PBM Products, LLC

Trademark Trial and Appeal Board

Sep 20, 2011

No. 77677746 (T.T.A.B. Sep. 20, 2011)

Mailed: September 20, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
________

In re PBM Products, LLC
________

Serial No. 77677746
Filed February 25, 2009
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Oral Hearing: May 19, 2011
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Theodore A. Breiner, Breiner & Breiner LLC, for applicant.

Edward Nelson, Examining Attorney, Law Office 106, Mary I.
Sparrow, Managing Attorney.
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Before Holtzman, Kuhlke, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:
Applicant seeks registration of the mark COLIC RELIEF
(in standard characters) for “infant formula” in
International Class 5.1 Registration has been finally
refused on the ground that the mark is primarily merely
descriptive of the identified goods under Trademark Act
§ 2(e)(1), 15 U.S.C. § 1052(e)(1).
We affirm.

1 Based upon the allegation of a bona fide intent to use the mark
in commerce, pursuant to Trademark Act § 1(b), 15 U.S.C.
§ 1051(b).
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77677746

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I. Applicable Law
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the goods with which it is
used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 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 Dev. Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d
1222, 1224 (TTAB 2002). The issue 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, 1316-1317 (TTAB 2002); In re Patent &
Trademark Servs. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In
re Home Builders Ass’n of Greenville, 18 USPQ2d 1313, 1317
(TTAB 1990); In re Am. Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
II. Arguments and Evidence
The examining attorney’s position is simple:
Applicant’s goods are formula for infants. Some infants
suffer from colic. Colic is sometimes caused by the
formula given to a child or can be alleviated by changing
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to a different formula. Applicant’s COLIC RELIEF mark thus
immediately conveys to the prospective purchaser that
applicant’s goods will relieve colic.
The examining attorney’s case is supported by
dictionary definitions of COLIC (“Severe abdominal pain
caused by spasm, obstruction, or distention of any of the
hollow viscera, such as the intestines. Often a condition
of early infancy.”), and RELIEF (“1. The easing of a burden
or distress, such as pain, anxiety, or oppression. 2.
Something that alleviates pain or distress.”). AMERICAN
HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000)
(www.bartleby.com (May 18, 2009)). The examining attorney
also made of record an excerpt from a third party website
discussing colic and its relationship to formula:
The condition known as colic affects as many as 25
percent of infants. It is characterized by incessant
crying that may last for hours. Many believe the baby
formula colic connection is due to an intolerance to
the particular formula being fed. Babies may have an
intolerance because of an underdeveloped digestive or
nervous system. Others may be sensitive to the
components of cow milk. Regardless of the root cause
colic can be very uncomfortable for babies and their
parents. Luckily there are some things you can do to
ease the pain of this condition.

First and foremost, take your baby to the pediatrician
for a thorough examination. If colic is diagnosed or
suspected the doctor may recommend a change in
feeding. Although colic does not disappear overnight
the right formula can provide some relief. Also most
cases of colic will resolve by the time the infant is
three months of age. Nights spent rocking and
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consoling a screaming baby seem never ending but keep
in mind this is a condition that is outgrown. In the
[meantime] ask the pediatrician what they recommend
for feeding your baby.

There are a variety of formulas on the market that
claim to be gentle for colicky babies. ...
Carnation is [made] by Nestle, one of the original
inventors of baby formula. This particular formula
features so-called comfort proteins made to be gentle
on baby's digestive system. If your baby cannot
tolerate milk based products at all you may want to
try a soy formula at the recommendation of the doctor.

...

www.babyformuladeals.com/baby-formula-colic.php (Aug. 31,
2009) (emphasis added). The examining attorney also
submitted internet evidence of several others using the
term COLIC RELIEF in connection with other products, and
third-party registrations in which the term RELIEF has been
treated as descriptive.
Applicant disagrees, arguing that its mark “does not
merely describe infant formula,” nor does it “immediately
tell a prospective purchaser what applicant’s goods are.”
Applicant contends that the examining attorney has made “no
showing that the mark is needed by others to describe their
infant formula.” And applicant points out that “COLIC
RELIEF[] is subject to a number of different meanings, e.g.
are applicant’s goods (1) a stuffed animal for a person
experiencing colic symptoms; (2) a night light to sooth
[sic] a baby to sleep; (3) a pacifier, etc.” App. Br. at 7
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(emphasis in original). Applicant states that its “goods
are not a product to provide relief for colic. Rather,
applicant’s goods are infant formula to provide nourishment
to the baby while at the same time providing a formula
which may not or is less likely to make the baby colicky.”
App. Br. at 8-9.
During examination, applicant submitted records of a
number of third-party applications and registrations from
the USPTO’s TARR database, and copies of the specimens from
three of the registration files.2

2 Attached to applicant’s reply brief were two exhibits which
were not made of record prior to appeal. Applicant argues that
these “are merely legible pictures of the products relied upon by
the examining attorney.” Applicant refers here to evidence the
examining attorney made of record with his final Office action, a
page from the comparisonsearches.com web site, showing results
from a search for “colic relief.” The page displays small
pictures of a number of products, listing their name and price,
and variously providing other very brief information. Applicant
did not object to the legibility of this evidence (or proffer its
own evidence in response to it) in its subsequent request for
reconsideration or even in its opening brief.
The evidence attached to applicant’s reply brief is “manifestly
untimely,” and will not be considered. In re Petroglyph Games
Inc., 91 USPQ2d 1332, 1334 (TTAB 2009) (citing In re Zanova Inc.,
59 USPQ2d 1300, 1302 (TTAB 2001) (“By attempting to introduce
evidence with its reply brief, applicant has effectively shielded
this material from review and response by the Examining
Attorney.”)). Applicant alternatively requests that if we
exclude its untimely evidence, that we also exclude the examining
attorney’s comparisonsearches.com evidence because it is
illegible and does not support the examining attorney’s position.
Applicant’s request is denied. Again, if applicant believed that
this evidence should not be considered, the time for making that
point was not sixteen months later, in a reply brief to which the
examining attorney is not permitted a response.
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III. Discussion
We begin by considering the examining attorney’s
dictionary definitions. The first establishes that “colic”
refers to abdominal distress, often in young babies. The
second defines “relief” as an “easing of ... pain” or
“something that alleviates pain or distress.” As explained
in an article submitted by the examining attorney,3 colic is
believed by many to be caused by an intolerance to a
particular formula, and that switching to a different
formula may relieve colic symptoms.
Applicant argues that its “goods are not a product to
provide relief for colic. Rather, applicant's goods are
infant formula to provide nourishment to the baby while at
the same time providing a formula which may not or is less
likely to make the baby colicky.” App. Br. at 8-9.
However, this is entirely consistent with the examining

3 We do not consider applicant’s objection that this article is
hearsay because it made the objection for the first time in its
reply brief. In any event, the significance of this evidence is
not the truth of its assertions. We focus here on how consumers
would perceive applicant’s mark, not what actually causes or
relieves colic, and not whether applicant’s product does so
effectively. Thus, whether the article is medically accurate is
of relatively little consequence here; it is enough that it shows
that consumers are exposed to the content of the article that
discusses a belief that colic can be caused by intolerance to
certain formulae or that switching to a different formula may
provide relief to colic symptoms. The article also shows use of
and exposure to the separate terms “colic” and “relief” used in
connection with baby formula in a merely descriptive manner.
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attorney’s evidence and theory of descriptiveness. The
fact that the principal function of applicant’s formula is
to provide nourishment does not change anything. It is how
that nourishment is provided that is of crucial importance
to parents of a child suffering from colic, because colic
is known (or believed) to be caused or exacerbated in some
cases by intolerance to formula. Here, applicant’s mark,
COLIC RELIEF, declares that applicant’s formula may
relieve (i.e., “alleviate [the] pain or distress”) caused
by colic. Based on the examining attorney’s dictionary
definitions and article alone, it is clear that the
purchasers of applicant’s goods would immediately, and
without further conjecture, understand the direct link
between the mark and the goods in this case.
As noted, the examining attorney also submitted a page
showing the results of a search for “colic relief” on the
comparisonsearches.com web site. The page displays several
apparently relevant items:
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As applicant correctly notes, none of these items
appears to be “infant formula,” so they do not do not
directly “establish or otherwise show that the wording
COLIC RELIEF is merely descriptive of infant formula.”
Reply Br. at 4-5. However, they are not irrelevant,
because they show that the term COLIC RELIEF (and in one
case “relief for colic”) is used in connection with
products that apparently are intended to relieve colic.
This rebuts applicant’s argument that “colic” and “relief”
are words that are “not normally used together....” App.
Br. at 7.
While the goods on the comparisonsearches.com website
are not the same as applicant’s goods, they nonetheless
demonstrate that the words “COLIC RELIEF” are used by
others to identify products that – like applicant’s – may
make colic less likely, and that consumers are thus likely
to understand the meaning of those words when used on or in
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connection with applicant’s infant formula.4 But to be
clear, while we find this evidence relevant, we do not give
it great weight. The information provided about the
products is scant (the examining attorney would have made a
stronger case by also including specific information about
the relevant items), and as applicant argues, it relates to
different products than the ones at issue here.
Applicant submitted copies of trademark applications
and registrations5 in support of its position, and the
examining attorney responded with his own registrations.
As applicant agrees, third party registrations are not

4 Among other objections to this evidence, applicant contends
that it does not show that COLIC RELIEF is used descriptively in
connection with these products, but rather as a trademark. Reply
Br. at 4-5. Applicant misses the point – the issue here is not
whether the marks depicted in use on other products are
registrable or not. Those marks are not before us. Nonetheless,
the use of COLIC RELIEF on other products which may relieve colic
is probative of whether applicant’s use of COLIC relief on its
product which may relieve colic is registrable.
5 Applicant submitted ten exhibits in this regard, comprising
five applications (both live and abandoned), and five
registrations (both live and cancelled). “[O]f course, third-
party applications have no probative value except to show that an
application has been filed, and ‘dead’ or cancelled registrations
have no probative value at all.” In re Kysela Pere et Fils Ltd.,
98 USPQ2d 1261, 1264 (TTAB 2011).
At the time applicant’s evidence was submitted, Exhibits 3, 4,
7, and 10 were abandoned applications, and Exhibit 8 was a
cancelled registration. Since then, the registrations in
Exhibits 5 and 6 have been cancelled, but the application in
Exhibit 9 has become registered. Accordingly, we consider only
the registrations in Exhibits 1, 2, and 9. (By contrast, the
examining attorney submitted evidence of seven registrations
which were “live” when submitted, and remain so at the time of
this decision.)
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dispositive. Although applicant refers to these
registrations as “precedent,” App. Br. at 11, that is
clearly incorrect – we are not bound by the decisions of
examining attorneys. The Board must make its own findings
of fact, and that duty may not be delegated by adopting the
conclusions reached by an examining attorney. In re
Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994); In re
BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986).
The registrations submitted by applicant do not
convince us that the subject mark is registrable. We
consider the following three registrations:
Mark Goods Reg. Date Disclaimer
BREATH RELIEF Dietary and food supplements for
freshening breath. IC 5
Jan. 31, 2006 BREATH
DRY EYE RELIEF Nutritional Supplement. IC 5 July 19, 2005 DRY EYE
COLIC-EASE Dietary Supplements. IC 5 May 4, 2010

We conclude that these three records provide far too little
to overcome the clear evidence of descriptiveness filed in
this application, with respect to COLIC RELIEF as used on
“infant formula.” Each differs from the mark and goods at
issue here, and in any event, our task is to reach the
correct result based on the evidence in this case, not to
rule consistently with examining attorneys in a small
handful of prior applications. While applicant’s third-
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party registrations, and those of the examining attorney6
have been considered, we give them relatively little weight
in our decision.
We also note applicant’s argument that the examining
attorney has not shown “that others need to use the
trademark COLIC RELIEF to describe infant formula.” App.
Br. at 4; see id. at 5-7; Reply Br. at 6. Applicant
asserts that “a trademark is not merely descriptive if it
is not needed by others to describe the goods.” App. Br.
at 7 (citing J.T. McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 11:68 (4th ed.)).
Evidence of competitor need is clearly not required
for the USPTO to carry its burden to establish that
applicant’s mark is merely descriptive:
[T]he test for descriptiveness is whether a term
“immediately conveys knowledge of a quality, feature,
function, or characteristic of the goods or services
with which it is used.” In re Bayer
Aktiengesellschaft, 82 USPQ2d 1828, 1831 (Fed. Cir.
2007) (citing In re Gyulay, 820 F.2d 1216, 1217, 3
USPQ2d 1009 (Fed. Cir. 1987)). Further, ... [t]here
is no requirement that the Office prove actual
competitor use or need; it is well established that
even if an applicant is the only user of a merely
descriptive term, this does not justify registration
of that term. See In re BetaBattInc., 89 USPQ2d 1152,
1156 (TTAB 2008); In re Sun Microsystems, Inc., 59

6 While we need not describe them in detail, the examining
attorney’s registrations show that the USPTO has indeed treated
“RELIEF” as descriptive in the past. This tends to undermine
whatever small value applicant’s two “relief” registrations may
have.
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USPQ2d 1084, 1087 (TTAB 2001); In re Acuson, 225 USPQ
790, 792 (TTAB 1985).

In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (citations
revised).7
IV. Conclusion
We have carefully considered all of the argument and
evidence of record, including that which we have not
specifically discussed. We conclude that applicant’s mark,
COLIC RELIEF, is merely descriptive of applicant’s
identified “infant formula.” Although applicant points out
that any doubt as to descriptiveness must be resolved in
its favor, App. Br. at 15; Reply Br. at 6, we have no doubt
on this record.

Decision: The refusal to register under Trademark Act
§ 2(e)(1) is accordingly AFFIRMED.

7 Likewise, we reject applicant’s theory that the mark is not
descriptive because one might guess at unrelated meanings of the
mark divorced from consideration of the goods. App. Br. at 7 (“a
stuffed animal for a person experiencing colic symptoms,” etc.).
The test for descriptiveness under Trademark Act § 2(e)(1) is not
– nor has it ever been – a guessing game. Tower Tech Inc., 64
USPQ2d at 1316-17; Patent & Trademark Servs. Inc., 49 USPQ2d at
1539; Am. Greetings Corp., 226 USPQ at 366.