Despite applicant’s 40 years of use of the phrase “THE VITAMIN SHOPPE,” the Board affirmed four refusals to register the mark THE VITAMIN SHOPPE & V Design (in four variations) for vitamins and related retail store services, due to applicant’s failure to comply with a requirement for disclaimer of that phrase. In re Vitamin Shoppe Procurement Services, Inc., Serial Nos. 86905555, 86905614, 86905620, 86905628 (October 4, 2019) [not precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon).

Determining genericness requires a two-step inquiry: what is the genus of the goods or services at issue, and does the relevant public understand the term at issue to refer to that genus? The Board found the genus of services to be a “health and wellness store that primarily sells dietary and nutritional supplements.” The genus for the goods “includes the types of products Applicant sells in its health and wellness stores.” The marks, when used on goods, are house marks that identify the store in which the goods are sold. “[I]t follows that if the phrase THE VITAMIN SHOPPE is generic for the type of store operated by Applicant, the phrase is also generic when used on the goods at issue here.”

Examining Attorney Mark S. Tratos submitted nearly 100 examples of generic use of “vitamin shop” from news reports, business reports, and books. “This evidence clearly and convincingly shows that a vitamin shop is a type of store.”

Applicant argued that the word “shoppe” is different enough from “shop” to cause different understandings of the two phrases. But dictionary evidence equated the two words and there was no evidence that consumers understand the word ‘shoppe’ as used by Applicant to mean anything other than a shop or store.” Two examples showed use of “The Vitamin Shoppe” to refer specifically to Applicant, but two is “not enough to indicate that the primary meaning of ‘The Vitamin Shoppe’ is as a trademark.”

Applicant pointed to its ownership of six registrations for marks that include the phrase “The Vitamin Shoppe,” including two registrations for the phrase by itself. Irrelevant, said the Board. Each application must be examined on its own record. See, e.g., In re Cordua Restaurants [CHURRASCOS in stylized form found to be generic for restaurant services despite registration of the word in standard character form].

Applicant contended that its Thermos-style survey evidence proved that “The Vitamin Shoppe” is a trademark, but the Board pointed out that this is not a situation where a coined term or phrase is alleged to be generic. Instead the question here is the opposite: whether a generic phrase has become a distinctive mark. The Board has held that consumer surveys are irrelevant in this context. See, e.g., In re Hitari. Consequently, the Board was “inclined to give little, if any, weight to the survey offered by Applicant.”

The evidence of consumer use in the record shows that the phrase “the vitamin shop” is generic. Applicant points out that none of this evidence shows use of the phrase “The Vitamin Shoppe” in a generic fashion. Dictionary evidence covers that gap by showing that “shoppe” is a different spelling of “shop” and that any different meaning of the “shoppe” variant is not relevant here. In short, the other evidence of record shows clearly and convincingly that “The Vitamin Shoppe” is generic for the goods and services identified in the applications at issue here.

For the sake of completeness, the Board evaluated the survey evidence, despite the precedent that a survey is not relevant here.

In a Thermos-type survey, participants are asked what they would call a particular type of product or service. The Thermos survey may provide inconclusive results if a product or service has more than one generic name. “A Thermos-type survey can be useful in identifying potentially generic terms, and it may even show what generic terms are more frequently used by consumers. Beyond that, a Thermos survey may prove nothing.”

Applicant’s survey deviated from the Thermos model, and the Board found the methodology flawed and the results inconsistent and “perplexing.” Data concerning the actual responses was not provided. The Board therefore found that the survey evidence “falls far short of raising doubts as to the genericness of the phrase ‘The Vitamin Shoppe.'”

Finally, as to applicant’s use of “The Vitamin Shoppe” for more than 40 years, the Board pointed out that “even long and successful use of a term does not automatically convert a generic term into a non-generic term.” It concluded that the disclaimer requirements were appropriate because “Applicant does not have exclusive rights to the phrase ‘The Vitamin Shoppe.'”

To allow registration without a disclaimer would place Applicant’s competitors at risk if they identify their stores a “vitamin shop,” or “the vitamin shop.” That result is unacceptable given the evidence of record.

The Board observed that this is “the risk one takes when it uses a generic term to identify its goods or services.”

The Board therefore affirmed the disclaimer requirement.

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TTABlog comment: Do you see an appeal in your crystal ball? Would you consider a civil action for review of the Board’s decision, bolstered by a better survey?

Text Copyright John L. Welch 2019.