Tri-Coastal Design Group, Inc.

Trademark Trial and Appeal Board

Apr 25, 2013

No. 85300716 (T.T.A.B. Apr. 25, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 25, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Tri-Coastal Design Group, Inc.
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Serial No. 85300716
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Tedd S. Levine for Tri-Coastal Design Group, Inc.

James W. Stein, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop,
Managing Attorney).
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Before Quinn, Greenbaum and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Tri-Coastal Design Group, Inc. has applied to register on the Principal
Register the mark TOASTED COCONUT in standard character form for the
following goods:
Bath gel; Bath salts; Bath soaps; Body cream; Body lotion;
Body oil; Body scrub; Body sprays; Bubble bath; Dusting
powder; Foot scrubs; Lip balm; Lip gloss; Liquid soap;
Nail polish; Reeds and scented oils sold as a unit for use
in room scent diffusers, in International Class 3.1

1 Application Serial No. 85300716 filed on April 21, 2011 under Trademark Act Section 1(b),
15 U.S.C. § 1051(b). Applicant has disclaimed the exclusive right to use COCONUT apart
from the mark as shown.
Serial No. 85300716

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The trademark examining attorney refused registration under Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that applicant’s mark
merely describes the goods. When the refusal was made final, applicant filed a
request for reconsideration. Upon reconsideration the examining attorney
maintained his refusal. This appeal ensued. Applicant and the examining attorney
have filed briefs.
“A term is merely descriptive if it immediately conveys knowledge of a
quality, feature, function, or characteristic of the goods or services with which it is
used." 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 or 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). The mark need not describe all of the recited goods and
services in an application in order to be deemed merely descriptive. Rather, a
descriptiveness refusal is proper if the mark is descriptive of any of the goods or
services for which registration is sought. In re Chamber of Commerce of the United
States of America, 675 F.3d 1297, 102 USPQ2d 1217 (Fed. Cir. 2012); In re
Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005). A mark
that, when applied to the goods or services at issue, requires imagination, thought,
or perception to reach a conclusion as to the nature of those goods or services is not
merely descriptive, but suggestive, and is registrable. In re George Weston Ltd., 228
Serial No. 85300716

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USPQ 57 (TTAB 1985); Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d
1330, 1340, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004). The determination that a
mark is merely descriptive is a finding of fact and must be based upon substantial
evidence. In re Bayer Aktiengesellschaft, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007).
Applicant admits in its brief that “COCONUT is clearly a characteristic of the
goods in that the associated bath & body products possess the scent and color of
COCONUT.”2 However, applicant argues that “TOASTED in this context is
suggestive not descriptive,” and that TOASTED is used “in a purely fanciful manner
to give a consumer a feeling of warmth and cozy [sic].”3 The examining attorney
maintains that the proposed mark is merely descriptive of a scent or flavor of
applicant’s goods.
Of particular interest in the present appeal is the Federal Circuit’s opinion in
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). In that case, the
applicant sought to register APPLE PIE as a trademark for “potpourri.” The Board
affirmed the refusal to register under Section 2(e)(1) on the ground that the applied-
for mark was merely descriptive of the scent of the potpourri, that is, the potpourri
was scented to smell like apple pie. Applicant’s catalog showed this scent among
others for its potpourri, including “Gingerbread,” “Spice Cake,” “Cherry Cobbler,”
“Blueberry Muffin,” “Peach Cobbler,” “Strawberry Shortcake,” and “Cinnamon Roll.”
In affirming the Board’s decision, the Federal Circuit relied on a decision of its
predecessor court finding that the term CRÈME DE MENTHE was merely

2 Applicant’s brief at 3.
3 Id. at 3-4.
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descriptive of a flavor for candy. In re Andes Candies Inc., 478 F.2d 1264, 178
USPQ 156 (CCPA 1973). The Federal Circuit also pointed out that a term may be
descriptive even though it merely describes only one of the qualities or properties of
the goods, and that such qualities or properties include “color, odor, function,
dimensions, or ingredients.” In re Gyulay, 3 USPQ2d at 1010, citing Zatarains, Inc.
v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 217 USPQ 988, 994 (5th Cir. 1983).
The Federal Circuit concluded that the term APPLE PIE described the scent of the
goods, especially because potpourri is sold for and by its scent.
The examining attorney introduced evidence, in the form of excerpts of third-
party websites, to show that certain bath and body products and fragrance oils are
promoted as smelling like particular fruits, flowers and foods, such as coconut,
plum, jasmine, mint chocolate and even root beer. Further, the evidence shows that
products such as lip gloss and lip balm commonly are flavored, with evidence of
flavors such as fruit punch, apple, cherry cola, candy, coconut, and even bacon.
The examining attorney requests that we take notice of the definition of
“coconut” as the “fruit of the coconut palm… whose nut contains thick edible meat
and coconut milk” and “the edible meat of the coconut.”4 Applicant asks that we
take notice that “toast” means “to warm thoroughly,” and “to make (as bread) crisp,
hot and brown by heat.”5 Also of record is evidence that is more specific to the mark

4 See definition from , submitted with the examining attorney’s
brief. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du
Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or
have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
5 Definition from . Applicant’s brief at 3.
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at issue. The record includes evidence to show that the scent and flavor of toasted
coconut are known in the marketplace. The web site explains:
How to toast coconut
…
Toasted coconut still has the same basic flavor [of
coconut], but it also has a caramelized nuttiness and a
crisp-chewy texture that raw doesn’t offer. It’s easy to
toast coconut at home….6

The article is followed by comments, including:
I *love* toasted coconut! Everytime I need some for a
recipe, I end up eating a lot of it plain.
…
I just toasted coconut following your instructions last
weekend, and now I can’t stop putting toasted coconut on
top of everything I eat!7

The examining attorney submitted evidence of the following products offered on the
web sites indicated below:
Toasted Coconut Bath Salts 7oz.

Toasted Coconut Cocoabutter Bath Soap.

Toasted Coconut Body and Shampoo Bar.

Toasted Coconut Macaroon Wickless Candle Scent Pod.

½ Ounce Toasted Coconut Flavor Oil. .8

Also in evidence are references to products that are described by consumers as
having the scent of toasted coconut:

6 Submitted with Office action of July 17, 2011.
7 Id.
8 Submitted with Office action of September 19, 2012.
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Honey Coconut Milk Shampoo: “Love the toasted coconut
smell which surprises me because I don’t like scents that
linger like that.”
Spectrum Essential, Organic, Coconut Oil, Unrefined, 15
fl. oz.: “It has this toasted coconut smell, which isn’t
overwhelming since I love coconut.”
Josie Maran Lip Gloss: “It is so moist, the color is very
pretty, and the wonderful toasted coconut taste is divine!
Highly recommend it.” .9
Finally, we note that the record contains substantial evidence indicating the
existence in the market of bath and body products that have the scent of coconut.10
To state the obvious, and as confirmed by the evidence of record, body and
bath products and fragrance oils are often scented and, in the case of lip products,
flavored. These scents and flavors include coconut and toasted coconut. Due to this
industry practice, consumers are accustomed to making their purchasing decision
based on their desire for a particular scent or flavor. The third-party references
described above are an indication that manufacturers and retailers, as well as
ultimate consumers, will view such terms as merely descriptive of the scent or
flavor of a product. We find that to be the case with respect to the applied-for mark
for applicant’s body and bath products, as well as its scented oils; that is, consumers
will view the proposed mark as nothing more than the name of the scent or flavor of
the products, namely, the scent or flavor of toasted coconut.
The combination of the terms TOASTED and COCONUT does not evoke a
new and unique commercial impression for applicant’s applied-for mark. Rather,

9 Id.
10 Id.
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these terms, when combined and interpreted according to their ordinary meanings,
result in an expression that is merely descriptive in relation to applicant’s goods.
No imagination is required by a prospective purchaser or user to discern that
applicant’s various products have a scent or flavor of toasted coconut. Accordingly,
the proposed mark TOASTED COCONUT, when considered as a whole, is merely
descriptive of applicant’s goods.
Decision: The refusal to register is affirmed.