Medcon Products, Inc.

Trademark Trial and Appeal Board

Mar 26, 2010

No. 76476330 (T.T.A.B. Mar. 26, 2010)

Mailed: March 26, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Medcon Products, Inc.
________

Serial No. 76476330
_______

John W. Patton, Esq. of K&L Gates, LLP for Medcon Products,
Inc.

Carrie Genovese, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Quinn, Hairston and Kuhlke, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

Medcon Products, Inc. has filed an application to
register the mark ILEX (standard character form) for goods
ultimately identified as “medicated skin care preparations,
namely, skin paste for use by ostomy patients to protect
the stomal region of the body and medicated skin paste for
the treatment of diaper rash” in International Class 5.1

1 Application Serial No. 76476330, filed on December 18, 2002,
which sets forth a date of first use anywhere and in commerce of
January 1, 1979.
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Serial No. 76476330
2
The trademark examining attorney has finally refused
registration under Section 2(a) of the Trademark Act on the
ground that applicant’s mark is deceptive, and under
Section 2(e)(1) of the Act on the ground that applicant’s
mark is deceptively misdescriptive of applicant’s goods and
the mark has not acquired distinctiveness.
Applicant has appealed, and both applicant and the
examining attorney have filed briefs.
The examining attorney maintains that the word “ilex”
means “plant of holly genus: a tree or bush belonging to a
genus whose best-known member is the holly tree.” Encarta
on-line dictionary. Because applicant’s medicated skin
paste does not contain ingredients derived from ilex
plants, the examining attorney contends that the mark ILEX
misdescribes applicant’s goods. Further, because
ingredients derived from ilex plants are commonly found in
skin care products, the examining attorney asserts that
purchasers are likely to believe that applicant’s medicated
skin paste contains ingredients derived from ilex plants,
when in fact, they do not; and because ingredients derived
from ilex plants are sought after for their healing and
soothing properties, purchasers are likely to buy
applicant’s goods on the basis of their mistaken belief
that the medicated skin paste contains ingredients derived
Serial No. 76476330
3
from ilex plants. In addition to the dictionary listing
cited above, the examining attorney submitted various
evidence to support the refusals to register. Among the
evidence is the following Wikipedia entry for “Holly.”
Holly (Ilex) is a genus of about 400 species of
flowering plants in the family Aquifolacease, and
the only genus in that family. … Holly berries
are mildly toxic and will cause vomiting and/or
diarrhea when ingested by people. … Several
American holly species are used to make various
caffeine rich teas. The South American I.
paraguaniensais is used to make yerba mate, a
common drink …

She also submitted webpages obtained from the Internet and
excerpts retrieved from the NEXIS database which refer to
the use of ilex (holly) plants as herbal remedies and
ingredients in some products. The following are
representative:
Ilex verticilla Winterberry - The bark is
antiseptic, astringent, cathartic and tonic…. A
decoction is used internally in the treatment of
diarrhea, malaria, etc, and internally in the
treatment of indolent sores and chronic skin
disease … and Ilex opaca American Holly … the
leaves have also been used externally in the
treatment of … sore and itchy skin …
(pfaf.org/database/plants);

Ilex opaca – Sol. Ex Aiton
American Holly
Medicinal Uses
Antiperiodic; Diuretic; Emetic; Laxative;
Opthamalic; Skin
The leaves have also been used externally in the

Serial No. 76476330
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treatment of sore eyes, sore and itchy skin … It
has also been used as a wash for sore eyes and
itchy skin.
(pfaf.org/database/plants);

BIOFREEZE® products with ILEX
CRYOTHERAPY PAIN RELIEF
BIOFREEZE products contain ILEX, an herbal
extract from a South America holly shrub. ILEX
is used around the world in various health &
wellness formulations. BIOFREEZE topical
analgesic does not use waxes, oils, aloe or
petroleum, The result is a fast-acting,
penetrating, long lasting pain reliever.
(biofreeze.com);

CyroDerm Pain Relieving Cyrotherapy Spray with
MSM, Arnica, Bosella, ILEX – CyroDerm Pain
Relieving Spray is the analgesic spray used
across the USA … to relieve muscle and joint
pain.
(herbalremedies.com);

FL ORGANIC ESSENTIALS SKIN MASKS
HERBAL SCRUB MASK contains … Mate (Ilex
Paraguanensis) Extract
(bewellstaywell.com); and

Christine Marie Cosmetics
Ultra Free Cleansing Milk
Contains: Holly leaf oil ….
(christinemariecosmetics.com).

In addition, the examining attorney submitted a copy
of U.S. Patent No. 6,210,660, issued April 3, 2001, to a
third-party for a “Cosmetic preparation containing Ilex
resin method for obtaining Ilex resin and Ilex resin which
can be obtained by this method;” and the following excerpt
from the website of a specialty chemical supplier:
Ilex Wax CO2 (Ilex Paraguanensis)
Serial No. 76476330
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The resin is very versatile in formulation. Used
in skin care products a cream appears more
nourishing. Depending on the concentration of
Ilex resin the skin care action in o/w and w/o
emulsions can be developed to produce really
effective skin protection.
(jarchem.com)

Applicant argues that its mark is neither deceptive
nor deceptively misdescriptive, but rather is a coined term
which is a combination of the word “ileostomy,” a post-
surgical condition that its skin paste is used to treat,
and the word “excoriation,” the breakdown of skin
surrounding the stoma, which is a common complication for
patients with an ileostomy. Applicant states that there is
no need for its goods to contain ingredients derived from
ilex plants, and that purchasers of its goods are not
likely to believe that the goods contain such ingredients.
Further, applicant criticizes the examining attorney’s
Internet and NEXIS evidence by asserting that the evidence
pertains to goods that are either cosmetic in nature or
taken orally, and not applicant’s type of medicated skin
paste. Finally, applicant argues that if its mark, ILEX,
is found not to be deceptive, but deceptively
misdescriptive of its goods, the mark has acquired
distinctiveness.
In support of its position, applicant has submitted
informational materials about the ileostomy procedure, a
Serial No. 76476330
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copy of U.S. Patent No. 5,194,261 which covers applicant’s
goods, a copy of the product information sheet for
applicant’s goods, Internet printouts showing that ilex
(holly) extracts are used in beverages to treat a number of
conditions unrelated to those affecting skin, and
statements about applicant’s goods from medical
professionals and purchasers.
The test for determining whether a mark is deceptive
under Section 2(a) has been stated by the Court of Appeals
for the Federal Circuit as: (1) is the term misdescriptive
of the character, quality, function, composition or use of
the goods; (2) are prospective purchasers likely to believe
that the misdescription actually describes the goods; and
(3) is the misdescription likely to affect the decision to
purchase. In re Budge Manufacturing Co., Inc., 857 F.2d
773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988).
We begin our analysis by reviewing the product
information sheet for applicant’s goods to understand the
specific nature of the goods. The information sheet
describes applicant’s goods as a “skin protectant paste”
indicated “[f]or the prevention and treatment of skin
irritations and excoriations from a variety of procedures
such as ileostomy, colostomy, fistula, G-tube placements,
excoriations resulting from pediatric and geriatric
Serial No. 76476330
7
incontinence in the perianal region, fecal fistula,
surgical and traumatic wounds with drainage causing dermal
irritation and skin breakdown.” It is readily apparent
from this description that applicant’s medicated skin paste
is a highly specialized skin care preparation.
We find that neither prong of the test for
deceptiveness is met. With respect to the first prong, the
record is devoid of any evidence that medicated skin paste
of the type made by applicant contains ingredients derived
from ilex (holly) plants. Given this, we do not see how
the term ilex misdescribes applicant’s goods. Although the
evidence indicates that topical pain relievers, cosmetic
preparations, and herbal remedies contain ingredients
derived from ilex plants, these types of products are
obviously very different from applicant’s medicated skin
paste for use by ostomy patients and for the treatment of
diaper rash. Thus, the fact that these products contain
ingredients derived from ilex plants does not establish
that medicated skin paste of the specific type made by
applicant generally contains such ingredients.
In short, the examining attorney’s evidence fails to
establish that the term “ilex” misdescribes applicant’s
goods.
Serial No. 76476330
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Even assuming arguendo that the term “ilex”
misdescribes applicant’s medicated skin paste because it
does not contain ingredients derived from ilex plants, the
second and third prongs of the test clearly are not met
based on the record before us. As we have already found,
there is no evidence in the record indicating that the type
of medicated skin paste made by applicant contains
ingredients derived from ilex plants. Furthermore,
although “ilex” is a dictionary term, it is the scientific
plant name for “holly,” and it is highly unlikely that
purchasers would be familiar with the term. Also, we find
applicant’s explanation with respect to coining the term
ILEX entirely plausible in view of the use of applicant’s
goods. Under the circumstances, purchasers of applicant’s
medicated skin paste are not likely to be deceived by
applicant’s mark into believing that the medicated skin
paste contains ingredients derived from ilex plants. On
the contrary, they are likely to view applicant’s mark ILEX
simply as a coined term.
Furthermore, because the evidence does not establish
that ingredients derived from ilex plants are a desirable
component of applicant’s type of medicated skin paste, even
if we were to assume that the term “ilex” misdescribes
applicant’s goods, the misdescription would not materially
Serial No. 76476330
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affect the purchasing decision. In this regard, we note
the excerpt from “jarchem.com” which states that “[Ilex]
resin is very versatile in formulation. Used in skin care
products a cream appears more nourishing. … ilex resin can
be used to produce really effective skin protection.”
However, we cannot conclude from this single excerpt that
ilex resin is a desirable component of applicant’s type of
medicated skin paste. Insofar as the remaining excerpts
are concerned, apart from the fact that they do not clearly
tout the beneficial effects of ingredients derived from
ilex plants, as previously indicated, the excerpts pertain
to products that are very different from applicant’s goods.
In view of the foregoing, we find that applicant’s
mark is not deceptive of its goods.
Insofar as the deceptive misdescriptiveness of
applicant’s mark is concerned, because the test for
deceptive misdescriptivenesss consists of the first two
prongs of the test for deceptiveness, we find that
applicant’s mark is not deceptively misdescriptive of its
goods for the reasons discussed above.
In view of our findings herein, we need not reach
applicant’s alternative Section 2(f) claim of acquired
distinctiveness.
Serial No. 76476330
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Decision: The refusals to register under Sections
2(a) and 2(e)(1) of the Act are reversed. Applicant’s
application will go forward without the alternative Section
2(f) claim of acquired distinctiveness.