Tri-Coastal Design Group, Inc.

Trademark Trial and Appeal Board

Mar 29, 2013

No. 85333459 (T.T.A.B. Mar. 29, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
March 29, 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. 85333459
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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 PASSIONFRUIT ORCHID 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.
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
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merely describes the goods. When the refusal was made final, applicant filed a
request for reconsideration, in which it entered a disclaimer of the exclusive right to
use PASSIONFRUIT and conceded that its goods would have the scent and color of
passionfruit;1 however, 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

1 See also applicant’s brief at 3.
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merely descriptive, but suggestive, and is registrable. In re George Weston Ltd., 228
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).
The examining attorney, noting applicant’s concessions as to the descriptive
nature of the word PASSIONFRUIT, takes the position that applicant’s mark as a
whole is descriptive of the goods because the goods also “smell like an orchid.” As
evidence, the examining attorney has submitted the following information from the
website :
There are over 15,000 orchid species and well over 1000
genera in the world. It is the largest group of flowering
plants, but surprisingly, very little is know [sic] about this
fascinating plant. One of the reasons is that the genera is
so large, shear volumn [sic] makes accurate comparisons
very difficult. … Orchids can grow everywhere from
freezing climates, clinging to the sides of wind swept
mountains to humid, hot, tropical rain forests. Their
growth and flowering habits are just as diverse.2
With his brief, the examining attorney also requested that we take judicial notice of
the following definition of the word ORCHID:
A type of flower with an unusual shape and often a sweet
smell that is considered very beautiful.
.3

2 Submitted with Office action of July 15, 2011.
3 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).
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On the basis of this evidence, we cannot agree with the examining attorney’s
contention that the word ORCHID “immediately informs purchasers of the…
smell… of the goods and this significance would be readily apparent to the average
purchaser of products of this kind.”4 If there are over 15,000 species of orchids that
are diverse in their flowering habits, it is not reasonable to assume that all, or even
most, of them have the same or similar smells. Rather, on this evidence it would be
far more reasonable to conclude that they have many diverse smells. Certainly, to
inform the customer that the product has one of 15,000 possible scents does not
immediately convey any knowledge of the quality of the goods, as required by In re
Gyulay, 3 USPQ2d at 1009. The dictionary evidence does not contradict the
evidence from ; to state that orchids often have a sweet
smell means that they sometimes do not. Moreover, it would not be reasonable to
find that the term ORCHID describes all goods that have a “sweet smell.” Neither
this definition nor the totality of the evidence provides a sufficient basis for us to
find that the word ORCHID would have any meaning to customers with respect to
the scent of the product.
The examining attorney has submitted substantial evidence to show that
certain bath and body products are promoted as smelling like particular fruits,
flowers and foods, such as grapefruit, coconut, jasmine and even root beer.
However, there is no evidence of this type regarding orchid-scented goods; and there
is no evidence that customers would recognize any scent or range of scents as being

4 Examining attorney’s brief at 7.
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the scent of orchid or that the word ORCHID on a product would give rise to any
expectations among customers as to the scent of the product.
As the evidence falls short of demonstrating that ORCHID meaningfully
describes the scent of the goods, we find that the examining attorney has not made
a prima facie showing that applicant’s mark PASSIONFRUIT ORCHID, as a whole,
merely describes the goods within the meaning of Section 2(e)(1).
Decision: The refusal to register is reversed and this application will be
forwarded to publication.