Interfashion U.S.A., Inc.

Trademark Trial and Appeal Board

Oct 18, 2006

No. 76573122 (T.T.A.B. Oct. 18, 2006)

Mailed: October 18, 2006
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Interfashion U.S.A., Inc.
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Serial No. 76573122
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Anthony J. Casella, Esq. of Casella & Hespos LLP for
Interfashion U.S.A., Inc.

Sonya B. Stephens, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Hairston, Drost and Cataldo, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

On January 30, 2004 Interfashion U.S.A., Inc. filed an
application to register the mark AVENA (in standard
character form) on the Principal Register for “hair care
preparations, namely, shampoos, conditioners, hair
bleaches, hair dyes, hair tints, hair colors, hair setting
and hair waving preparations.” Applicant claimed first use
anywhere and first use in commerce on March 1, 2002. In
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76573122
2
addition, the application contained a statement that “[t]he
term ‘AVENA’ in English means ‘oats.’”
The trademark examining attorney originally refused
registration under Section 2(e)(1) of the Trademark Act on
the ground that applicant’s mark, as applied to the
identified goods, was merely descriptive. In a response
dated September 20, 2004 applicant amended the application
to seek registration on the Supplemental Register.
Applicant acknowledged that its “hair care preparations
contain, as one of many ingredients, extracts of oats which
are formulated as an additive to conditioning creams.”
(Brief at 2). The examining attorney then refused
registration on the ground that AVENA is generic and is
thus incapable of distinguishing applicant’s goods from the
goods of others.
When this refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
At the outset, we note that in view of applicant’s
amendment to the Supplemental Register, there is no
question that AVENA is merely descriptive of applicant’s
hair care preparations. Thus, the issue on appeal is
whether AVENA is generic when applied to such goods.
Further, it is well settled that the foreign equivalent of
a generic English word is no more registrable than the
Ser No. 76573122
3
English word itself. This is the case even if the foreign
word is not well known to the American public generally.
See in re Atavio, Inc., 15 USPQ2d 1361, 1362 (TTAB 1992).
The examining attorney’s position is that “Avena” is a
generic term for a key ingredient of applicant’s hair care
preparations, and thus is similar to other terms which have
been refused registration, including marks involved in the
following cited cases: In re Hask Toiletries, Inc., 223
USPQ 1254 (TTAB 1984) [HENNA ‘N’PLACENTA]; In re Bonni
Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987)
[LA LINGERIE]; In re Helena Rubenstein, Inc., 410 F.2d 438,
161 USPQ 606 (CCPA 1969)[PASTEURIZED]; In re Wickerware,
Inc., 227 USPQ 970 (TTAB 1985)[WICKERWARE]; In re Half
Price Books, Records, Magazines, Inc., 225 USPQ 219 (TTAB
1984) [HALF PRICE BOOKS RECORDS MAGAZINES]; and In re
Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB 1984)
[LAW & BUSINESS]. According to the examining attorney,
“defining the genus of goods in the case at hand as hair
care preparations featuring avena as an ingredient,
purchasers would clearly understand the proposed mark
‘AVENA’ to refer to a central characteristic of the
relevant genus of goods.” (Brief at unnumbered 7). In
support of the refusal, the examining attorney submitted
Ser No. 76573122
4
dictionary and encyclopedia excerpts listing the word
“oat(s)” and Internet printouts.
In urging that the refusal be reversed, applicant
argues that the examining attorney has not sustained the
PTO’s burden of proof. Applicant concedes that the term
“Avena” is the generic Latin name for “oat,” but argues
that “Avena” is not understood by the relevant public to
primarily refer to the class of goods at issue, i.e., hair
care preparations. According to applicant, the fact that
oat extracts are one of the ingredients in applicant’s hair
care preparations does not establish that AVENA is generic
for such goods.
With respect to genericness, the Office has the burden
of proving this refusal with “clear evidence” of
genericness. In re Merrill, Lynch, Pierce, Fenner & Smith,
Inc., 929 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
Evidence of the relevant public’s perception of a term may
be acquired from any competent source, including
newspapers, magazines, dictionaries, catalogs and other
publications. In re Leatherman Tool Group, Inc., 32 USPQ2d
1443, 1449 (TTAB 1994), citing in re Northland Aluminum
Products, Inc., 777 F.2d 1566, 227 USPQ 961, 963 (Fed. Cir.
1985).
Ser No. 76573122
5
We now turn to look at the evidence made of record by
the examining attorney. There are numerous dictionary and
encyclopedia excerpts which show that “oat(s)” belong to
the botanical genus “Avena.” The following are
representative:
oat: 1. often oats (used with a sing. or pl.
verb) a. Any of various grasses of the genus
Avena, especially A. sativa, widely cultivated
for their edible grains. The American Heritage
Dictionary of the English Language, Fourth
Edition (2002).

oats: cereal plants of the genus Avena of the
family gramineae (grass family). The Columbia
Encyclopedia, Sixth Edition.

In addition, the examining attorney submitted the
following excerpts from Internet printouts which she
maintains show that “Oat(s)/Avena” is a common ingredient
in beauty products:
Emu Oil Soap – Avena- Scent Free - 3.5 oz (100g)
Price: $6.00
http://www.uniquelyemu.com

Buy Natural Honey Bath & Shower Gel 750 ml Avena
(Oats)
http://www.officialshop.co.uk/fragrances

Oatstraw Hair Rinse
Shampoo hair as usual, rinsing and applying crème
rinse if wanted. Pour 1 cup/250 ml strained
oatstraw infusion over hair and massage in, don’t
rinse out.
www.sunweed.com

Oat extract can be used to soothe skin
conditions, e.g. in baths, skin products, etc.
http://en.wikipedia.org
Ser No. 76573122
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Buy Oat Straw Products Below
Oat Straw Tincture 2 fl. oz., 100% Organic
Oat Straw is most often used as a topical remedy
for irritated and inflamed dry skin.
705739020731 Retail: $15.99 Our Low price:
$14.99, 2/$27.99
Bones, Hair, Teeth & Fingernails Formula Tincture
2 fl. Oz., 100% Organic
This formula is very high in minerals and helps
to nourish bones, hair and teeth and fingernails.
705793011409 Retail $15.99 Our Low price:
$14.99, 3/$36.00
http://shop.store.yahoo.com/herbal-remedies-
usa/oatstraw.html

The critical issue in genericness cases such as this
one 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 goods 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 making our determination, we follow the two-step
inquiry set forth in Marvin Ginn, namely:
(1) What is the genus or category of good or services at
issue? and
(2) Is the designation sought to be registered
understood by the relevant public primarily to refer
to that genus or category of goods or services?

The genus or category of goods involved in this case
is hair care preparations. Because hair care preparations
are purchased by ordinary consumers, the relevant public is
the public at large. The question then is whether
Ser No. 76573122
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“Oat(s)/Avena” is used or understood by the relevant public
to refer to the genus of goods.
The examining attorney submitted two references to
“Oat(s)/Avena” in connection with “Emu Oil Soap – Avena –
Scent Free” and “Natural Honey Bath & Shower Gel 750 ml
Avena (Oats). Apart from the fact that these uses appear
to be descriptive, rather than generic in nature, they are
for beauty products other than hair care preparations.
There is also a reference to “Oat extract,” which appears
to be a generic use, but this is for skin and bath
products, not hair care preparations. The two remaining
references are to “Oat Straw,” i.e., “Oat Straw Hair Rinse”
and “Oat Straw Tincture Bones, Hair, Teeth & Fingernail
Formula,” which are arguably generic uses of “Oat.”
It is incumbent upon an examining attorney to make a
“substantial showing . . . that the matter is in fact
generic.” Indeed, this substantial showing “must be based
on clear evidence of generic use.” Merrill Lynch, 4 USPQ2d
at 1143. Thus, it is beyond dispute that “a strong showing
is required when the Office seeks to establish that a term
is generic.” In re K-T Zoe Furniture, 16 F.3d 390, 29
USPQ2d 1787, 1788 (Fed. Cir. 1994). Furthermore, doubt on
the issue of genericness is resolved in favor of the
applicant. In re Waverly Inc., 27 USPQ2d 1620, 1624 (TTAB
Ser No. 76573122
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1993). The two references to “Oat Straw” hair care
preparations which appear to be generic in nature do not
constitute a clear or substantial showing of generic use.
The other references to “Oat(s)/Avena” for products other
than hair care preparations are not particularly probative
whether AVENA is generic as applied to hair care
preparations. On this limited record, we have doubt as to
whether AVENA is generic for hair care preparations.
Insofar as the cases cited by the examining attorney
are concerned, we recognize that marks which describe a
principal or key ingredient of goods or which describe the
most important or central aspect of goods have been held
unregistrable. In this case, however, we are not convinced
from the evidence of record that prospective purchasers
would understand AVENA to refer to a principal or key
ingredient in applicant’s hair care preparations.
Accordingly, we resolve our doubt in favor of
applicant, thereby allowing any third party who believes it
will be damaged to file a petition to cancel.
Decision: The refusal to register is reversed.