Chemrez Tech., Inc.

Trademark Trial and Appeal Board

Aug 8, 2017

No. 79168620 (T.T.A.B. Aug. 8, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 8, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Chemrez Tech., Inc.
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Serial No. 79168620
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Chemrez Technologies, Inc., pro se.

Alicia Collins Edwards, Trademark Examining Attorney, Law Office 115,
Daniel S. Brody, Managing Attorney.
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Before Cataldo, Lynch, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Chemrez Technologies, Inc. (“Applicant”) seeks registration on the Principal
Register of the proposed mark COCOMCT in standard characters for “high lauric
MCT oil,” in International Class 29.1
The Trademark Examining Attorney has refused registration under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s

1 Application Serial No. 79168620 was filed on January 8, 2015, and seeks extension of the
protection of International Registration No. 1255400 to the United States under Section 66
of the Trademark Act, 15 U.S.C. § 1141f.

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proposed mark is merely descriptive of the identified goods, and on the additional
ground that Applicant failed to comply with the requirement to amend its
identification of goods to indicate that they are coconut MCT oil. When the Examining
Attorney made the refusal final, Applicant requested reconsideration, which was
denied. Applicant and the Examining Attorney have filed briefs. We affirm both
refusals to register.
I. Prosecution History and Record on Appeal
The Examining Attorney issued a first Office Action refusing registration under
§ 2(e)(1) and requiring Applicant to amend the identification of goods to clarify their
exact nature. The Examining Attorney made of record a translation of the English
word “coconut” into Spanish as “coco,” a definition of the English word “coco” as
“coconut,” and a page from the website at laurinmct.com.2
Applicant traversed the refusal with arguments against the descriptiveness
refusal, but made no evidence of record.3 The Examining Attorney then issued a
second Office Action making final the descriptiveness and indefiniteness refusals,
and requiring Applicant to amend its identification of goods to specify the meaning of
the letters MCT that appear in the identification.4
Applicant filed its Notice of Appeal on January 2, 2017. 1 TTABVUE. The
Examining Attorney denied a Request for Reconsideration, making of record Internet

2 July 11, 2015 Office Action. In her brief, the Examining Attorney identified the page as a
page from Applicant’s website. 9 TTABVUE 6. Applicant did not dispute this description.
3 January 11, 2016 Response to Office Action.
4 February 21, 2016 Office Action.
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evidence that she claims shows that medium chain triglyceride (or “MCT”) oil is a
common type of oil.
II. Mere Descriptiveness Refusal
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive . . . of them,” 15 U.S.C. § 1052(e)(1), unless the mark
has acquired distinctiveness under Section 2(f) of the Act, 15 U.S.C. § 1052(f). A term
is “merely descriptive” within the meaning of § 2(e)(1) if it “immediately conveys
knowledge of a quality, feature, function, or characteristic of the goods or services
with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). A term need only describe a single
feature or attribute of the goods to be descriptive. Id. (citing In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)). A term is
merely descriptive of goods if consumers would understand it to convey that the goods
have a certain composition or contain certain ingredients. In re TriVita, Inc., 783 F.3d
872, 114 USPQ2d 1574, 1576 (Fed. Cir. 2015) (NOPALEA merely descriptive of
dietary and nutritional supplements containing nopal juice because goods were
identified as containing nopal, an extract from the genus of nopalea cacti).
Whether a mark is merely descriptive is determined in relation to the goods or
services for which registration is sought, not in the abstract or on the basis of
guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978);
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In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1512 (TTAB 2016). “‘The
question is not whether someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether someone who knows what the
goods and services are will understand the mark to convey information about them.’”
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech Inc., 64 USPQ2d 1314, 1316-
17 (TTAB 2002)).
Applicant argues that “COCOMCT is distinctive and is, at the very least, only
suggestive of the goods” because “[i]t does not directly tell the consumers about the
values or characteristics of the goods” and “[i]t evokes a certain meaning that only
imagination and deep thinking can achieve.” 7 TTABVUE 4. Applicant appears to cite
the Trademark Manual of Examining Procedure (“TMEP”) for the proposition that “a
mark comprising a combination of merely descriptive components is registrable if the
combination of terms creates a unitary mark with a unique, nondescriptive meaning,
or if the composite has a bizarre or incongruous meaning as applied to the goods.” 7
TTABVUE 4 (citing In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382 (CCPA
1968) (SUGAR & SPICE not merely descriptive of bakery products) and In re Shutts,
217 USPQ 363 (TTAB 1983) (SNO-RAKE not merely descriptive of a snow removal
hand tool)).
Applicant makes the related arguments that COCOMCT
does not immediately convey the precise nature of the
goods or exactly what is being offered by Applicant. . . . The
mark COCOMCT does not actually describe High Lauric
MCT-oil, an ordinary consumer is not expected to be too
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technical and the term COCOMCT is not even known by
ordinary consumer for edible oil. The term to reiterate is
not a common term associated with edible oil used by
consumers or competitors in its industry. Lack of such
evidence indicates that the proposed mark is not merely
descriptive in the context of such goods and services. To the
Applicants [sic] knowledge, COCOMCT mark is not used
by others to describe edible oils. . . . It is not immediately
conclusive that the letters MCT stands [sic] for Medium
Chain Tryglyceride. It may mean anything and the mark
is not MCT but a one word COCOMCT.
7 TTABVUE 5-6.
The Examining Attorney responds that the record shows that the component
elements of Applicant’s proposed mark do not create a unique, incongruous, or
otherwise non-descriptive meaning because the record “indicates that the wording
‘COCO’ refers to ‘coconut’ and that the wording ‘MCT’ refers to ‘medium-chain
triglyceride.’” 9 TTABVUE 6. The Examining Attorney relies upon the page from
Applicant’s website depicted below,

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dictionary definitions from the MERRIAM-WEBSTER, OXFORD, and COLLINS
dictionaries, and other sources, showing that “coco” means “coconut,”5 and Internet
evidence that coconut medium chain triglyceride (MCT) oil is a common type of oil.
Representative examples of the Internet evidence are depicted below.

5 On appeal, the Board may take judicial notice of dictionary definitions, including online
dictionaries that exist in a printed format or have regular fixed editions. See, e.g., In re Jimmy
Moore LLC, 119 USPQ2d 1764, 1767-68 (TTAB 2016). We construe the Examining Attorney’s
statement, 9 TTABVUE 6, that the Board may take judicial notice of additional dictionary
definitions of “coco” attached to the Examining Attorney’s brief, 9 TTABVUE 13-34, as a
request that we judicially notice those definitions, and we grant that request. Applicant does
not dispute that “coco” means or refers to “coconut” as it is used in the proposed mark. We
also take judicial notice that the word “lauric” in Applicant’s identification of goods means “of
or derived from lauric acid,” which in turn means “a white, crystalline, water-insoluble
powder . . . a fatty acid occurring as the glyceride in many vegetable fats, especially coconut
and laurel oil.” DICTIONARY.COM (dictionary.com, accessed on August 7, 2017).
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5 TTABVUE 5-8, 11.
In analyzing whether Applicant’s proposed mark is merely descriptive, we must
“consider the mark as a whole and ask whether the combination of the component
words of Applicant’s mark ‘conveys any distinctive source-identifying impression
contrary to the descriptiveness of the individual parts.’” Fat Boys, 118 USPQ2d at
1516 (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372
(Fed. Cir. 2003)). “If, instead, each component retains its merely descriptive
significance in relation to the goods, the combination results in a composite that is
itself merely descriptive.” Id. We agree with the Examining Attorney that the record
shows that in the context of the goods identified in the application, “COCO” means
“coconut” and “MCT” means “medium chain triglyceride,” and that their combination
as COCOMCT immediately describes a feature or attribute of Applicant’s “high lauric
MCT oil,” namely that it is derived from coconuts or coconut oil. We find no new and
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unique commercial impression from Applicant’s combination of these merely
descriptive components.
Applicant’s two main arguments to the contrary are unsupported or belied by the
record, and are otherwise unavailing. Applicant’s argument that “MCT” “may mean
anything,” 7 TTABVUE 6, is without merit. Descriptiveness is considered in the
context of the goods at issue, not in the abstract. DuoProSS, 103 USPQ2d at 1757.
Applicant’s own use of “MCT” in its goods identification “high lauric MCT oil” is an
acknowledgment that “MCT” has a specific meaning in connection with the identified
goods, and the record shows that average consumers of those goods would be aware
that “MCT” stands for “medium chain triglyceride.” Indeed, Applicant’s website
distinguishes its own coconut-based “Medium Chain Triglyceride” oil from “other
MCT oils.” See TriVita, 114 USPQ2d at 1576 (finding that record evidence supported
Board’s conclusion that average purchasers of applicant’s goods would understand
mark to describe their composition). The fact that “MCT” might have different
meanings in different contexts is irrelevant. In re Franklin Cty. Historical Soc’y, 104
USPQ2d 1085, 1087 (TTAB 2012).
Applicant’s arguments that COCOMCT “is not a common term associated with
edible oil used by consumers or competitors in its industry” and that the “COCOMCT
mark is not used by others to describe edible oils,” 7 TTABVUE 5, also miss the mark.
The fact that Applicant may be first and only user of COCOMCT does not make the
proposed mark distinctive because the record shows that it is merely descriptive. Fat
Boys, 118 USPQ2d at 1514; see also KP Permanent Make-Up, Inc. v. Lasting
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Impression I, Inc., 543 U.S. 111, 72 USPQ2d 1833, 1838 (2004) (noting that the law
does not permit “anyone to obtain a complete monopoly on use of a descriptive term
simply by grabbing it first.”); In re Bailey Meter Co., 102 F.2d 843, 41 USPQ 275, 276
(CCPA 1939) (being “the first and only one to adopt and use the mark sought to be
registered does not prove that the mark is not descriptive.”).
The record leaves no doubt that Applicant’s proposed mark COCOMCT
immediately describes a feature or attribute of “high lauric MCT oil,” and is thus
merely descriptive of the goods and ineligible for registration on the Principal
Register in the absence of a showing of acquired distinctiveness.
III. Analysis of Identification of Goods Issue
The Examining Attorney also refused registration on the ground that Applicant
refused to amend the identification of goods to include the fact that they contain or
comprise coconuts or coconut oil. Generally, if a mark consists of or includes a term
that potentially could be deceptive under Trademark Act Section 2(a), 15 U.S.C.
§ 1052(a), if it falsely described the material content of a product, an applicant may
avoid the refusal by amending the identification of goods to accurately reflect the
material content of the goods, using the term in the mark. See TMEP
Section 1203(f)(i) (April 2017). The Examining Attorney takes the position that
“COCO-” constitutes such a term, and in accordance with § 1203.02(e)(ii) of the
TMEP, “the identification must include the feature or characteristic in order to
resolve the ambiguity between the mark and the identification of goods/services.” 9
TTABVUE 9. Applicant did not address this second refusal in its appeal brief.
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As discussed above, the record shows that the “COCO-” prefix formative in
Applicant’s mark means “coconut” and that Applicant’s “high lauric MCT oil” contains
or comprises coconut oil. The record further shows that this feature of Applicant’s
goods would be believable to consumers of the goods, and material to their purchase
decision, because the health benefits of coconut MCT oil are routinely touted,
including by Applicant itself, whose website states that its product is “[e]asily
absorbed by the body,” “is converted to ketones, supplying body and brain with
energy,” and “[b]est of all, . . . cannot be stored as body fat.” Accordingly, because
COCOMCT could be considered deceptive for goods that do not contain or comprise
coconuts or coconut oil, Applicant’s identification of goods needed to be amended, as
required by the Examining Attorney, to include the fact that its goods contain or
comprise coconuts or coconut oil in order to make the identification acceptable, and
the Examining Attorney properly refused registration based upon Applicant’s failure
to comply with this requirement.
Decision: The refusals to register are affirmed.