Tri-Coastal Design Group, Inc.

Trademark Trial and Appeal Board

Jul 25, 2013

No. 85302240 (T.T.A.B. Jul. 25, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
July 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. 85302240
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Tedd S. Levine of Law Offices of Tedd S. Levine LLC for Tri-Coastal Design Group,
Inc.

James W. Stein, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop,
Managing Attorney).
_____

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 APPLE BROWN SUGAR 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;
Serial No. 85302240

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Nail polish; Reeds and scented oils sold as a unit for use
in room scent diffusers, in International Class 3.1
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

1 Application Serial No. 85302240 filed on April 22, 2011 under Trademark Act Section 1(b),
15 U.S.C. § 1051(b). Applicant has disclaimed the exclusive right to use APPLE and
BROWN apart from the mark as shown.
Serial No. 85302240

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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. Nautilus Grp., Inc. v. Icon
Health & Fitness, Inc., 372 F.3d 1330, 1340, 71 USPQ2d 1173, 1180 (Fed. Cir.
2004); In re George Weston Ltd., 228 USPQ 57 (TTAB 1985). The determination
that a mark is merely descriptive is a finding of fact and must be based upon
substantial evidence. In re Bayer Aktiengesellschaft, 488 F.3d 960, 964, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007).
Applicant admits in its brief that “APPLE is clearly a characteristic of the
goods in that the associated bath & body products possess the scent and color of
APPLE.”2 However, applicant argues that “when combined with BROWN SUGAR,
the term as a whole is incompatible with the goods. … [T]he goods sold under this
heading use ‘BROWN SUGAR’ in a purely fanciful manner to give a consumer a
feeling of sweetness or freshness, which requires unrestrained imagination.”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

2 Applicant’s brief at 3.
3 Id.
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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
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 are promoted as
smelling like particular fruits, flowers and foods, such as coconut, 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 apple,
cherry cola, candy, coconut, and even bacon.
The record also contains dictionary definitions of APPLE and BROWN
SUGAR.4 Also of record is evidence to show that the scent and/or flavor of apple

4 An “apple” is “a hard round fruit that is white inside and has a smooth red, yellow, or
green skin….” , submitted with Office action of July 17, 2011.
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and brown sugar are known in the marketplace in the field of bath and body
products. Examples follow:
LUSH brand porridge soap, with customer comments
stating, “To me it smells like brown sugar with a hint of
floral”; “It smells like brown sugar and honey and
delicious”; “It smells syrupy sweet, like brown sugar or
something”; “It smells like sweet brown sugar with a hint
of orange.”5

Anti-Bacterial CLASSICS Gentle Foaming Soap – Brown
Sugar & Fig, with customer comments stating, “The
brown sugar and fig is by far my best fragrance”; and “It
smells like brown sugar, musk, and a nice hint of
greenery.”6

CARESS Evenly Gorgeous soap, with comment stating, “I
have been searching for a soap that smells like brown
sugar… and I finally got it. It literally has brown sugar
in it.”7

Clear Hills Honey Natural Beeswax Lip Balm in Juicy
Apple flavor: “Tastes like a Red Delicious; sweet and
juicy, with just a hint of tartness.”8

Khol Exclusive Apple Pear Bath Salts: “Bright, juicy
apple-pear scents add a delicious dose of fragrance to your
steamy bath time soak.”9

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,

“Brown sugar” is “sugar that is brown and has not been refined (=made pure) or has been
only partly refined.” Id.
5 Item advertised on , Office action of September 19, 2012, pp. 81-84.
6 Item advertised on , Office action of September 19,
2012, pp. 86-88.
7 Item discussed on blog at , Office action of September
19, 2012, pp. 86-88
8 Item advertised on < clearhillshoney.com>, Office action of September 19, 2012, p. 22.
9 Item advertised on , Office action of September 19, 2012, p. 58.
Serial No. 85302240

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flavored. These scents and flavors include apple and brown sugar. 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 apple combined with brown sugar.
The combination of the terms APPLE and BROWN SUGAR does not evoke a
new and unique commercial impression for applicant’s applied-for mark. Rather,
these terms, when combined and interpreted according to their ordinary meanings,
result in an expression that merely describes a feature of applicant’s goods: i.e., the
flavor of apple sweetened with sugar or the scent and flavor of apple combined with
brown sugar. Applicant argues that the designation BROWN SUGAR is merely
suggestive of “sweetness or freshness.”10 No imagination is required to derive the
concept of “sweetness” from the words BROWN SUGAR. With regard to
“freshness,” there is no evidence of record that brown sugar has a refreshing quality
or that customers would perceive a suggestion of freshness in the words BROWN
SUGAR. Applicant argues that “BROWN SUGAR in this context does not represent

10 Applicant’s brief at 3.
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a scent, color, or flavor.”11 However, it is difficult to accept the proposal that
BROWN SUGAR does not at least indicate a “flavor,” as the primary attribute of
any kind of sugar is its sweet flavor. Aside from applicant’s argument that BROWN
SUGAR suggests “freshness,” which we find unconvincing, applicant does not
explain what other meanings the words BROWN SUGAR could have to typical
consumers. Applicant also argues that “since the goods are not edible, any
reference to taste is irrelevant.”12 However, applicant’s identified goods include lip
balm and lip gloss, goods that are commonly flavored, as the evidence shows. To the
extent that applicant’s goods are not typically tasted when used (for example, bath
soaps and bath salts), the evidence shows that customers for such goods do perceive
brown sugar as a recognizable scent.
For the reasons stated, we find that the proposed mark APPLE BROWN
SUGAR, when considered as a whole, is merely descriptive of applicant’s goods.
Decision: The refusal to register is affirmed.

11 Id. at 4.
12 Id. at 6.