Johnson & Johnson

Trademark Trial and Appeal Board

Dec 19, 2000

No. 75481908 (T.T.A.B. Dec. 19, 2000)

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT12/19/00Paper Nos. 13 & 14
DEB
Hearing: August 10, 2000
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Johnson & Johnson
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Serial Nos. 75/481,908 and 75/454,697
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Amy E. Carroll and Norm D. St. Landau of Drinker Biddle &
Reath for Johnson & Johnson.
Amy E. Thomas, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______
Before Hohein, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
This appeal involves two applications filed by Johnson &
Johnson.
On March 23, 1998, applicant filed Application Serial No.
75/454,697 for the mark “REACH POWERBRUSH” for a “battery-
operated toothbrush” in International Class 21, based upon an
asserted bona fide intention to use the mark in commerce.
Application Serial No. 75/481,908 for the following
composite mark was then filed on May 8, 1998, also for a
“battery-operated toothbrush” in International Class 21, and
similarly based upon an asserted bona fide intention to use
the mark in commerce:
OF THE T.T.A.B.
Serial Nos. 75/481,908 and 75/454,697
2
In each case, the same examining attorney issued a final
refusal to register absent applicant’s entry of a disclaimer
of the allegedly merely descriptive term “POWERBRUSH.”
Section 6(a) of the Trademark Act. In each case, applicant
timely filed a notice of appeal, and each case was fully
briefed. At applicant’s request, an oral hearing was
conducted on August 10, 2000 on the “POWERBRUSH and design”
mark, although a request for an oral hearing on the “REACH
POWERBRUSH” application was withdrawn. The prosecution
histories of these two applications are substantially
identical, as are the issues before us in connection with both
applications. Accordingly, the two cases have been
consolidated and this single opinion issued for both.
The sole issue before us is whether or not the term
“POWERBRUSH” is merely descriptive of a “battery-operated
toothbrush” under Section 2(e)(1) of the Trademark Act, and
accordingly must be disclaimed apart from the marks as shown.
The Trademark Examining Attorney takes the position that
the wording “POWERBRUSH” is legally the same as “power brush.”
The Trademark Examining Attorney argues that the evidence of
record shows the term “power brush” to be synonymous with
Serial Nos. 75/481,908 and 75/454,697
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“powered brush” or “power-operated tooth brush.”
Consequently, the Trademark Examining Attorney contends that
this term describes a feature of applicant’s toothbrushes, and
hence the wording “POWERBRUSH” must be disclaimed apart from
the marks as shown. Trademark Act Section 6, 15 U.S.C. §1056.
On the other hand, applicant argues that the evidence
produced by the Trademark Examining Attorney is biased in its
selection, and that the few relevant articles are insufficient
to establish that the average consumer would understand the
assertedly unique combination of these two words to be merely
descriptive.
Applicant further argues that each of its marks
incorporates a double entendre, in that there are other
meanings for the word “POWER” in the context of its composite.
While it might well suggest “battery-powered” to some
consumers, applicant contends it is equally plausible that
consumers will interpret the word “POWER” within its marks as
meaning “effective” in the ability of the product to get a job
done, or even connoting “glamorous”:
The POWERBRUSH mark is also unique in that
[sic] its inventive juxtaposition of the term
“power” with “brush.” While consumers would
associate the term “power” with independent
ability, ease of operation and even glamour,
the term “brush” would evoke the thought of
effort, exertion and non-glamorous chore. This
juxtaposition creates a playful contradiction
in the mark – POWERBRUSH sounds like something
Serial Nos. 75/481,908 and 75/454,697
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new and glamorous that is at the same time
standard and commonplace. The humorous image
of a “supercharged cleaning implement”
suggested by Applicant’s mark provide [sic]
strong evidence that POWERBRUSH creates a
unique commercial impression and is well beyond
the realm of the “merely descriptive.”
(Applicant’s appeal brief, p. 5)
A term or phrase is merely descriptive within the meaning
of Section 2(e)(1) if it immediately conveys information about
a characteristic or feature of the goods or services with
which it is being used. See In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215 (CCPA 1978). It is not necessary
that the term or phrase describe all the characteristics or
features of the goods or services in order to be merely
descriptive; it is sufficient if the term or phrase describes
a significant attribute thereof. See In re H.U.D.D.L.E, 216
USPQ 358 (TTAB 1982). Furthermore, the test of mere
descriptiveness is not done in a vacuum, but rather the
proposed mark must be evaluated in the context of its
application to the goods.
We first turn to the Lexis/Nexis® evidence made of record
by the Trademark Examining Attorney to support her contention
that the term “power brush” will be understood to refer to a
battery-powered toothbrush, or a powered toothbrush.
The following are representative of the excerpts:
Serial Nos. 75/481,908 and 75/454,697
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Power brushes:1 important additions
Electric oral care products have been hot …
This category’s surge in sales can be traced to
technological advances… “Small appliances:
Annual Report Part 2: Category by Category,”
Drug Store News, May 20, 1996.
There are two types of power brushes on the
market today that you can choose from – the
standard electric and the newer “sonic” models.
“Powered Brushes win our respect,” Prevention,
December 1995.
What makes Sonicare different from a
conventional power brush is its technology.
“High Tech innovation in dental care ….” Puget
Sound Business Journal, September 12, 1997.
“The purchase of power brushes at the $100
price point is not an impulse purchase,” said
Bill Bassett, marketing manager for Sonicare…
“If you want to encourage more people to buy a
power brush and trade up, you have to be
present when they buy manual toothbrushes, such
as pharmacies and mass merchants,” said Steve
Jones, [Rowenta’s] Marketing Manager…
“Different strokes for different folks;
Marketing of power-assisted toothbrushes,” HFN
– The Weekly Newspaper for the Home Furnishing
Network, December 16, 1996.
“Long term, there’s not a lot of data saying
that power brushes outweigh manual,” says
Wozniak. “Time and technique are the key
factors.” “HMO report cards,” Kiplinger’s
Personal Finance Magazine, October 1995.
The dentist or hygienist should also advise you
on such preventive extras as fluoride use,
antibacterial rinses, and any supplemental oral
hygiene aids you may need, such as an
irrigator, a power brush, or floss threaders …
“Office Visits; Examining your Dentist…,”
Consumer Reports on Health, November 1992.
1 Underlining contained in source document.
Serial Nos. 75/481,908 and 75/454,697
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Next time you’re in a full-service drugstore,
take a look at the oral-hygiene section.…
Somewhere on the shelf you’ll also find two or
three electric or power brushes… “Baffled by
Brushes,” Saturday Evening Post, May 1987.
“Your teeth have a lot to smile about these
days, thanks to the latest home dental care.
From power brushes to new toothpastes, there’s
a whole array of new products out there…”
(Jane Robelot, on “CBS This Morning,”
introducing Dr. Roland Hassan, Dentist, July
14, 1997).2
From this Lexis/Nexis® evidence, we are convinced that
“power brush” is a recognized term used to refer to an entire
category of oral hygiene appliances comprising battery-powered
or electric-powered toothbrushes. While the term normally
used is the two-word combination, we are without any doubt
that the term “Powerbrush,” in which applicant runs the two
words together, would be perceived by the public as the
equivalent of “power brush.”
The Lexis/Nexis® evidence reviewed above includes
periodicals directed to consumers in general, to consumers
specifically interested in dental hygiene, as well as to
merchants who sell this type of product at the retail level.
Accordingly, in focusing on the usages of the term “power
brush” (or “power brushes”) in these articles from periodicals
of general circulation, we find it unimportant which
2 Unless indicated otherwise, emphasis by way of underlining of
power brush or power brushes has been supplied.
Serial Nos. 75/481,908 and 75/454,697
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particular sub-file or electronic library within the larger
Lexis/Nexis® database the Trademark Examining Attorney may
have utilized (e.g., “GENMED”) to retrieve these stories.
In addition to the clear evidence from the Lexis/Nexis®
database, the Trademark Examining Attorney has submitted
various dictionary entries of the words “power,” “brush” and
“toothbrush.” In the context of the compound term
“power•brush,” the modifying word “power” will be readily
understood as meaning electric- or battery-powered, as opposed
to something that might be modified by the word “manual.”3 As
seen in the dictionary entries in these two files, the English
language contains combined terms like “power drill,” “power
mower,” “power shovel,” “power steering,” “power tools,” etc.
Hence, whether one is focused on drills, mowers or
toothbrushes, a combined term beginning with the word “power”
provides a ready contrast to a “manual” or “non-powered”
instrument achieving much the same results.
Thus, we find that the term “POWERBRUSH,” when
encountered by potential purchasers in connection with
applicant’s goods, would immediately convey information to
purchasers that the goods are power-operated toothbrushes as
3 In fact, that contrast is pronounced in several of the
Lexis/Nexis® excerpts above where the speaker or writer is noting
the consumers’ range of choices when selecting a toothbrush.
Serial Nos. 75/481,908 and 75/454,697
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opposed to manual toothbrushes. The record confirms that the
combined term “power brush” is frequently used in speaking and
writing to refer to battery-operated toothbrushes, and that
“power brush” identifies a genre of dental appliances that are
the subject matter of applicant’s trademark application.
Hence, we cannot agree with applicant that it would require
any amount of mental gymnastics or imagination on the part of
consumers to make a correlation between the term POWERBRUSH
and the consumer item itself, a power-operated toothbrush.
When viewed in this fashion, the descriptive significance
herein of the term “POWERBRUSH” as referring to a power-
operated toothbrush is clear.
Although applicant argues that its marks feature a clever
double entendre, the facts of this case establish that the
particular word combination at issue has had a recognized
meaning in the dental appliances field for more than a dozen
years. It has a widely accepted and understood significance,
which is plainly characterized as being merely descriptive of
these goods.
To the extent that the word “power” alone may have the
ability to project a meaning of “independent ability, ease of
operation and even glamour,” as argued by applicant, we are
not persuaded by applicant’s contention that this case should
turn on a “playful contradiction in the mark[s] –- POWERBRUSH
Serial Nos. 75/481,908 and 75/454,697
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sounds like something new and glamorous that is at the same
time standard and commonplace.” This slight possibility is
further reduced when the word “power” is used in combination
with the word “brush” and applied to applicant’s particular
product. Purchasers are most unlikely to attribute these
other meanings to the word “power” in the context herein.
Decision: Accordingly, we find the term “POWERBRUSH” to
be merely descriptive of a feature of applicant’s recited
goods. The refusal to register applicants marks “REACH
POWERBRUSH” and “POWERBRUSH and design,” on the basis that a
disclaimer of the word “POWERBRUSH” must be entered. However,
in accordance with Trademark Rule 2.142(g), this decision will
be set aside and applicant's “POWERBRUSH and design” and
“REACH POWERBRUSH” marks will both be published for opposition
if applicant, no later than thirty days from the mailing date
hereof, submits an appropriate disclaimer of the term
“POWERBRUSH” in each of these applications.