Fonterra TM Ltd.

Trademark Trial and Appeal BoardSep 3, 2014

No. 85311090 (T.T.A.B. Sep. 3, 2014)

This Opinion is not a Precedent of the TTAB Mailed: September 3, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Fonterra TM Ltd. ________ Serial No. 85311090 _______ William J. Seiter of Seiter Legal Studio for Fonterra TM Ltd. Patrick Shanahan, Trademark Examining Attorney, Law Office 116 (Michael W. Baird, Managing Attorney). _______ Before Quinn, Cataldo and Kuczma, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Fonterra TM Ltd. (“Applicant”) has applied to register as a mark on the Principal Register the designation HN001 in standard characters for the following goods, as amended: Dietetic foods, food substances and beverages adapted for medical use; pharmaceutical foodstuff additives, preparations and substances in the nature of foodstuffs and food ingredients for humans or animals; food for babies and infants, including milk powder for babies and infants; nutraceutical preparations and substances for medical use, namely, for providing intestinal balance; nutritional supplements; nutritional additives for medical purposes used in foods and dietary supplements for human and animal consumption; nutritional cultures used in foods and dietary supplements for human and animal Serial No. 85311090 2 consumption; food supplements for medical purposes; mineral supplements for foodstuffs; nutritional supplements for medical use; nutritional supplements in the nature of probiotic cultures; cultures of micro-organisms used in foods and dietary supplements for providing intestinal balance; food supplements; dietary supplements; all the foregoing containing lactobacillus rhamnosus (International Class 5); and Dairy products excluding ice cream, ice milk and frozen yoghurt; dairy based beverages; dairy based powders for making dairy based beverages and shakes; milk and milk products, excluding ice cream, ice milk and frozen yoghurt; milk protein; milk beverages including flavored and fortified milk beverages (milk predominating); cream; butter; edible oils and fats and blends of edible oils and fats; dairy based food spreads; proteins being foodstuffs for human consumption; cheese; cultured dairy products excluding ice cream, ice milk and frozen yoghurt; yoghurt and yoghurt beverages; flavored dairy desserts, namely, dairy-based dips, dairy based snack foods excluding ice cream, ice milk and frozen yoghurt; whey; casein for food; all the foregoing containing lactobacillus rhamnosus (International Class 29).1 The Trademark Examining Attorney refused registration under Section 2(e)(1) of the Trademark Act on the ground that Applicant’s mark is merely descriptive of a feature or quality of Applicant’s goods in both classes. When the refusal was made final, Applicant appealed. Applicant and the Examining Attorney filed briefs. 1 Application Serial No. 85311090 was filed on May 3, 2011, under Section 1(b) of the Trademark Act, based on Applicant’s assertion of its bona fide intent to use the mark in commerce on the recited goods, and also under Section 44(e) of the Trademark Act based upon Applicant’s ownership of New Zealand Registration No. 841066, issued on April 29, 2011. Serial No. 85311090 3 Applicant argues that it created the bacteria strain lactobacillus rhamnosus found in its goods, and that the New Zealand patent therefor is owned by its subsidiary, New Zealand Dairy Board. Applicant further argues that it coined the term HN001 as a mark to identify the goods in this application which contain lactobacillus rhamnosus. Applicant argues in addition that “the Internet references relied on by the Examining Attorney are in fact references to Applicant’s HN001 trademark.”2 In support of the refusal to register, the Examining Attorney made of record articles retrieved from commercial and informational Internet webpages, of which the following are considered probative of the issue on appeal: (ncbi.nlm.gov/pubmed)3 Enhancement of natural and acquired immunity by Lactobacillus rhamnosus (HN001), Lactobacillus acidophilus (HN017) and Bifidobacterium lactis (HN019). Milk and Health Research Centre, Institute of Food, Nutrition and Human Health, Massey University, Plamerston North, New Zealand, h.s.gill@massey.ac.nz Abstract Consumption of lactic acid bacteria (LAB) has been suggested to confer a range of health benefits including stimulation of the immune system and increased resistance to malignancy and infectious illness. In the present study, the effects of feeding Lactobacillus rhamnosus (HN001, DR20), Lactobacillus acidophilus (HN017) and Bifidobacterium lactis (HN019, DR10) on in vivo and in vitro indices of natural and acquired immunity in healthy mice were examined. … 2 Applicant’s brief, p. 4. 3 Examining Attorney’s November 28, 2012 Office Action. Serial No. 85311090 4 (plosone.org)4 PLOS One a peer-reviewed, open access journal Lactobacillus rhamnosus HN001 Attenuates Allergy Development in a Pig Model Background Probiotics have been studied as immunomodulatory agents of allergy. Several human probiotic trials tracking the development of eczema and other forms of allergy have yielded inconsistent results. A recent infant study demonstrated that pre and postnatal Lactobacillus rhamnosus HN001 (HN001) supplementation decreased the prevalence of eczema and IgE associated eczema. However, the influence of HN001 on the incidence of wheeze, asthma, and/or other allergic manifestations has yet to be reported. Objective This study was conducted to determine the effects of the probiotic HN001 on the development of allergic lung disease in a pig model. (powerofprobiotics.com/Lactobacillus-rhamnosus.html)5 Lactobacillus rhamnosus: Probiotics Bacteria with Impressive Health Benefits Lactobacillus rhamnosus is one of several species of probiotic bacteria that has an impressive resume of health benefits. This is one species that certainly has some strain-specific health benefits and attributes, so if you are interested in it, you should decide if you need to consume one of the specific strains. . . . . . . . Some of the most researched strains are listed below: Lactobacillus rhamnosus GG, also known as “LGG” Lactobacillus rhamnosus GR-1 Lactobacillus rhamnosus HN001 4 Id. 5 Examining Attorney’s May 9, 2013 Final Office Action. Serial No. 85311090 5 The Examining Attorney also made of record the following patent abstract: (freepatentsonline.com)6 FPO IP Research & Communities Polynucleotides and Polypeptides Derived from Lactobacillus Rhamnosus HN001 European Patent Application EP1546338 Reference: Sequence 306 from patent US 6544772 Assignee: Genesis Res & Dev Corp Ltd (NZ) Fonterra Co-Operative Group LT (NZ)7 In addition, the Examining Attorney made of record patent abstracts from boliven.com/patent (New Zealand Patent Application No. NZ200300221 Polynucleotides and Polypeptides Derived from Lactobacillus Rhamnosus HN001);8 faqs.org/patents (New Zealand Patent Application No. 20120045422 “Claims: A method of treating or preventing eczema in a subject, the method comprising administration of Lactobacillus rhamnosus HN001, AGAL deposit number NM97/09514 dated 18 Aug. 1997 to a subject in need thereof”);9 and ep.espacenet.com (also European Patent Application No. EP1546338, listed above)10 containing information consistent with the above abstract from freepatentsonline.com. It is well-settled that a term is considered to be merely descriptive of 6 Id. 7 On page 5 of its brief, Applicant explains that it is a wholly-owned subsidiary of Fonterra Co-Operative Group LT. 8 Id. 9 Id. 10 Id. Serial No. 85311090 6 goods and/or services, within the meaning of Section 2(e)(1) of the Trademark Act, if it immediately describes an ingredient, quality, feature or characteristic thereof or if it directly conveys information regarding the nature, function, purpose or use of the goods and/or services. See Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052. See also In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). It is not necessary that a term describe all of the properties or functions of the goods and/or services in order for it to be considered to be merely descriptive thereof; rather, it is sufficient if the term describes a significant attribute or feature about them. Moreover, whether a term is merely descriptive is determined not in the abstract, but in relation to the goods and/or services for which registration is sought. See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). Thus, “[w]hether consumers could guess what the product is from consideration of the mark alone is not the test.” In re American Greetings Corp., 226 USPQ 365 (TTAB 1985). In this case, Applicant’s goods in both Class 5 and Class 29 are identified as various foodstuffs and food supplements, “all of the foregoing containing lactobacillus rhamnosus.” The evidence made of record by the Examining Attorney supports a finding that, as applied to Applicant’s goods, the term HN001 would immediately describe, without conjecture or speculation, a significant characteristic or feature of such goods, namely, that they contain the bacteria strain Lactobacillus rhamnosus HN001. The Serial No. 85311090 7 Internet articles submitted by the Examining Attorney establish that HN001 is recognized as a synonym for a strain of Lactobacillus rhamnosus used in connection with, inter alia, human probiotics. As such, this evidence supports a finding that prospective purchasers of Applicant’s goods, namely, consumers of foodstuffs, nutraceuticals and nutritional supplements consisting of and containing probiotics, are accustomed to encountering this term used to describe a feature thereof, namely, that they goods contain the bacteria strain Lactobacillus rhamnosus. Material obtained from the Internet is acceptable in ex parte proceedings as evidence of potential exposure to a term by the relevant public. See In re Fitch IBCA, Inc., 64 USPQ2d 1058 (TTAB 2002). Furthermore, and as noted above, it is not necessary that a term describe all of the properties of the identified goods in order for it to be considered to be merely descriptive of such goods; rather, it is sufficient if the term describes a significant attribute or feature thereof. See Id. We are not persuaded by Applicant’s argument that HN001 does not merely describe the identified goods because the Internet articles and abstracts excerpted above refer to Applicant and its applied-for mark. The evidence made of record by the Examining Attorney displays the term HN001 used in a descriptive manner as applied to a particular strain of Lactobacillus rhamnosus, not as a source identifier for Applicant. Put another way, the Serial No. 85311090 8 Internet evidence simply does not show use of HN001 as a trademark, but rather as a descriptive term. We similarly are not persuaded by Applicant’s argument that HN001 cannot be merely descriptive of the identified goods because Applicant created the bacteria strain Lactobacillus rhamnosus and coined the term HN001. Even if Applicant is the first and/or at present the only user of the term HN001 in connection with the identified goods, it is well settled that such intended use does not entitle Applicant to the registration thereof where, as here, the term has been shown to immediately convey only a merely descriptive significance in the context of Applicant’s goods. See, e.g., In re National Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983); and In re Mark A. Gould, M.D., 173 USPQ 243, 245 (TTAB 1972). Indeed, the term Lactobacillus rhamnosus HN001 is used descriptively in patents and patent applications, including those filed on behalf of Applicant or its related companies. Finally, we note that Applicant has not submitted sufficient evidence to rebut the Examining Attorney’s prima facie case that Applicant’s proposed mark merely describes its goods. Rather, Applicant has provided arguments regarding what a proposed purchaser would conclude when confronted with Applicant’s mark. See In re Vsesoyuzny Ordena Trudovogo Krasnogo Znameni, 219 USPQ 69, 70 (TTAB 1983) (assertions in briefs are not evidence). See also In re Minnetonka, 212 USPQ 772, 777 (TTAB 1981) Serial No. 85311090 9 (determining whether a mark has acquired distinctiveness is based on the facts as they exist and are revealed by the evidence in the record at the time the application is acted upon). Accordingly, we find that Applicant’s mark is merely descriptive as contemplated by Section 2(e)(1) of the Act. Decision: The refusal to register is affirmed.