Bayer Corp.

Trademark Trial and Appeal Board

Jan 29, 2004

No. 75782067 (T.T.A.B. Jan. 29, 2004)

Mailed:
January 29, 2003
Paper No. 16
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bayer Corporation
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Serial No. 75782067
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Fred Carl III for Bayer Corporation.
Curtis French, Trademark Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney).
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Before Simms, Cissel and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Bayer Corporation seeks registration on the Principal
Register of the mark ORANGE ZEST for its “cold preparation”
in International Class 5.1
This case is now before the Board on appeal from the
final refusal to register on the ground that the term
ORANGE ZEST is merely descriptive of applicant’s goods
1 Application Serial No. 75782067 was filed on August 24,
1999, based upon applicant’s allegation of a bona fide intention
to use the mark in commerce. On February 12, 2001, applicant
submitted an amendment to allege use claiming first use of the
mark in commerce as of June 3, 2000.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75782067
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under Section 2(e)(1) of the Lanham Act, 15 U.S.C.
§1052(e)(1).
Both applicant and the Trademark Examining Attorney
have fully briefed the case, but applicant did not request
an oral hearing.
We affirm the refusal to register.
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, if it immediately conveys knowledge
of the ingredients, qualities or characteristics of the
goods or services with which it is used or is intended to
be used. In re Engineering Systems Corp., 2 USPQ2d 1075
(TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979). It is not necessary, in order to find a mark merely
descriptive, that the mark describe each feature of the
goods or services, only that it describe a single,
significant quality, feature, etc. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985).
The dictionary definition shows that “orange zest”
refers to the outer-most part of the orange rind that is
used for flavoring.2 Applicant has agreed that while the
2 Zest: 1. a. … . b. The outermost part of the rind of an
orange or a lemon, used as flavoring; 2. Spirited enjoyment;
gusto… The American Heritage Dictionary of the English Language
(3rd ed. 1992).
Serial No. 75782067
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actual fruit rind may be used in baking (as had been shown
by recipes placed into the record by the originally-
assigned Trademark Examining Attorney), it would never be
used in pharmaceutical preparations. Nonetheless, the
LEXIS/NEXIS excerpts clearly establish that “orange zest”
is a term that appears in articles with ever-greater
frequency to describe a flavor of manufactured goods. As
in applicant’s tablets, this flavoring is an inactive
ingredient derived from industrial chemicals, not from
actual citrus rinds. As noted by the Trademark Examining
Attorney, applicant’s own packaging touts “Orange Zest” as
a “new flavor” for its Alka-Seltzer Plus cold medicine.
Applicant’s most compelling argument in favor of
registration has to do with its contention that this term
represents a “double entendre”:
… In the first Office Action, the Examining
Attorney submitted a dictionary definition
of zest which included the following
possible definition: “Spirited enjoyment;
gusto.” As the Applicant previously advised
the office, “… applicant intends the
trademark ORANGE ZEST to suggest liveliness
or spirited enjoyment that one will
experience in connection with consuming the
product.” This is quite plausible
considering the very nature of the product
itself, which is the famous ALKA-SELTZER
effervescent dissolving tablet, now also a
cold preparation. Anyone who has consumed
an ALKA-SELTZER tablet is well aware of the
“zesty” sensation experienced when one
Serial No. 75782067
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drinks the solution made by dissolving the
tablet in water.
If one further considers the other
designation Applicant uses for its cold
preparation, namely CHERRY BURST, … it is
clear exactly what commercial impression
Applicant is trying to engender by this
family of marks for its cold preparations… .
(Applicant’s appeal brief, unnumbered pages 3 and 4)
This Board has held in appropriate cases that a
proposed mark can project such a clear double entendre that
it should not be held to be merely descriptive. See In re
Delaware Punch Co., 186 USPQ 63 (TTAB 1975) [The mark THE
SOFT PUNCH was found not to be descriptive for a non-
alcoholic soft drink]. Such is not the case herein.
Given the amount of evidence which the Trademark
Examining Attorney has made of record demonstrating that
the term “orange zest” is widely used to describe a
flavoring for manufactured goods, we have no doubt but that
many consumers, upon seeing applicant’s mark on cold
preparations, would immediately understand an important
characteristic of this product, namely that when dissolved
in water, the cold medicine has the flavor of orange peels.
It is certainly possible that prospective purchasers,
after lengthy consideration and analysis of applicant’s
mark in connection with the famous ALKA-SELTZER
effervescent tablet, and a realization that “fizz,” “burst”
Serial No. 75782067
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and “zest” all connote a sense of “liveliness,” might
eventually recognize the possibility that a double entendre
exists here. However, this conclusion would likely only be
reached after a multi-stage reasoning or thought process.
Accordingly, when applied to applicant’s cold preparation
having an orange zest flavoring, this term does not create
a significant double entendre. See In re Volvo Cars of
North America Inc., 46 USPQ2d 1455, 1460 (TTAB 1998) [“We
hasten to add that to the extent that applicant’s
designation DRIVE SAFELY engenders some minor double
entendre, this should not result in registration inasmuch
as the primary significance of the phrase remains that of a
commonplace safety admonition.”] By contrast, the
immediate meaning of the proposed mark in connection with
these goods is the descriptive one. Hence, the highly
descriptive and commonly understood meaning of “orange
zest” simply overwhelms the other connotation suggested by
applicant.
In conclusion, we find that even if it were clear that
some minor double entendre would be engendered by the mark
in connection with applicant’s goods, the mark would still
be unregistrable because the primary significance would
remain descriptive. Therefore, applicant’s mark ORANGE
ZEST is merely descriptive under Section 2(e)(1) of the
Serial No. 75782067
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Trademark Act of a feature or characteristic of applicant’s
“cold preparation” having the flavor of orange zest.
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is hereby affirmed.