Ian S. Brown

Trademark Trial and Appeal Board

May 1, 2015

No. 85699592 (T.T.A.B. May. 1, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 1, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Ian S. Brown
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Serial No. 85699592
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Michael B. Farber of Ditthavong & Steiner PC
for Ian S. Brown.
Justin Severson,1 Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
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Before Seeherman, Mermelstein and Lykos,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On August 9, 2012, Ian S. Brown (“Applicant”) filed an application to register
the mark JAWLINE (in standard character format) on the Principal Register for
the following goods:
Medical devices for nonsurgical cosmetic treatments in International Class
10; and

Athletic equipment, namely, mouth guards in International Class 28.2

1 The involved application was originally assigned to Trademark Examining Attorney Tracy
Whittaker-Brown, and re-assigned at the appeal stage to Trademark Examining Attorney
Justin Severson.
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The Trademark Examining Attorney has refused registration of the mark under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the
mark is merely descriptive of Applicant’s identified goods in both classes. For the
reasons set forth below, we affirm the refusal to register as to the goods identified in
International Class 10 but reverse the refusal as to the goods identified in
International Class 28.
Evidentiary Issues
Before discussing the substance of this appeal, we shall address the Examining
Attorney’s request to take judicial notice of the following:
● Definition of “mouthguard” obtained from the printed version of The Oxford
Dictionary of Sports Science and Medicine (2nd ed. 1998);

● Definition of “mouthguard” obtained from an unidentified online dental
dictionary found at the web site “Dentist on the Web” at
www.dentistontheweb.com; and

● The Wikipedia entry entitled “Mouthguard.”

The Examining Attorney’s request is granted in part and denied in part.
With regard to the definition of “mouthguard” from The Oxford Dictionary of
Sports Science and Medicine, the request is granted insofar as it is well established
that the Board may take judicial notice of definitions from specialized or technical
dictionaries in print format. See e.g., In re Box Sol’ns Corp., 79 USPQ2d 1953, 1957
(TTAB 2006) (judicial notice taken of computer dictionary and encyclopedia entries).

2 Application Serial No. 85699592, filed pursuant to Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b).
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See also Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §
1208.04 (2014) and cases cited therein.
However, the request is denied as to the unidentified online dental dictionary at
the “Dentist on the Web” Internet site. Judicial notice may be taken of facts that are
not subject to dispute, but a definition from an unidentified dictionary cannot be
said to show that this is the undisputed meaning of “mouthguard.” Excerpts from
“online dictionaries that do not otherwise appear in printed format should be
submitted prior to appeal so that the non-offering party has an opportunity to check
the reliability of the evidence or timely offer rebuttal evidence. The Board will not
take judicial notice of such material unless the online dictionary definitions are
from references that are the electronic equivalent of a print dictionary or have
regular fixed editions.” TBMP § 1208.03 (“Internet Material”) (case citations
omitted).
The request is also denied with regard to the Wikipedia entry. Because we
recognize that anyone may include information in Wikipedia, including false
information, the Board has a longstanding practice of not taking judicial notice of
entries from this online resource. To do so would deprive the non-offering party of
the opportunity to rebut the evidence by submitting other evidence that may call
into question the accuracy of the particular Wikipedia entry. See In re Cook Medical
Technologies LLC, 105 USPQ2d 1377, 1382 n.2 (TTAB 2012) (evidence obtained
from Wikipedia considered because examining attorney had opportunity to rebut
the evidence); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 nn. 4, 6, and 7 (TTAB
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2009) (Board considered evidence obtained from Wikipedia attached to examining
attorney’s office action as well as applicant’s response thereto). The Board will only
take judicial notice of entries from sources whose accuracy cannot be reasonably
questioned. Cf. Fed. R. Evid. 201.3
Whether the Mark is Merely Descriptive?
Section 2(e)(1) of the Lanham Act precludes registration of a mark that, when
used in connection with the goods or services of the applicant, is merely descriptive
of them. 15 U.S.C. § 1052(e)(1) (2006). “A term is merely descriptive 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)). The
determination of whether a mark is merely descriptive must be made in relation to
the goods or services for which registration is sought, not in the abstract. In re
Chamber of Commerce, 102 USPQ2d at 1219; In re Bayer, 82 USPQ2d at 1831. This
requires consideration of the context in which the mark is used or intended to be
used in connection with those goods or services, and the possible significance that
the mark would have to the average purchaser of the goods or services in the
marketplace. In re Chamber of Commerce, 102 USPQ2d at 1219; In re Bayer, 82
USPQ2d at 1831; In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.

3 Although the Federal Rules of Evidence do not apply to Board ex parte appeals, the
underlying principles embodied in Fed. R. Evid. 201 are useful in ruling on requests to take
judicial notice.
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Cir. 1987). Evidence that a term is merely descriptive to the relevant purchasing
public “may be obtained from any competent source, such as dictionaries,
newspapers, or surveys.” In re Bayer, 82 USPQ2d at 1831 (quoting In re Bed &
Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986)).
Applicant argues that the mark is suggestive, not descriptive, because
prospective consumers would need to exercise a degree of imagination to
understand the connection between the mark and the goods since it is not
inherently apparent from the mark that Applicant’s identified goods are intended to
strengthen the jawline. As Applicant contends, consumers encountering the mark
JAWLINE “would not know whether the goods merely functioned cosmetically,
perhaps providing some decoration of the jawline, or would act to actually change
the shape of the jawline by affecting the bone structure or musculature. These are
substantially different functions, and require substantially different means; devices
or methods performing those substantially different [functions] would be used by
different individuals for different purposes.” Applicant’s Brief, 4 TTABVUE 3. In
addition, Applicant argues that the issue of “immediateness” is critical, and that
consumers will not immediately perceive a relationship between Applicant’s mark
and any function or feature of the identified goods.
In reviewing the evidence of record, we highlight first Applicant’s response to the
Examining Attorney’s request for information in which Applicant stated the
following in relation to “[m]edical devices for nonsurgical cosmetic treatments” in
International Class 10:
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The Class 10 goods are a product designed for fitness enthusiasts and
athletes to strengthen the jaw muscles. The jaw muscles attach to the
jawbone and stabilize the temporal-mandibular joint. The product is
inserted into the mouth like a mouth guard and targets key facial muscles
around the jaw-joint. The fitness enthusiast trains and strengthens the
muscles that define the jaw-joint by biting down repetitively on the
resilient rubber components. The Class 10 goods are made of
polypropylene plastic and resistance natural rubber. The Class 10 goods
are manufactured in four different resistance levels.

June 5, 2013 Response to Office Action. Next we point to the evidence made of
record by the Examining Attorney obtained from Applicant’s own web site at
www.panormus.co which includes tag lines such as “A fitness product that defines
your jawline” and “Chisel your JAWLINE.” The web site also explains the function
of Applicant’s goods:
Jawline™ is inserted into the mouth like a mouthguard, and targets key
facial muscles around the jaw-joint… The fitness enthusiast trains and
strengthens the muscles that define the jaw-joint by biting down
repetitively on the resilient rubber components.

July 1, 2013 Office Action. This evidence supports a determination that Applicant's
mark, JAWLINE, when considered in relation to the aforementioned International
Class 10 goods, immediately informs prospective purchasers as to a function of such
items. See In re Chamber of Commerce, supra. In other words, Applicant’s mark
immediately conveys that Applicant’s broadly identified goods consisting of “medical
devices for nonsurgical cosmetic treatments” are for the intended purpose of
strengthening the user’s jawline. Indeed, since the identification as worded is
unrestricted, it necessarily encompasses all types of “medical devices for
nonsurgical cosmetic treatments,” including those for “nonsurgical cosmetic jawline
treatments.”
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However, with regard to the goods identified in International Class 28,
“[a]thletic equipment, namely, mouth guards,” we find that Applicant’s mark is
suggestive, not merely descriptive. A mark is suggestive if, as applied to the goods,
“it requires imagination, thought and perception to reach a conclusion as to the
nature thereof.” In re George Weston Ltd., 228 USPQ 57, 58 (TTAB 1985). “[A]
suggestive term differs from a descriptive term, which immediately tells something
about the goods or services.” Trademark Manual of Examining Procedure (“TMEP”)
§ 1209.01(a) (case citations omitted). With regard to these International Class 28
goods, because mouth guards do not usually function to strengthen the jawline, but
have only a protective purpose, it would not be immediately apparent to the
consumer that strengthening the “jawline” is a function of the mouth guards. That
is, the consumer would have to engage in a multi-step reasoning process to conclude
from the mark JAWLINE that mouth guards, which are normally used to protect
the teeth of athletes, have the purpose of strengthening the jawline.
Notwithstanding our determination that Applicant’s mark is suggestive of the
Class 28 goods identified as “[a]thletic equipment, namely, mouth guards,” we
observe that Applicant has made statements indicating that his goods are not
mouth guards that are typically used as protective gear in contact sports such as
football. “The devices are not mouth guards as are commonly used in these sports.”
Reply Brief, 9 TTABVUE 2. Indeed, the Examining Attorney cautioned Applicant
during ex parte prosecution that Applicant’s own web site appears to indicate that
his goods are “other” than “mouth guards” and that “[a]pplicant should make sure
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the specimens for Class 28 are indeed mouth guards.” July 1, 2013 Office Action. It
appears that the Examining Attorney took no further action regarding the
acceptability of the identification because Applicant filed his application under
Section 1(b), and therefore has not yet filed a specimen showing use of his mark.
However, should a Notice of Allowance ultimately issue (after the mark survives the
publication of the mark for opposition), Applicant will have to file a statement of
use, which requires an acceptable specimen. During this “second examination” the
Examining Attorney will determine whether the specimen shows use of the applied-
for mark JAWLINE in connection with the specific goods identified in International
Class 28.
Decision: The descriptiveness refusal to register Applicant’s mark JAWLINE
under Section 2(e)(1) of the Trademark Act is affirmed as to “[m]edical devices for
nonsurgical cosmetic treatments” in International Class 10 but reversed as to
“[a]thletic equipment, namely, mouth guards” in International Class 28. The
application will proceed to publication solely for the goods identified in
International Class 28.