E.T. Browne Drug Co., Inc.

Trademark Trial and Appeal Board

Sep 15, 2017

No. 86883717 (T.T.A.B. Sep. 15, 2017)

Mailed: September 15, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re E.T. Browne Drug Co., Inc.
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Serial No. 86883717
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Andrew J. Hollander, K&L Gates LLP,
for E.T. Browne Drug Co., Inc.

Brian Pino, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
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Before Cataldo, Bergsman, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant E.T. Browne Drug Co., Inc. seeks registration of the mark shown below
for “hair care preparations containing coconut oil” in International Class 3:1

1 Application Serial No. 86883717 was filed on January 22, 2016 pursuant to Trademark Act
Section 1(a), 15 U.S.C. § 1051(a), based on Applicant’s allegation of first use and use in
commerce as of April 30, 2015.
This Opinion Is Not a
Precedent of the TTAB
Serial No. 86883717
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The wording “COCONUT OIL FORMULA” is disclaimed from the mark as a whole.
The description of the mark states: “The mark consists of the wording ‘PALMER’S’ in
an oval atop a rectangle that encloses the wording ‘COCONUT OIL FORMULA’ with
a design of two coconuts in the lower right corner of the rectangle.” Color is not
claimed as a feature of the mark.
The Examining Attorney has refused registration pursuant to Section 6(a) of the
Trademark Act, 15 U.S.C. § 1056(a), based on Applicant’s failure to comply with an
Office requirement to disclaim the coconut design on the ground that the design is
the legal equivalent of the word “coconut” and therefore merely descriptive of the
identified goods within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1).
After the refusal was made final, Applicant appealed and requested
reconsideration, which was denied. The appeal then resumed.
We affirm the refusal to register.
Disclaimer Requirement
A requirement under Trademark Act Section 6 for a disclaimer of unregistrable
matter in a mark is appropriate when that matter is merely descriptive of the goods
or services at issue. See In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089
(Fed. Cir. 2005). Merely descriptive or generic terms are unregistrable under
Trademark Act Section 2(e)(1), and therefore are subject to a disclaimer requirement
if the mark is otherwise registrable. Failure to comply with a disclaimer requirement
is a ground for refusal of registration. See In re La. Fish Fry Prods., Ltd., 797 F.3d
Serial No. 86883717
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1332, 116 USPQ2d 1262, 1266 (Fed. Cir. 2015); In re RiseSmart Inc., 104 USPQ2d
1931, 1933 (TTAB 2012).
A term is merely descriptive within the meaning of Section 2(e)(1) if it
immediately conveys knowledge of an ingredient, quality, characteristic, function,
feature, purpose, or use of the goods or services with which it is used. See, e.g., 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, 1009 (Fed. Cir. 1987). Whether
a particular term is merely descriptive must be determined not in the abstract, but
in relation to the goods or services for which registration is sought, the context in
which the mark is used, and the possible significance that the mark is likely to have
to the average purchaser encountering the goods or services in the marketplace. See
In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1818, 1831 (Fed. Cir. 2007);
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1473
(TTAB 2014); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words,
the issue is whether someone who knows what the goods or services are will
understand the mark to convey information about them. In re Fat Boys Water Sports
LLC, 118 USPQ2d 1511, 1512 (TTAB 2016).
In addition, a visual representation that consists merely of an illustration of the
goods, or of an article that is an important feature or characteristic of the goods or
services, is merely descriptive under Section 2(e)(1) of the Act. See In re Soc’y for
Private & Commercial Earth Stations, 226 USPQ 436, 438 (TTAB 1985) (holding
representation of a satellite dish merely descriptive of promoting the interests of
Serial No. 86883717
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members of earth station industry); In re Underwater Connections, Inc., 221 USPQ
95, 96 (TTAB 1983) (holding pictorial representation of a compressed gas tank merely
descriptive of travel tour services involving underwater diving).
A. Whether Applicant’s Coconut Design Is Descriptive
The Examining Attorney contends that the coconut design in Applicant’s mark
is an accurate pictorial representation and therefore the legal
equivalent of the word “coconut,” which describes the content of Applicant’s hair care
preparations containing coconut oil. Applicant argues that the coconut design is not
descriptive but ambiguous as to whether one or two coconuts are depicted and also
highly stylized, creating its own distinct commercial impression.
The Examining Attorney submitted three pages of results from an image search
for “coconut” on the Bing.com search engine, the first of which appears below:2

2 May 16, 2016 Priority Office Action at TSDR 8.
Serial No. 86883717
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Some of these images are extremely similar to the coconut design in Applicant’s mark.
We find that Applicant’s design is an accurate pictorial representation of a half
coconut next to either a second coconut (as indicated by the description of the mark
in the application) or the other half of the same coconut with the shell facing up.
The Examining Attorney also made of record evidence that designs quite similar
to the coconut depiction in Applicant’s mark have been used descriptively in
association with similar goods. This evidence includes, among other examples:
• Pure Body Naturals Coconut Oil Hair Mask3

• Organic Veda All Natural Moringa Virgin Coconut Hair Oil4

3 May 16, 2016 Priority Office Action at TSDR 21.
4 August 8, 2016 Final Office Action at TSDR 31.
Serial No. 86883717
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• Molivera Organics 100% Pure Fractionated Coconut Oil, which states in
part on the label that it is “Great for Hair”5

Considering all the evidence of record, we agree that the coconut design in
Applicant’s mark is merely descriptive of coconut oil, an important ingredient in
Applicant’s identified goods “hair care preparations containing coconut oil.”
B. Whether Applicant’s Mark Is Unitary
Applicant also contends that no disclaimer of the coconut design is required
because it overlaps with the rectangular design element in the mark and therefore is
not a separable element; rather, Applicant argues, the mark is unitary.
In order to be considered unitary, the elements of a mark must be so integrated
or merged together that they cannot be regarded as separable. See In re Slokevage,
441 F.3d 957, 78 USPQ2d 1395, 1399 (Fed. Cir. 2006); In re Kraft, Inc., 218 USPQ
571, 573 (TTAB 1983); In re EBS Data Processing, 212 USPQ 964, 966 (TTAB 1981).

5 August 8, 2016 Final Office Action at TSDR 4.
Serial No. 86883717
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Although the coconut design in the lower right-hand corner of Applicant’s mark
does overlap slightly with the rectangular carrier

we do not find that consumers would view it to be inseparable from the remainder of
the mark. The mark thus is readily distinguishable from the marks found to be
unitary in both In re Texsun Tire & Battery Stores, Inc., 229 USPQ 227, 229 (TTAB
1986), with a drawing of a tire encircling a depiction of the entire state of Texas:

and Anheuser-Busch, Inc. v. Holt, 92 USPQ2d 1101, 1107 (TTAB 2009), in which the
Board found that the complex design shown below, comprising several elements, was
evocative of a crest overall:

Serial No. 86883717
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We find that Applicant’s mark is not unitary. Therefore, the coconut design is
subject to the disclaimer requirement.
Consistency Initiative
On March 16, 2017, after the refusal to register was made final and Applicant’s
request for reconsideration was denied, Applicant submitted a Request for
Consistency Review of the disclaimer requirement to the Trademark Examining
Operation. In the request, Applicant contends that no disclaimer of the coconut design
should be required for the subject application because it owns another registration
(No. 4933918, issued on April 5, 2016) comprising an identical design for “non-
medicated skin care preparations containing coconut oil” in International Class 3 that
issued without disclaimer. Applicant also argues that it owns two other registrations
(No. 4994257, issued on July 5, 2016, and No. 5055307, issued on October 4, 2016) for
very similar composite marks comprising, in place of coconuts, depictions of manuka
flower and shea nuts for goods containing manuka oil and shea butter, respectively,
again without disclaimer.
Reg. No. 4994257 Reg. No. 5055307

The Trademark Examining Operation’s Consistency Initiative is a program
developed to aid in the consistent examination of trademark applications as compared
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to co-pending applications and recent registrations. In re Shabby Chic Brands, LLC,
122 USPQ2d 1139, 1144 (TTAB 2017). Under the program, applicants may submit a
request for consistency review when a substantive or procedural issue has been
addressed in a significantly different manner in different cases, subject to the
following provisions:
(1) the Request is based on co-pending applications or an application and a
registration owned by the same legal entity or a successor in interest (e.g.,
assignee);
(2) the registration(s) involved was issued less than five years prior to the date
of the Request;
(3) at least one of the applications in the Request is in a pre-publication status
at the time of the Request; and
(4) the allegedly inconsistent treatment has already occurred.
Id. at 1145. Information about the Consistency Initiative provided on the Office
website states in part:
The Office will promptly review and consider each Request.
The Office will not respond directly to the Request, but
action will be taken in the pending application(s) if the
Office deems it appropriate. Requesters can expect that
any action taken should occur within four to six weeks of
the date of the Request, and requesters may monitor
changes in the identified applications through TSDR.
Requesters should note, however, that subsequent action
taken by the Office may differ from that requested.
Alternatively, the Office may determine that different
handling of the cases is appropriate, and no action will be
taken.6
Because the Request for Consistency Review was made more than four months before
this appeal was submitted on brief, the Trademark Examining Operation guidelines

6 https://www.uspto.gov/trademark/trademark-updates-and-announcements/consistency-
initiative.
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indicate that Applicant may assume no action will be taken in the subject application.
In any event, decisions made under the Consistency Initiative are not binding on the
Board. Shabby Chic, 122 USPQ2d at 1145.
Although Applicant’s other registrations issued without disclaimer of the design
elements discussed supra, the Examining Attorney submitted evidence that a similar
coconut depiction is disclaimed from a registration issued to a third party for
“personal care products, namely, non-medicated skin cleansing preparations” in
International Class 3:7

While we recognize that “consistency is highly desirable,” In re Omega SA, 494
F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007), consistency in examination is not
itself a substantive rule of trademark law, and a desire for consistency cannot
overcome the requirements of the statute. Shabby Chic, 122 USPQ2d at 1145 (citing

7 Application Serial No. 85360122 underlying Registration No. 4258546, October 11, 2011
Examiner’s Amendment (“No claim is made to the exclusive right to use ‘HANDS’
‘COCONUT LIME’ or the depiction of a coconut and lime apart from the mark as shown.”).
Serial No. 86883717
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In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016)). The
Board must assess each mark on its own facts and record. In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations
had some characteristics similar to [Applicant’s] application, the PTO’s allowance of
such prior registrations does not bind the Board or this court.”). The evidence in this
case establishes that the coconut design is merely descriptive in association with
Applicant’s identified goods, and therefore must be disclaimed.
Conclusion
We have carefully considered all arguments and evidence of record, including any
not specifically discussed. We conclude that the coconut design in Applicant’s mark
is merely descriptive of the identified goods and must be disclaimed pursuant to
Trademark Act Section 6(a).
Decision: The refusal to register Applicant’s mark in the absence of a disclaimer
of the coconut design under Section 2(e)(1) is affirmed.
However, this decision will be set aside if, within thirty days of the mailing date
of this order, Applicant submits to the Board the required disclaimer of the coconut
design. See In re Country Music Ass’n Inc., 100 USPQ2d 1824, 1835 (TTAB 2011);
Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g); TBMP § 1218 (June 2017). The
disclaimer should be worded as follows: “No claim is made to the exclusive right to
use ‘COCONUT OIL FORMULA’ or the design of two coconuts apart from the mark
as shown.” See TMEP § 1213.03(c) (Apr. 2017).