Shiseido Co., Ltd.

Trademark Trial and Appeal Board

Aug 17, 2001

No. 75980951 (T.T.A.B. Aug. 17, 2001)

08/17/01 Paper No. 15
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Shiseido Company, Ltd.
________

Serial No. 75/980,951
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Howard N. Aronson of Lackenbach Siegel for Shiseido
Company, Ltd.

Laura Gorman Kovalsky, Trademark Examining Attorney, Law
Office 110 (Chris A. F. Pedersen, Managing Attorney).
_______

Before Cissel, Hairston and Chapman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
On January 6, 1999, Shiseido Company, Ltd. filed an
application, based on Section 1(b) of the Trademark Act, 15
U.S.C. §1051(b), to register the mark SUCCESSFUL AGING on
the Principal Register for the following services, as
amended:
“educational services, namely,
seminars, practical training in the
form of educational demonstrations,
academies, colloquiums, symposiums, and
conferences all in the field of health,
beauty, personal care and nutrition;
education in the field of health,
beauty, personal care and nutrition
rendered through correspondence
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/980951
2
courses; organizing exhibitions in the
field of health, beauty, personal care
and nutrition; arranging and conducting
athletic competitions; and teaching in
the field of health, beauty, personal
care and nutrition” in International
Class 41; and

“beauty salons, hairdressing salons,
providing fashion information, health
care, physical therapy, cosmetics
research and food nutrition
consultations” in International Class
42.1

The Examining Attorney refused registration on the
ground that the term SUCCESSFUL AGING, when used in
connection with the identified services, is merely
descriptive of the services under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1).
When the refusal was made final, applicant appealed to
this Board. Both applicant and the Examining Attorney have
filed briefs, but an oral hearing was not requested.
Preliminarily, we will address evidentiary matters.
First, the Examining Attorney requested in her brief that
the Board take judicial notice of the dictionary
definitions of “successful” and “aging” which she attached

1 The original application also included various soaps, perfumes,
cosmetics, and skin care and body care products in International
Class 3. Upon applicant’s request that the Class 3 goods be
divided out, the Office created a divisional application.
Applicant’s Class 3 goods remain in the parent application Serial
No. 75/616,106, which the Examining Attorney has approved for
publication.
Ser. No. 75/980951
3
thereto. The request is granted. See TBMP §712.01, and
the rules and cases cited therein.
Second, applicant attached to its brief photocopies of
(i) dictionary definitions, and (ii) several third-party
registrations, the latter of which were objected to by the
Examining Attorney as untimely filed. The Board takes
judicial notice of the dictionary definitions. However,
the third-party registrations are untimely. See Trademark
Rule 2.142(d) and TBMP §1207. Applicant’s request for a
suspension and remand for consideration of the third-party
registrations was denied by the Board. Applicant’s reply
brief included a second request for a remand, which was
also denied by the Board. For clarity of the record, the
Board notes that we have not considered applicant’s
untimely submissions of third-party registrations.
The Examining Attorney contends that the term
SUCCESSFUL AGING “is descriptive of ways to enhance
longevity, well being and quality of life for the elderly
through health, nutrition, keeping active and maintaining a
positive outlook on life,” and thus, applicant’s mark is
“descriptive of educational and health related counseling
services in which the subject matter of the services
pertains to ‘successful aging.’” (Final Office action, p.
2.) Specifically, the Examining Attorney contends that the
Ser. No. 75/980951
4
term SUCCESSFUL AGING is merely descriptive of these
services as it is the featured subject matter of the
services, or it is a major purpose of the services, or it
is the result intended to be attained through the services.
(Brief, p. 4.)
Applicant contends that the term “SUCCESSFUL AGING”
includes a multitude of facets and connotations,(e.g.,
longer life, happier life, healthy old age, simply reaching
old age) with no specific one being predominant to the
ordinary consumer; that the consumer must use a multi-stage
reasoning process to conclude that applicant’s services
lead to “successful aging”; that the words are an
incongruous coupling of a positive word with a negative
word; that there is nothing about the mark taken as a whole
which would enable potential purchasers to immediately
understand the precise nature of applicant’s services; and
that the mark is at most, suggestive, not merely
descriptive, of applicant’s services.
It is well settled that “a term is descriptive if it
forthwith conveys an immediate idea of the ingredients,
qualities or characteristics of the goods [or services].”
(Emphasis added). In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978). Moreover, the
immediate idea must be conveyed with a “degree of
Ser. No. 75/980951
5
particularity.” In re TMS Corporation of the Americas, 200
USPQ 57, 59 (TTAB 1978). See also, In re Entenmann’s Inc.,
15 USPQ2d 1750, 1751 (TTAB 1990), aff’d, unpub’d, Fed. Cir.
February 13, 1991. As the Court stated in In re Abcor
Development, supra: “Although a mark may be generally
descriptive, if it also functions as an indication of
origin, it is not ‘merely descriptive.’” See also, In re
Quik-Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ2d 505
(CCPA 1980).
Further, it is well-established that the determination
of mere descriptiveness must be made not in the abstract or
on the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the term or phrase is being used or is intended to be
used on or in connection with those goods or services, and
the impact that it is likely to make on the average
purchaser of such goods or services. See In re Pennzoil
Products Co., 20 USPQ2d 1753 (TTAB 1991).
Viewing this record in its entirety, we find that the
Examining Attorney has not established a prima facie
showing that the mark SUCCESSFUL AGING is merely
descriptive of applicant’s various identified services,
such as, educational services, conducting athletic
competitions, beauty salon services, hairdressing salon
Ser. No. 75/980951
6
services, and food nutrition consultations. The excerpted
stories retrieved from the Nexis database and submitted by
the Examining Attorney2 show the words have several
different connotations, such as the following:
(1) “Successful aging means being a
futurist (taking a long-view) and
being flexible,” The Futurist, May
1, 1999;

(2) “...She also admits she’s quite
happy. That’s because she’s
learned the first rule of
successful aging -- stay busy,”
Chicago Tribune, February 13,
2000; and

(3) “...keeping socially active, not
just active, is the key to
successful aging, according to a
finding released in a recent issue
of The Journal of Applied
Genealogy,” The Fort Worth Star-
Telegram, December 6, 1999.

Thus, in connection with applicant’s services, the mark
does not readily and immediately evoke an impression and an
understanding of the specific nature of applicant’s various

2 Several of the approximately 25 excerpted stories were from
wire services or foreign publications. Wire service articles are
of limited probative value in assessing the reaction of the
public to the term applicant seeks to register because evidence
from a proprietary news service is not presumed to have
circulated among the general public. With regard to foreign
publications, they are of little probative value because it
cannot be assumed that foreign uses had any material impact on
the perceptions of the public in the United States. See In re
Manco Inc., 24 USPQ2d 1938 (TTAB 1992).
Finally, a few of the excerpted stories were of such limited
scope that it is difficult to draw any conclusions therefrom.
Ser. No. 75/980951
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identified services. See In re Intelligent Medical Systems
Inc., 5 USPQ2d 1674 (TTAB 1987); In re TMS Corporation of
America, 200 USPQ 57 (TTAB 1978); and In re Silva Mind
Control International, Inc., 173 USPQ 564 (TTAB 1972).
Moreover, the mark SUCCESSFUL AGING is somewhat
incongruous with “aging” (i.e., the concept of growing
older) having a slightly negative connotation, while
“successful” has a clearly positive connotation.
Applicant’s mark is the juxtaposition of two common words,
which is creative, and has not been shown to be merely
descriptive. See In re Shutts, 217 USPQ 363 (TTAB 1983).
On this record, we conclude that the mark SUCCESSFUL
AGING, when considered in connection with the services set
forth in the application, requires a degree of perception
and a multi-stage thought process to determine the nature
of any particular characteristics or features of
applicant’s services.
Decision: The refusal to register under Section
2(e)(1) is reversed.