Murad, Inc.

Trademark Trial and Appeal Board

Feb 4, 2010

No. 77556539 (T.T.A.B. Feb. 4, 2010)

Mailed:
February 4, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Murad, Inc.
________

Serial No. 77556539
_______

Michael A. Painter of Isaacman, Kaufman & Painter, P.C. for
Murad, Inc.

Rebecca L. Gilbert, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Bergsman, Wellington and Ritchie,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Murad, Inc. has appealed from the final refusal of the
trademark examining attorney to register PERFECTING SERUM
in standard character format for “skin moisturizer.”
Applicant disclaimed the exclusive right to use the word
“serum” and claimed ownership of Registration No. 2148418
on the Supplemental Register for the mark PERFECTING SERUM
for “skin moisturizers.” There are two issues before us in
this appeal: whether applicant’s mark is merely
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77556539
2
descriptive of the identified goods (refusal based on
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1)); and, if so, whether applicant’s mark has
acquired distinctiveness.
Preliminary Issues
A. Whether applicant’s brief exceeds the page limits?

Trademark Rule 2.142(b)(2) provides that applicant’s
brief “shall not exceed twenty-five pages in length in its
entirety, including the table of contents, index of cases,
description of the record, statement of the issues,
recitation of the facts, argument, and summary.” The brief
“must be printed in at least 11-point type and double-
spaced.” Trademark Rule 2.126(a)(1) made applicable by
Trademark Rule 2.142(b)(2).
Applicant’s brief was thirty pages of which twenty-
five pages were argument. The examining attorney objected
to the length of applicant’s brief. Applicant acknowledged
that its brief exceeded the permissible length, but argued
that would have been permissible if applicant had printed
it in 11-point type. However, applicant did not file its
brief in 11-point type, nor did it file a late brief in 11-
point type and request that the Board consider the late-
Ser No. 77556539
3
filed brief. Accordingly, applicant’s main brief has not
been considered.1
B. Whether applicant may argue that its mark is not
merely descriptive?

This application has a tortured prosecution that must
be reviewed to determine whether applicant may argue that
its mark is not merely descriptive.
Date Action

August 27, 2008 Applicant filed its application for
registration on the Principal Register.

September 8, 2008 Applicant filed a preliminary amendment
claiming that its mark had acquired
distinctiveness by virtue of applicant’s
substantially exclusive and continuous
use for more than five years. Applicant
did not expressly assert that it was
claiming acquired distinctiveness in the
alternative.

December 3, 2008 In an examiner’s amendment, applicant
disclaimed the exclusive right to use
the word “serum.”

January 13, 2009 The application was published for
opposition.

March 9, 2009 Jurisdiction was restored to the
examining attorney pursuant to a letter
of protest.

1 We have, however, considered applicant’s responses to Office
actions and its reply brief. In re Thomas, 79 USPQ2d 1021, 1023
n.5 (TTAB 2006).
Ser No. 77556539
4

Date Action

March 9, 2009 Examining Attorney issued an Office
action refusing registration on the
grounds that the mark is merely
descriptive and that the declaration
that the mark has acquired
distinctiveness is insufficient.

June 17, 2009 Applicant filed a response to the Office
action arguing that the mark is
suggestive, not descriptive, and
presenting evidence that the mark has
acquired distinctiveness. Applicant did
not expressly state that it was arguing
that its mark had acquired
distinctiveness in the alternative.

July 6, 2009 Examining Attorney issued a final
refusal on the grounds that the mark is
merely descriptive and that the evidence
that that the mark has acquired
distinctiveness is insufficient. The
examining attorney did not point out
that applicant had not expressly stated
that it was arguing, in the alternative,
that its mark had acquired
distinctiveness and, therefore, had
waived the right to argue that its mark
was not merely descriptive.

August 17, 2009 Applicant filed a request for
reconsideration based only on the ground
that its mark had acquired
distinctiveness.

August 18, 2009 Examining Attorney denied the request
for reconsideration.

October 5, 2009 Applicant filed its appeal brief, which
has been given no consideration.
Ser No. 77556539
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Date Action

October 21, 2009 Examining Attorney filed her opposition
brief. In addition to arguing the
merits of the refusals, the examining
attorney asserted that applicant waived
its right to argue that the mark is not
merely descriptive.

November 12, 2009 Applicant filed its Reply Brief, arguing
that the examining attorney’s actions of
continually arguing that the mark was
merely descriptive “refute the
contention that the Applicant did not
preserve its rights to contest the
Examiner’s findings.”

Although applicant did not expressly state that it was
claiming, in the alternative, that its mark had acquired
distinctiveness, nevertheless, we find that applicant may
argue that its mark is not merely descriptive. After
applicant responded to the March 9, 2009 Office Action
arguing that its mark was not merely descriptive, the
examining attorney addressed applicant’s argument on its
merits and did not object or otherwise advise applicant
that it had not expressly claimed, in the alternative, that
it was seeking registration under the provisions of Section
2(f). In fact, the first time the examining attorney
advised applicant that it had waived its right to argue
that its mark was not merely descriptive was in her
responsive brief on appeal. If the applicant makes an
improper argument, the examining attorney should object to
Ser No. 77556539
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the argument in the next Office action, or the Board may
consider that objection waived. Cf. In re 1st USA Realty
Professionals, 84 USPQ2d 1581, 1583 (TTAB 2007) (Board
considered applicant’s own registration, provided for the
first time on appeal, because it had been referred to
during prosecution and the examining attorney addressed the
issue without objection; Board also allowed evidence of a
list of third-party registrations because the examining
attorney did not advise applicant of the insufficiency of
the list while there was still time to correct the
mistake); In re Broyhill Furniture Industries, Inc., 60
USPQ2d 1511, 1513 n.3 (TTAB 2001) (objection to evidence
waived where it was not interposed in response to
applicant’s reliance on listing of third-party
registrations in response to initial Office action).
Applicant’s prior registration on the Supplemental
Register does not prevent applicant from contending that
its mark is inherently distinctive in this application. In
re Hester Industries, Inc., 230 USPQ 797, 798 (TTAB 1986)
(while Supplemental Registration is an admission that
applicant believed that its mark was merely descriptive
when it filed the application or made the amendment to the
Supplemental Register, it is not binding on the Board which
Ser No. 77556539
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makes its own determination of whether the mark is merely
descriptive).
Whether Applicant’s Mark Is Merely Descriptive?
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods or services. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A term
need not immediately convey an idea of each and every
specific feature of the applicant’s goods or services in
order to be considered to be merely descriptive; rather, it
is sufficient that the term describes one significant
attribute, function or property of the goods or services.
In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982); In re
MBAssociates, 180 USPQ 338, 339 (TTAB 1973). Whether a
term is merely descriptive is determined not in the
abstract, but in relation to the goods or services for
which registration is sought, the context in which it is
being used on or in connection with the goods or services,
and the possible significance that the term would have to
the average purchaser of the goods or services because of
the manner of its use; that a term may have other meanings
Ser No. 77556539
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in different contexts is not controlling. In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). In other
words, the question is not whether someone presented with
only the mark could guess what the goods are. Rather, the
question is whether someone who knows what the goods are
will immediately understand the mark as directly conveying
information about them (i.e., whether someone familiar with
applicant’s skin moisturizer will understand PERFECTING
SERUM to convey information about the goods). In re Tower
Tech Inc., 64 USPQ2d 1314, 1317 (TTAB 2002); In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998);
In re Home Builders Association of Greenville,
18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings
Corp., 226 USPQ 365, 366 (TTAB 1985).
“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, 497 (TTAB 1978); see also In re Shutts,
217 USPQ 363, 364-365 (TTAB 1983); In re Universal Water
Systems, Inc., 209 USPQ 165, 166 (TTAB 1980).
Ser No. 77556539
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The examining attorney submitted the following
evidence to prove that PERFECTING SERUM is merely
descriptive when used in connection with skin moisturizer:
1. The definition of the word “Perfecting” meaning
“to bring to perfection or completion.”
2. The definition of the word “Serum” meaning
1. the clear, pale-yellow liquid that separates
from the clots in the coagulation of blood;
blood serum.

2. Immune serum.

3. any watery animal fluid.

4. the thin, clear part of the fluid of plants.

5. milk whey.

3. Use of the term “perfecting serum” by third
parties.
Applicant submitted the declaration of Michael
Painter, applicant’s counsel, with attached exhibits,
attesting to applicant’s enforcement of its trademark
rights in the mark PERFECTING SERUM. With the exception of
Lancôme and Guerlain, the third-party users identified by
the examining attorney have stopped using the term
“Perfecting Serum” or were, in fact, selling applicant’s
Ser No. 77556539
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product.2 One third-party user, KaplanMD, Inc., settled an
infringement action brought by applicant by agreeing to a
license.
The examining attorney argued that the third-party use
of “Perfecting Serum” by those that have discontinued such
use is relevant because “consumers have been extensively
exposed to these advertisements.” (Brief, unnumbered page
5). Without any supporting evidence regarding the length
of time the third-parties used the term “Perfecting Serum”
or the number of hits their websites received, we do not
draw any conclusions regarding the extent that consumers
have viewed these websites.
Also, we are cognizant that the discontinuance of the
use of the term “Perfecting Serum” by the third parties
upon threat of legal action may show a desire to avoid
litigation rather than recognition of trademark rights. On
the other hand, through its policing activities, applicant
has taken steps to ensure that third-party use has not
caused the mark PERFECTING SERUM to lose whatever
distinctiveness or exclusivity it has achieved. As a
result of applicant’s enforcement activities, at the time

2 The examining attorney also identified Biotherm as a third-
party user, but applicant explained that Lancôme and Biotherm are
owned by L’Oreal USA, Inc.

Ser No. 77556539
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we are deciding this case, there are only two other users
of the term at issue, and applicant asserts that it is
currently negotiating with Guerlain.
The examining attorney argued that PERFECTING SERUM is
merely descriptive because “consumers would immediately
understand that the moisturizing serums are used to perfect
the skin, which is a function and purpose of the goods.”3
Because applicant disclaimed the exclusive right to use the
word “serum” pursuant to a requirement by the examining
attorney, we consider the disclaimer to be a concession
that the word “serum” is merely descriptive of skin
moisturizer. However, with the exception of the two third-
party users noted above, there is no evidence that the word
“perfecting” is used by others in the industry, or that it
is understood by consumers, to describe a quality,
characteristic or function of skin moisturizer or any other
cosmetic or personal care product. The term “Perfecting
Serum” requires an effort of imagination on the part of the
observer to resolve the incongruity between skin
moisturizer and the term “Perfecting” and “Serum” (i.e., a
serum does not normally perfect something). Consequently,
the mark PERFECTING SERUM does not with any degree of

3 Brief, unnumbered page 4.
Ser No. 77556539
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particularity describe the function or purpose of
applicant’s skin moisturizer. When PERFECTING SERUM is
used in connection with skin moisturizer, some level of
thought is necessary to make the connection between the
mark and quality, characteristic or function it is supposed
to describe.
Our decision is based on the record created by the
examining attorney and applicant. Because a review of the
record has not resolved our doubts as to whether
applicant’s mark is merely descriptive, we resolve those
doubts in applicant’s favor, as we are required
to do. In re Morton-Norwich Products, Inc., 209 USPQ 791,
791 (TTAB 1981) (The Board's practice is “to resolve doubts
in applicant's favor and publish the mark for opposition”);
see also Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002).
In view of the foregoing, we find that applicant’s
mark PERFECTING SERUM when used in connection with skin
moisturizer is suggestive, rather than merely descriptive.
Because we have found that applicant’s mark is not
merely descriptive, the issue as to whether the evidence is
sufficient to show that it has acquired distinctiveness is
moot.
Decision: The refusal to register is reversed.