Neostrata Co., Inc. and Herald Pharmacal, Inc.v.Neoteric Cosmetics, Inc.

Trademark Trial and Appeal Board

Dec 4, 1998

No. 91087789re (T.T.A.B. Dec. 4, 1998)

Hearing: Paper No. 34
July 30, 1997 JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC 4, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Neostrata Company, Inc. and Herald Pharmacal, Inc.
v.
Neoteric Cosmetics, Inc.
_____
Opposition No. 87,789
to application Serial No. 74/189,267
filed on July 29, 1991
_____
Peter W. Peterson and Raymond A. Nuzzo of DeLio & Peterson
for Neostrata Company, Inc. and Herald Pharmacal, Inc.
David Wolf, Jenifer Paine and Robert E. Rigby, Jr. of Wolf,
Greenfield & Sacks for Neoteric Cosmetics.
______
Before Seeherman, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Neoteric Cosmetics,
Inc. to register the term ALPHA HYDROX for “cosmetics,
namely, skin lotions.”1
Registration has been opposed by NeoStrata Company,
Inc. and Herald Pharmacal, Inc. 2 As grounds for

Opposition No. 87,789
2
opposition, opposers assert that the term sought to be
registered, when applied to cosmetics which include, as an
ingredient, alpha hydroxy acids, is generic. Alternatively,
opposers assert that the term is merely descriptive.
Section 2(e)(1) of the Trademark Act, 15 USC §1052(e)(1).
Applicant, in its answer, denied that the designation
sought to be registered is either generic or merely
descriptive.
The record includes the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by each party; portions of a discovery
deposition (with related exhibits), excerpts from printed
publications, and applicant’s answers to certain requests
for admissions, all introduced by way of opposers’ notice of
reliance; and each opposer’s responses to certain of
applicant’s interrogatories, and portions of a discovery
deposition,3 all made of record in applicant’s notices of

1 Application Serial No. 74/189,267, filed July 29, 1991,
alleging a bona fide intention to use the mark in commerce.
2 In their brief opposers indicate that Allergan, Inc. acquired
the assets of Herald Pharmacal, Inc. on August 3, 1995. In the
absence of formal documentation, the Board has not taken any
action relative thereto (such as joinder or substitution).
3 Opposers relied upon portions of the discovery deposition it
took of Mark Goldstein, applicant’s president and chief executive
officer. Applicant has relied upon other portions of the same
deposition which, according to applicant, should in fairness be
considered so as to make not misleading what was offered by
opposers. Trademark Rule 2.120(j)(4). We agree with applicant
on this point.
Opposition No. 87,789
3
reliance. Both parties filed briefs and both were
represented by counsel at an oral hearing before the Board.4
The Parties
Opposers are engaged in the marketing and sale of skin
care cosmetics, some of which contain alpha hydroxyethanoic
acid as an active ingredient. NeoStrata Company, Inc. sells
its product under the mark NEOSTRATA, and Herald Pharmacal,
Inc. sells its product under the marks HERALD and M.D.
FORMULATIONS. Some of Herald’s products are sold only by
dispensing physicians.
Applicant is engaged in the business of selling skin
care products. Since introducing its first skin lotions
sold under the term ALPHA HYDROX in 1992, applicant has
expanded its product line to include a full range of skin
care cosmetics. The products, all sold under the term ALPHA
HYDROX, include face cleansers, facial treatments and

4 Applicant, in its answer and in its brief, contends that ALPHA
HYDROX is neither generic nor merely descriptive. In the later
portion of its brief, applicant also contends that even if the
term ALPHA HYDROX were merely descriptive, the record establishes
that the term has acquired distinctiveness pursuant to Section
2(f) of the Act. Applicant, in its brief, addresses in detail
the evidence bearing on this issue. Opposers, in their reply
brief, respond on the merits to applicant’s claim, contending
that the record is insufficient to show acquired distinctiveness.
Although applicant did not plead acquired distinctiveness as an
affirmative defense, opposers have not objected to the
interjection of the claim at the briefing stage, but rather have
addressed it on the merits.
Inasmuch as it appears that the issue was tried by the parties
as contemplated by Fed. R. Civ. P. 15(b), and since opposers have
not objected thereto, we shall treat the issue of acquired
distinctiveness as if it had been raised in the pleadings.
Opposition No. 87,789
4
moisturizers, body lotions, body wash treatments, foot care
treatments and after shave treatments. Applicant’s products
are sold in the mass market at places such as drugstores,
discount stores, grocery stores and pharmacies. The
products are advertised on a national scale on television,
and in magazines and newspapers. Applicant has enjoyed
considerable success with its product which, according to
applicant, is the top-selling product in the specific market
segment of skin care cosmetics having alpha hydroxy acid as
an ingredient. Applicant also has expended significant sums
in promotional efforts.5
The Issues
The issues to be determined in this case are (1)
whether applicant’s term ALPHA HYDROX is a generic name of
its goods; (2) if not, whether the term, as applied to
applicant’s goods, is merely descriptive of them; and (3) if
so, whether the term has become distinctive of applicant’s
goods in commerce.
The Goods
In order to properly consider the issues in this case,
it is necessary to understand the specific type of product
for which registration of ALPHA HYDROX is sought.
Applicant’s skin lotions contain as an active ingredient an

Opposition No. 87,789
5
organic chemical called alpha hydroxyethanoic acid,
generally referred to as “alpha hydroxy acid” or “AHA.”
According to Joseph Lewis, a director of research and
development for Herald (now Allergan), alpha hydroxy acids
are organic carboxylic acids with a hydroxy or alcohol group
on the carbon, adjacent to the carboxylic group. The term
“hydroxy” denotes the presence of a hydroxyl or alcohol
group, and the term “alpha” denotes the location of this
group, that is, on the carbon adjacent to the functional
group. Alpha hydroxy acids in cosmetics serve as a mild
skin peel, working to loosen and slough off dead skin cells
to expose newer, fresher skin. Skin treated with alpha
hydroxy acids appears softer and smoother, and age spots and
freckles also appear to fade. The alpha hydroxy acids are
derived from sugar cane, apples, grapes, citrus fruits and
sour milk. Alpha hydroxy acids are available in cosmetics
sold over the counter, such as opposers’ and applicant’s, in
mild strengths (around ten percent or less). Dermatologists
prescribe alpha hydroxy acids in lotions with concentrations
of up to seventy percent.
With “baby boomers” and others viewing cosmetics having
alpha hydroxy acid as anti-aging products for their skin,
sales have skyrocketed. Mr. Goldstein testified that

5 The specific sales and advertising figures cannot be disclosed
in this opinion inasmuch as they have been designated
“confidential” by the parties pursuant to their agreement.
Opposition No. 87,789
6
cosmetics having alpha hydroxy acids form a defined segment
of the cosmetic industry (dep., p. 39). The presence of
such products on the market has led to great growth in the
skin care industry.6 The marketplace is full of directly
competitive products, Mr. Goldstein’s saying that there are
over 100, with every manufacturer in the skin care industry
having a product containing alpha hydroxy acid. Mr. Lewis
testified that alpha hydroxy acid is the most popular skin
care ingredient in cosmetics in the world. His testimony is
buttressed by numerous articles which attest to the huge
popularity of skin care cosmetics that contain alpha hyroxy
acids. The evidence leaves no doubt that consumers in the
marketplace can be expected to be familiar with alpha
hydroxy acids and their purported benefits as ingredients in
skin care cosmetics.
Testimony
The record includes the testimony of Joseph Lewis, as
noted above, and Louis Semento, a former president, now
retired, of NeoStrata. Both have backgrounds in chemistry.

6 Applicant’s exhibit no. 220 is an excerpt from a printed
publication in the March 1995 issue of DCI. The article is
captioned “The AHA Phenomenon Continues”, and the author
indicates that there is no better way to describe alpha hydroxy
acids and their effect on the cosmetic industry. The article
quotes the Wall Street Journal: “AHAs can be credited with
reviving the fortunes of the stagnant cosmetic industry,” calling
AHAs “the greatest advance the industry has ever seen.” The
article goes on to indicate that nearly all of the recent growth
in the skin care cosmetic industry is attributable to the use of
alpha hydroxy acids.
Opposition No. 87,789
7
In addition, opposers offered the testimony of Leonard
Milstone, M.D., professor of dermatology at Yale University
School of Medicine and chief of dermatology at the VA
Medical Center, West Haven, Connecticut.
Mr. Lewis testified that he has seen the word “hydrox”
used in the same way as “hydroxyl.” Mr. Semento also
testified that the term “hydrox” may be used in place of
“hydroxy” to denote a hydroxyl group in a chemical compound.
Dr. Milstone stated that the term “hydrox” chemically means
the same thing as “hydroxy.”
Mr. Lewis further testified that he immediately
recognizes the term “Alpha Hydrox” to be equivalent to the
term “alpha hydroxy.” His opinion is that consumers would
also recognize the two as equivalents, pointing out as
follows: “There’s only a one letter difference between the
two names. I mean they’re practically identical. I think
the lay consumer is not going to understand the difference
whether you have a “Y” or not on the end of hydrox.” (dep.,
p. 27)
Dr. Milstone also offered testimony bearing on the
equivalency of “Alpha Hydrox” and “alpha hydroxy” (dep., pp.
17-18):
Q. Do you understand the term Alpha
Hydrox to be a shortened form of alpha
hydroxy?
A. I assumed that. I didn’t know for
certain. That was an assumption.
Opposition No. 87,789
8
Q. Do you have any opinion as to
whether other dermatologists would
recognize the term Alpha Hydrox to be a
shortened form of alpha hydroxy?
A. I would suspect so.
Q. What’s the basis of your opinion?
A. Well, there are numerous examples in
medicine and medicine prescribing where
names of chemicals are shortened or
changed slightly to make that easier to
remember and I just assumed this was
that kind of change.
Q. Do you have an opinion as to whether
your patients would recognize the term
Alpha Hydrox to be a shortened form of
alpha hydroxy?
A. I would suspect so.
Q. And what’s the basis for your
opinion?
A. Similar to the basics for why I
think physicians would do it, except I
think in the general public there’s a
misunderstanding of chemical usage and
people easily mistake one closely
sounding name for another.
Dr. Milstone further testified regarding the use of “alpha
hydrox” and “alpha hydroxy” (dep., pp. 23-25):
Q. Now, you said that you viewed a
number of dermatological articles in
the course of your practice. Have
you brought any of them here with
you?
A. No.
Q. Have you any—
Opposition No. 87,789
9
A. There were some that were part of the
folder that I have seen. I didn’t
bring that with me, though.
Q. And they all refer to the--the ones
you are referring to identify alpha
hydroxy acid as an active compound in
treating certain skin disorders?
A. Yes.
Q. Did any of them use the term “alpha
hydrox” as distinguished from “alpha
hydroxy acid” that you can
specifically recall?
A. Not that I remember.
Q. You can’t recall any particular one
that used the term “alpha hydrox”—
A. No.
Q. –in place of “alpha hydroxy acid”?
In fact, the term is “alpha hydroxy
acid,” it’s not “alpha hydroxy,” is
that correct?
A. That’s right.
Q. And so you did not expect anyone to
use the term “alpha hydroxy,” you
would expect in the dermatological
field “alpha hydroxy acid”?
A. Correct.
Q. That would be the active compound you
wanted to identify?
A. Certainly.
Q. In fact, you yourself don’t use
“alpha hydroxy” to describe “alpha
hydroxy acids,” do you?
A. No.
Q. You didn’t at any time in this
deposition, did you?
Opposition No. 87,789
10
A. That’s right.
Q. Any you certainly don’t use “alpha
hydrox” to describe “alpha hydroxy
acids,” do you?
Mr. Lewis testified that the term “alpha hydroxy” is
commonly used in the cosmetics industry to describe alpha
hydroxy acids used in cosmetics. Mr. Lewis stated that many
companies in the industry use the term “alpha hydroxy”
without the term “acid” because of potentially negative
associations with the term “acid” when used in connection
with skin care products.
Dictionary Evidence
Webster’s Third New International Dictionary (1964)
includes the following listing:
hydroxy- or hydrox- comb form [ISV, fr.
Hydroxyl, fr. E]: hydroxyl: containing
hydroxyl esp. in place of hydrogen--in
names of chemical compounds or radicals
(hydroxyalkyl) (hydroxamic acids)—
compare HYDROXO-
Examples given by opposers where “hydrox” is used as a
prefix designating a hydroxyl group in a chemical compound
are: hydroxamic acid, hydroxamethocaine, hydroxocobalamin
and hydroxocobemine.
There are no dictionary listings of record for the
terms “Alpha Hydrox” or “alpha hydroxy.”
Applicant’s Statements
Opposition No. 87,789
11
In the record is a document captioned “SALES
PRESENTATION [for] Alpha Hydrox Skin Treatment.” Mr.
Goldstein testified in his discovery deposition that he
wrote and edited substantial portions of the document. The
purpose of the document, according to Mr. Goldstein, was to
provide applicant’s sales people with information on the
product, the product’s benefits, the advertising and the
general consumer market for cosmetic skin care items. Mr.
Goldstein testified that the document was not seen by any
retailers or customers. He did indicate, however, that some
of applicant’s regional managers shared the document with
some of the broker agents who represent applicant’s
products. Opposers highlight three instances in the sales
presentation document in support of their claim that
applicant itself has acknowledged the genericness of the
term sought to be registered:
These natural products contain
substances known as Alpha Hydroxyacids
(hence our name Alpha Hydrox), which are
ideal for cosmetic use.
Alpha Hydroxyacids have been used and
recommended by dermatologists for years.
We will provide an easy means of
purchase for their patients. Our
generic name will further identify our
product and take advantage of the
awareness of this scientific
breakthrough.
Several other manufacturers have been
researching Alpha Hydroxyacids, and
probably will launch new products with
AHAs shortly. Up until recently,
Opposition No. 87,789
12
existing patents have kept other
manufacturers from taking advantage.
Neoteric Cosmetics, Inc. will continue
to grow even after competitive
introductions because of the generic
nature of its brand name: ALPHA HYDROX.
In a letter from Mr. Goldstein to prospective sellers of the
product, he stated: “Taking its name from the active
ingredient, we are introducing ALPHA HYDROX Skin Treatment.”
[emphasis in original]
Competitors’ Uses
The evidence shows that most competitors use the term
“alpha hydroxy acid” or “alpha hydroxyacid” when naming the
ingredient in their products. There are examples, however,
where competitors have used simply “alpha hydroxy,” as for
example, “Alpha Hydroxy Face Lotion.” The record is
completely devoid of any uses by competitors of “Alpha
Hydrox,” and opposers’ witnesses testified that they were
not aware of any uses other than applicant’s.
There also are exhibits (packaging or containers)
showing competitors’ referring to ALPHA HYDROX as a
trademark: “COMPARE TO ALPHA HYDROX”; “COMPARE OURS TO
ALPHA HYDROX”, indicating that “ALPHA HYDROX is a
registered trademark of [applicant]”; and “Compare to Alpha
Hydrox Cream.”
Media Uses
Opposition No. 87,789
13
The record is replete with articles appearing in
printed publications wherein the term “alpha hydroxy” is
used in a generic manner in connection with various skin
care products. Although opposers submitted only three
articles showing such use, several of the hundreds of
articles relied upon by applicant show similar uses.7
Opposers introduced some examples where the media
apparently has misused the term applicant seeks to register.
Mr. Goldstein testified that “[t]here’s been press articles
where our name has been misdescribed, instead of Alpha
Hydrox, as alpha hydroxy....” When confronted with certain
exhibits during his cross examination, Mr. Goldstein
acknowledged that in five of the articles the term “ALPHA
HYDROXY” was used in place of “ALPHA HYDROX” when referring
to applicant’s product. Mr. Goldstein stated that this
“will occasionally happen, certainly against our better
wishes.” When asked if he knew whether there were more
instances of interchanging “alpha hydroxy” for “Alpha
Hydrox” in the print media, Mr. Goldstein replied “I’m sure
it’s been done, but I don’t recall any specific instance.”

7 Applicant’s hearsay objections to the articles introduced by
opposers are overruled. As pointed out by opposers, the articles
were not submitted to prove the truth of the matters asserted
therein; rather, the articles were made of record for what they
show on their face, that is, generic uses of “alpha hydroxy.”
Opposition No. 87,789
14
Other than in these five instances, the hundreds of
other articles of record show reference to ALPHA HYDROX as a
trademark of applicant.
Consumers’ Uses
The record includes six “consumer profiles” which were
returned to applicant in response to applicant’s campaign to
gather information about its consumer base. The six
documents were selected by opposers out of 10,600 responsive
documents.8 In filling out the profiles, six different
consumers made the following statements:
Can you make your product with a higher
percentage of alpha hydrox acid?
I want to try any new product you come
out with containing alpha hydrox.

8 Opposers contend, in their reply brief, that applicant has not
proved that the six responses were selected from a pool of 10,600
responses, and ask that the 10,600 figure be ignored.
Opposers’ objection is overruled. Applicant, in responding to
certain of opposers’ requests for admission (which were
propounded to establish the authenticity of the consumer
profiles), stated as follows: “The document is one selected by
Opposer from approximately 10,600 consumer response documents
including over 600 consumer profiles which consumer profiles were
received by [applicant] after February 2, 1993.”
In our view, the 10,600 figure has been made of record by way
of opposers’ reliance on applicant’s responses to certain of the
requests for admissions. Other than the mention in their reply
brief, opposers did not dispute the accuracy of this number or
offer any contravening evidence or clarifying remarks (as, for
example, that opposers inspected only one hundred profiles, or
that the six profiles comprise a representative sample of
numerous other profiles, or that less than the total number of
profiles were made available to opposers). At the oral hearing,
in response to the Board’s inquiry on this point, opposers stated
that they did not dispute the accuracy of the 10,600 figure.
Opposition No. 87,789
15
My [question] was what is % of Ι hydrox.
Acids in product...I shared information
about magazine article just out
re[garding] Ι hydrox acids...
...I have read that the Alpha Hydrox
acids are the best thing to use...
I wanted to know what the difference was
between your Alpha hydrox and the
prescription of Alpha hydroxy Acid.
What is the difference between Alpha
Hydrox and Neo Strata?
Survey Evidence
Applicant took the testimony of Robert Burgess,
president of Marketing Advocates, Inc., a marketing
consulting business specializing in marketing research. Mr.
Burgess testified that he has thirteen years of experience
in designing, conducting and implementing market research
studies. Applicant commissioned Mr. Burgess and his company
to implement a study in 1995 which, in Mr. Burgess’ words,
“was designed primarily as a way to track how the
marketplace is reacting to the Alpha Hydrox brand, to
understand the recall of the brand, how the advertising
works, what the consumer perceptions are of that brand, and
understand how the brand is distinguished from other
products in the category.” (dep., p. 8) Phase 1 of the
“Alpha Hydrox Advertising Tracking Study” was completed in
Opposition No. 87,789
16
December 1995 and presented to applicant in January 1996.9
Applicant points out that the survey was not done
specifically to be used in this proceeding.
The survey is based on 200 completed telephone
interviews of women buyers/users of facial skin care
products, aged 30-72, who purchase those products at mass
merchandisers on a regular or occasional basis. The surveys
were evenly divided across six geographic areas
(Indianapolis, Long Islan, Phoenix, Spokane, Orlando and
Tampa).
While the Board is obliged to refrain from citing the
specifics of the survey due to its confidential nature, the
results show that ALPHA HYDROX, in terms of top-of-mind,
unaided awareness, is the third most likely facial skin care
brand name to pop up in the minds of the consumers
interviewed. Although the raw percentage number is small,
Mr. Burgess characterized this percentage of unaided brand
awareness of applicant’s ALPHA HYDROX as “significant.”
Genericness Analysis
A term is generic if it names the class of the goods or
services to which it is applied. See: H. Marvin Ginn Corp.
v. International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986), and In re Northland
Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed.

9 This study, offered as exhibit no. 557, has been designated by
applicant as “confidential.”
Opposition No. 87,789
17
Cir. 1985). The test for determining whether a term is
generic is its primary significance to the relevant public,
that is, whether the term is used or understood, by
purchasers or potential purchasers of the goods or services
at issue, primarily to refer to the class of such goods or
services. See: Magic Wand Inc. v. RDB Inc., 940 F.2d 638,
19 USPQ2d 1551 (Fed. Cir. 1991); In re Merrill Lynch,
Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141
(Fed. Cir. 1987); H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., supra; and In re
Leatherman Tool Group, Inc., 32 USPQ2d 1443 (TTAB 1994).
Evidence of the relevant public’s understanding of a term
may be obtained from any competent source, including direct
testimony of consumers, consumer surveys, newspapers,
magazines, dictionaries, catalogs, and other publications.
See: In re Merrill Lynch, Pierce, Fenner, and Smith Inc.,
supra, and In re Northland Aluminum Products, Inc., supra.
Whether a term is classified as “generic” or as “merely
descriptive” is sometimes, as in the present case, not easy
to discern In re Merill Lynch, supra at 1142. Fine lines
must be drawn and, in making our determination here, we
readily concede that this is a close case.
The Category of Goods and the Relevant Public
In determining genericness, we must first identify the
category of goods at issue. Although the involved
application is based on an intention to use, applicant
Opposition No. 87,789
18
commenced use of ALPHA HYDROX in 1992, and the record
includes testimony and hundreds of exhibits relating to
applicant’s products sold under the term ALPHA HYDROX.
In this case, the category or type of product is clear:
skin care cosmetics containing alpha hydroxyethanoic acids.
Other acceptable names for the category are alpha
hydroxyacid cosmetics or simply alpha hydroxy cosmetics.
Also clear is the relevant purchasing or consuming
public for such products. Here, we find the relevant public
to be ordinary consumers who are the end users of over-the-
counter skin care cosmetics.10
That brings us to the harder question, as is so often
the case when the issue is genericness: whether the term
sought to be registered is understood by the relevant public
primarily to refer to the class of the involved goods?
Accordingly, in the present case, the ultimate question is
whether the term ALPHA HYDROX is understood by consumers in

10 Opposers contend that the relevant purchasing public comprises
“both the ‘average’ consumer who purchases the cosmetic product
at retail stores as well as dispensing professionals such as
physicians, dermatologists, plastic surgeons and licensed
estheticians who may resell the products to patients and
clients.” (brief. p. 12) See discussion, infra. In citing to
specific testimony and evidence, we find that opposers are taking
liberty with those portions of the record. The record
establishes that applicant’s products have a low concentration of
alpha hydroxy acid, and that they are sold over the counter to
ordinary consumers. Applicant has not directly sold any products
to physicians or other professionals. Thus, we agree with
applicant that the relevant consumer is the ultimate, average
consumer who buys over-the-counter skin care products.
Opposition No. 87,789
19
the marketplace primarily to refer to the class of skin care
cosmetics containing alpha hydroxy acids.
We find that petitioner, as the party making the charge
of genericness, has not proved its claim by a preponderance
of the evidence. Martahus v. Video Duplication Services
Inc., 3 F.3d 417, 27 USPQ2d 1846, 1850 (Fed. Cir. 1993).
The record establishes that “alpha hydroxy” is a
shortened and commonly used generic name for alpha hydroxy
acid.”11 And, the difference between “Alpha Hydrox” and
“alpha hydroxy” is the omission of only one letter, namely,
the last letter “y”. In this connection, we candidly
recognize that the addition, deletion or change in one
letter normally does not transform a generic term into a
source indicator. See generally: 2 J. T. McCarthy,
McCarthy on Trademarks and Unfair Competition, §12:38 (4th
ed. 1998). However, as we view it, ALPHA HYDROX is neither
the equivalent of “alpha hydroxy” nor a mere misspelling of
“alpha hydroxy,” let alone “alpha hydroxyacid.” This slight
variation is enough to take the matter sought to be
registered out of the generic category. That is to say, our
view is that the relevant purchasing public will notice the
difference in syllables and the omission of the last letter
“y” in applicant’s term ALPHA HYDROX. The fact that the
record shows that “hydrox” hardly ever has been used
Opposition No. 87,789
20
separately other than as a part of applicant’s term ALPHA
HYDROX (the only exceptions of record being the few uses
highlighted by opposers) suggests that applicant’s term is
unusual enough that consumers will perceive it as a
trademark.
Although opposers’ three witnesses testified that
“hydroxy” and “hydrox” are equivalents and that “alpha
hydroxy” is perceived to be equivalent to “Alpha Hydrox,”
such testimony and supporting exhibits fall short, when
balanced against other evidence, in establishing what
ultimate consumers primarily perceive when encountering
ALPHA HYDROX. Opposers’ witnesses, all with backgrounds in
the field of skin care, are not “average” purchasers for the
over-the-counter skin care products of the type sold by
applicant.
In the case of Magic Wand, Inc. v. RDB, Inc., supra,
the Federal Circuit held that the test of whether
“touchless” is a trademark for automobile washing services
or is the generic name of a type of automobile washing
service is its meaning to consumers who use the services,
not its meaning to operators and manufacturers of automobile
washing equipment even though they might also avail
themselves of car washing services. While there was
evidence of use of “touchless” as a generic name of a type

11 In saying this, we note also that the record establishes that
Opposition No. 87,789
21
of equipment by manufacturers and operators of commercial
car wash equipment, there was no proof that the term was
also used as a generic name by the general car-owning public
in the market for car-wash services. In the court’s words:
“These vendors, operators and manufacturers [of car wash
equipment] are a very small part of the relevant purchasing
public. Accordingly, evidence of generic use by this small
part of the relevant purchasing public has limited probative
value.” Id. at 1554.
We find a similar situation here. The fact that three
persons (two of whom are intimately associated with
opposers) with backgrounds in chemistry or dermatology have
an opinion on the genericness of applicant’s term ALPHA
HYDROX is of limited help in deciding this issue. And, even
assuming that the relevant purchasing public includes, as
opposers suggest, dermatologists, plastic surgeons and
licensed estheticians, this is a very small part of the
relevant public for purposes of our analysis. Id.
on balance, what evidence there is of how others
perceive ALPHA HYDROX leads us to conclude that it is not
generic. In chemical nomenclature, it would appear that
“hydrox” or “hydroxy” is used exclusively as part of the
name of a chemical compound. There is no technical evidence
showing use of “hydrox” or “hydroxy” alone, and there is no

the common abbreviation for “alpha hydroxy acid” is AHA, not AH.
Opposition No. 87,789
22
technical evidence showing a chemical compound called either
“hydrox” or “alpha hydrox.” Mr. Lewis testified that he has
never seen “hydrox” used as a separate word other than as
used in applicant’s ALPHA HYDROX. (dep., p. 37) In our
view, the dictionary entry relied upon by opposers shows
that “hydrox” is equivalent to “hydroxy” only when it is
used in combination with the rest of a chemical compound
name; ALPHA HYDROX is not the name of a chemical compound.
Opposers’ interrogatory responses relied upon by applicant
reinforce opposers’ lack of knowledge of any uses of “Alpha
Hydrox” per se in a generic or descriptive manner by any one
in the trade or in the media.12
Further, there is not even a single instance of a
competitor in the trade using “Alpha Hydrox” in a generic
manner. In point of fact, the evidence shows that when
competitors compare their products to applicant’s, their
packaging specifically refers to ALPHA HYDROX as a trademark
of applicant (two even erroneously referring to it as a
registered trademark). We are not surprised that no one
else has used the term as a generic name. We say this
inasmuch as there would appear to be no competitive need to
use “Alpha Hydrox” when one can freely use the generic

12 In the same responses opposers went on to indicate that they
were aware of such uses of “the equivalent term ‘Alpha Hydroxy’.”
Opposition No. 87,789
23
“alpha hydroxy” or “alpha hydroxy acid” (or “alpha
hydroxyacid”).
In addition, there is not a single instance where
applicant has used ALPHA HYDROX in a generic fashion. In
saying this we recognize, of course, that applicant’s sales
presentation document suggests to readers that the term is
generic. However, Mr. Goldstein, the person primarily
responsible for preparation of the document, is not a
trademark attorney and has not indicated that he understood
or intended for his use of “generic” to have a legal
connotation. Although the document obviously should have
been more carefully drafted, the Board thinks it
unreasonable to treat as an admission against interest
“words of art” used in the statements of a non-lawyer
without experience in using statutory language. Also, given
Mr. Goldstein’s testimony regarding the limited distribution
of the sales presentation document, it is highly unlikely
that any ultimate consumer in the marketplace, let alone an
appreciable number of them, were exposed to the document.
The hundreds of uses of ALPHA HYDROX in the media are,
but for a few minor instances highlighted by opposers, in
the manner of a trademark. The proper uses capitalize the
first letters “a” and “h” as in “Alpha Hydrox,” and often
refer to the term as the brand name of applicant’s product.
The fact that so few articles misused the term out of
Opposition No. 87,789
24
several hundred articles made of record suggests that the
misuse is relatively incidental and, nevertheless, the
misuses are outweighed by the proper trademark uses of
record. And, although Mr. Goldstein indicated that he
suspected that there were more misuses, the simple fact
remains that no more than a few have been introduced into
the record of this case.
Likewise, the consumer profile cards, although relied
upon by opposers, tend, we think, to weigh in applicant’s
favor. There is evidence of only six consumers out of a
pool of 10,600 who misused applicant’s trademark as a
generic name. We can only assume, given that the consumer
profile evidence was introduced by opposers, that the other
10,594 consumers (or, at the very least, an overwhelming
number of them) did not misuse the trademark as a generic
name. Cf. In re Federated Department Stores, Inc., 3 USPQ2d
1541, 1542 at n. 2 (TTAB 1987) [“....we must assume that the
three excerpts [out of eighteen] selected provide the best
support of the Examining Attorney’s refusal to register
available from that source.”]
Finally, the brand awareness survey, although clearly
not the type of survey known as a “Thermos Survey”13 or a

13 American Thermos Products Co. v. Aladdin Industries, Inc., 207
F.Supp. 9, 134 USPQ 98 (D. Conn. 1962), aff’d, 321 F.2d 577, 138
USPQ 349 (2d Cir. 1963), mot. denied, 289 F.Supp. 155, 159 USPQ
604 (D. Conn. 1968), vacated, 418 F.2d 31, 163 USPQ 65 (2d Cir.
Opposition No. 87,789
25
“Teflon Survey,”14 is of some limited probative value here.
Mr. Burgess testified that the brand awareness survey shows
that applicant enjoys a “significant” degree of unaided
awareness of its ALPHA HYDROX as a brand name. Although the
survey is based on only 200 interviews, it tends to favor
applicant’s position that ALPHA HYDROX is perceived by the
purchasing public primarily to refer to a source indicator
rather than to a generic name.
In sum, we find that the record, on balance, falls
short in proving genericness. Genericness is a fact-
intensive determination and the Board’s conclusion must be
governed by the record which is presented to it. It is the
record evidence about purchasers’ perceptions that control
the determination, not general legal rules or our own
subjective opinions. While we candidly admit that we
entertain doubts about the character of applicant’s Here,
opposers simply have not sustained their burden of proof
with clear evidenc. Rather, the record comprises a mixture
of uses, with the mixture heavily weighted in applicant’s
favor. The proofs fail to clearly place the term ALPHA
HYDROX in the category of a generic term. In re Merill
Lynch, supra.

1969), on remand, 320 F.Supp. 1156, 166 USPQ 381, 169 USPQ (D.
Conn. 1970).
14 E. I. Du Pont de Nemours & Co. v. Yoshida International, Inc.,
393 F.Supp. 502, 185 USPQ 597 (E.D.N.Y. 1975).
Opposition No. 87,789
26
Mere Descriptiveness Analysis
A term is considered to be merely descriptive of goods,
within the meaning of Section 2(e)(1), if it immediately
describes an ingredient, quality, characteristic or feature
thereof or if it directly conveys information regarding the
nature, function, purpose or use of the goods. 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 in order for it to be
considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or
idea about them. Moreover, whether a term is merely
descriptive is determined not in the abstract but in
relation to the goods for which registration is sought. In
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Although the record falls short of proving genericness,
we find, nonetheless, that the testimony and evidence
establishes that the designation ALPHA HYDROX is merely
descriptive as applied to skin care cosmetics containing
alpha hydroxy acids. Simply put, ALPHA HYDROX immediately
and directly conveys information about applicant’s
cosmetics, that is, that the cosmetics contain alpha hydroxy
acids. Mr. Goldstein, when asked at his discovery
deposition whether he “consider[ed] that the mark Alpha
Hydrox conveys to consumers some sort of idea that the
Opposition No. 87,789
27
[applicant’s] product contains alpha hydroxy acids,” replied
“yes.”
Acquired Distinctiveness
It is settled that whether a term has become
distinctive is a question of fact that must be determined
based on the evidence of record. G. H. Mumm & Cie Desnoes &
Geddes, Ltd., 917 F.2d 1292, 16 USPQ2d 1635 (Fed. Cir.
1990). Whether the quality and character of evidence is
sufficient to prove distinctiveness is necessarily a
subjective determination that depends to a large extent on
the nature of the term and the circumstances surrounding the
use of the term. Roux Laboratories, Inc. v. Clairol, Inc.,
427 F.2d 823, 166 USPQ 34 (CCPA 1970). The ultimate burden
of proving acquired distinctiveness in this case is on
applicant who is seeking registration. Yamaha International
Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d
1001 (Fed. Cir. 1988).
In the case of applicant’s ALPHA HYDROX, the record
shows that applicant has enjoyed significant success with
its products sold under the mark. Mr. Goldstein testified
that applicant’s products sold under ALPHA HYDROX are
usually the top-selling ones among alpha hydroxy acid
products in the mass market. Applicant began using ALPHA
HYDROX in 1992, and its use has been continuous since that
time. Further, no one else other than applicant has ever
Opposition No. 87,789
28
used ALPHA HYDROX in connection with skin care cosmetics or
alpha hydroxy acids. As noted earlier, we are not at
liberty to disclose applicant’s sales and advertising
figures inasmuch as they were marked confidential. What we
can say, however, is that the sales have been in the tens of
millions (close to nine figures), with corresponding
substantial sums spent on advertising (in the eight
figures). Advertisements have run on national television
and have appeared in printed publications with nationwide
circulation. Applicant’s products also have been featured
in various national television news reports and in national
print articles, both solicited and unsolicited. Except in a
few isolated instances, the designation ALPHA HYDROX is
referred to as a trademark of applicant. As evidenced by
the survey results cited above, all of the exposure has
resulted in a good degree of brand awareness of applicant’s
ALPHA HYDROX in the facial skin cosmetics field.
Further, as noted earlier in this opinion, the record
shows that some competitors in the field refer on their
packaging to applicant’s ALPHA HYDROX as a trademark. Such
comparative uses suggest that these competitors, as well as
the customers for their products, recognize ALPHA HYDROX as
a source indicator for applicant’s competing products. We
can only conclude that the comparison is made because
Opposition No. 87,789
29
competitors recognize that the purchasing public is familiar
with applicant’s ALPHA HYDROX mark.
In view of applicant’s exclusive and continuous use,
significant sales and advertising expenditures, substantial
publicity in the national media, and degree of brand
awareness among competitors and consumers, we find that
applicant has established acquired distinctiveness of its
mark ALPHA HYDROX as applied to skin care cosmetics.
Conclusion
In summary, ALPHA HYDROX is not generic for skin care
cosmetics containing alpha hydroxy acids. However, the
record establishes that the term is merely descriptive under
Section 2(e)(1), but also that the term has acquired
distinctiveness as provided under Section 2(f).
In view of this disposition of the case, we are
compelled to made additional comments in response to what
appears to be a major concern of opposers. A recurring
theme in opposers’ briefs is that “registration of the term
‘Alpha Hydrox’ will prevent others from using ‘Alpha
Hydroxy’ with alpha hydroxy cosmetics and skin lotions.”
Opposers claim that applicant, upon issuance of a
registration to it, “would unfairly gain the prima facie
exclusive right to the term ‘alpha hydrox’ and thus, a
monopoly on the use of the term in connection with cosmetics
and skin lotions.” Opposers express their fears as follows:
Opposition No. 87,789
30
Opposers and other competitors have the
right to use either “alpha hydroxy” or
“alpha hydrox” with products containing
acids of the “alpha hydroxy” type.
Registration of “Alpha Hydrox” will
enable applicant to claim that opposers’
and others use of the term “alpha
hydroxy” in connection with alpha
hydroxy acid cosmetics constitutes an
infringement of applicant’s rights in
the mark “Alpha Hydrox” because of the
similarity or equivalence of those terms
in the perception of purchasers of alpha
hydroxy acid cosmetics.
Opposers go on to cite a trademark infringement suit brought
by applicant against a third party.15
In response, applicant states that “[registration of
ALPHA HYDROX by Applicant would not prevent companies from
using terms such as ‘alphahydroxy’ or ‘alpha hydroxy’ in
whole or in part.” (brief, p. 21) Moreover, the following
exchange during Mr. Goldstein’s testimony is illustrative of
applicant’s position on this point:
Q. Do any of your competitors use Alpha
Hydrox as a trademark?
A. No.
Q. Do any of them use Alpha Hydrox in a
descriptive sense?
A. No.

15 Opposers specifically point to exhibit 72, contending that
applicant sued on the basis of its ALPHA HYDROX mark. However, a
review of that exhibit, coupled with applicant’s remarks at the
oral hearing, would indicate that applicant’s claim related to
its alleged overall trade dress (a red rectangle box, white,
black and silver lettering, etc. and which includes the term
ALPHA HYDROX) rather than the word mark per se. See Goldstein
dep., ex. no. 473.
Opposition No. 87,789
31
Q. Do any of them use alpha hydroxy
alone or in combination?
A. Yes.
Q. And do you consider that use of
alpha hydroxy to be an encroachment upon
any trademark rights you may assert?
A. No.
Applicant reiterated its position at the oral hearing,
indicating that it could not stop others in the trade from
using the term “alpha hydroxy” in a generic or descriptive
manner in connection with their competing products.
The record lacks evidence showing that applicant has
filed a trademark infringement suit, based on asserted
proprietary rights in the term ALPHA HYDROX alone, against
anyone using “alpha hydroxy” either alone or in combination
with other terms. In point of fact, to do so would be
directly contrary to Mr. Goldstein’s representation made
under oath, as well as counsel’s representations made to the
Board in the brief and at the oral hearing.
Thus, we are inclined to view opposers’ fear as
unfounded. We see no competitive need to use the specific
term ALPHA HYDROX and, indeed, the evidence shows that no
one other than applicant has used the term as a generic or
descriptive term. On the other hand, however, there is a
competitive need to use the generic term “alpha hydroxy” and
issuance of the registration sought by applicant will not
Opposition No. 87,789
32
give applicant the right to interfere with the fair use
(even in a prominent manner) by others of the term “alpha
hydroxy” alone or in combination with other terms, as for
example, “alpha hydroxy face lotion.” Likewise, we do not
envision the Office’s refusing registration under Section
2(d) on the basis of applicant’s registration when other
entities might seek to register marks which include, in
part, the generic term “alpha hydroxy” (which, of course,
would be disclaimed).
Decision
The opposition is dismissed, and a registration under
Section 2(f) will issue in due course.
E. J. Seeherman
E. W. Hanak
T. J. Quinn
Administrative Trademark
Judges, Trademark Trial
and Appeal Board