Southeastern Dermatology, PA

Trademark Trial and Appeal Board

Jun 12, 2015

No. 86187977 (T.T.A.B. Jun. 12, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 12, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Southeastern Dermatology, PA
_____

Serial No. 86187977
_____

Matthew H. Swyers of The Trademark Company,
for Southeastern Dermatology, PA.
James T. Griffin, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
_____

Before Taylor, Ritchie and Adlin,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Southeastern Dermatology, PA. (“Applicant”) seeks registration on the Principal
Register of the mark RESTORE PEEL (in standard characters) for
Cosmetic procedure services, namely, removing of bumps,
spots, growths and skin imperfections by means of
chemical peels, electrosurgery, cryosurgery, shaving
surgery and laser surgery in International Class 44.1
The word PEEL was disclaimed voluntarily in the original application.

1 Application Serial No. 86187977 was filed on February 7, 2014, based upon Applicant’s
allegation of first use of the mark anywhere and in commerce as of 2011.
Serial No. 86187977
- 2 -

The Trademark Examining Attorney has finally refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that
RESTORE PEEL is merely descriptive of the identified services.
Applicant appealed to this Board, and both Applicant and the Examining
Attorney filed briefs. We affirm.
I. Initial Matters
Evidentiary Objections
We note preliminarily that the Examining Attorney has requested that the
Board disregard the list of RESTORE-formative registrations, submitted both with
Applicant’s August 4, 2014 Office Action Response and again with its appeal brief.
As the Examining Attorney correctly advised Applicant in the final Office Action, a
mere submission of a list of registrations does not make them of record. In re Promo
Ink, 78 USPQ2d 1301, 1304 (TTAB 2006). Because Applicant was advised of the
procedural deficiency and did not make the registrations properly of record, the list
will not be further considered. Even if we had considered the registrations, our
decision would be the same. Indeed, in determining the issue of descriptiveness,
prior registrations are of little value because each case must be determined on its
own facts. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001)
(“Even if some prior registrations had some characteristics similar to Nett Designs’
application, the PTO’s allowance of such prior registrations does not bind the Board
or this court”).
Preclusive Effect of Application Serial No. 85543229
Serial No. 86187977
- 3 -

The Examining Attorney argues that the issue of descriptiveness of the term
RESTORE with regard to cosmetic surgery services has already been decided by the
Board, when the Board upheld the Section 2(e)(1) refusal of registration in
application Serial No. 85543229 of Applicant’s mark RESTORE LIFT for “Cosmetic
and plastic surgery, namely, a minimally invasive face/neck lift done under local
anesthesia.” We point out, however, that no preclusive effect attached to the prior
proceeding as it concerns this matter, because both marks include the term
RESTORE, they are otherwise different, albeit the differing matter in each is
descriptive, if not generic, the services are different, and they have been or are
being decided on different records. Our task in this case is to determine, on the
record before us, whether Applicant’s RESTORE PEEL mark is registrable for use
in connection with removing of bumps, spots, growths and skin imperfections by
means of chemical peels, electrosurgery, cryosurgery, shaving surgery and laser
surgery.
II. Analysis
Turning then to the merits of this appeal, the test for determining whether a
mark is merely descriptive is whether it immediately conveys information
concerning a significant quality, characteristic, function, ingredient, attribute or
feature of the product or service in connection with which it is used, or intended to
be used. See, e.g., In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012) (internal citations omitted). See also In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004),
Serial No. 86187977
- 4 -

quoting, Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920) (“A
mark is merely descriptive if it ‘consist[s] merely of words descriptive of the
qualities, ingredients or characteristics of the goods or services related to the
mark.”). It is not necessary, in order to find a mark merely descriptive, that the
mark describe each feature of the goods or services, it need only describe a single,
significant ingredient, quality, characteristic, function, feature, purpose or use of
the goods or services. Id.; In re Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009, 1010
(Fed. Cir. 1987).
Where a mark consists of multiple words, the mere combination of descriptive
words does not necessarily create a nondescriptive word or phrase. In re Phoseon
Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); In re Associated Theatre Clubs Co.,
9 USPQ2d 1660, 1662 (TTAB 1988). A mark comprising a combination of merely
descriptive components is registrable only 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. See In re
Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968); In re Shutts, 217
USPQ 363 (TTAB 1983). However, if each component retains its merely descriptive
significance in relation to the goods, the combination results in a composite that is
itself merely descriptive. Oppedahl & Larson LLP, 71 USPQ2d at 1371.
The Examining Attorney points to Applicant’s concession, as evidenced by its
voluntary disclaimer of “PEEL,” that “PEEL” is descriptive of medical services that
Serial No. 86187977
- 5 -

include chemical peels.2 In re J.M. Originals, Inc., 6 USPQ2d 391, 1394 (TTAB
1987). Applicant also effectively concedes the descriptiveness of PEEL by including
the word in its identification of services. The Examining Attorney also has made of
record definitions of the word “restore” including, in relevant part, “[t]o bring back
to an original condition”3 and “to return (something, esp a work of art or building) to
an original or former condition.” Examining Attorney’s Br. unnumbered p. 4.4 Thus,
we agree with the Examining Attorney that the designation RESTORE “is merely
descriptive of cosmetic procedures that return skin to its original condition.” The
Examining Attorney additionally made of record copies of web pages showing that
third parties offer chemical peels to restore the skin. These submissions show
descriptive use of the terms “restore” and “peel” in reference to the referenced
services. For example, in an article from Dr. Glynn Bolitho headlined “Chemical
peels help restore the skin,” Dr. Bolitho states that “[a] series of chemical peels,
which may range from three to six sessions, have the ability to renew skin.”5
Similarly, on the website of Dr. Eugenie Brunner, Dr. Bruner encourages customers
to “[r]estore your face with a chemical peel” and further explains that “[c]hemical
peels offer one way to restore you skin to its former glory” and that they “are
considered an effective way to restore your skin and reduce noticeable signs of

2 6 TTABVUE 4.
3 https://education.yahoo.com/refernce/dictionary/entry/restore; attachment to Office
Action dated May 23, 2014.
4 6 TTABVUE 5.
5 http://bolithomd.hubpages.com/hub.Chemical-peels-help-restore-skin, attachment to the
Office Action issued May 23, 2014.
Serial No. 86187977
- 6 -

aging.”6 On the website of Straub Plastic Surgery, the “Chemical Peel” page
indicates that the procedure’s purpose is “to restore your skin.”7
Based upon this evidence, it is clear that the wording “RESTORE PEEL,” as a
whole, immediately describes the purpose of Applicant’s cosmetic chemical peels,
namely, to “restore” the skin to its original condition by using a “peel” to remove
bumps, spots, growths and skin imperfections.8 There is nothing in the combination
of terms which is incongruous, nor is there anything which would require the
gathering of further information, in order for the merely descriptive significance
thereof to be readily apparent to prospective purchasers of the goods. See, for
example, In re Abcor Development Corp., Inc., 588 F.2d 811, 200 USPQ 215 (CCPA)
(Rich, J., concurring) [GASBADGE described as a shortening of the name “gas
monitoring badge”]; and Cummins Engine Co., Inc. v. Continental Motors Corp., 359
F.2d 892, 149 USPQ 559 (CCPA 1966) [TURBODIESEL held generically descriptive
of engines having exhaust driven turbine super-chargers].

6 http://www.brunnermd.com/skin-treatment/restore-your-face-with-a-chemical-peel/,
attachment to the Office Action issued May 23, 2014.
7 www.straubplasticsurgery.org/skin_hair/chemical_peel.html, attachment to the Final
Office Action issued September 3, 2014.
8 Although Applicant’s identification includes additional cosmetic procedure services, if a
proposed mark is held descriptive for any of services identified in a class of an involved
application, registration is properly refused. See In re Sterotaxis Inc., 429 F.3d 1039, 77
USPQ2d 1087, 1089 (Fed, Cir. 2005), quoting, Application of Richardson Ink Co., 511 F.2d
559, 185 USPQ 46, 48 (CCPQ 1975) (“Our predecessor court … has stated that ‘registration
should be refused if the mark is descriptive of any of the goods [or services] for which
registration is sought’”); In re Analog Devices, Inc., 6 USPQ2d 1808, 1810 (TTAB 1988),
aff’d, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (unpublished) (registration is
properly refused if the subject matter for registration is generic of any one of the goods [or
services] for which registration is sought); In re Quick-Print Copy Shop, Inc., 205 USPQ
505, 507. Accordingly, registration for Applicant’s entire Class 44 services must be refused
and Applicant’s attempt to differentiate its shaving and laser surgery services is
unpersuasive.
Serial No. 86187977
- 7 -

In urging reversal of the refusal, Applicant argues that RESTORE PEEL is
suggestive of the identified services and relies primarily on its contention that
“there is no instantaneous connection between the ‘RESTORE PEEL’ [mark] and
cosmetic procedures.” Applicant asserts in its own words that:
While the term, “RESTORE” speaks for itself, having a
definition of “To bring back to an original condition”, the
terms together “RESTORE PEEL” does [sic] not
immediately direct the consumer to a cosmetic procedure.
For instance, a ‘RESTORE PEEL’ can also reference the
restoration of paint on a wall or car. However, if a
consumer does associate the terms at issue with
cosmetics, it is likely consumers would assume RESTORE
PEEL is a facial mask that consumers can use at home.
Applicant’s Br. pp. 6-7.9 As regards the multiple meanings, the determination of
whether a mark is merely descriptive must be made in relation to the goods or
services for which registration is sought. Chamber of Commerce of the U.S., 102
USPQ2d at 1219. And it is settled “that so long as any one of the meaning of a term
is descriptive, the term may be considered to be merely descriptive.” In re Chopper
Industries, 222 USPQ 258, 259 (TTAB 1984); see also, In re IP Carrier Consulting
Group, 84 USPQ2d 1028, 1034 (TTAB 2007); In re Bright-Crest, 204 USPQ 591, 593
(TTAB 1979).
We note, too, that Applicant’s reliance on prior unrelated cases in support of its
contention that its applied-for mark is not merely descriptive of the identified
services is misplaced. As stated previously, each case must be decided on its own
merits. The determination of registrability of a mark in another case does not

9 4 TTABVUE 7-8.
Serial No. 86187977
- 8 -

control the merits in the case now before us. See In re Nett Designs Inc., 51 USPQ2d
at 1566; see also, In re Kent-Gamebore Corp., 59 USPQ2d 1373 (TTAB 2001); In re
Wilson, 57 USPQ2d 1863 (TTAB 2001). In this case, we must determine the
registrability of RESTORE PEEL based on the record before us.
III. Conclusion
We have carefully considered Applicant’s arguments and evidence, even if not
specifically discussed herein, but have found them unpersuasive. We conclude that
when applied to Applicant’s identified cosmetic procedure services in the nature of a
chemical peel, the designation RESTORE PEEL, as a whole, immediately describes,
without any kind of mental reasoning, the purpose of the identified peels, namely
that they restore skin to its original condition. Accordingly, RESTORE PEEL is
merely descriptive under Section 2(e)(1) of the Act.
Decision: The refusal to register RESTORE PEEL is affirmed.