Christie Brinkley Skincare, LLCv.Alumier Europe Ltd.

Trademark Trial and Appeal Board

Sep 6, 2019

91229847 (T.T.A.B. Sep. 6, 2019)

Mailed: September 6, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
————
Christie Brinkley Skincare, LLC
v.
Alumier Europe Ltd.
___
Opposition No. 91229847
___
Christopher J. Day of Day Law Firm
for Christie Brinkley Skincare, LLC.

Faustino A. Lichauco of Occhiuti & Rohlicek LLP
for Alumier Europe Ltd.
______
Before Adlin, Goodman and Coggins,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant Alumier Europe Ltd. seeks a Principal Register registration for the
proposed mark IR DEFENSE, in standard characters (IR disclaimed), for “beauty
serums that provide protection against infrared radiation.”1 In its notice of
opposition, Opposer Christie Brinkley Skincare, LLC alleges prior use of, and
ownership of pending applications to register, the marks IR DEFENSE, in standard

1 Application Serial No. 86660963, filed June 12, 2015 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on an alleged intent to use the mark in commerce.
This Opinion is not a
Precedent of the TTAB
Opposition No. 91229847
2
characters,2 RECAPTURE DAY + IR DEFENSE, in standard characters (DAY and
IR DEFENSE disclaimed),3 and RECAPTURE 360 + IR DEFENSE, in standard
characters (IR DEFENSE disclaimed),4 all for “cosmetics that provide protection
against infrared radiation; non-medicated skin care preparations that provide
protection against infrared radiation.” Opposer specifically alleges that Office actions
issued in each of its pleaded applications finding that Opposer’s pleaded marks could
at least potentially cause confusion with the mark in Applicant’s involved application.
As grounds for opposition, Opposer alleges that use of Applicant’s mark would be
likely to cause confusion with Opposer’s marks, and that Applicant’s mark is merely
descriptive of Applicant’s goods. In its answer, Applicant admits that Opposer’s
pleaded applications were suspended based on a potential likelihood of confusion with
Applicant’s involved mark, but otherwise denies the salient allegations in the notice
of opposition.
I. The Record
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
the file of Applicant’s involved application. In addition, Opposer introduced:

2 Application Serial No. 86726961, filed August 17, 2015 under Section 1(a) of the Act, and
subsequently amended to Section 1(b), based on an alleged intent to use the mark in
commerce (the “’961 Application.”).
3 Application Serial No. 86726965, filed August 17, 2015 under Section 1(a) of the Act, based
on alleged first use dates of November 2014 (the “’965 Application”).
4 Application Serial No. 86740503, filed August 28, 2015 under Section 1(a) of the Act, based
on alleged first use dates of November 2014 (the “’503 Application”).

Opposition No. 91229847
3
Notice of Reliance (“Opp. NOR”) on its pleaded
applications, dictionary definitions, a thesaurus entry and
Internet printouts. 9 TTABVUE.5

Testimony Declaration of Andrew Surwilo, Opposer’s
Managing Member, and the exhibits thereto. (“Surwilo
Dec.”). 10 TTABVUE.

Applicant introduced:
A Notice of Reliance (“App. NOR”) on the file history for
Opposer’s pleaded ’961 Application. 11 TTABVUE.

II. Standing
Opposer has established its use, and continued interest in using, the term IR
DEFENSE for skincare products and cosmetics. 10 TTABVUE 4-5 (Surwilo Dec. ¶¶ 4-
5). This establishes its standing to oppose registration of Applicant’s mark on the
ground of descriptiveness. DeWalt, Inc. v. Magna Power Tool Corp., 289 F.2d 656, 129
USPQ 275, 280 (CCPA 1961) (standing established where an opposer “is one who has
a sufficient interest in using the [allegedly] descriptive term in its business”); see also
Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1767 (TTAB 2007) (acknowledging
that a commercial interest in an allegedly descriptive term is sufficient to establish
standing). Cf. Otto Roth & Co., Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40,
44 (CCPA 1981) (“It is clear that use of a term in a descriptive sense is sufficient to
impart standing to oppose federal registration of a descriptive ‘word, name, symbol,
or device’ as a trademark.”).

5 Citations to the record reference TTABVUE, the Board’s online docketing system. The
number preceding “TTABVUE” corresponds to the docket entry number(s), and any
number(s) following “TTABVUE” refer to the page number(s) of the docket entry where the
cited materials appear.
Opposition No. 91229847
4
III. Evidence of Descriptiveness
Opposer relies on the following dictionary definitions of the proposed mark’s
constituent terms:
IR—“infrared”6

DEFENSE—“the act or action of defending;” “capability of
resisting attack;” and “means or method of defending or
protecting oneself, one’s team, or another.”7
9 TTABVUE 20-21, and on the following thesaurus entry:
PROTECTION—“means or method of defending”8
9 TTABVUE 19.
Opposer also relies on an article which indicates that infrared rays from sunlight
can damage skin. Specifically, a blog posting on the “lovelyskin.com” website entitled
“The Next Big Thing: Infrared Sunscreen,” states that infrared or IR rays “generate
free radicals that cause collagen breakdown and accelerate skin aging.” Id. at 22. The
article recommends “sunscreens that offer infrared protection,” as they “are the best
defense against sunburn, premature photoaging and skin cancer,” and goes on to list
two of “our favorite IR sunscreens.” Id. One of the recommended products is “Obagi
Medical Sun Shield” and the other is “SkinMedica Total Defense.” Id.; see also, id. at
24-26 (printouts from “skinmedica.com” website showing Total Defense products be-
ing promoted for their ability to “protect” skin).

6 http://unabridged.merriam-webster.com/collegiate/ir.
7 http://unabridged.merriam-webster.com/collegiate/defense.
8 http://unabridged.merriam-webster.com/thesaurus/protection.
Opposition No. 91229847
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IV. Analysis
A mark is deemed merely descriptive, within the meaning of Section 2(e)(1), if it
immediately conveys knowledge of a quality, feature, function, characteristic or
purpose of the goods for which it is used. In re Bayer AG, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007) (quoting In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009));
and In re Abcor Dev., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A mark need
not immediately convey an idea of each and every specific feature of the goods in order
to be considered merely descriptive; rather, it is sufficient that the mark describes
one significant attribute, function or property of the goods. In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338
(TTAB 1973). Whether a mark is merely descriptive is determined not in the abstract,
but in relation to the goods for which registration is sought, the context in which it is
being used on or in connection with the goods, and the possible significance that the
proposed mark would have to the average purchaser of the goods because of the
manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
When two or more merely descriptive terms are combined, the determination of
whether the composite proposed mark also has a merely descriptive significance
turns on whether the combination of terms evokes a new and unique commercial
impression. If each component retains its merely descriptive significance in relation
to the goods, the combination results in a composite that is itself merely descriptive.
See e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir.
Opposition No. 91229847
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2004) (PATENTS.COM merely descriptive of computer software for managing a
database of records that could include patents, and for tracking the status of the
records by means of the Internet); In re Petroglyph Games, Inc., 91 USPQ2d 1332
(TTAB 2009) (BATTLECAM merely descriptive for computer game software); In re
Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of
real estate brokerage, real estate consultation and real estate listing services); In re
Tower Tech Inc., 64 USPQ 2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive
of commercial and industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d
1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use
in developing and deploying application programs); In re Putman Publ. Co., 39
USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of
news and information services in the food processing industry).
Here, the record leaves no doubt that IR DEFENSE is merely descriptive of beauty
serums that provide protection against infrared radiation. The dictionary definitions
and third party editorial uses of “IR” and “defense” in connection with skincare
products, as well as the thesaurus entry for “protection” make clear that the term IR
DEFENSE merely describes the purpose of Applicant’s goods − to protect or “defend”
skin from the dangers of infrared or “IR” radiation from sunrays. For example, the
“lovelyskin.com” article states that “sunscreens that offer infrared protection are the
best defense against sunburn, premature photoaging and skin cancer.” 9 TTABVUE
22 (emphasis added). Other products designed to protect skin from the sun’s infrared
rays use terms with similar meanings to describe their competing products, such as
Opposition No. 91229847
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“sun shield” and “total defense.” Id. The article describes one product’s “high SPF and
Active IR technology which defends your skin from heat-related free radical damage.”
Id.9
The descriptiveness of Applicant’s proposed mark is further revealed by
Applicant’s identification of goods itself: “beauty serums that provide protection
against infrared radiation” (emphasis added). See generally, In re Taylor &
Francis (Publishers) Inc., 55 USPQ2d 1213, 1215 (TTAB 2000) (PSYCHOLOGY
PRESS & Design found merely descriptive of nonfiction books in the field of
psychology, in part because the applicant’s “identification of goods expressly states
that the series of non-fiction books upon which applicant uses its mark are ‘in the
field of psychology.’ The word PSYCHOLOGY therefore is merely descriptive of the
subject matter of applicant’s books, as identified in the application ….”). The
thesaurus entry for “protection” indicates that the term is a synonym for a “means or
method of defending.” 9 TTABVUE 19. Furthermore, Applicant’s voluntary

9 Applicant introduced the file history of Opposer’s pleaded ’961 Application via notice of
reliance, which establishes that Opposer’s identical proposed mark IR DEFENSE was
refused registration for being merely descriptive. 11 TTABVUE. While the evidence in
support of that refusal is therefore of record, we may not rely on it for the truth of the matters
asserted. Safer Inc. v. OMS Inv. Inc., 94 USPQ2d 1031, 1037 n.14 and 1040 (TTAB 2010).
Furthermore, we must decide each case on its own merits. In re Nett Designs, Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). At the same time, however, the evidence from
the ’961 Application’s file history was properly introduced via notice of reliance in this case,
is consistent with Safer, and is substantively no different than if Applicant had introduced
the same materials separately, apart from the entire file history. These materials further
reveal the public’s exposure to use of the term “defense” by other third parties in association
with cosmetics and skincare goods. For example, the “skinexpert.com” website describes how
cosmetics provide “defense against sun-damaged skin.” 11 TTABVUE 32, the “amazon.com”
excerpt shows an “eye defense cream,” id. at 33, and the “skinceuticals.com” excerpt describes
a skin care preparation that provides UV ray “defense.” Id. at 34.
Opposition No. 91229847
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disclaimer of the term “IR” is effectively a concession that at least this term is merely
descriptive. Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750,
1762 (TTAB 2013), aff’d 565 Fed. Appx. 900 (Fed. Cir. 2014); Bass Pro Trademarks
LLC v. Sportsman’s Warehouse Inc. 89 USPQ2d 1844, 1851 (TTAB 2008).
When the merely descriptive terms “IR” and “defense” are combined, “the mark as
a whole, i.e., the combination of the individual parts,” does not convey “any distinctive
source-identifying impression contrary to the descriptiveness of the individual parts.”
In re Oppedahl & Larson, 71 USPQ2d at 1372. To the contrary, from “the perspective
of a prospective purchaser or user” of Applicant’s beauty serums, “because … the com-
bination of the terms does not result in a composite that alters the meaning of [any]
of the elements,” the proposed mark is merely descriptive. In re Petroglyph Games,
91 USPQ2d at 1341. Applicant does not argue to the contrary.
Applicant nevertheless argues that the term IR DEFENSE is not merely
descriptive based on Opposer’s arguments made during Opposer’s prosecution of its
pleaded ’961 Application to register the same term. Specifically, Applicant relies on
Opposer’s argument in an Office Action response that its identical proposed mark IR
DEFENSE is not merely descriptive because Opposer’s cosmetics and skin care
products (as opposed to Applicant’s involved beauty serums that protect against
infrared radiation) “cannot immediately be identified simply by viewing the subject
mark.” 11 TTABVUE 16-19 (Opposer’s June 12, 2017 Office Action response in its
‘961 Application). That is not the correct test, however. Indeed, “[t]he question is not
whether someone presented with only the mark could guess what the goods or
Opposition No. 91229847
9
services are. Rather, the question is whether someone who knows what the goods or
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, 64 USPQ2d at 1316-17). Here, consumers
who know that Applicant’s goods are “beauty serums that provide protection against
infrared radiation” will immediately understand that the proposed mark directly
describes their stated purpose: defending a user’s skin against IR radiation.
Furthermore, Opposer’s argument during prosecution of its own application that the
terms IR and DEFENSE have “many different meanings” is irrelevant and not well-
taken, to the extent Applicant makes the same argument here. “It is well settled that
so long as any one of the meanings of a term is descriptive, the term may be
considered to be merely descriptive.” In re Chopper Indus., 222 USPQ 258, 259 (TTAB
1984); see also, In re IP Carrier Consulting Grp., 84 USPQ2d 1028, 1034 (TTAB 2007);
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Finally, even if the record
in this case established that Opposer (or Applicant) was the first and only user of the
term IR DEFENSE, which it does not, that would be irrelevant. In re Fat Boys Water
Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2018) (“The fact that Applicant may be
the first or only user of a term does not render that term distinctive ….”); In re Sun
Microsystems, Inc., 59 USPQ2d at 1087. Cf. KP Permanent Make-Up, Inc. v. Lasting
Impression I, Inc., 543 U.S. 111 (2004), 72 USPQ2d 1833, 1838 (2004) (trademark law
does not countenance someone obtaining “a complete monopoly on use of
a descriptive term simply by grabbing it first”).
Opposition No. 91229847
10
V. Conclusion
Applicant’s proposed mark IR DEFENSE merely and immediately describes the
stated purpose of its goods, which is to protect or “defend” a user’s skin against
infrared or “IR” radiation. The term should remain available for other skincare
businesses to use to describe their competing products and services. See In re Abcor
Dev., 200 USPQ at 217 (“The major reasons for not protecting [merely descriptive]
marks are … to maintain freedom of the public to use the language involved, thus
avoiding the possibility of harassing infringement suits by the registrant against
others who use the mark when advertising or describing their own products.”).
Decision: The opposition is sustained under Section 2(e)(1) of the Trademark Act.10

10 We need not reach Opposer’s likelihood of confusion claim. Yazhong Investing Ltd. v. Multi-
Media Tech Ventures, Ltd., 126 USPQ2d 1526, 1540 (TTAB 2018); Multisorb Tech., Inc. v.
Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013).