Vitamins, dietary and nutritional supplements delivered in a vitamin concentrate; nutritionally fortified protein drinks; nutritionally fortified water
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
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.
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 Applicants 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.
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Applicant respectfully submits that the rejection under Section 2(e)(l) be withdrawn.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 Applicants VITAMIN SHOT mark is a compound
term which does not immediately connote the precise qualities or characteristics of Applicants
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 Applicants goods are
unclear when the VITAMIN SHOT mark is considered alone. This is further supported by the
Examining Attorneys 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 applicants goods. The Applicants 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
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 Applicants
nutritionally-fortified supplement drink products, the mark is clearly being used in a suggestive
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 Boards 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 Applicants
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 applicants 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.
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
The Office Action cites to no evidence in support of the refusal to register other than
the meanings and usage of the marks 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
D. Any Doubt Should Fall in Applicants 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
/Charles P. Guarino/
Charles P. Guarino
NICOLL DAVIS & SPINELLA, LLP
95 Route 17 South, Suite 203
Paramus, New Jersey 07652
Telephone: (201) 712-1616
Attorneys for Applicant