Southeastern Dermatology, PA

Trademark Trial and Appeal Board

Jul 8, 2013

No. 85543229 (T.T.A.B. Jul. 8, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
July 8, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Southeastern Dermatology, PA
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Serial No. 85543229
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Matthew H. Swyers of The Trademark Company for Southeastern Dermatology,
PA.

Sung In, Trademark Examining Attorney, Law Office 103 (Michael Hamilton,
Managing Attorney).
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Before Zervas, Shaw, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On February 15, 2012, applicant Southeastern Dermatology, PA applied to
register the mark RESTORE LIFT, in standard character form, for “cosmetic and
plastic surgery, namely, a minimally invasive face/neck lift done under local
anesthesia,” in International Class 44.1 The application included a voluntary
disclaimer of the exclusive right to use the word “LIFT” apart from the mark as a
whole.

1 Application Serial No. 85543229, alleging first use and first use in commerce at least as
early as 2010, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
Serial No. 85543229
2

The examining attorney has refused registration on the ground that the
applied-for mark is merely descriptive of applicant’s services pursuant to
Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1).
Applicant timely appealed, and briefing is complete.
Analysis
A mark is merely descriptive within the meaning of Section 2(e)(1) if it
immediately conveys knowledge of an ingredient, quality, characteristic, function,
feature, purpose, or use of the goods with which it is used. See, e.g., In re Chamber
of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a
particular mark is merely descriptive must be determined not in the abstract, but in
relation to the goods or services for which registration is sought, the context in
which the mark is used, and the possible significance that the mark is likely to have
to the average purchaser encountering the goods or services in the marketplace.
See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103
USPQ2d 1753, 1755 (Fed. Cir. 2012); In re Abcor Dev. Corp., 588 F.2d 811, 200
USPQ 215, 218 (CCPA 1978); In re Eng’g Sys. Corp., 2 USPQ2d 1075, 1076
(TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
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
Serial No. 85543229
3

composite that is itself merely descriptive. See, e.g., In re Oppedahl & Larson LLP,
373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004) (PATENTS.COM merely
descriptive of computer software for managing a database of records that could
include patents for tracking the status of the records by means of the Internet); In
re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (URBANHOUZING merely
descriptive of real estate brokerage, consultation, and listing services); In re Tower
Tech, Inc., 64 USPQ2d 1314, 1318 (TTAB 2002) (SMARTTOWER merely descriptive
of commercial and industrial cooling towers); In re Putman Publ’g Co., 39 USPQ2d
2021, 2022 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of
online news and information service for the food processing industry). However, a
mark comprising a combination of merely descriptive components is registrable if
the combination of terms creates a unitary mark with a unique, nondescriptive
meaning, or if the composite has a bizarre or incongruous meaning as applied to the
goods or services. In other words, we must consider the issue of descriptiveness by
looking at the mark in its entirety.
Applicant has conceded the common, descriptive nature of the term “LIFT” by
disclaiming exclusive rights in that term apart from the mark as a whole. In re
J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987). The examining attorney
has made of record dictionary definitions of “restore,” including “[t]o bring back to
an original condition.”2 Thus, as stated by the examining attorney: “The term

2 May 31, 2012 Office action at 3; see also id. at 4 (defining “restore” as “to return
(something, esp a work of art or building) to an original or former condition”). Applicant
also made of record a printout from Thesaurus.com displaying definitions of restore
including “fix, make new.” September 4, 2012 response to Office action at 14.
Serial No. 85543229
4

RESTORE refers to the function of the services, i.e., to return the appearance and
condition of the face and neck area to their original or former state through the
services. The term LIFT refers to the name of the medical procedure of the services,
i.e., a face and neck lift.”3 Considering the applied-for mark as a whole in relation
to “cosmetic and plastic surgery, namely, a minimally invasive face/neck lift done
under local anesthesia,” it is plain that RESTORE LIFT immediately conveys
information to consumers about applicant’s services. Moreover, the two component
terms retain their descriptive significance in relation to applicant’s services,
evoking no new or unique commercial impression in combination. Cf. In re Colonial
Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE held not
merely descriptive of bakery products).
We also note that the examining attorney made of record screenshots of
websites using the terms “restore” and “lift” in association with cosmetic surgery
and similar services, including the following description of “The Perlane Procedure”:
“Perlane is a non-surgical treatment for deep or severe facial lines and folds.
During the procedure, Dr. Stover will inject Perlane deep under the skin to restore
lift and volume to severely sagging areas of the skin.”4 (emphasis added). Where
there is evidence that the composite mark itself has been used together to form a
phrase that is descriptive of the goods or services, it is unnecessary to engage in an
analysis of each individual component. In re Shiva Corp., 48 USPQ2d 1957, 1958

3 Examiner’s Brief at unnumbered page 6.
4 September 26, 2012 final Office action at 5. See also id. at 4, 8 and May 31, 2012 Office
action at 7-12.
Serial No. 85543229
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(TTAB 1998) (holding TARIFF MANAGEMENT merely descriptive of computer
hardware and computer programs to control, reduce, and render more efficient wide
area network usage).
In the first of its two main arguments, applicant contends that RESTORE
LIFT is suggestive of applicant’s services because there is no “instantaneous
connection” between the mark and cosmetic procedures.5 Instead, the entire mark
conjures up other possible ideas. While the term,
“RESTORE” speaks for itself, having a definition of “To
bring back to an original condition”, the terms together
“RESTORE LIFT” does not immediately direct the
consumer to a cosmetic procedure. For instance, a
“RESTORE LIFT” can also reference repairing a
foundation of a building. Thus, even if a consumer
utilized their imagination, they would still not know
immediately what types of goods or services are provided
and what its functions are.6
This argument approaches a concession that the term “RESTORE” is merely
descriptive in association with its services. More importantly, the argument does
not address the proper descriptiveness analysis. It is settled that “[t]he question is
not whether someone presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who knows what the goods
or services are will understand the mark to convey information about them.” In re
Tower Tech, Inc., 64 USPQ2d at 1316-17.
Applicant’s second chief argument is that other registrations have issued on
the Principal Register for marks incorporating the terms RESTORE and LIFT in

5 Appeal Brief at 5.
6 Appeal Brief at 6.
Serial No. 85543229
6

connection with similar services, and therefore “it would be inconsistent for the
Office to assert that Applicant’s mark is merely descriptive of Applicant’s services.”7
Given applicant’s voluntary disclaimer of the term “LIFT,” a concession that the
term is merely descriptive in association with the identified services, we focus on
the four registrations submitted by applicant incorporating the term “RESTORE”
for Class 44 services:8
Mark Reg. No. Disclaimer Services

3303502 “a medical
day spa”
Health spa services,
namely medical cosmetic
body care services
RESTORE A MEDICAL
DAY SPA
3439933 “a medical
day spa”
Health spa services,
namely medical cosmetic
body care services
RESTORE VISION
CENTERS
3040052 “vision
centers”
Laser vision correction
surgery services
RENEW YOUR SKIN.
RESTORE YOUR SMILE.
3368785 none Dentistry and cosmetic dentistry, facial treatment
services and laser hair
removal services

The examining attorney argues that the registrations cited by applicant are
distinguishable, in that they identify different services and/or incorporate non-
descriptive elements.9

7 Appeal Brief at 9.
8 Applicant also submitted a registration for , with “lip” disclaimed, for
“cosmetics, namely lip cream” in International Class 3 (Registration No. 1508775).
9 Examiner’s brief at unnumbered p. 10.
Serial No. 85543229
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We do not view these registrations as establishing a practice on the part of
the Office to treat the term “RESTORE” as suggestive, particularly given that none
of the registrations is for the same services as applicant’s. Prior decisions in other
applications are not binding on the Board, furthermore, and each case must stand
on its own merits. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001); In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB
1977).
We have carefully considered applicant’s arguments and evidence, even if not
specifically discussed herein, but have not found them persuasive. Viewing
applicant’s mark as a whole, we find that consumers who know that applicant’s
services are “cosmetic and plastic surgery, namely, a minimally invasive face/neck
lift done under local anesthesia” will understand RESTORE LIFT to convey
information about them; that is, that the services are a face/neck lift the function of
which is to restore the appearance of those body parts to their original or former
condition. We therefore find that applicant’s mark is merely descriptive within the
meaning of Section 2(e)(1) in association with applicant’s goods.
Decision: The examining attorney’s refusal to register applicant’s mark
under Section 2(e)(1) of the Trademark Act is affirmed.