N.V.E., INC.

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re : Robert Occifinto :
: Robin S. Chosid-Brown
Serial No. : 77/095,619 : Trademark Attorney
: Law Office 102
Filed : January 31, 2007 :
:
Trademark : VITAMIN SHOT :
:

Commissioner for Trademarks
P.O. Box 1451
Alexandria, Virginia 22313-1451

RESPONSE TO OFFICE ACTION

This is in response to the Office Action dated December 5, 2007.

REMARKS

The Examining Attorney states that the Applicant must provide additional

information to determine the nature of the identified goods. Applicant states that the identified

goods are nutritionally-fortified supplement drinks packaged in small plastic containers, marketed

through the use of distinctive labeling and point-of-purchase displays in convenience stores, filling

stations, and grocery stores. Applicant does not as of yet have marketing materials of such goods,

but has attached marketing materials relating to goods already being sold in commerce by Applicant

which are similar to Applicant’s Vitamin Shot product.

The Examining Attorney states that the Applicant must specify whether the goods are

injectable. Applicant states that the goods are not injectable.

The Examining Attorney objects that the mark sought to be registered is merely

descriptive. Applicant respectfully disagrees for the reasons discussed below.
ARGUMENT

A. The Overall Mark Conveys a Distinctive Connotation

Applicant respectfully submits that the rejection under Section 2(e)(l) be withdrawn.

To be considered descriptive, a term must immediately convey information to a purchaser as to a

function, quality, characteristic or ingredient of the goods or services. See In re T.M.S. Corporation

of the Americas, 200 U.S.P.Q. 57, 58 (T.T.A.B. 1978) (reversing refusal to register THE MONEY

SERVICE for financial services; the Board found that the mark was suggestive rather than

descriptive). A term is suggestive if it requires thought, imagination or perception to reach a

conclusion as to the nature of the goods. In re Rank Organisation Ltd., 222 U.S.P.Q. 324, 326

(T.T.A.B. 1984). To determine if a mark is descriptive or suggestive, we look to “how immediate

and direct … the thought process [is] from the mark to the particular product.” Nautilus Group Inc. v.

ICON Health and Fitness Inc., 71 U.S.P.Q.2d 1173 (C.A.F.C. 2004) (affirming district court finding

that the compound term BOWFLEX was a suggestive mark).

Like the examples cited above, the Applicant’s VITAMIN SHOT mark is a compound

term which does not immediately connote the precise qualities or characteristics of Applicant’s

services. There is no category of goods or services named “VITAMIN SHOT,” nor does the phrase

“VITAMIN SHOT” appear in any dictionary. Indeed, the exact nature of Applicant’s goods are

unclear when the VITAMIN SHOT mark is considered alone. This is further supported by the

Examining Attorney’s statement regarding the goods, in which she describes a “vitamin shot” as “an

injection of vitamins with a hypodermic needle” and merely descriptive since “the combination of

terms merely describes the delivery method of the applicant’s goods.” The Applicant’s goods, on the

contrary, are not injectible vitamins, but nutritionally-fortified supplement drinks. “If information

about the product or service given by the term used as a mark is indirect or vague, then this indicates

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that the term is being used in a ‘suggestive’ manner.” 2 J. McCarthy, Trademarks and Unfair

Competition, § 11.19 (4th Ed. 2004). Given the obvious disconnect between the “expected” use of

the mark to describe an injectible vitamin product, and the actual use of the mark on the Applicant’s

nutritionally-fortified supplement drink products, the mark is clearly being used in a suggestive

manner.

B. The Mark Must be Considered as a Whole

The proper test under Section 2(e)(1) is whether the mark considered as a whole

possesses a merely descriptive significance. See In re Bright-Crest, Ltd., 204 U.S.P.Q. 591

(T.T.A.B. 1979); accord In re Hutchinson Technology Inc., 7 U.S.P.Q.2d 1490 (Fed. Cir. 1988)

(finding error in the Board’s consideration of the mark HUTCHINSON TECHNOLOGY as two

separate parts and analyzing the registrability of each word separately). Indeed, the mere fact that a

mark is composed of commonly used terms does not render it merely descriptive of an Applicant’s

goods. See, e.g., Application of Colonial Stores, 394 F.2d 549 (C.C.P.A. 1968) (SUGAR & SPICE

not merely descriptive of bakery products).

Many cases support applicant’s position. See, e.g., In re computer Business Systems

Group, 229 U.S.P.Q. 859 (T.T.A.B. 1985) (AUTO MATE or AUTO*MATE suggestive of computer

programs); In re Polytop Corp., 167 U.S.P.Q. 383 (T.T.A.B. 1970) (LOC TOP not merely descriptive

of bottle closure caps); In re Hunt, 132 U.S.P.Q. 564 (T.T.A.B. 1962) (MARRIAGE PROPONENTS

not merely descriptive of prospective marriage partners services). Given that the marks in these

cases were found not descriptive, then a fortiori, neither is the mark VITAMIN SHOT at issue here.

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It is well settled that even the combination of two or more admittedly descriptive

elements as a composite mark may result in a composite mark which is non-descriptive. As stated

by Professor McCarthy:

[T]he commercial impression of a composite mark may be arbitrary
or suggestive even though its parts are descriptive. The composite
may be more than the mere sum of its parts: ‘The whole in trademark
law is often greater than the sum of its parts. Common words in
which no one may acquire a trademark because they are descriptive or
generic may, when used in combination, become a valid trademark.’

2 McCarthy, McCarthy on Trademarks, 11:26 (4th ed. 2005) (citations omitted); See also In re

Wells Fargo & Co., 231 U.S.P.Q. 116 (T.T.A.B. 1986) (EXPRESS SAVINGS not descriptive for

banking services); Concurrent Technologies Inc. v. Concurrent Technologies Corp., 12 U.S.P.Q. 2d

1059 (T.T.A.B. 1989) (CONCURRENT TECHNOLOGIES CORPORATION not descriptive for

electronic circuit boards).

C. The Mark is Suggestive With Respect to the Subject Goods

While the Office Action cites to an internet dictionary regarding the definition of the

term “shot,” the Examining Attorney has offered absolutely no evidence supporting any use of the

term “shot” in conjunction with the term “vitamin” with respect to nutritionally-fortified supplement

drink products. If the mark VITAMIN SHOT were in fact merely descriptive, the Examining

Attorney should be able to show numerous instances in which the terms were used together as a

unitary concept related to such drink products. The apparent lack of such evidence is yet another

indication that the mark VITAMIN SHOT is suggestive, and not merely descriptive, of the

Applicant’s goods.

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The Office Action cites to no evidence in support of the refusal to register other than

the meanings and usage of the mark’s component terms. Applicant does not dispute the argument

that the meaning of the individual terms in the mark may suggest that the overall mark has some

significance in connection with the goods. However, “a designation does not have to be devoid of all

meaning in relation to the goods and services to be registrable.” T.M.E.P. Section 1209.01(a).

The mark VITAMIN SHOT may allude in some manner to the goods for which

registration is sought, but the fact that a term is suggestive does not in any way impede its ability to

function as a mark. To the contrary, the courts have acknowledged that “often the best trademark

may be highly suggestive, and it is well settled that a valid trademark may be highly suggestive.”

Minnesota Mining and Mfg. Co. v. Johnson & Johnson, 454 F.2d 1179, 1180, 172 U.S.P.Q. 491

(C.C.P.A. 1972).

D. Any Doubt Should Fall in Applicant’s Favor

Applicant urges the Examining Attorney to follow the long established policy of the

U.S.P.T.O. to resolve any doubt as to whether a mark is merely descriptive in favor of the applicant.

See In re Morton-Norwich Product, Inc., 209 U.S.P.Q. 791 (T.T.A.B. 1981) (COLOR CARE held

not merely descriptive of color safe laundry bleach); In re Shutts, 217 U.S.P.Q. 363 (T.T.A.B. 1983)

(SNO-RAKE is not merely descriptive of a snow removal hand tool).

With the above, Applicant submits that all questions are now answered and

respectfully requests that the Examining Attorney pass the mark for publication.

Dated: June 5, 2008
Paramus, New Jersey

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Respectfully submitted,

/Charles P. Guarino/
____________________________________
Charles P. Guarino
Of Counsel
NICOLL DAVIS & SPINELLA, LLP
95 Route 17 South, Suite 203
Paramus, New Jersey 07652
Telephone: (201) 712-1616

Attorneys for Applicant

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