Tri-Coastal Design Group, Inc.Download PDFTrademark Trial and Appeal BoardApr 3, 2013No. 85304301 (T.T.A.B. Apr. 3, 2013) Copy Citation Mailed: 4/3/2013 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Tri-Coastal Design Group, Inc. ________ Serial No. 85304301 _______ Tedd S. Levine, Esq. for Tri-Coastal Design Group, Inc. James Stein, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop, Managing Attorney). _______ Before Quinn, Greenbaum and Masiello, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Tri-Coastal Design Group, Inc. filed, on April 25, 2011, an intent-to-use application, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), to register the proposed mark CITRUS MINT (in standard characters) (“MINT” disclaimed) for the following goods in International Class 3: 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. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. No. 85304301 2 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, when applied to applicant’s goods, is merely descriptive of a scent or flavor thereof. When the refusal was made final, applicant requested reconsideration. Upon denial of the request for reconsideration, applicant appealed. Applicant and the examining attorney filed briefs. Applicant contends that the proposed mark as a whole is just suggestive; according to applicant, “[w]hile specific scents and color, for example, are clearly associated with bath and body products, a broad grouping of edible fruits is not.” In applicant’s words, the proposed mark gives “a consumer a feeling of warmth based upon the climate indigenous to citrus trees and shrubs.” (Brief, p. 3). In making its argument, applicant concedes that the term “MINT” in its mark is merely descriptive because its products have a mint scent and, accordingly, applicant disclaimed this term. The examining attorney maintains that the proposed mark is merely descriptive of a scent or flavor of applicant’s goods. The application includes evidence introduced by the examining attorney that shows third-party uses of various names of scents and flavors in connection with bath and/or body products. Ser. No. 85304301 3 A mark is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (TTAB 2007); and In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A mark need not immediately convey an idea of each and every specific feature of the applicant’s goods or services in order to be considered merely descriptive; rather, it is sufficient that the mark describes one significant attribute, function or property of the goods or services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973). A descriptiveness refusal is proper if the mark is merely 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); and In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005). Whether a mark is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with the goods or services, and the possible significance that the mark would have to the average purchaser of the goods or services Ser. No. 85304301 4 because of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). 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 1314, 1316-17 (TTAB 2002). 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 composite that is itself merely descriptive. See, e.g., DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753 (Fed. Cir. 2012) (SNAP SIMPLY SAFER is merely descriptive for “medical devices, namely, cannulae; medical, hypodermic, aspiration and injection needles; medical, hypodermic, aspiration and injection syringes”); In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM is 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 Petroglyph Games, Inc., 91 USPQ2d Ser. No. 85304301 5 1332 (TTAB 2009) (BATTLECAM is merely descriptive of computer game software); In re Tower Tech Inc., 64 USPQ2d at 1317 (SMARTTOWER is merely descriptive of commercial and industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS is merely descriptive of computer programs for use in development and deployment of application programs); and In re Entenmann’s, Inc., 15 USPQ2d 1750 (TTAB 1990) (OATNUT is merely descriptive of bread containing oats and hazelnuts), aff’d per curiam, 928 F.2d 411 (Fed. Cir. 1991). Of particular interest in the present appeals is the Federal Circuit’s opinion in In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Applicant filed to register the term 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 is merely descriptive of the scent of the potpourri, that is, the potpourri is 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 is merely descriptive of a flavor for candy. In re Andes Candies Inc., 478 F.2d 1264, 178 USPQ 156 (CCPA 1973). The Federal Ser. No. 85304301 6 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 describes the scent of applicant’s goods, especially because potpourri is sold for and by its scent. The examining attorney introduced excerpts of third-party websites showing the names of various scents and flavors commonly used in connection with bath and/or body products, as well as with fragrance oils. The examining attorney’s substantial evidence shows that certain bath and body products are promoted as smelling like particular fruits, flowers and foods, such as coconut, plum, jasmine, mint chocolate and even root beer. Further, products such as lip gloss and lip balm commonly are flavored, with the evidence showing flavors such as fruit punch, apple, cherry cola, candy, coconut, and even bacon. Also of record is evidence that is more specific to the mark sought to be registered.1 The term “citrus” is defined as 1 Both applicant and the examining attorney submitted dictionary evidence with their briefs. 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 Ser. No. 85304301 7 “any of a group of often thorny trees and shrubs (Citrus, and related genera) of the rue family grown in warm regions for their edible fruit (as the orange or lemon) with firm usually thick rind and pulpy flesh.” (merriam-webster.com). The term “mint” means “a small plant with green leaves that have a strong smell, used for adding flavor to food.” (macmillandictionary.com). The record also includes third-party uses such as Organic Peppermint Cocoa lip balm, Orange lip balm, Mint Chocolate bath salt, Lemon Ice fragrance, Happy Hippy shower gel (“smells like an actual grapefruit”), and Organic Coconut & Lime lip balm (“tastes like a sweet, citrusy dessert for your lips”). To state the obvious, and as confirmed by the evidence of record, body and bath products and fragrance oils are often identified by scent, and in the case of lip products, by flavor. These scents and flavors include citrus (e.g., lemon, orange and grapefruit) and mint (e.g., peppermint). 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 uses are an indication that manufacturers and retailers, as well as ultimate consumers will view such terms as printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Accordingly, we have considered the dictionary definitions. Ser. No. 85304301 8 merely descriptive terms for 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 a combination of citrus and mint. Each of the words comprising applicant’s proposed mark is individually descriptive, and the combination of these merely descriptive terms does not evoke a new and unique commercial impression for applicant’s applied-for mark. Rather, each component of the composite mark retains its merely descriptive significance in relation to applicant’s goods, thus resulting in a composite that is itself merely descriptive. No imagination is required by a prospective purchaser or user to discern that applicant’s respective products have a citrus mint scent or flavor. Accordingly, the proposed mark CITRUS MINT, when considered as a whole, is merely descriptive of applicant’s goods. Decision: The refusal to register in each application is affirmed. Copy with citationCopy as parenthetical citation