Chanel, Inc.

Trademark Trial and Appeal Board

Mar 31, 2003

No. 76174403 (T.T.A.B. Mar. 31, 2003)

Mailing Date: Paper No. 14
March 31, 2003 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Chanel, Inc.
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Serial No. 76/174,403
_______
Diane B. Melnick and Susan Upton Douglass of Fross Zelnick
Lehrman & Zissu, P.C. for Chanel, Inc.
David Stine, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
_______
Before Hohein, Walters and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Applicant seeks registration of ULTRA CORRECTION for
“skin care preparations, namely moisturizer,” in
International Class 3.1 In his initial office action, the
examining attorney required applicant to enter a disclaimer
of exclusive rights to the term CORRECTION. Applicant
1 The application was filed on the basis of applicant’s intent to
use the mark in commerce. Prior to briefing of this appeal,
applicant filed an amendment alleging that the mark is in actual
use in commerce and has been since August 16, 2001.
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 76/174,403
2
responded by noting its disagreement with the examining
attorney’s rationale for making the requirement and with
the sufficiency of the evidence set forth in support of the
requirement.
The examining attorney made the requirement final,
thereby refusing to approve the mark for publication absent
entry of the disclaimer. See Section 6 of the Trademark
Act, 15 U.S.C. §1056. Applicant appealed and requested
reconsideration. The request was denied, the appeal was
resumed, and has been fully briefed. Applicant did not
request an oral argument. We affirm the requirement for a
disclaimer.
The examining attorney contends that “the term
‘correction’ and its immediate grammatical derivatives are
commonly used in the relevant trade to denote a general
type or class of cosmetics and skin care products which
purport to reduce or reverse the effects of aging on the
skin.” Brief, p. 2. Acknowledging applicant’s argument
that, if the term is descriptive at all, it is only
descriptive of products known as “concealers or cover-ups”
but not moisturizers,2 the examining attorney argues that,
2 “The only Class 3 goods identified with the term ‘correction’
are concealers or cover-ups, which are skin-toned color cosmetics
for concealment of blemishes and other imperfections. They are
not moisturizers, nor are they related to moisturizers.”
Applicant’s Brief, p. 2.
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3
if applicant is correct, then the term is deceptively
misdescriptive as used by applicant for a moisturizer.
Either way, the examining attorney reasons, the term must
be disclaimed as an unregistrable component of applicant’s
composite mark.
We are, then, left with the question whether the
examining attorney has made of record sufficient evidence
to establish that the term CORRECTION will be perceived as
merely descriptive or deceptively misdescriptive when used
in conjunction with applicant’s product. In assessing the
evidence and the likely perception of the term as used by
applicant, we do so from the point of view of the average
or ordinary consumer in the class of prospective purchasers
for applicant’s product. See In re Omaha National
Corporation, 819 F.2d 1117, 2 USPQ2d 1859, 1861 (Fed. Cir.
1987). Moreover, whether a term is merely descriptive (or
deceptively misdescriptive) is determined not in the
abstract, but in relation to the goods or services for
which registration of the term 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 because of the manner
of its use. See In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979).
Ser No. 76/174,403
4
In regard to the issue of descriptiveness, "[w]hether
consumers could guess what the product is from
consideration of the mark [or in this case, the term] alone
is not the test." In re American Greetings Corp., 226 USPQ
365, 366 (TTAB 1985). However, the evidence will have to
establish that CORRECTION immediately describes an
ingredient, quality, characteristic or feature of
applicant’s product or conveys information regarding the
nature, function, purpose or use of the product. See In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978); and In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987). In regard to the issue of deceptive
misdescriptiveness, the evidence would have to show that
the term CORRECTION misdescribes the goods; and also show
that it is deceptive, that is, that consumers would be
likely to believe the misrepresentation. In re Quady
Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984).
To support the disclaimer requirement, the examining
attorney has made of record printouts from the Office’s
computerized database of registered marks and pending
applications, and excerpts of articles retrieved from the
NEXIS database of publications and wire service reports.
We also have considered the specimen of use filed by the
applicant with its amendment to allege use, and the reprint
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of a web page (submitted by applicant) that features
applicant’s product for sale at www.macys.com. Additional
material which applicant has made of record, and which we
also have considered, includes web pages retrieved from the
internet, additional reprints from the Office’s database of
registered marks, and a full reprint (retrieved from the
internet) of an article submitted by the examining attorney
only in excerpt form (as retrieved from the NEXIS
database).
We also acknowledge applicant’s submission of copies
of the file histories for three registrations it has
obtained for marks that include the term CORRECTION, and
reprints of information about the status of these
registrations retrieved from the Office’s registration
database. While we have not ignored these file histories
and registrations, we can give them little weight. See In
re Nett Designs Inc., 236 F.3d 1399, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001) (“Needless to say, this court encourages
the PTO to achieve a uniform standard for assessing
registrability of marks. Nonetheless, the Board… must
assess each mark on the record of public perception
submitted with the application.”)
One evidentiary dispute must be considered before we
discuss the evidence. Applicant has objected to some of
Ser No. 76/174,403
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the NEXIS excerpts submitted by the examining attorney,
because they are derived from articles that appeared in
foreign publications. The examining attorney, in contrast,
argues that “the rationale of prior precedent” that
discounts such publications as not reflective of the
understanding of consumers in the United States “seems
questionable in the current electronic information age,”
when “all of the sources [of the examining attorney’s
periodical evidence] are readily available to U.S.
consumers via a few keystrokes.” Brief, p. 4. Applicant
acknowledges that U.S. consumers likely would have little
difficulty in obtaining such information, but argues that
the rationale for discounting foreign publications as
evidence of the descriptiveness of a term stems from “the
fact that there are different customs or usage of terms in
different countries.” Reply Brief, pgs. 4-5.
The Board has expressed some agreement with the point
made by the examining attorney, subject to case by case
review of the probative value of foreign publications
available through electronic means. See In re Jose
Remacle, __ USPQ2d __ (TTAB 2002) (Application serial no.
75/932,290) (November 18, 2002).3 In each case, the Board
3 Decision available at: http://www.uspto.gov/web/offices/com/
sol/foia/ttab/2eissues/2002/75932290.pdf
Ser No. 76/174,403
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can decide, inter alia, whether “customs or usage” render
the foreign publications devoid of probative value.
Nevertheless, in the case at hand, we find sufficient
evidence to support the disclaimer requirement without
resort to the foreign publications; their consideration
would, however, only bolster the basis for the requirement.
The two registrations referenced by the examining
attorney are nos. 2,450,253 and 2,454,186, for a design
mark (in one registration it also includes the word OBAGI).
Both registrations list the goods as “skin care
preparations, namely, cream, lotion, astringent, exfoliant,
moisturizer, cleansing lotion, lightener, blending cream,
corrector cream, emollient, toner, clarifier, eye cream,
sun screen and sun block,” in International Class 3 and
“medicated skin care preparations, namely, medicated cream,
lotion, exfoliant, lightener, blending cream, correction
cream, emollient,” in International Class 5. An
application referenced by the examining attorney, filed by
the owner of the two registrations referenced above, and
for which a notice of allowance has issued, is for the mark
“OMP INC” (and design) for goods identified as “non-
medicated skin care preparations, namely, skin creams,
lotions and solutions for the body, hands and face, skin
clarifiers, sun block and sun screen, skin cleansing creams
Ser No. 76/174,403
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and lotions, skin lighteners, skin toners, skin
moisturizers, skin exfoliants, cleansing gels, creams,
lotions and solutions and aloe vera based gel, astringents
for cosmetic purposes, skin emollients, eye creams,
blending creams, skin masks, corrector creams; and
cosmetics, namely, cream foundation, liquid foundation,
correcting cream, concealing cream, lipstick, lip liner,
eye shadow, eye liner, blush, mascara, facial loose powder,
facial pressed powder, tinted skin moisturizer and nail
polish; non-medicated protective lip care preparations,
namely, lipstick, lip balm, lip gloss, lip cream, lip
lotion and lip emollient,” in International Class 3 and
“medicated skin care preparations, namely, medicated cream,
lotion, astringent, exfoliants, moisturizer, cleansing
cream, cleansing lotion, skin lightener, blending cream,
correction cream, mask, emollient, toner, clarifiers, eye
cream, sun screen and sun block, skin lightener with sun
screen; topical analgesic; and pharmaceutical preparations
for the treatment of skin disorders,” in International
Class 5. (emphasis added)4
4 The examining attorney also made of record information
regarding another application, by a different entity, that
included references to “corrector cream” and “correction cream”
in the respective Class 3 and Class 5 identifications. However,
while the mark in that application has since been registered, the
identifications apparently were limited during examination,
Ser No. 76/174,403
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The NEXIS excerpts submitted by the examining attorney
include the following (emphasis added):
Headline: ERASING TIME’S LINES[:] PRODUCTS EFFECTIVE
AGAINST WRINKLES AND SAGGING, BUT DON’T EXPECT MIRACLES
…still alive, his search for the Fountain of Youth
probably would end at a pharmacy or department store
cosmetics counter where tiny jars and tubes promise to get
rid of crow’s-feet, laugh lines and other telltale signs of
aging.
Stores that once carried just a few selections of cold
creams and moisturizers now offer a variety of anti-sagging
creams, wrinkle correctors, line erasers and skin-firming
lotions.
Each line of cosmetics generally has at least three
products that promise younger-looking skin, giving shoppers
at least 35 choices at most stores.
The good news is that dermatologists say these products
work. They can reduce some lines, make skin a little
firmer and stop some of the pollutants and sun…
--Detroit Free Press (August 5, 2001); Byline: “Brenda Rios
Free Press Business Writer”
Headline: Uber Creams; IF THEY COST $100 PLUS, WHAT MUST
THEY DO?
…share of these ingredients, simplifying the search for
the fountain of youth.
That’s what Moorehouse likes about her cream. “This one
cream does it all—it has antioxidants, it is a good
exfoliant, it moisturizes and within weeks I had a more
even skin tone and my face felt softer, more hydrated.”
Moorehouse became hooked—and she’s hardly the only one
splurging on face creams that promise correction, retention
and prevention. The NPD Group, which tracks beauty and
retail trends, reports that skin-care products—specifically
anti-aging ones—showed the highest growth among department-
store cosmetics last year, increasing their total sales by
6 percent to $1.7 billion last year. …
because the references to these and other items are not among the
goods in the resulting registration.
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--Chicago Tribune (May 20, 2001); Byline: “By Marisa Fox.
Marisa Fox writes about beauty and fashion from New York.”
A third excerpt, from the San Francisco Chronicle
(November 25, 2001), by itself, is a bit cryptic. However,
applicant has placed the entire article in the record. Its
headline reads “Facing winter head-on[:] A simple
moisturizer isn’t enough when the weather goes south” and
the byline is “Cynthia Robins, Chronicle Beauty Writer.”
This article reports that “winter skin” is “tight and dry”;
that “[t]emporary fixes like a good moisturizer can make
your skin feel better,” but the “best kind of moisturizer,
particularly in the winter, will aid and abet the skin in
taking care of itself, and should contain some kind of AHA
(alpha hydroxy acid) or glycolic.” The article goes on to
provide advice about proper use of such products. In a
sidebar piece on “WEATHER-PROOFING SKIN” readers are
provided with a “very simple four-step system” to “protect
and defend” their skin. This piece reminds readers to
“cleanse,” “hydrate,” “correct” and “protect” their skin.
The sidebar also recommends products. Those products that
“correct” are “AHAs [which] are in a sense anti-oxidants as
well as exfoliants and do double duty. They hold down
free-radical production.”
Ser No. 76/174,403
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Applicant’s product, according to the web page showing
the product for sale at www.macys.com, is a “highly
effective lightweight lotion. Skin is firmed, resculpted
and thoroughly hydrated. The look of wrinkles is
dramatically reduced. Boosts skin’s natural processes at
all levels. Most effective when used after exclusive
massage based on principles of plastic surgery. SPF 10
provides UV protection.” On the specimen carton for
applicant’s product is the following introduction for a
listing of the benefits of use: “Lightweight lotion with
synergistically effective ingredients that act
simultaneously to correct every sign of age.” (emphasis
added)
Applicant insists that the “distinction between color
cosmetics and skin care products (including moisturizers)
is important.” Brief, p. 2. Applicant argues that its
evidence, including web pages and information on
registrations for other marks shows that “correction” is
used in Class 3 only for color cosmetics, not moisturizers,
and that the term “correction” could not be found at all in
searches for that term on the www.sephora.com and
www.gloss.com websites, which feature beauty products.
Applicant also minimizes the significance of the NEXIS
excerpts, irrespective of whether they are from U.S. or
Ser No. 76/174,403
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foreign publications, and even the full article from The
San Francisco Chronicle, because only one uses the precise
term “correction,” while the others use “corrects,”
corrector(s),” or “corrective.” In direct contrast to the
examining attorney, applicant argues that uses of any term
other than “correction” per se are not relevant to our
inquiry. Finally, applicant argues at length that its
success in obtaining registrations for three other marks
containing the term CORRECTION is “clear evidence that
Applicant has trademark rights in the term CORRECTION for
moisturizers” and that it “would be most unreasonable to
require a disclaimer for this mark [ULTRA CORRECTION], and
thereby limit Applicant’s exclusive rights in the term
CORRECTION, which has already been granted as a result of
the recently issued previous registrations.” Brief, p. 6.5
We disagree with applicant’s assertion that the only
relevant evidence is that which would show use of
5 Applicant also appears to lay blame for the disparate treatment
of its applications at the feet of the “mystified” male examining
attorney who has required the disclaimer in this instance. Reply
Brief, pgs. 3-4. [The file histories for applicant’s three
previous registrations, which applicant submitted, reveal that
those applications were examined by female examining attorneys.]
We make no assumptions about the familiarity of any of the
examining attorneys with cosmetics. Of course, any such
familiarity, or lack thereof, would be irrelevant to each
examining attorney’s inquiry, which must be based on the evidence
that applicant and each examining attorney put into each record,
and must be focused on likely perception of a term or mark by the
relevant public.
Ser No. 76/174,403
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“correction” per se with moisturizers. A product that,
like applicant’s, is used “to correct” can aptly be called
a “corrector” or “corrective” and the result when the
product is used is a “correction.” Thus each of the terms
can be descriptive insofar as one term may describe the
product, another may describe its action or effect, and
another may describe the result obtained. Accordingly, we
consider the NEXIS evidence, The San Francisco Chronicle
article, and registration evidence as probative of the
existence of a class of cosmetic products intended to
moisturize or hydrate and, at the same time, effect
corrections in one’s skin. That applicant has submitted
copies of some registrations or web pages that show
correction also is a term used for a different class of
products known as concealers or color cosmetics does not
reduce the probative value of the evidence regarding skin
care products that correct skin itself rather than correct
color imbalances.
We also disagree with applicant’s contention that
correction is only used for concealers or color cosmetics.
The two registrations made of record by the examining
attorney list products that appear to be in the class of
products known as concealers or color correctors, e.g.,
“lightener” and “blending cream” and “toner.” But they
Ser No. 76/174,403
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also list products that appear to treat rather than mask
the condition of the skin, e.g., “astringent, exfoliant,
moisturizer,” and “emollient.” We find nothing in the
record that would support the contention that the listing,
in these registrations, of “corrector cream” and
“correction cream” are references solely to color
correctors, as opposed to skin correctors. Indeed, because
identifications, in the absence of limitations, are
presumed to include all products within the scope of the
terms employed, registrant could be referring to both types
of products. Further, the application that the examining
attorney has made of record specifically lists “corrector
creams,” “correcting cream, concealing cream,” and
“blending cream, correction cream.” There does not appear
to be any reason to assume that “correcting cream” and
“correction cream” are references to concealers, when there
is a separate listing for “concealing cream.”6
Likewise, the NEXIS excerpts and San Francisco
Chronicle article clearly discuss products which are more
than just color correctors and work to correct deficiencies
or problems in the skin itself. Applicant’s product, by
6 In addition, insofar as “correction cream” is identified as a
Class 5 medicated product, this clearly is more than a mere
concealer or color product.
Ser No. 76/174,403
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the legends on its own carton also work on the skin itself.
The specimen carton refers to the product as an “anti-
wrinkle restructuring lotion,” which “boosts natural
processes” by which “skin is ‘bonded’ to its support
system”; wrinkles are “reduced”; skin is “firmed and
resculpted”; the product provides “continuous hydration”;
and “protects against UVA/UVB rays and skin-damaging free
radicals.”
On this record, we can only conclude that applicant’s
product is much more than a mere moisturizer and is to be
considered within that class of products that corrects skin
problems. As such, we find the term “correction” to be an
apt description of the type of moisturizer and of the
result the user will obtain for his or her skin. We cannot
concern ourselves with applicant’s other registrations,
which are not before us. Nett Designs, supra. Therefore,
disclaimer of the merely descriptive term CORRECTION is
appropriate in this case. Applicant has not argued that
the mark is unitary or presents a unique commercial
impression such that disclaimer of the merely descriptive
term is not necessary.
Because we find “correction” to be descriptive of
applicant’s product, we do not reach the alternative issue
Ser No. 76/174,403
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of whether the term is deceptively misdescriptive of
applicant’s product.
Decision: The requirement under Section 6 of the
Trademark Act, 15 U.S.C. § 1056, for a disclaimer of
“CORRECTION” apart from the mark as a whole, is affirmed.
The refusal of registration in the absence of a
disclaimer will be set aside and the mark published for
opposition if applicant, no later than 30 days from the
mailing date hereof, submits an appropriate disclaimer.
See Trademark Rule 2.142(g).