Nihondo Co., Ltd.

Trademark Trial and Appeal Board

Jan 24, 2012

No. 79071083 (T.T.A.B. Jan. 24, 2012)

Mailed:
January 24, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Nihondo Co., Ltd.
________

Serial No. 79071083
_______

John Zaccaria of Notaro, Michalos & Zaccaria P.C. for
Nihondo Co., Ltd.

Cory Boone, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Kuhlke, Mermelstein and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Nihondo Co., Ltd. (“applicant”) filed an application
on the Principal Register for the mark KAMPO BOUTIQUE, in
standard character form, for the following goods, as
amended, “tea; tea-based beverages; Chinese tea; Japanese
green tea; herbal tea; all of the goods not for medical,
purposes but used in accords [sic] with kampo practices,”
in Class 43. The application is based on a request for
extension of protection filed under Section 66(a) of the
Trademark Act of 1946, 15 U.S.C. §1144f(a). Applicant
disclaimed the exclusive right to use the word “Kampo.”
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 79071083
2
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(e)(1) of the Trademark Act
of 1946, 15 U.S.C. §1052(e)(1), on the ground that
applicant’s mark is merely descriptive.
Applicant and the examining attorney are in agreement
as to the meaning of the words “Kampo” and “Boutique,” but
disagree as to whether the composite mark is merely
descriptive when applied to teas “used in accords [sic]
with kampo practices.”1 The record establishes that “Kampo
is a Japanese system of herbalism,”2 or “Kampo medicine is
the Japanese study and adaptation of Traditional Chinese
medicine. … but is primarily concerned with the study of
herbs.”3 A “boutique” is defined as “a small fashionable
shop.”4
Specifically, applicant contends that “‘KAMPO’ refers
to the Japanese practice of using herbs and herbal
preparations in the treatment of various conditions.”5 The
examining attorney contends that “‘Kampo’ is a term with a
commonly-understood meaning that describes herbs and teas

1 Applicant’s Brief, p. 4 and Examining Attorney’s Brief,
unnumbered pages 3-5.
2 Holisticonline.com attached to the December 15, 2010 Office
Action.
3 Wikipedia.com attached to the September 24, 2009 Office Action.
4 Merriam-WebsterOnline.com attached to the September 24, 2009
Office Action.
5 Applicant’s Brief, p. 4.

Serial No. 79071083
3
used as part of a traditional medical system. … The study
and application of these medicinal practices is primarily
concerned with the study of herbs, and hundreds of herbal
ingredients have been catalogued and studied for their
efficacy.”6
The record shows that one company, Honso USA, sells
“Japanese Herbal Kampo CardioShen Tea.”7 The label on the
tea box identifies the product as CardioShen Tea.
Both applicant and the examining attorney submitted
third-party registrations for marks incorporating the word
“boutique” for products. In the third-party registrations
submitted by the applicant, the registrants did not
disclaim the exclusive right to use the word “boutique,”
whereas the registrants disclaimed the exclusive right to
use the word “boutique” in the registrations submitted by
the examining attorney.
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the products and services
it identifies. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1009 (Fed. Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the goods and

6 Examining Attorney’s Brief, unnumbered pages 3-4.
Serial No. 79071083
4
services for which registration is sought and the context
in which the term is used, not in the abstract or on the
basis of guesswork. In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66
USPQ2d 1222, 1224 (TTAB 2002). In other words, the
question is not whether someone presented only with the
mark could guess the products listed in the description of
goods. Rather, the question is whether someone who knows
what the products are will understand the mark to convey
information about them. In re Tower Tech, Inc., 64 USPQ2d
1314, 1316-1317 (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).
When two or more merely descriptive terms are
combined, the determination of whether the composite mark
also has a merely descriptive significance turns on the
question of 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

7 December 15, 2010 Office Action and the December 8, 2009 Office
Action.
Serial No. 79071083
5
composite that is itself merely descriptive. See In re
Tower Tech, Inc., 64 USPQ2d 1314 (SMARTTOWER merely
descriptive of commercial and industrial cooking towers);
In re Sun Microsystems Inc., 59 USPQ 1084 (TTAB 2001)
(AGENTBEANS merely descriptive of computer programs for use
in developing and deploying application programs); In re
Putnam Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD &
BEVERAGE ONLINE merely descriptive of new information
services in the food processing industry). In this regard,
we must consider the issue of descriptiveness by looking at
the mark in its entirety. Common words may be descriptive
when standing alone, but when used together in a composite
mark, they may become a valid trademark. See Concurrent
Technologies Inc. v. Concurrent Technologies Corp., 12
USPQ2d 1054, 1057 (TTAB 1989).
Finally, 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).
Serial No. 79071083
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We start our analysis of the registrability of KAMPO
BOUTIQUE by inquiring whether that term describes a
characteristic, quality, function or purpose of tea
products used in accordance with kampo practices, not
whether we can guess what the products are or the purpose
of the products just by looking at the mark.
The term KAMPO BOUTIQUE immediately describes a store
that sells KAMPO based products or products, including tea,
used in accordance with kampo practices. Applicant argues
that “‘[b]outique” is not a word that immediately or
directly (or even indirectly) describes any significant
characteristic relating to the goods -- tea or tea-based
beverages.”8 However, in a case with similar facts, the
Board held that the mark THE PHONE COMPANY for telephones
is merely descriptive because a mark that identifies a type
of commercial establishment from which particular goods
come is merely descriptive of those goods. In re Phone
Co., Inc., 218 USPQ 1027, 1028 (TTAB 1983).
The term “THE PHONE COMPANY” seems to
us to inform purchasers directly and
immediately that the items of telephone
equipment bearing those words emanate
from a company specializing in such
equipment. The term would, thus,
equally describe equipment emanating
from one of applicant’s competitors.

8 Applicant’s Brief, pp. 5 and 8.
Serial No. 79071083
7
In re Phone Co., Inc., 218 USPQ at 1028. See also In re
Paint Products Co., 8 USPQ2d 1863, 1866 (TTAB 1988)
(because the mark PAINT PRODUCTS CO. for paints describes
the goods of any company selling such products, the mark is
merely descriptive); In re Martin’s Famous Pastry Shoppe,
Inc., 221 USPQ 364, 367 (TTAB 1984), aff’d on other
grounds, 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984)
(requirement to disclaim the exclusive right to register
the term PASTRY SHOPPE in the mark MARTIN’S FAMOUS PASTRY
SHOPPE and design for baked goods was affirmed because “it
conveys a clear and immediate impression of the character
of applicant’s goods as products likely to emanate from a
pastry shop”).9
Applicant also contends that consumers will dissect
the mark into its component parts and that they will engage
in a multistage reasoning process to make a connection
between Japanese Kampo practices, tea, a specialty store
selling tea and the mark KAMPO BOUTIQUE.10 We do not agree.
First, consumers will not engage in the mental process of

9 The cases relied on by applicant, Holiday Inns, Inc. v.
Monolith Enterprises, 212 USPQ 949 (TTAB 1981) (AN AMERICAN CAFÉ
for restaurant services), In re Hutchinson Technology, Inc., 852
F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988) (HUTCHISON TECHNLOGY for
electronic equipment), and In re TMS Corp. of the Americas, 200
USPQ 57 (TTAB 1978) (THE MONEY SERVICE for a financial service)
are not helpful precedents because they do not present analogous
factual situations.
10 Applicant’s Brief, p. 8.
Serial No. 79071083
8
parsing KAMPO BOUTIQUE into its component parts, but will
regard it as a unitary term. Thus, the relevant consumer
is going to perceive KAMPO BOUTIQUE as meaning a store that
sells Kampo related products.
Second, as indicated above, the test is whether the
mark conveys information about the goods, not whether
someone can guess what the goods are from the mark. In
other words, the issue is whether KAMPO BOUTIQUE conveys
information about tea used in accordance with Kampo
practices. As previously noted above, a mark that
identifies a type of commercial establishment from which
particular goods come is merely descriptive of those goods,
and the mark would equally describe tea emanating from one
of applicant’s competitors. Thus, we find that the mark
KAMPO BOUTIQUE directly informs consumers that the tea
identified by the mark is to be used in connection with
kampo practices.
Finally, applicant argues that competitors do not need
to use the term KAMPO BOUTIQUE as evidenced by the fact
that there is no evidence of use by others of the term.
However, there is no requirement that the examining
attorney prove actual competitor use or need; it is well
established that the even if applicant is the only user of
a term, this does not justify registration, where as here,
Serial No. 79071083
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the only significance conveyed by the term is merely
descriptive. See In re Carlson, 91 USPQ2d 1198, 1203 (TTAB
2009); In re BetaBatt Inc., 89 USPQ 1152, 1156 (TTAB 2008);
In re Sun Microsystems Inc., 59 USPQ2d at 1087.
In view of the foregoing, we find that the mark KAMPO
BOUTIQUE, when used in connection with tea, immediately
informs the purchaser, without the need for a multistep
reasoning process, conjecture or speculation, that the
subject tea is for use in accordance with Kampo practices
and, therefore, it is merely descriptive.
Decision: The refusal to register is affirmed.