Herbal Dynasty LLC

Trademark Trial and Appeal Board

Apr 29, 2004

No. 78058457 (T.T.A.B. Apr. 29, 2004)

Hearing: Mailed: April 29, 2004
February 19, 2004 Paper No. 19
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Herbal Dynasty LLC
________
Serial No. 78058457
______
Sharon Blinkoff of Buchanan Ingersoll for Herbal Dynasty
LLC.
Ann E. Sappenfield, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney).
_______
Before Simms, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:





Herbal Dynasty LLC (applicant), a Delaware limited
liability company, has appealed from the final refusal of
the Trademark Examining Attorney to register the mark HERB
AND ROOTS for dietary and nutritional supplements and
medicinal herbal teas, in Class 5, and herbal teas, in
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78058457
2
Class 30.1 Applicant and the Examining Attorney have filed
briefs and an oral hearing was held.
The Examining Attorney has refused registration under
Section 2(e)(1) of the Act, 15 USC §1052(e)(1), arguing
that applicant’s mark is merely descriptive of the
ingredients of its supplements and teas. While applicant
and the Examining Attorney agree that we must consider the
issue of mere descriptiveness in relation to the relevant
goods and not in the abstract, they come to different
conclusions on this issue.
The Examining Attorney has made of record evidence
from the Nexis database and from the Internet showing that
herbs and roots are relatively common ingredients of
nutritional and dietary supplements as well as teas. For
example, evidence from Drug Store News (April 2001)
mentions herbal supplements being made from buttercup
roots; an article from Better Nutrition (October 2000)
refers to dandelion roots as an ingredient in nutritional
supplements; an article from the Asheville Citizen-Times
(September 2000) discusses ginseng roots as an ingredient
in food supplements; an article in Vegetarian Times
(September 2000) mentions licorice root as an ingredient in

1 Application Serial No. 78058457, filed April 14, 2001, based
on applicant’s allegation of a bona fide intention to use the
mark in commerce.
Ser. No. 78058457
3
nutritional supplements; and an article from The Tennessean
(August 2000) discusses valerian root as an ingredient in
herbal supplements. A Web site advertisement promotes
various nutritional supplements containing various roots
including goldenseal root, dong quai root, glucomannan
root, kava root, sassafras root and marshmallow root. The
Examining Attorney has also made of record a dictionary
definition of the word “roots”: “Any of various other
underground plant parts.”2
Upon careful consideration of the record and the
arguments of the attorneys, we agree with the Examining
Attorney that applicant’s mark HERB AND ROOTS merely
describes its dietary and nutritional supplements and its
herbal teas.
Applicant argues that its mark does not identify any
specific ingredient of its dietary supplements and herbal
teas, and that its mark does not constitute adequate
disclosure as required by Food and Drug Administration
regulations pertaining to the listing of specific
ingredients on the basis of the plants from which the
dietary supplements (and teas) are derived. Applicant
maintains, therefore, that its mark is suggestive inasmuch

2 The American Heritage Dictionary of the English Language (Third
Edition 1992).
Ser. No. 78058457
4
as it does not describe its goods with the requisite degree
of particularity.
We believe, however, that the elements of applicant’s
mark HERB AND ROOTS broadly describe the ingredients
without specifically naming the particular plants from
which the individual supplements or teas are derived. See,
for example, In re Entenmann's Inc., 15 USPQ2d 1750, 1751
(TTAB 1990), aff'd unpublished, 928 F.2d 411 (Fed. Cir.
1991)(OATNUT held merely descriptive of bread containing
oats and hazelnuts, the Board stating, “[w]hile it is true
that in order to be held merely descriptive, a term must
describe with some particularity a quality or ingredient of
the product in question, it need not describe it exactly");
and In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB
1988), aff'd unpublished, 871 F.2d 1097, 10 USPQ2d 1879
(Fed. Cir. 1989)("However, while we readily concede that
the category of products which the term ‘analog devices’
names encompasses a wide range of products in a variety of
fields, we do not believe this fact enables such a term to
be exclusively appropriated by an entity for products, some
of which fall within that category of goods").
Furthermore, the fact that FDA labeling regulations require
a specific listing of ingredients on the basis of the plant
from which a supplement is derived is simply irrelevant to
Ser. No. 78058457
5
the question of whether applicant’s mark is merely
descriptive of its goods.
Applicant also argues that the Examining Attorney has
not submitted evidence to show the meaning of the mark as a
whole, and that the fact that a component is descriptive
does not mean that the composite is also descriptive where
the combination changes the overall commercial impression
to something that is catchy, fanciful and capable of making
a distinctive commercial impression. Here, too, we agree
with the Examining Attorney that, while a combination of
words may be registrable if it creates a unitary mark with
a unique, nondescriptive or incongruous meaning, in this
case each component of applicant’s mark HERB AND ROOTS
retains its descriptive significance when used in the
combination, and the combination is also merely descriptive
of the ingredients of applicant’s goods. That is,
applicant’s dietary and nutritional supplements and teas
contain herbs and roots. See, for example, In re Sun
Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001)(AGENTBEANS
merely descriptive of computer software); In re Putman
Publishing Co., 39 USPQ2d 2021 (TTAB 1996)(FOOD & BEVERAGE
ONLINE merely descriptive of a news and information service
for the food processing industry); In re Copytele Inc., 31
USPQ2d 1540 (TTAB 1994)(SCREEN FAX PHONE merely descriptive
Ser. No. 78058457
6
of facsimile terminals with electrophoretic displays); In
re Entenmann’s Inc., supra (OATNUT merely descriptive of
bread containing oats and hazelnuts); In re Serv-A-Portion
Inc., 1 USPQ2d 1915 (TTAB 1986)(SQUEEZE N SERV merely
descriptive of ketchup); and In re Uniroyal, Inc., 215
USPQ2d 716 (TTAB 1982)(STEELGLAS BELTED RADIAL merely
descriptive of vehicle tires containing steel and glass
belts). See also In re Hask Toiletries, Inc., 223 USPQ
1254 (TTAB 1984)(HENNA 'N' PLACENTA held unregistrable on
the Supplemental Register for hair conditioner); and In re
Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB 1984)
(LAW & BUSINESS held unregistrable on the Supplemental
Register for arranging and conducting seminars).
Applicant’s other arguments, several of which are
discussed below, are also not persuasive. The fact that a
term may have a different meaning in another context, such
as “root” meaning a person’s ancestry or a reference to a
type of dental procedure (root canal), is not controlling
where the readily perceived significance in relation to
applicant’s goods is merely descriptive of the ingredients
of the applicant’s products. See In re Bright-Crest, Ltd.,
204 USPQ 591 (TTAB 1979).
The third-party registrations which applicant has
mentioned, containing either the word “HERB” (or “HERBS”)
Ser. No. 78058457
7
or “ROOTS” (or “ROOT”), such as PLANET HERBS, HERB’N
RENEWAL, BLESSED HERBS, TRINITY HERB, WORLD HERBS GOURMET,
ROOTS MAN, ROOTS & LEGENDS, ROOTS TO HEALTH and ROOT OF
LIGHT, for similar goods are not persuasive of a different
result. The fact that elements of applicant’s mark have
been registered to others does not mean that applicant’s
mark is not merely descriptive of its goods. That is to
say, a mark which is merely descriptive of applicant’s
goods is not registrable merely because other somewhat
similar marks have been registered. See In re Nett
Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001)(“The Board must decide each case on its own
merits….[citation omitted] Even if some prior
registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”)
Furthermore, the fact that a mark may not describe all
aspects of applicant’s goods, including all of the numerous
ingredients of the supplements and teas, or that they may
be intended for weight loss or appetite suppression (not
revealed in applicant’s identification of goods) does not
detract from the mark’s mere descriptiveness. A mark need
not describe all of the purposes, characteristics or
Ser. No. 78058457
8
features of the goods in order to be merely descriptive.
Rather, it is sufficient if the term describe a significant
attribute or feature of the goods. See In re Venture
Lending Associates, 226 USPQ 285 (TTAB 1985); and In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982). Thus, it is not
necessary, in this instance, that a prospective purchaser
of applicant's goods be informed of other ingredients of
the products or the fact that applicant’s goods are for
weight reduction, for example.
We conclude that applicant’s mark is merely
descriptive of its goods, and that no imagination is
required to conclude that the words HERB AND ROOTS
immediately describe the ingredients of applicant’s
supplements and teas.
Decision: The refusal of registration is affirmed.