Dr. Harold Katz, LLC

Trademark Trial and Appeal Board

Oct 15, 2015

No. 86076435 (T.T.A.B. Oct. 15, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: October 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Dr. Harold Katz, LLC
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Serial No. 86076435
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Matthew H. Swyers of The Trademark Company,
for Dr. Harold Katz, LLC.
Barney L. Charlon, Trademark Examining Attorney, Law Office 104,
Chris Doninger, Managing Attorney.
_____

Before Bergsman, Kuczma and Masiello,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Dr. Harold Katz, LLC (“Applicant”) seeks registration on the Principal Register
of the mark:

for : Cosmetic preparations for the care of mouth and
teeth; Mouth washes; Non-medicated mouth rinse; Tooth
Serial No. 86076435
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cleaning preparations; Tooth gel, in International Class
3.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the
ground that the proposed mark is merely descriptive.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. Applicant and the Examining Attorney have filed briefs. We
affirm the refusal to register.
Descriptiveness
A term is merely descriptive within the meaning of § 2(e)(1) if it immediately
conveys knowledge of a quality, characteristic, function, feature, purpose or use of
the goods 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); In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1010 (Fed. Cir. 1987). Whether a particular term is merely
descriptive must be determined not in the abstract, but in relation to the goods for
which registration is sought, the context in which the term is used, and the possible
significance that the term is likely to have to the average prospective purchaser
encountering the goods in the marketplace. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978); In re Phoseon Technology Inc., 103 USPQ2d
1822, 1823 (TTAB 2012).

1 Application Serial No. 86076435 was filed on September 27, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. The color(s) green and light green are claimed as a feature of the mark.
Serial No. 86076435
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Registration of the applied-for mark THEBREATHCO. (Stylized) has been
refused on the ground that the components of the applied-for mark are descriptive
and retain their descriptive meanings when combined such that the overall
composite mark is descriptive. Because THEBREATHCO. (Stylized) is a composite
mark, the Examining Attorney is permitted to examine the meaning of each
component individually, and then determine whether the mark as a whole is merely
descriptive. See DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F3d
1247, 103 USPQ2d 1753, 1758 (Fed. Cir. 2012); In re Oppedahl & Larson LLP, 373
F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004) (citing In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985)). In determining whether
Applicant’s mark is merely descriptive, we must consider the mark in its entirety,
with a view toward “what the purchasing public would think when confronted with
the mark as a whole.” Cf. In re Hutchinson Technology Inc., 852 F.2d 552, 7
USPQ2d 1490, 1492 (Fed. Cir. 1988).
At the outset, we note that the fact that Applicant’s mark is presented as one
term THEBREATHCO., is inconsequential. See Minnesota Mining & Mfg. Co. v.
Addressograph-Multigraph Corp., 155 USPQ 470, 472 (TTAB 1967) (“[i]t is almost
too well established to cite cases for the proposition that an otherwise merely
descriptive term is not made any less so by merely omitting spaces between the
words”). Moreover, the commercial impression engendered by the presentation of
Applicant’s mark is as separate words (i.e., The Breath Co.).
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The definition for “breath” is “the air inhaled and exhaled in respiration.”2 The
term “Co.” is an abbreviation of the word “company”3 which is defined as a “business
enterprise.”4 Business type designations and abbreviations such as “Corporation,”
“Inc.,” “Company” and Ltd.” merely indicate Applicant’s business type or structure
and generally have no source-indicating capacity. See In re Lewis Cigar
Manufacturing Co., 98 USPQ 265, 267 (CCPA 1953); In re Piano Factory Group,
Inc., 85 USPQ2d 1522, 1526 (TTAB 2006); In re Packaging Specialists, Inc., 221
USPQ 917, 919 (TTAB 1984). Here, the term “Co.” is descriptive of Applicant’s
entity type in that it is a limited liability company.
Adding the term “the” to a descriptive or generic term generally does not add
any source-indicating significance or otherwise affect the term’s descriptiveness or
genericness. See In re The Place Inc., 76 USPQ2d 1467, 1468 (TTAB 2005) (holding
THE GREATEST BAR merely descriptive of restaurant and bar services; “the
definite article THE . . . add[s] no source-indicating significance to the mark as a

2 From http://dictionary.reference.com/browse/breath, October 14, 2015, based on the
Random House Dictionary, © Random House, Inc. 2015. The definition of “breath”
submitted by the Examining Attorney in the November 27, 2013 Office Action was “the
vapour, heat, or odour of exhaled air” also from http://dictionary.reference.com
/browse/breath?s=t, TSDR p. 7 of 17. However, inasmuch as it was unclear to the panel
whether the Examining Attorney’s definition, which included the words “vapour” and
“odour,” was from the American or British dictionary definitions for breath, we took judicial
notice of the definition of “breath.” The Board may take judicial notice of dictionary
definitions, University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ
594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including
online dictionaries that exist in printed format or have regular fixed editions. In re Red
Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
3 From http://dictionary.reference.com/browse/co.?s=t, November 27, 2013 Office Action,
TSDR p. 9 of 17.
4 From http://dictionary.reference.com/browse/Company, November 27, 2013 Office
Action, TSDR p. 12 of 17.
Serial No. 86076435
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whole”); Conde Nast Publications Inc. v. Redbook Publishing Co. , 217 USPQ 356,
357, 360 (TTAB 1983) (holding THE MAGAZINE FOR YOUNG WOMEN a
“common descriptive or ‘generic’ name of a class or type of magazine” and incapable
of indicating source; “[t]he fact that the slogan also includes the article ‘The’ is
insignificant. This word cannot serve as an indication of origin, even if applicant’s
magazine were the only magazine for young women.”); In re The Computer Store,
Inc., 211 USPQ 72, 74-75 (TTAB 1981) (holding THE COMPUTER STORE merely
descriptive of, and the common descriptive name for, computer-related services); see
also In re G. D. Searle & Co., 143 USPQ 220 (TTAB 1964), aff’d, 360 F.2d 1966, 149
USPQ 619 (CCPA 1966) (holding “THE PILL” a common descriptive name for
pharmaceutical preparations in tablet form, and thus does not serve as an indicator
of source or origin in applicant).
In addition to the definitions, the Examining Attorney points to the Applicant’s
website, which describes Applicant as a “Bad Breath Expert,” and describes its
products as being effective “in the fight against bad breath”5 and constituting “Your
Path to Fresh, Clean Breath.”6 Additionally, Applicant’s website indicates that with
Applicant’s product, “You can achieve optimal oral health while enjoying fresh,
clean breath.” It also features products having labels or packaging bearing the mark
THEBREATHCO. with the phrases “Fresh Breath” and “Bad Breath Sensitivity.”7
The website describes Applicant’s owner as “The World’s Foremost Bad Breath

5 June 22, 2014 Office Action, TSDR p. 3 of 33.
6 http://www.thebreathco.com/, January 13, 2015 Final Office Action, TSDR p. 5, 30-31 of
108.
7 January 13, 2015 Final Office Action, TSDR p. 30.
Serial No. 86076435
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Expert.”8 It then goes on to state that “Since 1994, no one has helped more people
fight bad breath than The Breath Company®. Over 6 million people in 98 different
countries have used the clinically proven The Breath Company® System formulas
to eliminate bad breath halitosis and regain lost confidence.”9 The website also
references Applicant’s e-book containing “52 pages of Bad Breath Facts, Tips &
Solutions.”10 Furthermore, it features a list of Applicant’s products that includes
“Fresh Breath Toothpaste.”11
The Examining Attorney submitted evidence that the word BREATH is
frequently disclaimed in trademark registrations for goods, such as Applicant’s
goods, that are in the nature of goods for oral care in International Class 3.12 Third-
party registrations can be used in the manner of a dictionary definition to illustrate
how a term is perceived in the trade or industry. In re J.M. Originals Inc., 6
USPQ2d 1393, 1394 (TTAB 1987) (“Said third party registrations are of use only if
they tend to demonstrate that a mark or a portion thereof is suggestive or
descriptive of certain goods and hence is entitled to a narrow scope of protection.
Used in this limited manner, ‘third party registrations are similar to dictionaries

8 January 13, 2015 Final Office Action, TSDR p. 31.
9 January 13, 2015 Final Office Action, TSDR p. 31. While the federal registration symbol is
used on Applicant’s website with the wording THE BREATH COMPANY, USPTO records
do not show this term to be registered in the United States.
10 January 13, 2015 Final Office Action, TSDR p. 31.
11 January 13, 2015 Final Office Action, TSDR p. 32.
12 Reg. No. 3199160 (LOCOMOTIVE BREATH, “BREATH” disclaimed), Reg. No. 3708649
(12 HOUR FRESH BREATH, “12 HOUR FRESH BREATH” disclaimed), Reg. No. 4440075
(.FRESHENS BREATH.THE LISTERINE WAY and Design, “FRESHENS BREATH”
disclaimed), January 13, 2015 Final Office Action, TSDR p. 5, 8-9, 10-12, 15-17 of 108.
Serial No. 86076435
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showing how language is generally used.’”) (Internal citation omitted.) “Such third
party registrations show the sense in which the word is used in ordinary parlance
and may show that a particular term has descriptive significance as applied to
certain goods or services.” Institut National des Appellations D’Origine v. Vintners
International Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992) (third-
party registrations found to be “persuasive evidence”); In re Box Solutions Corp., 79
USPQ2d 1953, 1955 (TTAB 2006). While only three of the registrations submitted
by the Examining Attorney are active registrations, they provide some evidence of
the descriptive significance of the word “breath” for products such as mouth rinses,
mouthwash and toothpaste, which are the same products as those in Applicant’s
application.
Additionally, the Examining Attorney submits a generous sample of third-party
registrations13 for marks featuring the same structure as Applicant’s mark, i.e.,

13 Reg. No. 3272018 (THE TAN COMPANY registered under 2(f)), Reg. No. 4128223 (THE
HEARING COMPANY registered under 2(f)), Reg. No. 4183014 (THE RENT COMPANY
registered under 2(f)), Reg. No. 4215725 (THE ALKALINE COMPANY Supplemental
Register), Reg. No. 4307008 (THE ENERGY CONSERVATION COMPANY Supplemental
Register), June 22, 2014 Office Action, TSDR p. 3, 5-7, 8-10, 11-13, 14-15, 16-18 of 33 and
Reg. No. 4085308 (THE ORIGINAL APPETIZER COMPANY Supplemental Register), Reg.
No. 3947773 (THE HAIR CARE COMPANY, “THE HAIR CARE COMPANY” disclaimed),
Reg. No. 4027216 (THE GOURMET SUPPLY COMPANY, Supplemental Register), Reg.
No. 4299500 (THE MACHINE LEARNING COMPANY, Supplemental Register). Reg. No.
4285405 (THE CLASSIC CARTRIDGE COMPANY, “CARTRIDGE COMPANY” disclaimed
and § 2(f) as to “CLASSIC CARTRIDGE COMPANY”), Reg. No. 4278762 (THE GREEN
TRUCK MOVING COMPANY, “THE GREEN TRUCK MOVING COMPANY” disclaimed),
Reg. No. 4479664 (THE FAJITA COMPANY, “FAJITA” disclaimed, § 2(f) as to entire
mark), Reg. No. 4265991 (THE RANKING COMPANY INC., Supplemental Register), Reg.
No. 4349412 (THE MATTRESS COMPANY, “THE MATTRESS COMPANY disclaimed),
Reg. No. 4445318 (THE DIGITAL ENGAGEMENT COMPANY, Supplemental Register),
Reg. No. 4430237 (THE WHISKEY ICE CO., Supplemental Register, “ICE CO.”
disclaimed), Reg. No. 4500766 (THE NATURAL DRINKS COMPANY and Design, “THE
NATURAL DRINKS COMPANY” disclaimed), Reg. No. 4519474 (THE POETRY
Serial No. 86076435
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marks that include the word THE followed by a descriptive term and the entity
designation CO. or COMPANY, noting they typically are registered under § 2(f) of
the Trademark Act based on acquired distinctiveness, are registered on the
Supplemental Register, or are registered subject to a disclaimer of such wording.
Unlike those registered marks, Applicant’s mark is not submitted for registration
under § 2(f), on the Supplemental Register, or with a disclaimer.
Applicant argues that the registered marks cited by the Examining Attorney are
not relevant because the intervening word appearing after the definite article THE
and before the word or abbreviation COMPANY, unlike the word BREATH in its
mark, is a product which is designed or made by the company in question.14
Applicant contends its mark does not contain the “name of a product, type of
product or of a discrete commodity.”
Despite Applicant’s conclusion, several of the “intervening words” set forth in the
registrations cited by the Examining Attorney, like Applicant’s mark, do not contain

COMPANY, Supplemental Register), Reg. No. 4496538 (THE HAWAII FUDGE
COMPANY, Supplemental Register, “FUDGE COMPANY” disclaimed), Reg. No. 4519520
(THE ORIGINAL CD LOCATOR & FINANCIAL SERVICE CO., Supplemental Register,
“FINANCIAL SERVICE CO.” disclaimed), Reg. No. 4618919 (THE CUTTING COMPANY,
Supplemental Register), Reg. NO. 4661991 (THE SLIDING DOOR COMPANY and Design,
“THE SLIDING DOOR COMPANY” disclaimed), Reg. No. 4557713 (THE BAMBOO
CLOTHING COMPANY, Supplemental Register, “CLOTHING” disclaimed), Reg. No.
4626242 (THE PASSPORT & VISA COMPANY, “THE PASSPORT & VISA COMPANY”
disclaimed), Reg. No. 4654493 (THE CHANNEL COMPANY, Supplemental Register), Reg.
No. 4668903 (THE DRIVER PERFORMANCE COMPANY, Supplemental Register), Reg.
No. 4657913 (THE SUPERFOOD COMPANY, Supplemental Register, “SUPEFOOD”
disclaimed), Reg. No. 4634501 (THE INFORMATION AGILITY COMPANY, Supplemental
Register), Reg. No. 4594773 (THE JOINT PRESERVATION COMPANY, Supplemental
Register) from January 13, 2015 Final Office Action pp. 33-35, 36-38, 39-41, 42-44, 45-47,
48-50, 51-53, 54-56, 57-59, 60-62, 63-65, 66-68, 69-71, 72-74, 75-77, 78-79, 80-82, 83-85, 86-
88, 89-91, 92-94, 95-97, 98-100, 101-103, 104-106.
14 Applicant’s Brf. p. 14 (4 TTABVUE 15).
Serial No. 86076435
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the name of a product, type of product or of a discrete commodity, for example they
contain words such as, TAN, RENT, HEARING, RANKING, DIGITAL
ENGAGEMENT, DRIVER PERFORMANCE, ENERGY CONSERVATION, and
JOINT PRESERVATION. However, it does not matter whether the “intervening
words” in the registrations are the “name of a product, type of product or of a
discrete commodity.” A mark or term may be merely descriptive of a product even if
it is not the name of the product. See, e.g., In re Petroglyph Games Inc., 91 USPQ2d
1332, 1341 (TTAB 2009) (BATTLECAM merely descriptive for computer game
software); In re Putman Publishing Co., 39 USPQ2d 2021, 2022 (TTAB 1996)
(FOOD & BEVERAGE ON-LINE merely descriptive of a news and information
service for the food processing industry). Additionally, the fact that Applicant may
have been the first or only user of a merely descriptive designation does not justify
registration if the only significance conveyed by the term is merely descriptive. See
In re Alpha Analytics Investment Group LLC, 62 USPQ2d 1852, 1856 (TTAB 2002);
In re National Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB
1983).
When considering the mark as a whole in connection with the goods at issue, the
Examining Attorney contends that THEBREATHCO. (Stylized) would be perceived
by consumers as nothing more than a description of goods provided by a company
whose products are designed to improve one’s breath, and thus is merely descriptive
of Applicant’s products which are used to fight bad breath.15

15 June 22, 2014 Office Action, TSDR p. 3 of 33; November 27, 2013 Office Action, TSDR p. 3
of 17; January 13, 2015 Final Office Action, TSDR p. 5 of 108.
Serial No. 86076435
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Applicant, however, argues that “the ‘mental link’ between the mark
THEBREATHCO. and Applicant’s services [sic] as recited in the application is
neither immediate nor instantaneous. Rather, it is suggestive, as it requires the
consumer to engage in a multi-step reasoning process to arrive at a description of
the services [sic] offered.”16 Applicant asserts that the word “breath” is not
descriptive of its goods because it “has both a literal and figurative meaning.
Literally, it can refer to the process of respiration in general, the rate of a person or
animal’s respiration, or to the air which is inhaled and exhaled from the body
during the process. Figuratively, it can refer to a moment of respite from chaos (as
in ‘I am so busy I can’t catch a breath’), a refreshing deviation from the expected or
normal course of events (as in ‘that new team member has been a breath of fresh
air’), or even as a term for imparting energy and animation into something (as in
‘breathing life’ into a previously stagnant process or system).”17
Determining the descriptiveness of a mark is done in relation to an applicant’s
identified goods, the context in which the mark is being used, and the possible
significance the mark would have to the average purchaser because of the manner
of its use or intended use. See In re Chamber of Commerce of the U.S., 102 USPQ2d
at 1219 (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831
(Fed. Cir. 2007)). Descriptiveness of a mark is not considered in the abstract. In re
Bayer Aktiengesellschaft, 82 USPQ2d at 1831. The question is not whether someone

16 Applicant’s Brf. p. 10 (4 TTABVUE 11). Applicant’s applied-for mark is intended to be
used on goods, not services.
17 Applicant’s Brf. p. 12 (4 TTABVUE 13).
Serial No. 86076435
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presented only with the mark could guess the products or activities listed in the
description of goods. Rather, the question is whether someone who knows what the
products are will understand the mark to convey information about them.
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 103 USPQ2d at 1757
(quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002). See also
In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re
Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
As the above-referenced excerpts from Applicant’s website clearly show, the
word “breath” immediately conveys information about Applicant’s goods because
their purpose is to promote clean and fresh breath and to eliminate bad breath. The
primary focus of Applicant’s goods is one’s “breath.” Thus, the word “breath” must
be deemed to describe a feature, characteristic, purpose and use of Applicant’s
goods. That Applicant’s website refers to “breath” in various formulations,
including, “clean breath,” “fresh breath,” “bad breath” and “breath expert,”
underscores the descriptive significance of this term in and of itself in relation to
the goods at issue.
Applicant contends that “the word ‘BREATH’, when viewed in conjunction with
the other words in the mark, specifically, the structure of the mark, creates a
playful incongruity in the viewer’s immediate reaction. According to Applicant, this
incongruity invites the viewer to investigate, and to engage in the multi-step
reasoning process required to arrive at an accurate description of the product
Serial No. 86076435
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offered by the Applicant.”18 The viewer needs to take another step to arrive at a
description of Applicant’s goods, by assessing how the word BREATH is used in the
context of the mark, arriving at the conclusion that it is from this reference to the
odor of air exhaled by a person. The final step of the process takes the viewer from
the odor of exhaled air to Applicant’s products for improving the quality of this
odor.19 Applicant maintains that the “mental link” between the mark
THEBREATHCO. and its goods requires the consumer to engage in a multi-step
reasoning process to arrive at a description of the services offered.20 In view of the
foregoing, Applicant submits that the average consumer would not arrive at an
immediate understanding of the nature of the goods when encountering the mark in
commerce. Thus, Applicant contends that its mark is not merely descriptive, but
suggestive of its goods.
However, a consumer does not have to exercise “mature thought or follow a
multi-stage reasoning process” to determine the characteristics of Applicant’s
product. See e.g., In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978).
Applicant’s mark THEBREATHCO. (Stylized) describes a feature or purpose of
Applicant’s goods which are goods that affect the odor of exhaled breath. Thus, no
imagination, thought or perception is needed to understand the nature of the
identified goods.

18 Applicant’s Brf. pp. 12-13 (4 TTABVUE 13-14).
19 Applicant’s Brf. p. 13 (4 TTABVUE 14).
20 Applicant’s Brf. p. 10, (4 TTABVUE 11).
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That Applicant’s mark includes stylized letters in shades of the color green, does
not create a separate commercial impression over and above that made by the
descriptive term THEBREATHCO. The descriptive matter in Applicant’s mark is
not registrable on the Principal Register unless the design features of the mark
create an inherently distinctive impression on the purchasers such that the mark as
a whole is not merely descriptive, or if it can be shown by evidence that the
particular display which the Applicant has adopted has acquired distinctiveness. In
re Sadoru Group Ltd., 105 USPQ2d 1484, 1486 (TTAB 2012); In re Guilford Mills
Inc., 33 USPQ2d 1042, 1043 (TTAB 1994); TMEP § 1202.05(c) (2015) (an applicant
may not seek to register the color of the wording or design apart from the words or
designs themselves if the color does not create a separate commercial impression).
Applicant has not made a claim of acquired distinctiveness and the stylization
and colors in the mark are not sufficiently distinctive to create an inherently
distinctive impression. After considering the case law involving the registrability of
marks consisting of merely descriptive or generic words depicted in stylized format,
even with color schemes, we find that the stylization and coloring of the lettering in
which Applicant’s mark appears does not create a separate and inherently
distinctive commercial impression apart from the words themselves. In re Cordua
Restaurants LP, 110 USPQ2d, 1227, 1232 (TTAB 2014). Thus, we find that the
mark as a whole is merely descriptive.
While it is the Board’s policy to resolve doubts in favor of the applicant and allow
a mark to be published, see In re Morton-Norwich Products, Inc., 209 USPQ 791
Serial No. 86076435
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(TTAB 1981); In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972), here,
however, there is no such doubt about the descriptiveness of the applied-for mark.
Moreover, it is well established that simply because Applicant may have been the
first or only user of a merely descriptive designation does not necessarily render it
incongruous or distinctive if the only significance conveyed by the term is merely
descriptive, as is the case here. See In re Phoseon Technology, 103 USPQ2d at 1826;
In re Hunter Fan Co., 78 USPQ2d 1474, 1476 (TTAB 2006).

Decision: The refusal to register Applicant’s mark under
§ 2(e)(1) of the Trademark Act is affirmed.