Biogena GmbH & Co KG

Trademark Trial and Appeal Board

Mar 7, 2022

79284823 (T.T.A.B. Mar. 7, 2022)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: March 7, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Biogena GmbH & Co. _____ Application Serial No. 79284823 _____ Jeffrey Goehring of Nixon & Vanderhye for Biogena GmbH & Co. Max Faucette, Trademark Examining Attorney, Law Office 17, J. Leslie Bishop, Managing Attorney. _____ Before Zervas, Bergsman, and Goodman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Biogena GmbH & Co. (“Applicant”) seeks registration on the Principal Register of the mark 7-SALT MAGNESIUM (in standard characters) for the goods listed below: Pharmaceutical and veterinary preparations, namely, nutraceuticals for use as a dietary supplement; sanitary preparations for medical purposes; dietetic food and substances adapted for medical and veterinary use, namely, dietetic foods for a balanced diet adapted for medical and veterinary use; starch for dietetic foods adapted for medical uses and pharmaceutical purposes; food for babies, namely, powdered milk for babies; dietary supplements for humans and animals for medical purposes, namely, antioxidant food supplements for humans and animals for medical purposes; nutritional supplements and dietetic food supplements adapted for medical uses for sports and performance enhancement; Serial No. 79284823 - 2 - meal replacement powders for sports and performance enhancement for medical use; mineral food supplements, consisting primarily of vitamin preparations, amino acids, mineral supplements and trace elements being mineral preparations, all adapted for medical purposes; vitamin preparations; dietetic preparations adapted for medical purposes, namely, for making medicated dietetic beverages; drinks for medical purposes, namely, herbal teas for medicinal purposes; medical plasters; surgical dressings; material for dental fillings and dental impressions; disinfectants; preparations for destroying noxious animals; fungicides, herbicides, in International Class 5.1 The Examining Attorney refused to register Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark is merely descriptive because it “merely indicates that identified dietary supplements contain seven magnesium salt compounds blended together.”2 Citations to the briefs refer to TTABVUE, the Board’s online docket system. See, e.g., New Era Cap Co., Inc. v. Pro Era, LLC, 2020 USPQ2d 10596, *2 n.1 (TTAB 2020). Citations to the prosecution history refer to the USPTO Trademarks Status and Document Retrieval (TSDR) system by page number in the downloadable .pdf format. I. Applicable Law Section 2(e)(1) of the Trademark Act precludes registration of “a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A term is merely descriptive within the meaning 1 Serial No. 79284823 was filed on November 29, 2019, under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f, requesting an extension of protection of International Registration No. 1528976 registered on November 29, 2019. 2 Examining Attorney’s Brief (8 TTABVUE 10). Serial No. 79284823 - 3 - of the statute “if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); see also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015). We “must consider the mark as a whole and do so in the context of the goods or services at issue.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re Calphalon Corp., 122 USPQ2d 1153, 1162 (TTAB 2017). “Whether consumers could guess what the product is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). Rather, “the question is whether someone who knows what the goods and services are will understand the mark to convey information about them.” DuoProSS, 103 USPQ2d at 1757 (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)). This principle of analyzing the mark as a whole applies to word marks with multiple components as well. In considering a mark as a whole, the Board may weigh the individual components of the mark to determine the overall impression or the descriptiveness of the mark and its various components. … [I]f ... portions individually are merely descriptive of an aspect of appellant’s goods, the PTO must also determine whether the mark as a whole, i.e., the combination of the individual parts, conveys any distinctive source-identifying impression contrary to the descriptiveness of the individual parts. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004). Cf. In re Am. Fertility Soc’y, 188 F.3d 1341, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999) Serial No. 79284823 - 4 - (the USPTO must consider the mark in its entirety because the mark, as whole, may be greater than the sum of its parts). “Evidence of the public’s understanding of [a] term . . . may be obtained from any competent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers[,] and other publications.” In re Fallon, 2020 USPQ2d 11249, at *7 (TTAB 2020) (quoting Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1374 (Fed. Cir. 2018)). “These sources may include [w]ebsites, publications and use in labels, packages, or in advertising materials directed to the goods.” Id., at *7-8 (quoting In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017) (internal quotation omitted)). “Evidence that a term is merely descriptive similarly may come from an applicant’s own usage other than that found on its labels, packaging or advertising materials.” In re Omniome, Inc., 2020 USPQ2d 3222, at *4 (TTAB 2019). II. Facts Wikipedia.org entry for “Salt” describes “salt” as follows: Salt is a mineral composed primarily of sodium chloride (NaCl), a chemical compound belonging to a larger class of salts: salt in its natural form as a crystalline mineral is known as rock salt or halite. … Salt is essential for life in general, and saltiness is on the basic human tastes. Salt is one of the oldest and most ubiquitous food seasonings, and salting is an important method of food preservation. ___ Serial No. 79284823 - 5 - Sodium is an essential nutrient for human health via its role as an electrolyte and osmotic solute.3 The Wikipedia.org entry for “Salt (chemistry) describes “salt” as follows: In chemistry, a salt is a chemical compound consisting of an ionic assembly of cations and anions. Salts are composed of related numbers of cations (positively charged ions) and anions (negatively charged ions) so that the product is electrically neutral (without a net charge). The component ions can be inorganic, such as chloride ( )or organic, such as acetate ( ); and can be monatomic, such as fluoride ( ) or polyatomic, such as sulfate ( ).4 The MERRIAM WEBSTER DICTIONARY (merriam-webster.com) defines “salt,” inter alia, as “a crystalline compound NaCl that is the chloride of sodium, is abundant in nature, and is used especially to season or preserve food or in industry.”5 The MERRIAM WEBSTER DICTIONARY (merriam-webster.com) defines “magnesium,” inter alia, as “a silver-white light malleable ductile metallic element that occurs abundantly in nature (as in bones and seeds in the form of chlorophyll in the green parts of plants) and is used in metallurgical and chemical processes, in photography, in signaling, and in the manufacture of pyrotechnics because of the intense white light it produces on burning.”6 3 May 18, 2020 Office Action (TSDR 6). 4 December 12, 2020 Response to Office Action (TSDR 9). 5 December 12, 2020 Response to Office Action (TSDR 19). 6 May 18, 2020 Office Action (TSDR 20). Serial No. 79284823 - 6 - Applicant’s website (biogena-usa.com) describes 7-SALT MAGNESIUM as consisting of “seven magnesium compounds that differ in their biochemical solubility.”7 Magnesium is “crucial for the functioning of over 300 enzymes” and is “involved in almost all metabolic processes in the cell.”8 The mineral is particularly important for muscle function, nerves and the nervous system, for building normal teeth and bones as well as for the electrolyte balance within the body.9 ___ Therefore, a balanced mixture of magnesium salts with different solubility characteristics, is favorable.10 In its product catalog, Applicant explains the importance of magnesium and the benefits of its product as a dietary supplement as follows: Magnesium is important for muscle function, nerves and the nervous system, normal teeth and bone formation, and electrolyte balance. Biogena 7-Salt Magnesium is an ideal mixture of seven magnesium-rich compounds that dissolve at different pH values prevalent in different sections of the gastrointestinal tract.11 7 January 8, 2021 Request for Reconsideration (TSDR 9). Although Applicant did not include the URL for its website, Applicant explained that this exhibit “is a more complete version of the webpage [submitted by the Examining Attorney in the May 18, 2020 Office Action at TSDR 23] showing that seven magnesium salts are: (1) magnesium malate; (2) magnesium bisglycinate; (3) magnesium citrate; (4) magnesium oxide; (5) magnesium glycerophosphate; (6) magnesium gluconate; and (7) magnesium carbonate.”). Id. at TSDR 6. 8 January 8, 2021 Request for Reconsideration (TSDR 9). 9 Id. 10 Id. 11 June 29, 2021 Request for Reconsideration (TSDR 140). Serial No. 79284823 - 7 - As Applicant stated in its website noted above, 7-SALT MAGNESIUM supplement is a blend of magnesium salts. Applicant reiterates that point in its Biogena Magazine (February 2021). The bioavailability of magnesium salts depends on various factors. A major factor influencing absorption is the solubility of magnesium salts in water. More highly soluble salts can be better absorbed. … To develop an ideal mixture of various magnesium salts, extensive solubility tests were carried out at the headquarters of Biogena. Biogena 7-Salt Magnesium was shown to offer a perfect solubility range of pH values, providing a consistently efficient magnesium supply.12 See also Applicant’s product catalog for Earth-Salt Mineral Formula indicating that the trace elements comprising dietary supplements are salts. Earth-Salt Mineral Formula provides a balanced mix of magnesium, nesium, potassium, zinc and selenium to support you in times of fatigue, exhaustion and stress.13 III. Analysis Applicant’s mark 7-SALT MAGNESIUM used in connection with dietary supplements immediately informs consumers that Applicant’s product consists of seven magnesium salts. As noted above, Applicant’s website informs consumers that its 7-SALT MAGNESIUM supplement is “a balanced mixture of magnesium salts.”14 Applicant concedes that its dietary supplement consists of seven forms of magnesium salt. 12 June 29, 2021 Request for Reconsideration (TSDR 180). 13 June 29, 2021 Request for Reconsideration (TSDR 141). 14 January 8, 2021 Request for Reconsideration (TSDR 9). Serial No. 79284823 - 8 - This other meaning of “salt” within the mark refers to the seven “salt” forms of magnesium in the goods: magnesium malate magnesium bisglycinate magnesium citrate magnesium oxide magnesium glycerophosphate magnesium gluconate magnesium carbonate15 In addition, when used in the mark 7-SALT MAGNESIUM, Applicant concedes the term “salt” is descriptive of dietary supplements consisting of magnesium. The second meaning of the term SALT is descriptive of Applicant’s goods. The seven magnesium compounds in Applicant’s formulation are all different magnesium salts (an ionic assemble of a magnesium cation with one of seven different anions).16 A consumer interested in purchasing or taking a magnesium supplement would know, without resorting to a multiple step reasoning process, that 7-SALT MAGNESIUM supplement consists of seven types of magnesium salt. A term that describes an ingredient of the goods is merely descriptive. In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574 (Fed. Cir. 2015) (holding NOPALEA merely descriptive of dietary and nutritional supplements containing nopal juice); In 15 December 12, 2020 Response to Office Action (TSDR 7). See also January 8, 2021 Request for Reconsideration (TSDR 5) (“The seven magnesium compounds in Applicant’s goods are each a ‘salt’ within the second meaning, but none of the seven is a ‘salt’ within the first meaning.”). The first meaning refers to table salt (i.e., sodium chloride) and the second meaning refers to “any compound consisting of an ionic assembly of cations and anions.” Id. 16 January 8, 2021 Request for Reconsideration (TSDR 5). Serial No. 79284823 - 9 - re Keebler Co., 479 F.2d 1405, 178 USPQ 155 (CCPA 1973) (holding RICH ‘N CHIPS merely descriptive of chocolate chip cookies); In re Andes Candies Inc., 478 F.2d 1264, 178 USPQ 156 (CCPA 1973) (holding CREME DE MENTHE merely descriptive of candy); In re Entenmann’s, Inc., 15 USPQ2d 1750 (TTAB 1990) (holding OATNUT merely descriptive of bread containing oats and hazelnuts); Flowers Indus., Inc. v. Interstate Brands Corp., 5 USPQ 2d 1580 (TTAB 1987) (holding HONEY WHEAT merely descriptive of bread containing honey and wheat). Applicant contends that its use of the term “salt” is not relevant. Applicant notes that, the use of “salt” by Applicant, for example, on its website and in its literature, is not evidence of how the ordinary consumer would understand the term “salt” in connection with these goods - it is only evidence of how Applicant uses the term. Evidence of how consumers understand the term is provided by dictionary definitions, general media references, the Examining Attorney’s own assertions in both Office Actions, and the lack of third party uses of “salt” for zinc supplements, as compared to the evidence of use of the term for supplements that actually do contain salt in its primary sense of sodium chloride / table salt.17 There are three problems with Applicant’s contention. First, we consider the mark in its entirety (i.e., 7-SALT MAGNESIUM). We do not focus on one term in a three- part mark. See In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (“An inquiry into the public's understanding of a mark requires consideration of the mark as a whole.”); In re Am. Fertility Soc’y, 51 USPQ2d 1832 at 1837 (the USPTO must consider the mark in its entirety because the mark, as whole, 17 Applicant’s Brief, pp. 13 (6 TTABVUE 14). See also January 29, 2021 Request for Reconsideration (TSDR 17) (same). Serial No. 79284823 - 10 - may be greater than the sum of its parts); In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1515 (TTAB 2016) (must consider the mark as a whole). Thus, Applicant’s argument that the average consumer for dietary supplements perceives the word “salt” as “sodium chloride” (i.e., the white crystal for seasoning and preserving food) improperly dissects the mark because the mark at issue is 7-SALT MAGNESIUM.18 Thus, the proper inquiry is how consumers perceive 7-SALT MAGNESIUM in its entirety. Second, in determining how the relevant consuming public perceives Applicant’s mark in connection with its identified goods, we may consider any competent source, including Applicant’s own advertising material and explanatory text. See In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709-10 (Fed. Cir. 2017) (the USPTO may consider any competent evidence including advertising material); In re Reed Elsevier Props. Inc., 482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007) (Board appropriately reviewed applicant’s website for context to understand the meaning of the mark); Steelbuilding.com, 75 USPQ2d at 1421 (examining applicant’s website to determine the meaning of terms); In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Any competent source suffices to show the relevant purchasing public’s understanding of a contested term or phrase.”). It is hard to imagine anything more relevant than Applicant’s use of its mark for determining the commercial impression it is trying to engender. 18 Applicant’s Brief, pp. 5-12 (6 TTABVUE 6-13). Serial No. 79284823 - 11 - Three, even if Applicant were the first or only user of a merely descriptive designation, that does not necessarily render a word or term incongruous or distinctive; as in this case, the evidence shows that 7-SALT MAGNESIUM is merely descriptive of the Applicant's dietary supplements containing 3 types of zinc salt. See Fat Boys Water Sports, 118 USPQ2d at 1514; In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1826 (TTAB 2012). See also KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 72 USPQ2d 1833, 1838 (2004) (trademark law does not countenance someone obtaining “a complete monopoly on use of a descriptive term simply by grabbing it first.”) (citation omitted). A significant basis for Applicant’s argument that 7-SALT MAGNESIUM is suggestive, rather than merely descriptive, is that the Examining Attorney defines “salt” as “sodium chloride” when Applicant’s magnesium supplements do not contain any sodium chloride.19 According to Applicant, because the purchasing public, like the Examining Attorney is unaware of the technical meaning of the term “salt,” they will perceive “salt” as being “sodium chloride” even though there is no sodium chloride in the magnesium supplements. Therefore, the purchasing public will have to exercise a multiple step reasoning process to decipher the meaning of 3-SALT MAGNESIUM.20 Even if the Examining Attorney mistakenly believes that Applicant’s magnesium supplements are sodium chloride based, we do not need to find that the Examining 19 Applicant’s Brief, pp. 5-11 (6 TTABVUE 6-12). 20 Applicant’s Brief, pp. 8-10 (6 TTABVUE 9-11). Serial No. 79284823 - 12 - Attorney’s rationale was correct to affirm the refusal to register, but rather may rely on a different rationale. See In re AFG Indus. Inc., 17 USPQ2d 1162, 1163 (TTAB 1990) (“[W]e note that the Board reviews an Examining Attorney’s decision on appeal to determine if the refusal to register was correctly made. In doing so, the Board need not adopt the rationale of the Examining Attorney.”); In re Avocet, Inc., 227 USPQ 566, 567 (TTAB 1985) (“[T]he Trademark Trial and Appeal Board, when exercising its appellate jurisdiction under Section 20 of the Lanham Act (15 USC § 1070), reviews the ‘decision’ of the Examining Attorney for its correctness and need not adopt the Examining Attorney’s rationale in every respect in order to affirm the decision of the Examining Attorney.”). Likewise, even if the purchasing public mistakenly believes that Applicant’s 7- SALT MAGNESIUM supplements are sodium chloride based, the purchasers still perceive the mark 7-SALT MAGNESIUM directly conveying that the supplements consist of seven magnesium salts despite the fact they may mistakenly believe that the magnesium salts are chloride based. We find the mark 7-SALT MAGNESIUM for the dietary supplements in the description of goods to be merely descriptive. Decision: We affirm the refusal to register Applicant’s mark 7-SALT MAGNESIUM under Section 2(e)(1) of the Trademark Act.