Merely Descriptive of Dietary Supplements?

The USPTO issued a Section 2(e)(1) refusal to register the proposed mark PERFORMANCE, finding it merely descriptive of "Energy bars; energy chews; energy gummy; effervescent tablets for making a dietary supplement drink; supplement for boosting energy; supplement for boosting the body's production of nitric oxide; joint protection supplement; supplement for body fat reduction; powdered creatine; creatine capsules; creatine tablets; nutritional candy." Examining Attorney Andrea B. Cornwell maintained that PERFORMANCE "merely describes a feature or purpose of Applicant’s goods, in that its supplements and energy foods are for improving one’s athletic performance." Applicant Shaklee argued, inter alia, that the mark is merely suggestive, since it "evokes a range of different products and not merely those identified in the identification of goods." How do you think this came out? In re Shaklee Corporation, Serial No. 87528703 (March 24, 2020) [not precedential] (Opinion by Judge David K. Heasley).

The Examining Attorney relied on dictionary definitions of "performance," on 17 websites excerpts showing common use of "PERFORMANCE" to describe supplements and energy foods that supposedly improve athletic performance (some describing a category of "performance" supplements, on other websites that describe the function or purpose of supplements as enhancing athletic performance, and on 34 registrations for relevant goods and in which the word was disclaimed.

Applicant Shaklee argued that PERFORMANCE "evokes an array of products, ranging from car parts to sports equipment," that seventeen third-party websites is "de mimimus" (sic!), and that no competitor calls its product "PERFORMANCE." It also pointed to seven registrations for relevant products, in which the word was not disclaimed. Finally Shaklee pointed to its prior 2(f) registration for PERFORMANCE for "powdered concentrate for making an electrolytic soft drink" and two registrations for SHAKLEE PERFORMANCE for that powdered concentrate and for various supplements.

The Board agreed with the Examining Attorney. It found that applicant's goods goods fall within the category of “performance” supplements. Contrary to Shaklee's argument, the mark must be considered in the context of the involved goods, not in the abstract. Furthermore, "performance" describes the purpose or function of the goods.

[A consumer] would immediately perceive that nutritional supplements bearing the mark PERFORMANCE are intended to improve athletic performance. That is why third-party competitors such as Gatorade and Kaged Muscle use the term “performance” descriptively: nutritional supplements are perceived as performance-enhancing. And that is why 34 third parties have registered marks for nutritional supplements with “performance” disclaimed.

As to Shaklee's prior registrations, the PERFORMANCE registration issued under Section 2(f), and thus conceded the word's descriptiveness in the context of the goods. The SHAKLEE PERFORMANCE registrations may have issued without disclaimers because it was assumed that the SHAKLEE portion would distinguish its products from others. In any case, each application must be examined on its own record, and the Board is not bound by prior decisions of examining attorneys in other applications.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How was your performance?

Text Copyright John L. Welch 2020.


At 2:25 AM, Anonymous Mitch Stabbe said...

"Each application must be examined on its own record." Words that make me groan! I've said this before, but ... how are trademark attorneys supposed to advise clients as to how their marks will be (or even are likely to be) treated if prior treatments of similar marks may simply be ignored?

At 11:20 AM, Anonymous Anonymous said...

To answer Mitch: Very simply -- do what the Board does, ignore the other registrations and analyze the mark that your client is applying for as if it exists in a vacuum. If your own research suggests that the mark is descriptive in connection with the goods or services it is being used with, advise the client as such. Then, you can tell the client that other similar marks used in connection with similar goods or services have registered, but that does not mean your client's mark will be approved because third-party registrations are not "precedential" and (using your favorite phrase), "each application must be examined on its own record."

At 10:01 AM, Blogger John L. Welch said...

The Board cannot be bound by the decision of a single examining attorney of unknown capabilities, in a different case on different facts. The law would be reduced to the lowest common denominator.


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