Internet Promise Group LLC

Trademark Trial and Appeal Board

Mar 23, 2015

No. 85892404 (T.T.A.B. Mar. 23, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: March 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Internet Promise Group LLC
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Serial No. 85892404
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Internet Promise Group LLC, appearing pro se.

Esther Queen, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.1
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Before Bucher, Wolfson, and Masiello,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Internet Promise Group LLC (“Applicant”) seeks registration on the Principal
Register of the mark EAR NATURAL (in standard characters) for
a packaging with a dropper that contains limited quantity
of mustard oil, for dropping oil drops in the ear canal, for
cure of middle ear infection, without use of antibiotics
in International Class 5.2

1 The current Examining Attorney was not the original attorney in this application but was
assigned the application after issuance of the final Office Action.
2 Application Serial No. 85892404 was filed on April 2, 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.
Serial No. 85892404
2
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), having
determined that the applied-for mark immediately informs consumers of the
function of the goods and is thus merely descriptive within the meaning of Section
2(e)(1). After the Examining Attorney made the refusal final, Applicant appealed to
this Board. We affirm the refusal to register.3
As a preliminary matter, we address the Examining Attorney’s requirement for
a definite identification of goods. In the initial Office Action, the Examining
Attorney refused registration on the ground that the identification of goods did not
identify the goods using their common commercial or generic name. In response to
the refusal, Applicant offered to amend the identification of goods to:
A single-use sachet with a dropper, the sachet capable of
being heated to a temperature of 110 degrees Fahrenheit
and contains limited amount of mustard oil for use in
treating middle ear infections.
This proposed amendment was rejected as failing to properly name the goods, the
former Examining Attorney contending that the goods “are not a packaging or
droppers but the mustard oil ear drops.”4 In the brief, the current Examining
Attorney reiterates that the essence of the goods is the mustard oil rather than the
sachet with a dropper, but does not make this the basis of the refusal. Instead, the
refusal is based on the argument that the amended identification seeks to

3 Applicant filed a main trial brief, and a reply brief that essentially duplicates its main
brief. This is inappropriate. The purpose of a reply brief is to provide the applicant with an
opportunity to respond to arguments made by the Examining Attorney, and not to allow
reiteration of the same arguments and authorities as were presented in the main brief.
4 Office Action dated January 31, 2014.
Serial No. 85892404
3
“impermissibly broaden[] the scope of the original identification by removing the
method of use (‘dropping oil drops in the ear canal’) and removing the limiting
language ‘without the use of antibiotics.’”5
We agree that the essence of the product is the mustard seed oil that is
contained within a dropper, and not the dropper itself. The original identification of
goods, however, is not indefinite on that basis. As to the argument that the
amendment seeks to impermissibly broaden the goods, we do not find Applicant’s
proposed amendment to go beyond the scope of the original identification by its
failure to specifically include the method of application (i.e., by being dropped into a
patient’s ear). The goods as listed in the original application were already so limited
in the method by which they could be applied; “oil” combined with a “dropper” for
“treating middle ear infections” (in the proposed identification) would be understood
to be ear drops for application to the ear canal.6 Thus, the failure to specify “for
dropping oil drops in the ear canal” is not fatal to the amendment. On the other
hand, the original identification also specified that the goods did not contain
antibiotics. Applicant’s amendment eliminates this characteristic, and it is not
implied by the statement that the dropper contains mustard oil. Thus, the proposed
amendment is unacceptable on this basis. Because the proposed amendment is
unacceptable, the goods remain as originally listed. To be clear, the goods are not

5 6 TTABVUE at 10.
6 Moreover, the Examining Attorney’s first Office Action suggested that Applicant consider
amending the identification of goods to “Ear drops consisting of a packaging with a
droppers [sic] containing limited quantity of mustard oil for use in treating middle ear
infection without antibiotics.” This suggested language does not include specific reference to
the method of application.
Serial No. 85892404
4
medical devices, i.e., droppers, but rather the herbal/botanical mustard oil
preparation itself, for the cure of a middle ear infection without use of antibiotics,
sold in packaging that incorporates a dropper. With this understanding of the
nature of the goods, we turn to the Section 2(e)(1) refusal.
Trademark Act § 2(e)(1) prohibits registration of a mark which is merely
descriptive of the applicant’s goods or services. A term is deemed to be merely
descriptive of goods or services if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function, purpose or use of the goods or
services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012). See also In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987); In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (TTAB
2007); and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). It is not necessary that a term describe all of the properties or
functions of the goods and/or services in order for it to be considered to be merely
descriptive thereof; rather, it is sufficient if the term describes a significant
attribute or feature about them.
Applicant argues that “even with any degree of thought and imagination, the
mark EAR NATURAL does not enable an objective person to reach a conclusion as
to the nature of the goods.” Applicant argues that since the goods are designed to
cure middle ear infections only, and the word EAR is commonly understood to refer
to the outer ear and not the inner ear, multiple reasoning steps are required to
perceive that the word EAR refers to the goods. With respect to the term
NATURAL, Applicant argues that the term has no meaning in connection to a
Serial No. 85892404
5
human ear, and is incongruous in that the term has “a large number of different
meanings and or abstract meanings, such as natural thought, and as a figure of
speech, as naturally speaking.”7
As there is no definition for “ear” in the record, we take judicial notice that THE
AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE defines “ear” as “the
vertebrate organ of hearing, responsible for maintaining equilibrium as well as
sensing sound, and divided in mammals into the external ear, the middle ear, and
the inner ear.”8 Because Applicant’s goods are directed to ailments of the middle
ear, and the definition of “ear” encompasses the middle ear, purchasers
encountering Applicant’s mark will immediately understand that Applicant’s
mustard oil preparation is for use in connection with the ear, including the middle
ear. In this regard, the record evidence shows that the public has been exposed to
postings that recommend liquids (such as mustard oil) that are applied by being
dropped into the ear canal to cure ear aches as well as to massaging oil preparations
that are applied to the outside of the ear.9 Even those prospective purchasers whose
first thought upon encountering the mark in the context of the goods is only to the
outer, external ear, will immediately perceive that the goods are designed to treat

7 4 TTABVUE 10-11.
8 At https://www.ahdictionary.com. The Board may take judicial notice of dictionary
definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594
(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, 1377 (TTAB 2006).
9 The online article “Natural Remedies for Ear Infections,” discusses both natural ear ache
remedies such as mullein garlic oil (drops) and essential oils to massage to the outside of
the ear. Online at Mommypotamus, http://www.mommypotamus.com, attached to Office
Action dated January 31, 2014, at 26 and 28.
Serial No. 85892404
6
ailments of one’s ear. Thus, it is of little consequence to the public’s likely
perception of the mark that Applicant’s goods are designed to cure middle ear
infections only, because the word “ear” in the mark directly describes the body part
that is being treated by Applicant’s mustard oil preparation and prospective
purchasers will readily understand this without any mental gymnastics or need for
multi-stage reasoning.
As for the term NATURAL, it immediately tells consumers that the goods are
free of artificial ingredients. The term “natural” is defined as “not altered, treated,
or disguised,”10 and “being in accordance with or determined by nature; existing in
or produced by nature: not artificial.”11 By its definition, the term “natural” directly
applies to mustard oil, which is a natural ingredient obtained from mustard seeds.12
The Merriam-Webster online dictionary even notes the medicinal qualities of
mustard oil “especially in liniments and medicinal plasters.” We may also consider
the meaning of the term NATURAL based on third-party use and registrations. The
Examining Attorney has placed nine third-party registrations in the record that
include a disclaimer of the word NATURAL in connection with herbal or botanical
supplements used as natural remedies. These show that the USPTO has treated the

10 From Yahoo Education at http://education.yahoo.com, attached to Office Action dated
July 16, 2013.
11 At http;//www.merriam-webster.com, attached to Office Action dated July 16, 2013. We
have disregarded the definitions from the Collins dictionary because they were taken from
the “English,” rather than the “American English” database. At http://www.
collinsdictionary.com.
12 See The American Heritage Dictionary of the English Language, definition of “mustard
oil.” Further, Merriam-Webster online dictionary notes the medicinal qualities of mustard
oil “especially in liniments and medicinal plasters.”
Serial No. 85892404
7
word as having descriptive significance. Institut National Des Appellations
D’Origine v. Vintners International Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed.
Cir. 1992) (“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.”). See also, In re Box Solutions
Corp., 79 USPQ2d 1953, 1955 (TTAB 2006) (“[T]hird-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)
(“[T]hird 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”). See for example:
ALTA NATURAL (Reg. No. 2763421, the word “Natural”
disclaimed) for various vitamin and mineral supplements
and nutritional and herbal supplements, namely, salmon
oil, shark liver oil, seal oil;
WOOHOO NATURAL (Reg. No. 3976971, the word
“Natural” disclaimed) for dietary and nutritional
supplements;
(Reg. No. 4304549, the term
“Natural Healthy” disclaimed) for
alginate dietary supplement; cod
liver oil; flaxseed oil dietary
supplements; and
NATURAL PAIN ADVANTAGE (Reg. No. 4386956, the
term “Natural Pain” disclaimed) for dietary and
nutritional supplements for pain relief.
In addition, a number of websites contain homeopathic advice for curing ear
aches or infections with remedies described as “natural.” For example, the online
article entitled “Kids’ Ear Infections: A Home Remedy?” discusses “natural remedies
Serial No. 85892404
8
for ear infections,” recommending some basic essential oils for the purpose.13 An
online article entitled “An Unbelievable Natural Ear Infection Remedy”14
recommends different possible curatives such as vitamin C, Chinese herbal
preparations, breast milk, and urine as remedies for ear infections. Commenting on
this article, a reader notes that “mustard oil works wonders too.” Notably, both
these online articles are followed by numerous reader postings discussing these and
other types of remedies described as “natural,” such as garlic and olive oil, designed
to cure ear infections, and some specifically discount the use of antibiotics. To be
clear, Internet printouts are not competent evidence for the truth of the statements
they contain. The Internet articles and the related commentary are probative only
of the fact that the websites exist, that the public has been exposed to them, and
that (as shown on their face) numerous third parties have posted comments
recommending remedies described as “natural” for the treatment of ear infections.
See, e.g., Swiss Watch Int’l Inc. v. Fed’n of the Swiss Watch Indus., 101 USPQ2d
1731 (TTAB 2012) (Internet printouts acceptable to show only that statements were
made or the information was reported in the webpages); Rocket Trademarks Pty
Ltd. v. Phard S.p.A., 98 USPQ2d 1066 (TTAB 2011); In re Fitch IBCA, Inc., 64
USPQ2d 1058, 1060 (TTAB 2002) (because website content is accessible by the
consuming public, it constitutes evidence that the public may be exposed to
statements appearing therein); TBMP § 1208.03 (2014).

13 “Kitchen Stewardship” at Google’s cache of http://www.kitchenstewardship.com from
January 18, 2010. Following the article are 120 postings from readers.
14 Google’s cache of http://wholenewmom.com. March 29, 2013, which includes 132 readers’
comments.
Serial No. 85892404
9
Based on the above, we find that consumers will readily perceive that the term
NATURAL in Applicant’s mark refers to the non-artificial ingredient mustard seed
oil in the product as well as to the function of the goods, i.e., to cure ear infections
without the use of antibiotics. Contrary to Applicant’s argument, other definitions of
the term “natural” are immaterial to our inquiry as the determination of whether a
term is merely descriptive is made only in relation to the goods for which
registration is sought. That is, we do not consider the mark in the abstract but
rather in the context of the involved goods (or services). See In re Bright-Crest, Ltd.,
204 USPQ 591, 593 (TTAB 1979) (“[T]he fact that a term may have meanings other
than the one the Board is concerned with is not controlling on the question.”). We
must consider how Applicant’s potential customers are likely to perceive the mark
EAR NATURAL in connection with a mustard seed oil curative contained in ear
droppers and used to treat middle ear infections. Having determined that both “ear”
and “natural” are merely descriptive terms for the goods, we find the composite
term EAR NATURAL is also merely descriptive, as there is nothing suggestive or
otherwise non-descriptive in the combination. Applicant’s argument that the mark
is incongruous because the terms are not used in a common sequence is
unpersuasive. Even if the phrase is invented, the order of the words, in this case,
does not obscure their meaning. While Applicant may be the first to juxtapose the
words “ear” and “natural” in this manner, the resultant phrase does not create a
separate commercial impression apart from the component elements of the mark
such that its significance is suggestive rather than merely descriptive. It is well-
settled that the fact that an applicant may be the first (or even only) user of a
Serial No. 85892404
10
merely descriptive or generic designation does not justify registration if the only
significance conveyed by the term remains merely descriptive. See In re Carlson, 91
USPQ2d 1198, 1202 (TTAB 2009) (URBANHOUZING as a whole is merely
descriptive); In re BetaBatt Inc., 89 USPQ2d 1152, 1156 (TTAB 2008) (DEC for
batteries descriptive even though applicant is only user of term); In re Sun
Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001). The composite EAR
NATURAL immediately conveys information about the function and composition of
the goods. Applicant’s additional argument, that a human ear “has nothing to do
with the word NATURAL,” has no relevance (besides being unsupported by any
record evidence) because the human ear is the subject of Applicant’s natural
treatment. Accordingly, the term EAR NATURAL, when used in connection with a
formulation made from mustard seed oil that is used to cure middle ear infections,
forthwith conveys the idea of an ear treatment made from natural ingredients.
Decision: The refusal to register Applicant’s mark EAR NATURAL for “a
packaging with a dropper that contains limited quantity of mustard oil, for dropping
oil drops in the ear canal, for cure of middle ear infection, without use of antibiotics”
under Trademark Act § 2(e)(1) is affirmed.