Aqua Day Spa, L.L.C.v.Beauty Emporium, Inc.

Trademark Trial and Appeal Board

Oct 3, 2001

No. 91116582 (T.T.A.B. Oct. 3, 2001)

10/3/01 Paper No. 13
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Aqua Day Spa, L.L.C.
v.
Beauty Emporium, Inc.
_____

Opposition No. 116,582
to application Serial No. 75/665,164
filed on March 22, 1999
_____

Robert T. Egan of Archer & Greiner, P.C. for Aqua Day
Spa, L.L.C.

John M. Cone of Akin, Gump, Strauss, Hauer & Feld, L.L.P.
for Beauty Emporium, Inc.
______

Before Chapman, Bucher and Holtzman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
Beauty Emporium, Inc. has filed an application to
register the mark AQUA on the Principal Register for
“health spa and beauty salon services” in International
Class 42.1
Aqua Day Spa, L.L.C. has opposed registration of the
mark alleging that opposer is presently constructing a

1 Application Serial No. 75/665,164, filed March 22, 1999, based
on applicant’s assertion of a bona fide intention to use the
mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 116582
2
health spa in southern California and has advertised the
business under the mark AQUA DAY SPA; that opposer is
considering expanding to other geographic locations; and
that applicant’s mark, AQUA, is merely descriptive of
applicant’s health spa services “in that it informs the
purchasing public of characteristics of a health spa.”
(Paragraph 4.)
Applicant denies the salient allegations of the
notice
of opposition.
Neither party took any testimony or submitted any
notices of reliance. However, on December 29, 2000 the
parties filed a stipulation signed by both parties’
attorneys which was offered in lieu of taking testimony,
and specifically waived any required notices of reliance.
The parties’ stipulation includes the following evidence:
(i) opposer’s answers to applicant’s interrogatories, and
any exhibits thereto, (excluding opposer’s answers to
applicant’s interrogatory Nos. 11 and 12); (ii)
applicant’s responses to opposer’s interrogatories, and
any exhibits thereto; (iii) opposer’s answers to
applicant’s document requests, along with the documents
produced pursuant thereto; (iv) applicant’s responses to
opposer’s document requests, along with the documents
Opposition No. 116582
3
produced pursuant thereto; and (v) dictionary definitions
of the words “aqua” and “spa.” Thus, the record consists
of the pleadings2; the file of the opposed application;
and the above-mentioned stipulation.
Both parties filed briefs on the case. An oral
hearing was not requested.
Opposer began advertising its services under its
name AQUA DAY SPA on or around June 1, 1999; and opposer
opened a day spa under the name AQUA DAY SPA in Santa
Monica, California on February 7, 2000. Some of the
services offered at opposer’s day spa include facials,
massages, mineral baths, manicures, pedicures and body
scrubs. Opposer has continuously operated its day spa
since February 2000.
Since June 1999 applicant has continuously operated
a health spa and beauty salon in University Park, Texas
(near Dallas) under the name AQUA SPA AT UNIVERSITY PARK
(shown on applicant’s brochure in special form). Some of
the services offered at applicant’s health spa and beauty

2 After the close of all trial periods, opposer filed (on April
19, 2001) a motion pursuant to Fed. R. Civ. P. 15(b) to amend
its notice of opposition to include an alternative claim,
namely, that if the term AQUA is not merely descriptive of
applicant’s health spa services, then it is deceptively
misdescriptive thereof. Applicant did not contest the motion to
amend, and argued the merits of the misdescriptiveness issue in
its brief on the case. We conclude that this issue was tried by
Opposition No. 116582
4
salon include facials, massages, manicures, pedicures,
waxing and hair cuts, hair coloring and perms.
The record establishes opposer’s standing to bring
this opposition. Thus, the only issues before the Board
are whether the term AQUA is either merely descriptive or
deceptively misdescriptive of “health spa and beauty
salon services.”
Opposer’s argument is summarized on page 18 of its
brief as follows:
Either Applicant uses water in
connection with its spa services, or
it does not. If it does, then its
mark, AQUA, meaning water, is
unregistrable because it is
descriptive of those services. If it
does not, then the mark is
unregistrable because it is
deceptively misdescriptive, given the
extensive use of water by other spa
owners in the industry.

Opposer specifically contends that according to the
dictionary “aqua” is defined as “water,” and there is
evidence establishing that “aqua” (or water) is a
significant component of applicant’s health spa and
beauty salon services, making the term merely descriptive
of said services. Alternatively, opposer contends that
there is evidence that the term “aqua” (or water) is
prevalent in the spa industry generally, thereby strongly

implied consent of the parties. Accordingly, opposer’s motion
Opposition No. 116582
5
suggesting that the average consumer associates spas with
“aqua” (or water), and that to the extent the term is not
merely descriptive, it is deceptively misdescriptive
because it then conveys a falsehood about applicant’s
services.
Applicant contends that there is a second, well
known meaning of the term “aqua,” namely that it is a
color; that the multi-step reasoning used by opposer
shows that the mark is suggestive, not merely descriptive
of its services; that opposer’s argument “no doubt then,
the average consumer considers the word ‘aqua’ to be
descriptive of the word ‘spa’ generally” (opposer’s
brief, p. 5) is completely without evidentiary support;
that many of the uses of the word “aqua” appear to be
trademarks; and that because the word “aqua” is not
merely descriptive of applicant’s services, it cannot
misdescribe the services either.
A term is considered merely descriptive, and
therefore unregistrable pursuant to Section 2(e)(1), if
it immediately conveys knowledge or information about the
qualities, characteristics, or features of the goods on
which it is used or intended to be used. On the other
hand a term which is suggestive is registerable. A

to amend under Fed. R. Civ. P. 15(b) is granted.
Opposition No. 116582
6
suggestive term is one which suggests, rather than
describes, such that imagination, thought or perception
is required to reach a conclusion on the nature of the
goods. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987).
The test for determining whether a term is
deceptively misdescriptive as applied to the goods
involves a two-part determination of (1) whether the
matter sought to be registered misdescribes the goods,
and (2) whether anyone is likely to believe the
misrepresentation. See In re Quady Winery, Inc., 221
USPQ 1213 (TTAB 1984).
Opposer bears the burden of proving, by a
preponderance of the evidence, its asserted grounds of
mere descriptive or alternatively, deceptive
misdecriptiveness. See Cerveceria Centroamericana, S.A.
v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307
(Fed. Cir. 1989). On this record we cannot find that
opposer has met its burden.
Among the documents submitted as evidence under the
parties’ stipulation are, inter alia, the following:
each party’s advertisements appearing in magazines (e.g.,
applicant’s in “The Highland Park Bagpipe,” and opposer’s
in “Los Angeles”); a photocopy of opposer’s brochure; a
Opposition No. 116582
7
photocopy of applicant’s brochure; opposer’s search
report by a private company of the mark AQUA DAY SPA for
a health and beauty spa; numerous third-party
registrations including the word AQUA; and photocopies of
several brochures from numerous resorts/spas (e.g., The
Lodge at Sky Londa, Ihilani Spa, The Centre for Well-
Being, The Spa at Doral, The Spa at the Vail Athletic
Club Hotel & Spa, Fisher Island Club Spa, Canyon Ranch
Spa Club at The Venetian, The Oaks at Ojai, Westglow Spa,
Merv Griffin’s Resort Hotel & Givenchy Spa, La Costa
Resort and Spa, The Greenbrier, Elizabeth Arden Red Door
Salon & Spa, and the Avon Centre Spa Salon and Store).
The Webster’s Ninth New Collegiate Dictionary
definitions were set forth by the parties within their
stipulation as follows:
aqua 1: WATER: esp.: an aqueous
solution (as of a volatile substance)
2: a light greenish blue color; and

spa 1 a: a mineral spring, b: a
resort with mineral springs 2: A
fashionable resort or hotel 3:
NewEng: SODA FOUNTAIN 4: a commercial
establishement with facilities for
exercising and bathing.

In addition, we take judicial notice of the
following definition of “aqua” from The Random House
Opposition No. 116582
8
Dictionary of the English Language (Second edition,
Unabridged, 1987):
--n. 1. Chiefly Pharm. a. water. b. a
liquid. c. a solution, esp. in water.
2. a light greenish-blue color. --
adj. 3. having the color aqua.

The brochures of various third-party spas clearly
indicate that water is an important aspect of certain of
the services which spas offer to their customers. For
example, the terms “hydrotherapy,” “hydration,” “bath,”
“whirlpool,” “shower,” and “pool” appear in many of the
brochures. Further, these brochures also clearly include
various uses of the word “aqua,” for example, “Aqua
Aerobics,” “Aqua Exercise,” “Aqua Interval,” “Aquacizer,”
“Aqua Flex,” and “Aqua Combo.” These uses of “aqua” from
opposer’s evidence are generally use as an adjective,
whereas “aqua” as a noun conveys the impression of a
product.
Moreover, the fact that water is used in certain spa
services (either specifically applicant’s services or spa
services generally), and the fact that several spas use
the term “Aqua” within their brochures do not prove that
the term “AQUA” is merely descriptive or deceptively
misdescriptive of “health spa and beauty salon services.”
All establishments use water, at least for cleaning
purposes, which does not make the term “AQUA” merely
Opposition No. 116582
9
descriptive of all services, e.g., hotel services,
restaurant services.
Even though water is utilized in some of the
services offered by a spa, applicant has not applied to
register the term “water” or the term “spa.” The
evidence shows these three separate words are distinct,
with different commercial impressions, “spa” connoting a
spring or a resort, “water” connoting the clear,
colorless liquid necessary to sustain life, whereas
“aqua” may connote water, or a bluish green color, or a
pharmaceutical term relating to a liquid solution.
Our primary reviewing court, the Court of Appeals
for the Federal Circuit, has made clear that
descriptiveness issues generally cannot be determined on
the basis of analogies drawn from terms other than the
term that is sought to be registered. See In re Seats,
Inc., 757 F.2d 274, 225 USPQ 364 (Fed. Cir. 1985). See
also, Levi Strauss & Co. v. R. Josephs Sportswear, Inc.,
28 USPQ2d 1464 (TTAB 1993); and Fuji Jyukogyo Kabushiki
Kaisha v. Toyota Jidosha Kabushiki Kaisha, 228 USPQ 672
(TTAB 1985). That is, even if the words “aqua” and
“water” and “spa” are related, we cannot focus on the
related terms, rather, we must focus on the applied-for
term itself. Moreover, by far the majority of the
Opposition No. 116582
10
evidence showing third-party uses of the term “AQUA” is
ambiguous--some even appearing to be trademark uses,
while others may be seen as descriptive uses.
Because it requires a multi-staged reasoning process
to reach opposer’s conclusion that “AQUA” is merely
descriptive of health spa and beauty salon services, the
term does not immediately and forthwith convey
information about a significant component of the involved
services. In addition, it is clear that while the term
“aqua” is defined as “water,” it is also defined as a
color and as a liquid solution, presumably these
definitions being common meanings of the term, all easily
understood by the purchasing public, making the term
suggestive, not merely descriptive of applicant’s
involved services. See In re The Registry Hotel
Corporation, 216 USPQ 1104 (TTAB 1983); and In re
Universal water Systems, Inc., 209 USPQ 165 (TTAB 1980).
Finally, opposer relies heavily on the cases of In
re Ralston Purina Company, 145 USPQ 575 (TTAB 1965); and
In re Pencils Inc, 9 USPQ2d 1410 (TTAB 1988). We find
both of these cases distinguishable from the situation
now before us. First, of course, both of those cases
were ex parte appeals, not inter partes opposition or
cancellation proceedings. Further, with regard to the
Opposition No. 116582
11
Ralston Purina case, the applied-for term “bite-size”
(held merely descriptive for breakfast cereal) appeared
on applicant’s specimens in the phrase “bite-size
shredded wheat” which, in turn, appeared under the mark
“WHEAT CHEX,” and applicant therein admitted that others
used the term in a merely descriptive sense, but
unsuccessfully argued both that its product was smaller
than “bite-size” and that the term had acquired
distinctiveness. With regard to the Pencils case,
(“pencils” and design held merely descriptive of retail
stationery and office supply services) a customer of a
stationery/office supply store would use the term
“pencil” to identify a specific product he or she wished
to purchase at the store, but the record before us does
not show that customers of a health spa and beauty salon
identify their desire to obtain an “aqua.”
Based on the sparse and unconvincing record before
us, we conclude that AQUA is suggestive rather than
merely descriptive of applicant’s services.
Although opposer argued that the term “Aqua” is
deceptively misdescriptive, there is no evidence that the
term misdescribes health spa and beauty salon services,
nor is there any evidence that anyone would likely
believe such a misrepresentation (if opposer has
Opposition No. 116582
12
established there was a misrepresentation). Simply put,
this record does not establish that the term “AQUA” is
deceptively misdescriptive of health spa and beauty salon
services.
Decision: The opposition is dismissed.