The Brita Products Co.

Trademark Trial and Appeal Board

Aug 26, 1999

No. 75061885 (T.T.A.B. Aug. 26, 1999)

Paper No. 18
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 26, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Brita Products Company
________
Serial No. 75/061,885
_______
Joel J. Hayashida of The Clorox Company for The Brita
Products Company.
Nancy Clarke, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Hanak, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
The Brita Products Company has filed an application to
register the mark MAKES TAP WATER TASTE GREAT for “portable
water dispensers”.1
Registration has been refused under Section 2(e)(1) of
the Trademark Act on the basis that, when used on

1 Application Serial No. 75/061,885, filed February 20, 1996.
The claimed date of first use is October 1994.
Ser. No. 75/061885
2
applicant’s goods, the mark is merely descriptive of them.
The Examining Attorney also found that applicant’s
alternative claim of distinctiveness under Section 2(f) is
insufficiently supported.
Applicant has appealed.2 Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
The issues before the Board are (1) whether
applicant’s mark MAKES TAP WATER TASTE GREAT is merely
descriptive when applied to its goods; and (2) if the mark
is merely descriptive, whether applicant has submitted
sufficient evidence of acquired distinctiveness under
Section 2(f) to overcome the refusal to register under
Section 2(e)(1).
Turning first to the question of descriptiveness, it
is the Examining Attorney’s position that applicant’s mark
is a laudatory, informational slogan which directly refers
to and describes a desired purpose or function of the
goods, i.e., applicant’s portable water dispensers improve
the taste of tap water (or any other water); and that

2 Along with its brief, applicant also filed a request for a
remand to the Examining Attorney for consideration of new
evidence. In her brief, the Examining Attorney waived any
objection to the entry of all of the evidence submitted with the
request for remand. The record is clear that the Examining
Attorney considered the involved evidence. The Board has also
considered all of applicant’s additional evidence.
Ser. No. 75/061885
3
applicant’s competitors need to make similar claims
involving their products’ ability to improve the taste of
water.
Applicant, in urging reversal of the refusal, contends
that the mark is inherently distinctive and only suggestive
because applicant’s goods are not restricted to tap water,
but could include use with well water, and because it is
not only the storage of water in applicant’s dispensers
which enhances the quality of the water.3 In support of its
argument that a slogan may be inherently distinctive,
applicant submitted copies of four registrations of slogans
as trademarks.
A mark is unregisterable under Section 2(e)(1) of the
Trademark Act as merely descriptive of the goods on which
it is used if it immediately and forthwith conveys
information about the characteristics, features or
functions of those goods. See In re Omaha National Corp.,
819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); and In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA
1978).

3 The wording “water filtration dispenser” appears on applicant’s
specimens of record.
Ser. No. 75/061885
4
With regard to slogans, the Board stated the following
in the case of In re Wileswood, Inc. 201 USPQ 400 (TTAB
1978):
Our evaluation of the meaning
projected by the two notations
[AMERICA’S BEST POPCORN and AMERICA’S
FAVORITE POPCORN] must take into
consideration the phrases, the goods in
connection with which they are used,
the context in which the expressions
are used, the significance of the
notations in relation to the goods, and
the likely reaction of average
purchasers to the phrases as they are
encountered in the market. (Citations
omitted.)
In this context, we agree with the Examining Attorney
that this mark immediately and directly refers to the
purpose or function of applicant’s goods, i.e., to make the
water which is placed in applicant’s filtration dispenser
taste better. The public would readily understand that
this slogan is laudatory and merely touts the effectiveness
of the product. See In re Joseph Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987).
The four third-party registrations submitted by
applicant do not convince us otherwise. One registration
issued on the Supplemental Register, and one issued under
Section 2(f). The remaining two third-party slogans are
YOU DESERVE A BREAK TODAY for restaurant services and JUST
Ser. No. 75/061885
5
FOR BABY for household bleach, and are simply not
descriptive or laudatory to the same degree as is
applicant’s slogan MAKES TAP WATER TASTE GREAT for portable
water dispensers.
Accordingly, we find that applicant’s mark is merely
descriptive as applied to applicant’s goods.
Turning now to the merits of applicant’s alternative
position that its mark MAKES TAP WATER TASTE GREAT has
acquired distinctiveness, applicant has the burden of
establishing that its mark has become distinctive. See
Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840
F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988). The
question of acquired distinctiveness is one of fact which
must be determined on the evidence of record. As the Board
stated in the case of Hunter Publishing Co. v. Caulfield
Publishing Ltd., 1 USPQ2d 1996, 1999 (TTAB 1986):
“[e]valuation of the evidence
requires a subjective judgment as to
its sufficiency based on the nature of
the mark and the conditions surrounding
its use. While some terms may never
acquire distinctiveness no matter how
long they have been used, others may
acquire such significance in a
relatively short period of time,
sometimes even less than five years.
See In re Capital Formation Counselors,
Inc., 219 USPQ 916 (TTAB 1983).”
Ser. No. 75/061885
6
See also, Braun Inc. v. Dynamics Corp. of America, 975 F.2d
815, 24 USPQ2d 1121, 1131 (Fed. Cir. 1992).
In support of its alternative claim of acquired
distinctiveness, applicant submitted the declarations of
Alexis P. Limberakis and Steven Chan, both Brand Managers
for applicant, and both responsible for marketing,
promoting and advertising applicant’s water dispenser and
filter products; several photographs of sample packaging
showing the mark displayed separate from other indicia on
the package; an advertisement from the December 1993
McCall’s magazine (which is prior to applicant’s claimed
date of first use of October 1994) showing use by applicant
of the mark MAKES TAP WATER TASTE GREAT; and copies of
three point-of-purchase displays sent to retailers and
believed by applicant’s attorney to be in use by the
retailers.
One example of applicant’s packaging and one of
applicant’s point-of-sale displays are reproduced below (in
reduced form):
Packaging Point-of-Sale Display
Ser. No. 75/061885
7
Both of the declarants aver that applicant has had
substantially exclusive and continuous use of the mark for
three (Limberakis) to four years (Chan); that the slogan
has been a “key aspect” of applicant’s advertising,
promotion and marketing of this product as evidenced by its
appearance on a separate colored band at the top and/or
bottom of each package, and the use of a TM symbol; that
for at least the last two fiscal years 1996 and 1997 sales
to retailers have exceeded one million units; that
applicant has experienced at least 10% growth for each
fiscal year; and that in 1997 applicant attained a market
share of 60% for this product category. In addition, Mr.
Chan avers that starting in fiscal year 1994 advertising
expenditures (e.g., television and print ads) were about $5
million and have increased “at least 50% each succeeding
fiscal year”; and that promotional expenditures (e.g.,
coupons, point-of-sale and free-standing inserts) were
about $1 million and have also increased “at least 50% each
succeeding fiscal year.”
Applicant acknowledges that while the promotional
brochure it submitted with the Chan declaration shows
applicant’s use of the slogan as a trademark, it also
includes a descriptive use of the slogan, i.e., in a
bulleted list of the principal benefits of the product.
Ser. No. 75/061885
8
However, applicant, citing the case of In re First Union
National Bank, 223 USPQ 278 (TTAB 1984), contends that one
such use by applicant should not preclude registration when
applicant otherwise uses the slogan in a nondescriptive
prominent trademark manner.
The Examining Attorney rejected applicant’s evidence
of acquired distinctiveness because applicant’s length of
use has been relatively short; its sales figures alone do
not show the impact on the purchasing public of the
significance of the slogan as an indication of source; and
its advertising figures do not prove that the advertising
promotes not only the product, but also the slogan as an
indication of source of the product. Moreover, applicant
provided no direct evidence, such as consumer surveys or
purchaser testimony,4 of acquired distinctiveness.
An applicant may submit any appropriate evidence
tending to show that the mark distinguishes applicant’s
goods. The absence of consumer surveys or affidavits of
consumer recognition does not preclude a finding of
acquired distinctiveness. See the Yamaha International
case, supra at 1010. That is, acquired distinctiveness may

4 We note that if applicant had submitted form consumer
affidavits, they may been criticized or given little weight due
to the nature of form affidavits.
Ser. No. 75/061885
9
be proven by direct or circumstantial evidence tending to
prove that the relevant purchasers associate the mark with
the applicant. See 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §§15:30, 15:61, 15:66
and 15:70 (4th ed. 1999). As the Court of Appeals for the
Federal Circuit cautioned in the case of West Florida
Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 3l
USPQ2d 1660 (Fed. Cir. 1994), individual pieces of evidence
must be taken together, so that the body of evidence is
viewed as a whole.
Having reviewed the totality of the evidence submitted
by applicant, we find it to be sufficient to establish
acquired distinctiveness. Applicant’s brand managers
averred that applicant has made substantially exclusive and
continuous use of the mark for approximately four years
since October 1994, and applicant submitted an
advertisement showing use of the mark in a December 1993
publication of general circulation. Clearly, applicant’s
volume of sales in product units, and its sales and
advertising figures are quite large; and applicant’s market
share for sales of this product at 60% is very significant.
Even though applicant has not presented specifics regarding
what portion of the advertising and promotion figures
relate to promoting applicant’s slogan MAKES TAP WATER
Ser. No. 75/061885
10
TASTE GREAT, rather than applicant’s mark BRITA, it is
clear that the slogan is highly visible and is promoted to
the purchasing public. This goes beyond a showing of the
mere popularity or business success of applicant’s product.
That is, here the overall evidence of acquired
distinctiveness including applicant’s large sales volume
and advertising figures, applicant’s significant market
share for this product, applicant’s continuous and
substantially exclusive use of the mark for about four
years, and applicant’s manner of use of the mark on its
packaging and point-of-purchase displays, are sufficient to
establish that applicant’s mark has acquired
distinctiveness.5
Decision: The initial refusal to register the mark
under Section 2(e)(1) was appropriate because the mark is
merely descriptive of applicant’s goods. However, the
evidence submitted by applicant establishes acquired
distinctiveness. Accordingly, the refusal to register is
reversed, and the application will proceed to publication

5 While it is not dispositive of our decision on this case, we
note that the Examining Attorney stated the following in his
final Office action dated October 7, 1997 (p. 3): “These
[advertising and promotional] figures are acknowledged to be
quite substantial, and, had the applicant’s advertising promoted
the slogan in question as a mark, would be sufficient to support
the applicant’s claim of acquired distinctiveness.”
Ser. No. 75/061885
11
with a notation of applicant’s claim of acquired
distinctiveness under Section 2(f).
E. W. Hanak
B. A. Chapman
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board