Leiner Health Products Inc.

Trademark Trial and Appeal Board

Jun 18, 1999

No. 74359579 (T.T.A.B. Jun. 18, 1999)

Paper No. 12
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 6/18/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Leiner Health Products Inc.
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Serial No. 74/359,579
_______
Michael A. Painter of Isaacman Kaufman & Painter for Leiner
Health Products Inc.
Kelley L. Wells, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Seeherman, Hairston and Wendel, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Leiner Health Products Inc. has appealed the refusal
of the Trademark Examining Attorney to register ANTIOXIDANT
PAK on the Supplemental Register for "vitamins and dietary
food supplements."1 Registration has been refused pursuant
to Section 23 of the Trademark Act on the ground that the
Ser. No. 74/359,579
2
term applicant seeks to register is incapable of
distinguishing its goods from those of others.
Specifically, the Examining Attorney contends that
ANTIOXIDANT PAK does nothing more than name applicant’s
goods.
Applicant and the Examining Attorney have filed appeal
briefs. An oral hearing was not requested.
Before turning to the substantive issue in this case,
we must address a procedural point. In response to the
Office action initially refusing registration on the
Supplemental Register, applicant submitted a declaration
from its vice president asserting his belief that
ANITOXIDANT PAK had become distinctive by reason of
"substantially exclusive use thereof as a mark by the
Applicant in commerce since October, 1992 and Applicant’s
ownership of a related Certificate of Registration of the
trademark DAILY PAK." The statements made by applicant in
its response show that applicant was not asserting that its
mark was registrable on the basis of Section 2(f) and,
indeed, the Examining Attorney pointed out that a claim of
acquired distinctiveness under Section 2(f) is of no avail
in a case where the mark has been determined to be

1 Application Serial No. 74/359,579, filed on February 16, 1993,
and asserting first use and first use in commerce on October 12,
Ser. No. 74/359,579
3
incapable of distinguishing the applicant’s goods.
Applicant’s papers indicate that the language regarding
acquired distinctiveness was not meant to indicate a
Section 2(f) claim, but only that evidence of acquired
distinctiveness should be considered in evaluating
applicant’s claim that its mark was capable of
distinguishing its goods. Therefore, the entry in the
file, and in the Office records, that the application is
proceeding under Section 2(f) is in error, and the Office
records will be corrected.
Section 23 of the Trademark Act provides that a mark
is registrable on the Supplemental Register if it is
capable of distinguishing the applicant’s goods or
services. Thus, the substantive issue on appeal is whether
or not ANTIOXIDANT PAK is capable of distinguishing
applicant’s vitamins and dietary food supplements from
those of others.
The Examining Attorney contends that ANTIOXIDANT PAK
is a generic term for a pack of antioxidant vitamins, that
applicant’s goods are antioxidants sold in packet form, and
that this term is therefore incapable of distinguishing the
goods. In support of her position, she has made of record

1992.
Ser. No. 74/359,579
4
dictionary excerpts defining "antioxidant" as "Biochem. An
enzyme or other organic substance, as vitamin E or Beta-
Carotene, that is capable of counteracting the damaging
effects of oxidation in animal tissues" and "pak" as "pack;
package,"2 as well as a definition of "pack" as "a small
package containing a standard number of identical or
similar items ; a complete set of related
items ."3 We also note the
additional definition of "pack" as "a collection of items
tied up or wrapped: bundle."
The Examining Attorney has also made of record
excerpts from the NEXIS date base which refer to
antioxidants, including the following:
The researchers said vitamin E, an
antioxidant, might reduce heart disease
by having an effect on low-density
lipoprotein, or LDL, cholesterol….
"The Dallas Morning News," May 20, 1993
… today's issue of the New England
Journal of Medicine, provide important
backing for the much-heralded theory
that antioxidants--which include
vitamins E, C and the nutrient beta
carotene--lower cholesterol and thus
cut the risk of coronary disease.
"Los Angeles Times," May 20, 1993
Vitamin E belongs to a class of
micronutrients called antioxidants,

2 Random House Unabridged Dictionary, 2d ed.
3 Webster’s II New Riverside University Dictionary, © 1984.
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which include vitamin C and beta
carotene.
"USA Today," May 20, 1993
Results--Low serum concentrations of
antioxidant vitamins predicted the
development of senile cataract….
"JAMA," March 3, 1993
In addition, the Examining Attorney has submitted
third-party registrations for "PAK" marks, e.g., VITALITY
PAK, AM PAK and KALM PAK for various dietary and
nutritional supplements in which the word PAK was
disclaimed, in order to show that the Patent and Trademark
Office has treated "pak" as a descriptive term for such
goods.
Finally, the Examining Attorney has pointed out that
applicant's specimen packages show that its goods contain
the vitamins C, E and beta carotene, and that the goods are
in packet form. In fact, we note that the packaging touts
the product as a "high potency multivitamin system with
vitamins C, E and beta carotene," and that the package
contains "30 packets/30 day supply, 2 tablets/2softgels per
packet." The back of the package includes the following
statement:
Your Life® Antioxidant Pak™ provides an
easy, convenient way to supplement your
diet. Each individual packet includes
Vitamins C, E and Beta Carotene, three
of natures antioxidant nutrients. In
addition, it provides 10 essential
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vitamins and 7 key minerals for
complete and convenient nutritional
insurance.
The package also features a picture of an individual packet
with 4 pills, and the statement "Each packet contains the
following nutrients…."
The evidence shows that "antioxidant" is a term used
in both technical and popular literature, as well as on
applicant's own specimens and in dictionary definitions, to
refer to vitamins C and E and beta carotene. The evidence
further shows that PAK is the equivalent of the word
"pack." As shown by the specimens, applicant's product
consists of packs containing antioxidant vitamins. When
the two words, ANTIOXIDANT and PAK, are combined, the
resulting term ANTIOXIDANT PAK is a generic name for
applicant's goods, and would be recognized as such by the
consuming public. See In re Gould Paper Corp., 834 F.2d
1017, 5 USPQ2d 1110 (Fed. Cir. 1987). Accordingly,
ANTIOXIDANT PAK is incapable of distinguishing applicant's
goods from those of others. See In re Merrill Lynch,
Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 4 USPQ2d
1141 (Fed. Cir. 1987).
In reaching this conclusion, we have taken into
account the declaration of Robert Guziewicz and the
exhibits attached thereto with respect to the bearing
Ser. No. 74/359,579
7
applicant’s assertions of acquired distinctiveness have on
the issue of genericness. See In re Paint Products Co., 8
USPQ2d 1863 (TTAB 1988). Aside from the fact that this
evidence of acquired distinctiveness is very limited--a
statement that applicant has made substantially exclusive
and continuous use of the term since October 1992; an
assertion of "substantial" sales; a statement that
promotional materials have been distributed to applicant’s
wholesale customers; and ownership of a different mark,
DAILY PAK, for vitamins and mineral dietary food
supplements)--any de facto secondary meaning which the
designation may have acquired cannot render the designation
registrable if the evidence as a whole establishes that the
designation is primarily perceived by the purchasing public
as a generic reference. See In re Audio Book Club, Inc.,
__USPQ2d__, Ser. No. 74/567,910 (TTAB May 11, 1999).
Decision: The refusal of registration is affirmed.
E. J. Seeherman
P. T. Hairston
H. R. Wendel
Administrative Trademark Judges
Trademark Trial and Appeal Board