Lisa R. DuBois

Trademark Trial and Appeal Board

Jul 18, 2018

No. 87458533 (T.T.A.B. Jul. 18, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: July 18, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re DuBois
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Serial No. 87458533
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Gene Bolmarcich of Law Offices of Gene Bolmarcich
for Lisa Rachel DuBois, DBA MoonDance Soaps & More.
Emma Sirignano, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
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Before Shaw, Gorowitz and Goodman,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Lisa Rachel, DuBois (“Applicant”) seeks registration on the Principal Register of
the mark DIAPER LOTION POTION (in standard characters, “diaper lotion”
disclaimed) for “Non-medicated diaper rash cream; Non-medicated diaper rash
ointments and lotions” in International Class 3.1

1 Application Serial No. 87458533 was filed on May 22, 2017, based upon Applicant’s claim of
first use anywhere and use in commerce since at least as early as November 26, 2015.

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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1).
When the refusal was made final, Applicant appealed and filed a one sentence
request for reconsideration on February 1, 2018, which she withdrew on February 2,
2018, requesting resumption of the appeal. We affirm the refusal to register.
I. Descriptiveness
Section 2(e) of the Trademark Act prohibits registration on the Principal Register
of “a mark which, (1) when used on or in connection with the goods of the applicant
is merely descriptive … of them.” 15 U.S.C. § 1052(e)(1). A term is “merely
descriptive” within the meaning of Section 2(e)(1) 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 AG, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007)). “On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order to determine what product
or service characteristics the term indicates, the term is suggestive rather than
merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978);
see also In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983); In re Universal Water Sys.,
Inc., 209 USPQ 165, 166 (TTAB 1980).

Page references herein to the application record refer to the online database of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs on appeal
refer to the Board’s TTABVUE docket system.

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Whether a mark is merely descriptive is determined in relation to the goods or
services for which registration is sought, not in the abstract or on the basis of
guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978).
We must consider “the context in which [the mark] is being used, and the possible
significance that the term would have to the average purchaser of the goods because
of the manner of its use or intended use.” In re Chamber of Commerce of the U.S., 102
USPQ2d at 1219 (quoting In re Bayer AG, 82 USPQ2d at 1831). In other words, we
evaluate whether someone who knows what the goods or services are will understand
the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med.
Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re Tower
Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
When determining whether a mark is merely descriptive, we must consider the
commercial impression of a mark as a whole. DuoProSS Meditech Corp. v. Inviro
Medical Devices Ltd., 103 USPQ2d at 1753. When two or more merely descriptive
terms are combined, the determination of whether the composite mark also has a
merely descriptive significance turns on whether the combination of terms evokes a
new and unique commercial impression. If each component retains its merely
descriptive significance in relation to the goods or services, the combination results
in a composite that is itself merely descriptive. See, e.g., In re Oppedahl & Larson
LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM merely
descriptive of computer software for managing a database of records that could
include patents and for tracking the status of the records by means of the Internet).
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We consider the evidence of record.
a) Applicant’s specimen
The label on the bottle of one of Applicant’s specimens states: “Lotion spray that
simplifies diapering, nourishes baby’s skin.” Specimen at 2.
b) Dictionary definitions
The Examining Attorney provided the following dictionary definitions:
Diaper: “a piece of absorbent material wrapped around a baby’s bottom and
between its legs to absorb and retain urine and feces”;

Lotion: “a thick, smooth liquid preparation designed to be applied to skin for
medicinal or cosmetic purposes”;

Potion: “a liquid with healing, magical or poisonous properties;”2

The Applicant provided the following definition:

Potion: “a drink or draft especially one having or reputed to have medicinal,
poisonous or magical powers.”3

c) Third-party registrations

The Examining Attorney submitted copies of use-based third-party registrations
for marks covering various hair and skincare goods, each of which includes a
disclaimer of “potion.”4 “[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 Box Sols. Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); see also In re Country
Music Assoc. Inc., 100 USPQ2d 1824, 1833 (TTAB 2011) (“[T]hird-party registrations

2 The Examining Attorney provided the definitions for “diaper,” “lotion,” and “potion.” Oxford
dictionary, en.oxforddictionaries.com. August 24, 2017 Office Action at 4, 5, 7.
3 Provided by Applicant. Dictionary.com. November 16, 2017 Response to Office Action at 7.
4 January 25, 2018 Office Action at 2-17.
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show the Office’s consistent treatment of the word ‘association’ as a generic term
when used in connection with association services such as those identified in
applicant’s application.”). We consider the following registrations for skin care
products the most relevant:
Reg. No. 2675033 for DRYING POTION (“potion” disclaimed) for Class 3: “skin
lotions and skin clarifiers.”
Reg. No. 5150150 for , (“organic potions” disclaimed) for Class
3: “organic lotions for skin and body, non-medicated organic salves for the
body.”

Reg. No. 5336460 PADMA PLANT POTIONS (“plant potions” disclaimed) for
Class 3: for, inter alia, non-medicated skincare preparations for face and
hands.

d) Internet evidence

The Examining Attorney submitted evidence showing use of the term “potion” in
connection with diaper rash products and topical skin care preparations. The
following examples are the most relevant:
“I made a basket of every lotion and potion baby might need the first year.”
barebeautymama.com, August 24, 2017 Office Action, at 2-3.

“Creams, lotions and potions, countless over-the-counter products too sometimes
cannot heal the perils of diaper rash …” mynahcare.com, August 24, 2017 Office
Action, at 6.

“We recently got the opportunity to try out a different natural potion from Weleda:
Calendula Diaper Rash Cream. … When we had our first baby our doctor advised
we stay away from most creams and potions for our baby until they were at least
six months old but this diaper rash cream is great even for newborns.”
simplehomeblessings.com, August 24, 2017 Office Action, at 8.

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“Mixing up your own potions, lotions, scrubs and masks at home from natural
ingredients can yield real results when applied topically…” “Homemade beauty
treatments. Mix up a potion at home for healthier skin.” bendbulletin.com,
December 21, 2017 Office Action at 6.

The record demonstrates that the composite terms of Applicant’s mark, i.e.,
“diaper,” “lotion” and “potion” are each merely descriptive of the identified goods. As
illustrated below, each term describes a prominent feature, purpose or use of
Applicant’s non-medicated diaper rash cream, ointments and lotion.
First, we note that the identification itself identifies the goods at least, in part, as
diaper rash lotion, which itself is a concession of the descriptiveness of “diaper” and
“lotion” and the combined term “diaper lotion.” See In re Johanna Farms, Inc., 222
USPQ 607, 609 (TTAB 1984) (the “term ‘yogurt’ is concededly the name of the goods.
That fact is uncontrovertible where, as here, the same term has been used in the
identification of goods for which registration is sought.”). The dictionary definitions
of “diaper” and “lotion” confirm that these terms when used in association with non-
medicated diaper rash cream, ointments and lotion have a descriptive meaning.
Applicant’s specimen (image of the front and back sides of the product label applied
to the bottle) offers further support of the mere descriptiveness of these terms. The
packaging includes a baby in a diaper on the front label and states on the back label
that the goods are offered in “lotion spray” form and are for “simplifying diapering.”
Specimen at 1-2. The evidence shows that Applicant’s goods are specifically a lotion
for use when diapering a baby and for diaper rash. “Diaper lotion” would immediately
inform consumers of the use and purpose of the goods. Applicant does not dispute the
mere descriptiveness of “diaper lotion” and has appropriately disclaimed the term.
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As to the term “potion,” Applicant relies on the definition of “a drink or draft,
especially one having or reputed to have medicinal, poisonous, or magical powers,”
and submits that “potion” “is used solely in mythical contexts as it conjures up
witchcraft and magical spells” and “is not a word that a consumer would expect to see
in the description of a diaper rash ointment,” which is not consumable. 4 TTABVUE
3.
However, considering the word “potion” in relation to the goods, and not in the
abstract, we find the meaning provided by the Examining Attorney to be the most
relevant and appropriate. See In re ActiveVideo Networks, Inc., 111 USPQ2d 1581,
1587 (TTAB 2014). As stated, Applicant’s goods include lotions which are defined as
a “smooth thick liquid preparation.” By definition, “potion” is a liquid, and as such,
the term could be used to describe a liquid preparation. The third-party registrations
covering skin care goods include disclaimers of the term “potion,” reflecting the
Office’s treatment of this term as merely descriptive in connection with skin care
lotions and preparations. The Internet evidence submitted by the Examining
Attorney also reflects descriptive use of the term “potion,” especially in connection
with preparations for diaper rash and for skin care lotions or creams.5 The dictionary
definition, coupled with the third-party registrations and Internet evidence are

5 The definition of “cream” includes the following: “a soft solid or thick liquid containing
medicaments or other specific ingredients, applied externally for a prophylactic, therapeutic,
or cosmetic purpose.” Dictionary.com based on the Random House Dictionary (2018). The
Board may take judicial notice of dictionary definitions, including online dictionaries that
exist in printed format. In re Cordua Rests., 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d,
823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters.
Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378
(TTAB 2006).
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sufficient to establish that “potion” is merely descriptive in connection with
Applicant’s goods.
Having found that the word “potion” and the disclaimed term “diaper lotion,”
considered separately, are merely descriptive of Applicant’s goods, we next find, more
importantly, that the composite DIAPER LOTION POTION likewise is merely
descriptive of the goods. As used in connection with “[n]on-medicated diaper rash
cream; [n]on-medicated diaper rash ointments and lotions,” DIAPER LOTION
POTION immediately and directly informs relevant purchasers of the nature, use
and purpose of the goods, in that they are a lotion with healing properties for use
when a baby has diaper rash.
Applicant argues DIAPER LOTION POTION is not merely descriptive because it
is both an incongruous and fanciful term and requires imagination to understand the
nature of the goods. 4 TTABVUE 3-4. First, Applicant contends that the combination
of “lotion” and “potion” is incongruous because of the combination of two nouns.
However, the mere combination of nouns, by itself, does not necessarily avoid
descriptiveness. See, e.g., In re Copytele, Inc., 31 USPQ2d 1540, 1542 (TTAB 1994)
(holding SCREEN FAX PHONE merely descriptive of “facsimile terminals employing
electrophoretic displays”); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979)
(COASTER-CARDS merely descriptive of coasters suitable for direct mailing).
Second, Applicant also submits that the combination of “lotion potion” is fanciful due
to rhyming. Although the two words “lotion potion” rhyme, the rhyming quality
imparts no new or different meaning to “lotion potion” apart from describing a lotion
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that has medicinal and healing characteristics. See In re Ginc UK Ltd., 90 USPQ2d
1472 (TTAB 2007) (rhyming pattern of ZOGGS TOGGS imparts no new or different
meaning to TOGGS apart from its meaning as a generic term for clothing). There is
nothing incongruous about the combination of the words “lotion potion.” To the
contrary, the combination merely serves to enhance the descriptive meaning of each
of these words as applied to applicant’s goods since the two words combined describe
Applicant’s goods more fully than does either word alone. Lastly, Applicant submits
that “lotion potion” suggests “a magical quality” which makes DIAPER LOTION
POTION fanciful. However, we find that the combination of the terms DIAPER
LOTION POTION does not alter the ordinary meaning of the terms and it retains its
descriptive meaning in the context of Applicant’s goods. No imagination is required
to determine the significant characteristics of the named goods. DIAPER LOTION
POTION immediately and directly informs relevant purchasers of the nature, use
and purpose of the goods, in that they are a diaper rash lotion with medicinal and
healing properties.

Decision: The refusal to register Applicant’s mark DIAPER LOTION POTION is
affirmed.