Active Organics, Inc.

Trademark Trial and Appeal Board

Jul 19, 2004

No. 78116593 (T.T.A.B. Jul. 19, 2004)

Mailed:
July 19, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Active Organics, Inc.
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Serial No. 78116593
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John E. Vandigriff, Esq. for Active Organics, Inc.
Tina L. Snapp, Trademark Examining Attorney, Law Office 116
(Meryl Hershkowitz, Managing Attorney).
_______
Before Quinn, Holtzman and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Active Organics, Inc. [applicant] has applied to
register ACTIVE ORGANICS as a trademark for goods
ultimately identified as "botanical extracts for use in
making cosmetics," in Class 1; "naturally derived materials
used alone or as ingredients in the preparation of
cosmetics, namely, anti-aging creams and aromatherapy
oils," in Class 3; "naturally derived pharmaceutical
preparations for the treatment of dry and chaffing [sic]
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 78116593
2
skin, for use as an end product and for manufacturing use,"
in Class 5; and "food flavoring additives for non-
nutritional purposes," in Class 30. Registration has been
refused under each of two sections of the Trademark Act.
First, the examining attorney has refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C. §
1052(d), in view of the prior registration of the identical
mark ACTIVE ORGANICS for goods identified as "astringents
for cosmetic purposes, bath gel, bath oil, bath powder,
body cream, body oil, hand cream, night cream, personal
deodorants, deodorants and antiperspirants, essential oils
for personal use, hair gel, shower gel, non-medicated hair
care preparations, hair cleaning preparations, hair rinses,
hair spray, hair styling preparations, lipstick, skin
moisturizer, skin lotion, soap, skin soap, skin toners,
deodorant soap, liquid soaps for hands, face and body," in
Class 3.1 Second, the examining attorney has refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1), asserting that ACTIVE ORGANICS is a
descriptive term when used on or in connection with
applicant's identified goods.
1 Registration no. 2392412, on the Supplemental Register, issued
October 3, 2000, and asserts dates of first use and first use in
commerce of November 24, 1999.
Ser No. 78116593
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Applicant has appealed from each of these refusals.
Applicant and the examining attorney have filed briefs, but
applicant did not request an oral hearing.
As to the first of the two grounds for refusal, the
examining attorney essentially contends that applicant's
mark and the mark in the cited registration are identical,
i.e., both marks are ACTIVE ORGANICS in typed form; that
the goods of applicant and the registrant need not be as
similar or as related, for there to be a likelihood of
confusion, as when the goods of an applicant and a
registrant are marketed under marks which are merely
similar, but not identical; and that the respective goods
of applicant and registrant are related insofar as
applicant's Class 1 "botanical extracts for use in making
cosmetics" could be used to make registrant's goods, and
insofar as applicant's Class 3 "naturally derived materials
used alone or as ingredients in the preparation of
cosmetics, namely, anti-aging creams and aromatherapy oils"
assertedly fall within the scope of registrant's identified
goods. In regard to the examining attorney's assertion
that the applicant's and registrant's Class 3 goods
overlap, the examining attorney apparently reads the
applicant's Class 3 identification as encompassing, inter
alia, anti-aging creams and aromatherapy oils and considers
Ser No. 78116593
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these within the scope of registrant's identified creams
and oils. Brief, p. 6. These arguments, set forth in the
Office actions refusing registration and in the examining
attorney's brief, specifically target the application
insofar as it seeks registration of applicant's mark in
Classes 1 and 3.2 In the brief, the examining attorney also
sets forth a rationale for refusing registration in Class
5, specifically, that applicant's Class 5 goods are likely
to be marketed in the same channels of trade as both
applicant's and registrant's respective Class 3 goods.
Brief, pp. 6-7. No specific argument is advanced as to why
there would be a likelihood of confusion given registrant's
use of its mark on the goods listed in its registration and
applicant's use of the same mark on applicant's identified
"food flavoring additives for non-nutritional purposes," in
Class 30.
Applicant, in regard to the Section 2(d) refusal,
argues that it first used its mark on December 10, 1981,
and has continuously used the mark since then; that the
mark has become well-known and associated with applicant
and its products for 22 years, and that such association
should mean that there will be no confusion; that the
2 The examining attorney also asserts that applicant's "cosmetics
and cosmetic ingredients" are within the natural field of
Ser No. 78116593
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registrant has only used its mark since November 24, 1999;
that registrant has not asked applicant to stop using the
mark because it knows it "would lose" because of
applicant's "prolonged use"; and that applicant has used
the mark in four classes, while registrant has used the
mark only in one class, which "gives Applicant a wider
exposure to the various industries who recognize and
associate the mark with the Applicant." Brief, p. 3.
The examining attorney notes that applicant does not
argue that the marks differ, or that the goods are not
related, and objects to applicant's argument that it is the
prior user of the involved mark as an impermissible
collateral attack on the cited registration. We agree that
applicant's argument, insofar as it asserts registrant
"would lose" a priority contest, is an impermissible
collateral attack on the cited registration. In re Calgon
Corporation, 435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971).
Nor can we accept applicant's argument insofar as applicant
is asserting that the involved mark is more closely
associated with applicant than with registrant. This, of
course, is pure speculation and, in any event, does not
preclude the possibility of confusion among consumers; it
expansion of the registrant. There is no evidence, however,
referenced as supporting this conclusion.
Ser No. 78116593
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only suggests that the confusion would more likely be of
applicant's customers than of registrant's customers.
When, as in this case, the involved marks are
identical, this "weighs heavily against applicant." In re
Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984). With identical marks,
their contemporaneous use can lead to the assumption that
there is a common source "even when [the] goods or services
are not competitive or intrinsically related." In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir.
1993).
We agree with the examining attorney's conclusion that
the contemporaneous use of ACTIVE ORGANICS on the goods
identified in the involved registration and for the Class 3
and Class 5 goods in the involved application would be
likely to cause confusion. These items are very similar in
type and the examining attorney is correct in observing
that they can, because there are no restrictions as to
classes of consumers, be presumed to be marketed to the
same classes of consumers. Applicant's Class 1 and Class
30 goods, however, are further removed from the goods in
the registration and can be presumed, even without a
specifically stated restriction, to be marketed to
Ser No. 78116593
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different classes of consumers, primarily manufacturers.3
At a minimum, this injects into this case some doubt about
whether those manufacturers of cosmetics would be confused
by the contemporaneous use of ACTIVE ORGANICS for
registrant's cosmetic and personal care products and
applicant's "botanical extracts for use in making
cosmetics," and even greater doubt about whether purchasers
or users of "food flavoring additives for non-nutritional
purposes" would be confused by the contemporaneous use of
the same mark for such products and for registrant's
cosmetics and personal care items.
The examining attorney bears the burden of presenting
a prima facie case in support of the Section 2(d) refusal,
as to each class in applicant's multi-class application.
We conclude that the burden has been met only in regard to
applicant's request for registration of ACTIVE ORGANICS in
classes 3 and 5. The examining attorney has put in no
evidence that botanical extracts for use in making
cosmetics on the one hand, and cosmetics and personal care
items on the other are related, for likelihood of confusion
3 Applicant's Class 1 goods would appear to be marketed
exclusively to manufacturers of cosmetics. Applicant's Class 30
goods clearly could be marketed to manufacturers of food
products, but the possibility exists that they might also be
marketed at retail to home cooks who want to add food flavorings
to their dishes.
Ser No. 78116593
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purposes. It is manifestly insufficient for the examining
attorney to merely argue that the former are utilized in
the making of the latter. This does not show that
purchasers or users of the extracts would be the same class
of consumers as purchasers or users of the finished
products. The failure of proof is more glaring in regard
to applicant's Class 30 goods, as the examining attorney
has not even presented an argument why purchasers or users
of food flavoring additives would be confused by the use of
the same term on or in conjunction with cosmetics and
personal care items.
We reverse the Section 2(d) refusal of registration in
regard to Classes 1 and 30; we affirm that refusal as to
Classes 3 and 5. That applicant may be the prior user and
should not be cast in the role of a latecomer who has
adopted another's mark at its peril is not an issue with
which we can grapple in this ex parte proceeding. That is
an issue to be raised in an appropriate inter partes
proceeding.
Turning to the second ground for refusal, i.e., the
Section 2(e)(1) refusal to register ACTIVE ORGANICS on the
theory that it is descriptive of applicant's various
products, we affirm the refusal of registration as to all
classes.
Ser No. 78116593
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In response to the initial Office action refusing
registration, applicant submitted a piece of literature
concerning its products that states (emphasis added) that
its manufacturing facilities "create the finest Botanical
and Live Cell Extracts" by using "the highest caliber raw
materials available and by using a superior 'European Cold
Process' extraction method to preserve the activity of each
ingredient." The brochure also lists various plant
extracts and animal tissue extracts among the available
products of applicant. We take judicial notice that active
is defined to mean, among other things, "effective (opposed
to inert): active ingredients," and that organic is defined
to mean, among other things, "characteristic of, pertaining
to, or derived from living organisms." The Random House
College Dictionary pp. 14 and 936 (Rev. ed. 1982).4
The identifications of applicant's various products,
not being restricted in any way, would encompass organic
products derived from plant or animal tissue and, products
that are active rather than inert. Moreover, based on
applicant's brochure, its products appear to be
biologically or physiologically active organic products.
4 The Board may take judicial notice of dictionary definitions.
See University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983); Marcal Paper Mills, Inc. v. American Can Co.,
212 USPQ 852 (TTAB 1981).
Ser No. 78116593
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Thus, both ACTIVE and ORGANICS are descriptive of products
highlighted in applicant's brochure and encompassed by its
identifications.
In regard to the use of ACTIVE ORGANICS as descriptive
or non-distinctive terms for products such as applicant's,
we note that the examining attorney has introduced into the
record various excerpts retrieved from the NEXIS database,
including the following: "…a new collection of skin-care
products that contain hydrolyzed pearl extract, Vitamin C
and active organics that brighten skin tone, reflect light
and soften the appearance of fine lines and wrinkles."
Belleville News-Democrat, December 22, 2001. In addition,
the cited registration of ACTIVE ORGANICS for the Section
2(d) refusal is on the Supplemental Register. Finally, we
note that the examining attorney has entered into the
record various registrations for marks on the Principal
Register each of which includes the term ORGANICS and a
disclaimer of exclusive rights to that term. These
registrations cover cosmetics and personal care products,
food products, and vitamins and pharmaceutical products.
On this record, we have no doubt that the examining
attorney has made out a prima facie case for refusal of
registration under Section 2(e)(1). In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987) (examining attorney
Ser No. 78116593
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bears burden of establishing prima facie case of
descriptiveness; proposed mark is considered merely
descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Lanham Act, if it immediately
describes an ingredient, quality, characteristic or feature
thereof, or if it directly conveys information regarding
the nature, function, purpose or use of the goods or
services); see also, In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215, 217-218 (CCPA 1978).
Applicant argues that ORGANIC has various meanings;
that the various third-party registrations with disclaimers
of ORGANICS were not refused registration as descriptive;
that applicant's mark has been used since a date prior to
the registration of the third-party registrations; and that
"if Applicant elected to have the mark registered under the
Supplemental Register, the normal five years of use has
been greatly exceed[ed] and it would be transferred to the
Principal Register."
That ORGANIC is a term with various meanings does not
mean that the term ORGANICS is not descriptive when used on
or in connection with applicant's products. It is, of
course, well settled that the question whether a term is
merely descriptive is determined not in the abstract but,
rather, in relation to the goods or services for which
Ser No. 78116593
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registration is sought, the context in which it is being
used on or in connection with those goods or services and
the possible significance that the term would have to the
average purchaser or user of the goods or services. See In
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979) and In
re Recovery, 196 USPQ 830, 831 (TTAB 1977).
That the various third-party registrations were not
refused is not the point of the examining attorney. The
point is that the marks in each were registered because the
registrants disclaimed exclusive rights in ORGANICS, for
products akin to those identified in applicant's
application. Thus, the registrations support the
conclusion that ORGANICS is a descriptive term when used in
conjunction with marketing the goods of applicant.5
Finally, the purported long use of applicant's mark is
not in issue. Applicant has not sought registration on the
Principal Register under Section 2(f) of the Trademark Act
and a claim of acquired distinctiveness due to the length
and, if true, substantial exclusivity of its use. A term
which is descriptive and unregistrable on the Principal
Register absent proof of distinctiveness under Section 2(f)
5 The registrations, of course, do nothing to establish that
ACTIVE is descriptive for applicant's products. We rely on
applicant's brochure as evidence of the descriptiveness of that
term, as well as the dictionary definition of ACTIVE and the
NEXIS excerpts.
Ser No. 78116593
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is not automatically transferred to, or made automatically
eligible for registration on, the Principal Register,
merely because it has been used for five years. The user
of a term that is descriptive (but not generic) may choose
to register the term on the Supplemental Register without
any proof of distinctiveness, or may seek registration on
the Principal Register with an appropriate showing under
Section 2(f). Under the latter option, a claim, if it can
be made, of five years substantially exclusive and
continuous use may be accepted by the Office as prima facie
proof of distinctiveness; but much more evidence may be
required. Thus, contrary to applicant's apparent
conclusion, ACTIVE ORGANICS is not eligible for
registration on the Principal Register, without resort to a
claim of, and submission of proof of, acquired
distinctiveness, merely because the application asserts
that the mark has been in use for the identified goods for
more than five years.
Decision: The refusal of registration under Section
2(d) is reversed as to Classes 1 and 30 but affirmed as to
Classes 3 and 5. The refusal of registration under Section
2(e)(1) also is affirmed as to each of the four classes in
the application.