Indena S.p.A.

Trademark Trial and Appeal Board

Jul 11, 2000

No. 74603891 (T.T.A.B. Jul. 11, 2000)

Paper No. 18
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 28, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Indena S.p.A.
________
Serial No. 74/603,891
_______
Ralph E. Bucknam and Joseph J. Orlando
of Bucknam and Archer for Indena S.p.A.
Curtis W. French, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______
Before Simms, Quinn and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Indena S.p.A. filed an application to register the
mark PHYTOSOME on the Principal Register for “complexes of
vegetable substances with phospholipids for use in the
manufacture of cosmetics, pharmaceuticals and health
foods.”1

1 Serial No. 74/603,891, filed November 28, 1994, setting forth
first use dates of July 1988.
Ser No. 74/603,891
2
Registration was initially refused, and the refusal
made final, on the ground that the mark was merely
descriptive under Section 2(e)(1) of the Trademark Act.
Applicant subsequently amended the application to one
seeking registration on the Supplemental Register.
Registration has now been finally refused under Section 23
of the Trademark Act on the ground that the proposed mark
is generic and thus incapable of distinguishing applicant’s
goods from those of others.
Applicant and the Examining Attorney have filed
briefs, but an oral hearing was not requested.
Generic terms are by definition incapable of
indicating source and thus can never attain trademark
status. In re Merrill, Lynch, Pierce, Fenner, and Smith
Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987). The
critical issue in determining genericness is whether
members of the relevant public primarily use or understand
the term sought to be registered to refer to the genus or
category of services in question. See H. Marvin Ginn Corp.
v. International Association of Fire Chiefs Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986); In re Recorded Books,
Inc., 42 USPQ2d 1275 (TTAB 1997). Evidence of the relevant
public’s understanding of the term may be obtained from any

Ser No. 74/603,891
3
competent source, including dictionaries, trade journals,
newspapers, and other publications. See In re Northland
Aluminum Products, Inc., 777 F.2d 1566, 227 USPQ 961 (Fed.
Cir. 1985).
Here the Examining Attorney maintains that PHYTOSOME
is a term of art used by the relevant public, namely, those
in the cosmetic and pharmaceutical manufacturing
industries, to describe a combination of liposomes and
plant extracts and thus identifies goods of the class
covered by applicant’s identification of goods. The
Examining Attorney supports this position with excerpts
from twenty-some articles obtained from the Nexis database,
printouts from three Web sites and a dictionary definition
of the term “phytosome” from the Consumer’s Dictionary of
Cosmetic Ingredients (4th Ed. 1994). As representative
examples of the uses of the term by others in the cosmetic
and pharmaceutical fields, we note the following:
Its eye color has licorice phytosome to provide
softening. And so it goes in the treatment-protection
ingredient race... Drug & Cosmetic Industry (Oct.
1991);
...Duo Tanning Powder. All are formulated with
natural proteins and active ingredients such as
hyaluronic acid and oligo elements (for hydration);
phytosome acid glycyhiza and potassium (to reduce
swelling and puffiness); natural sun filters ...
Cosmetics International (Apr. 13, 1993);
Ser No. 74/603,891
4
...anti-acne effect of a formulation containing
standardized extract from Krameria triandra Ruiz
(0.5%), escrin-[Beta]-sitosterol phytosome (1%) and
lauric acid... Manufacturing Chemist (Dec. 1996);
...supplements thought to be cancer fighters: the
mineral selenium, vitamins A and E, flaxseed oil,
organic germanium, grape-seed phytosome, maitake.....
Washingtonian (Oct. 1997).
The dictionary definition reads:
A new term cosmetologists are using for the
combination of liposomes (see)2 and plant extracts.
They claim that the desirable substances then pass
more easily through the skin. In the works are
phytosomes to carry catechin, quercitron, escin, and
glycyrrhetinic acid... .
Applicant argues that it coined the term PHYTOSOME to
identify certain complexes obtained by combining vegetal
active principles and purified natural phospholipids which
it had developed; that these developments have been
patented and the term PHYTOSOME has been treated as a
trademark by applicant and registered in Italy; and that
the usages which the Examining Attorney has produced only
show that the mark has been appropriated and misused by
others in the cosmetic and pharmaceutical industry.
Applicant maintains that this is a less than substantial
showing of generic use and that the Examining Attorney has
failed to meet the burden of proof necessary to show that

2 We take judicial notice of the corresponding definition for
“liposomes” as “microscopic sacs, or spheres, manufactured from a
variety of fatty substances, including phospholipids.”
Ser No. 74/603,891
5
the consuming public considers the term generic. Applicant
relies upon four articles written by employees of applicant
describing applicant’s work with respect to these complexes
as evidence that applicant was responsible for coining the
term PHYTOSOME for the products, which is used throughout
the articles in the manner of a trademark. Applicant
argues that it is not clear from the abbreviated Nexis
excerpts introduced by the Examining Attorney if the term
“phytosome” was in some other portion attributed to
applicant. Even if there has been no recognition that
applicant coined the term, applicant argues that it should
not be penalized for the “uncontrollable actions” of others
in using the term to describe “the same or similar”
products. (Applicant’s Reply Brief, p.3).
From the articles introduced by applicant, we have no
doubt that applicant coined the term PHYTOSOME for the
complexes of vegetal principles and phosopholipids which it
has developed and patented, and which have useful cosmetic
and pharmaceutical properties. Applicant’s fatal error
lies in using this coined term as the sole designation for
these new complexes. As a result of this failure to
indicate a name per se for the products, the term has been
subsequently adopted by others in the relevant fields as
the generic name for the complexes, as shown by the
Ser No. 74/603,891
6
Examining Attorney’s evidence. See J. T. McCarthy, 2
McCarthy on Trademarks and Unfair Competition, § 12:25
(1991) for a general discussion of names for new products
becoming generic. Even though a term may start out
nongeneric as applied to a product, if the term over a
period of time comes to identify the product itself, rather
than the source thereof, it becomes generic and cannot be
exclusively appropriated by any one party. See In re
Randall and Hustedt, 226 USPQ 1031 (TTAB 1985); In re Texas
Meat Brokerage, Inc., 199 USPQ 40 (TTAB 1978).
Here, similar to the Randall and Hustedt case,
although applicant dismisses subsequent third-party uses of
the term as “misappropriation” of its coined mark,
applicant has failed to introduce any evidence that it has
attempted to police its alleged trademark rights. The
evidence of the use by others in the cosmetic and
pharmaceutical fields of the term “phytosome” in a generic
sense to describe ingredients consisting of complexes of
plant extracts (vegetable substances) and liposomes
(phospholipids) is sufficient to establish that the term
has come to be perceived and has been adopted as a generic
reference to goods of this class by the relevant public,
which in this case consists of those involved in the
production of cosmetic and pharmaceutical products. See
Ser No. 74/603,891
7
Continental Airlines, Inc. v. United Air Lines Inc., 53
USPQ2d 1385 (TTAB 1999)[term “E-ticket” has been adopted by
many airlines as common descriptive term for electronic
ticketing and reservation services].
Accordingly, we find that the term PHYTOSOME is
primarily used and understood by the relevant public as a
generic name for the class of goods within which
applicant’s complexes fall and thus is incapable of
functioning as a mark indicating applicant as the source of
goods of this type.
Decision: The refusal to register under Section 23 is
affirmed.
R. L. Simms
T. J. Quinn
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board
Ser No. 74/603,891
8