Chase Investments, Inc.

Trademark Trial and Appeal Board

Feb 11, 2021

88042209 (T.T.A.B. Feb. 11, 2021)

Mailed: February 11, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Chase Investments, Inc.
_____
Serial No. 88042209
_____
Reine Rooney of LegalForce RAPC Worldwide P.C.
for Chase Investments, Inc.

Christina M. Sobral, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
_____
Before Wolfson, Adlin and English, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant Chase Investments, Inc. seeks registration of the proposed mark
CAVIAR & CASHMERE, in standard characters, for non-medicated skin care and
related personal care and cosmetic products.1 The Examining Attorney refused

1 Application Serial No. 88042209, filed July 18, 2018 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on an alleged bona fide intent to use the proposed mark in
commerce. Applicant filed an Amendment to Allege Use on March 18, 2020, but it does not
appear that the Office has acted on the amendment. The identification of goods in its entirety
is: “Non-medicated skin care preparations; Fragranced face care preparations, namely, facial
cleansers, non-medicated facial moisturizers, non-medicated facial serums, and facial toners;
Eye cream; Body lotion; Body creme; Facial oils; Essential oils; Exfoliant creams; Make-up
remover; Wipes impregnated with a skin cleanser; Sun block; Astringents for cosmetic
purposes; Beauty masks; Lip glosses; Lotions for cosmetic purposes; Skin whitening creams;
Cosmetic preparations for skin care; Sun-tanning preparations; Sunscreen preparations;
Non-medicated hair treatment preparations for cosmetic purposes; Dry shampoos; Hair
This Opinion is Not a
Precedent of the TTAB
Serial No. 88042209

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registration on the ground that the proposed mark is deceptive in violation of Section
2(a) of the Trademark Act, in that it misdescribes the goods as containing caviar when
they do not. In the alternative, the Examining Attorney required Applicant to
disclaim CAVIAR under Sections 2(e)(1) and 6(a) of the Act, because it is deceptively
misdescriptive of the goods. After the refusal became final, Applicant appealed and
Applicant and the Examining Attorney filed briefs.
I. Evidence
“Caviar,” the term in question, is defined as “the salted eggs of a fish called a
sturgeon.” November 9, 2018 Office Action TSDR 18.2 When eaten, caviar is a
delicacy. However, caviar is also said to have beneficial effects on human skin, and
perhaps also human hair and nails.
For example, the Examining Attorney introduced an Elle article entitled “Why
You Should Put Caviar On Your Face,” which quotes a dermatologist as saying “there
is some data showing that caviar extracts can help slow skin aging … It’s loaded with
vitamins and amino acids that provide building blocks for skin cells to function
optimally.” Id. at 5-6. The article goes on to discuss a number of “skin caviar
products,” including: La Prairie’s Skin Caviar Dermo Beads and Skin Caviar Essence-
In-Lotion; Kerstin Florian’s Caviar Age Defense Serum; Alterna’s Caviar “range”; and
Nails Inc.’s Kensington Caviar. Id. at 5-8. The article concludes that caviar’s “long-

lotions; Hair waving preparations; Hair spray; Pomades for cosmetic purposes; Hair
shampoos; Hair conditioners; Hair gels; Non-medicated hair serums,” in International Class
3.
2 https://www.collinsdictionary.com/dictionary/english/caviar.
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purported benefits, from making skin glow to giving hair gleam, are more, it appears,
than a big-fish story.” Id. at 8. See also id. at 12-17 (article from “thefashionspot.com”
entitled “Here’s Why Caviar-Infused Beauty Products Are Worth the Hype”).
This evidence is not at all unique. To the contrary, the Examining has supported
it with corroborating evidence from a number of sources, showing that caviar is
perceived as having benefits for the skin, and that many skin care products include
caviar as an ingredient. Articles about caviar’s benefits appear on the ACSP Shop,
Beverly Hills MD, Caviar of Switzerland and Women’s Health websites. December
19, 2019 Office Action TSDR 6-22, 26-33.
The following examples are representative of the evidence that many skin, hair
and nail care products include caviar as an ingredient:

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May 30, 2019 Office Action TSDR 18-19. The Examining Attorney’s search of
Sephora’s website for “caviar” yielded 68 skincare and related products, and the same
search of Ultra Beauty’s website yielded 72. December 19, 2019 Office Action TSDR
38-55.
While Applicant uses CAVIAR & CASHMERE in connection with skincare and
haircare products, Applicant stated in response to the Examining Attorney’s
information requests that its goods “do not and will not contain caviar extract as an
ingredient.” December 2, 2019 Office Action response TSDR 11.
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For its part, Applicant relies on dictionary definitions of the proposed mark’s
constituent terms. “Caviar” is defined not only as the salted roe of a sturgeon or other
large fish, but also as “something considered the best of its kind.”3 “Cashmere” is
defined as “fine wool from the undercoat of the cashmere goat,” and “a soft twilled
fabric made or originally from cashmere.”4 May 9, 2019 Office Action response TSDR
15-16.
Applicant also relies on third-party registrations of marks containing the term
CAVIAR, along with evidence that several of these marks are in use for the goods
identified, as follows:
Mark/Reg. No. Goods/Services Register/Disclaimer/2(f)
CAVIAR & BANANAS

Reg. No. 5202821
caffeine-free coffee …
grain-based food bars …
trail mix …

bottled drinking water …

retail grocery stores

catering for the provision
of food and beverages …
restaurant services
Principal
LASH CAVIAR

Reg. No. 5460865
cosmetics, namely, eye
lash cosmetics in the
nature of eye shadow,
mascara and eye liner
Supplemental

LASH disclaimed
ZWYERCAVIAR

Reg. No. 4416522
personal care products
containing caviar,
namely, soaps,
perfumery, essential oils,
cosmetics, hair lotions,
dentrifices
Principal

3 https://www.merriam-webster.com/dictionary/caviar.
4 https://www.merriam-webster.com/dictionary/cashmere.
Serial No. 88042209

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Mark/Reg. No. Goods/Services Register/Disclaimer/2(f)
MYOXY-CAVIAR

Reg. No. 3254121
skin care creams and
lotions; face creams …
Principal
COCKTAIL CAVIAR

Reg. No. 5117818
distilled spirits Principal

COCKTAIL disclaimed
CAVIAR LIME

Reg. No. 5439927
distilled spirits; vodka;
gin
Supplemental

LIME disclaimed
VELVET CAVIAR

Reg. No. 5025867
on-line retail store
services featuring
apparel, bags, jewelry,
home décor and
accessories therefore (sic)
Principal
CANINE CAVIAR

Reg. No. 5558557
animal foodstuffs; pet
food; pet treats
Principal

CANINE disclaimed

Reg. No. 4496155
processed sunflower seeds Principal

SUNFLOWER disclaimed
CAVIAR

Reg. No. 2838497
cigars Principal

Id. at 26-113.
Applicant introduced evidence that it is affiliated with fashion and beauty blogger
and “influencer” Caitlyn Chase, who since 2011 has used CAVIAR & CASHMERE for
her blog:
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December 2, 2019 Office Action response TSDR 17, 25-28. Ms. Chase and her blog
have apparently been the subject of a number of news articles and television reports.
Id. at 19-21. Caviar & Cashmere has its own Facebook page and Ms. Chase’s
Instagram and Twitter accounts display the proposed mark CAVIAR & CASHMERE.
Id. at 22-24. Applicant also relies on background information about caviar (as a food)
and cashmere. Id. at 29-41. After Applicant launched its CAVIAR & CASHMERE
skin care line, the line and Ms. Chase received additional media attention. March 18,
2020 Office Action response TSDR 27-63, 176-179, 183.
II. Arguments
The Examining Attorney contends that CAVIAR misdescribes Applicant’s goods
because while many skincare and haircare products contain caviar, Applicant’s goods
do not. 6 TTABVUE 6-7. Furthermore, because caviar is an “appealing or desirable”
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ingredient of skincare and haircare goods, consumers would not only believe the
misdescription inherent in CAVIAR & CASHMERE, but also be more likely to
purchase Applicant’s CAVIAR & CASHMERE goods because of that misdescription.
Id. at 7-11.
Applicant argues, based in large part on In re Canine Caviar Pet Foods, Inc., 126
USPQ2d 1590 (TTAB 2018), that “caviar” does not convey that its goods contain
caviar. Rather, in using CAVIAR in connection with its goods, Applicant “is
attempting to evoke a feeling of superiority and luxury.” 4 TTABVUE 9. In any event,
even if consumers perceived the term CAVIAR as conveying fish eggs, “the caviar in
skin care products is seldom if ever used, so it is likely that consumers would not
believe that CAVIAR & CASHMERE contained actual caviar.” Id. In fact, Applicant’s
entire mark does not immediately describe Applicant’s goods, and consumers would
be unlikely to believe that the goods contain caviar, because consumers will not
believe that skincare products contain a mixture of “goat’s hair and fish eggs,” but
will instead “conclude that neither caviar nor cashmere are main ingredients as
cashmere is not an ingredient in skin products.” Id. at 10.
Applicant also contends that CAVIAR & CASHMERE is: (1) a double entendre,
suggesting “the chic, luxuriousness of cashmere and caviar;” (2) incongruous, because
caviar “is not a common ingredient in skin care;” and (3) unitary, because it “has 6
syllables and appears in a pleasing symmetrical structure – both portions beginning
with ‘CA’ and relating to luxury goods.” Id. at 11, 16. Finally, Applicant argues that
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the refusal to register CAVIAR & CASHMERE is inconsistent with how the Office
has treated allegedly similar third-party marks. Id. at 12-14.
III. Analysis
Under Section 2(a) of the Act, registration must be refused when a mark is
deceptive concerning the goods or a feature or ingredient thereof. Specifically, a mark
is deceptive when:
(1) it misdescribes the character, quality, function,
composition or use of the goods;

(2) prospective purchasers are likely to believe that the
misdescription actually describes the goods; and

(3) the misdescription is likely to affect the purchasing
decision of a substantial portion of consumers.

See In re Budge Mfg. Co., Inc., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988)
and In re E5 LLC, 103 USPQ2d 1578, 1579 (TTAB 2012). See also In re Spirits Int’l
N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1493 (Fed. Cir. 2009) (finding in the context
of Section 2(e)(3) that “the appropriate inquiry for materiality purposes is whether a
substantial portion of the relevant consumers is likely to be deceived, not whether
any absolute number or particular segment of the relevant consumers … is likely to
be deceived”). “It is well established that a mark may be found deceptive on the basis
of a single deceptive term that is embedded in a larger mark ….” In re White Jasmine
LLC, 106 USPQ2d 1385, 1392 (TTAB 2013).
A. CAVIAR AND CASHMERE Misdescribes the Goods
There is no dispute that in at least some contexts, “caviar” means salted fish eggs.
November 9, 2018 Office Action TSDR 18. It is also clear from the record, despite
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Applicant’s arguments to the contrary, that a number of skincare products contain
caviar (salted fish eggs), or extracts thereof. Id. at 5-8; May 30, 2019 Office Action
TSDR 18-19; December 19, 2019 Office Action TSDR 6-22, 26-33, 38-55. Applicant
concedes that its goods do not contain caviar, however. December 2, 2019 Office
Action response TSDR 11. Thus, the term CAVIAR in Applicant’s proposed mark
CAVIAR & CASHMERE misdescribes Applicant’s goods. In re ALP of South Beach,
Inc., 79 USPQ2d 1009, 1010 (TTAB 2006) (“We find that the word CAFETERIA used
in connection with restaurant services that explicitly exclude cafeteria-style
restaurants does misdescribe the services.”).
Applicant’s argument that CAVIAR & CASHMERE evokes “superiority and
luxury” is not well-taken. The problem is that we must consider misdescriptiveness
not in the abstract, but in the context of the goods, in this case skincare products. See
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002) (analyzing
descriptiveness in the context of the goods). Here, the record includes extensive
evidence that many skincare products contain caviar, an ingredient which has been
found, and is perceived, to be beneficial in these types of products. In fact, many of
these products have names, marks or labels which prominently display and use the
term “caviar” descriptively, such as: La Prairie’s Skin Caviar Dermo Beads and Skin
Caviar Essence-In-Lotion; Kerstin Florian’s Caviar Age Defense Serum; Alterna’s
Caviar “range”; Nails Inc.’s Kensington Caviar; La Sienne Luxurious Firming &
Lifting Serum (With Caviar Extract); Bergamo / Luxury Gold Collagen & Caviar
Wrinkle Care Repair; Bella Schneider Beauty Culminé Caviar & Carat Complete
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Anti-Aging Collection All-Day Crème; Skin Chemists Advanced Caviar Hand
Moisturizer; and Lancer Caviar Acid Peel, among others. In this type of commercial
environment, in which many skincare products contain (and tout) caviar as an
ingredient, many consumers will misperceive the term CAVIAR in CAVIAR &
CASHMERE as describing an ingredient in Applicant’s goods. See In re White
Jasmine, 106 USPQ2d at 1392 (“tea purchasers will clearly understand that because
white tea is a type of tea, the word ‘White’ in the term WHITE JASMINE designates
that the tea is white tea or at least contains white tea”).
We recognize that both “caviar” and “cashmere” are luxury goods, and that
because they do not appear to have anything in common, the proposed mark CAVIAR
& CASHMERE in its entirety could convey, at least in the abstract, “a feeling of
superiority and luxury.” Nonetheless, because our task is not to consider the mark in
the abstract, but in the context of skincare goods (which according to the record often
include caviar), we find that at least one meaning of the proposed mark is
misdescriptive. Cf. In re IP Carrier Consulting Grp., 84 USPQ2d 1028, 1034 (TTAB
2007) (“So long as any one of the meanings of a word is descriptive, the word may be
merely descriptive.”); In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984); In
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Furthermore, it is significant in this case that “a feeling of superiority and luxury”
would be entirely consistent with, and an apt description of, skincare products
containing caviar. Indeed, several articles indicate that caviar is an expensive and
luxurious ingredient of skincare products, as well as functionally superior to other
Serial No. 88042209

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ingredients. November 9, 2018 Office Action TSDR 6, 7 (quoting a dermatologist as
saying “caviar is expensive to eat, and expensive to have in your skin care, but there
is some data showing that caviar extracts can help slow skin aging” and mentioning
“La Prairie’s super-indulgent $1,000 caviar facial at the Ritz-Carlton in New York
City”) and 14 (stating that caviar is a “great moisturizer,” “boasts antioxidant
properties that protect skin,” and “if you’re looking to maintain elasticity, caviar
should be your skin care go-to”); December 19, 2019 Office Action TSDR 6 (mentioning
caviar extract’s “moisturizing, nourishing, vitamin, and retexturing qualities”); id. at
10-15 (discussion of “luxury caviar skincare,” asking whether “the skin benefits [are]
so amazing to justify the hefty price tag?” and concluding that they are “[i]f you’re
comfortable with possibly spending a little more (or sometimes a lot more”); id. at 27
(stating that “[t]hey may not be the cheapest buys, but man, caviar-infused products
can deliver some gorgeous results” for the skin). In other words, even if CAVIAR &
CASHMERE conveys “a feeling of superiority and luxury” to some consumers, that
may simply reinforce the message that Applicant’s skincare goods contain caviar, a
luxury good used in skincare products. Indeed, a number of expensive, luxurious
competing products contain caviar. And while we agree with Applicant that
consumers are unlikely to infer that Applicant’s goods contain cashmere, that does
not mean consumers would also discount the possibility that the goods contain caviar,
which is known to be a fairly common ingredient of skincare products.
We are not persuaded that CAVIAR & CASHMERE is a double entendre, or
incongruous. In fact, because the evidence reveals that caviar is commonly used in
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skincare products, even if the proposed mark calls to mind “the chic, luxuriousness of
cashmere and caviar,” consumers would still immediately misunderstand the nature
of Applicant’s goods, and assume they contain caviar when they do not.
Nor are we persuaded that CAVIAR & CASHMERE is unitary. The elements of a
unitary mark are “inseparable,” in that “the mark has a distinct meaning of its own
independent of the meaning of its constituent elements.” Dena Corp. v. Belvedere Int’l,
Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991). That is not the case here.
In fact, Applicant has “failed to cite any evidence, and the record contains none,
supporting its view that the alliteration in [CAVIAR & CASHMERE] creates a
commercial impression that is more than merely” misdescriptive. DuoProSS
Meditech Corp. v. Inviro Medical Devices Ltd., 695 F.3d 12147, 103 USPQ2d 1753,
1758-59 (Fed. Cir. 2012); In re Lean Line, Inc., 229 USPQ 781, 782 (TTAB 1986)
(“there is nothing in the record to suggest that the mere fact that both words which
form the mark begin with the letter ‘L’ would cause purchasers to miss the merely
descriptive significance of the term ‘LEAN’ or consider the entire mark to be a unitary
expression”). And we should point out that we recently rejected the argument that
CANINE CAVIAR is unitary, because there was no argument that it had an
additional meaning beyond luxury dog food, and the alliterative nature of the term
was not enough to make it unitary. In re Canine Caviar, 126 USPQ2d at 1599-1600.
Here, we find that CAVIAR & CASHMERE “is not an expression, like ‘LIGHT ‘N
LIVELY’ or ‘SUGAR & SPICE’ … which has any known use or application apart from
the goods in question.” In re Lean Line, 229 USPQ at 782. Rather, the proposed mark
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is merely the name of Ms. Chase’s blog.5 It contains a term which misdescribes
Applicant’s skincare goods, because they do not contain caviar, a fairly common
ingredient in skincare products.6 Consumers unfamiliar with Ms. Chase’s blog, and
even some familiar with the blog, could easily be deceived by the mark into believing
that Applicant’s goods do contain caviar. In short, CAVIAR & CASHMERE is
misdescriptive of Applicant’s goods.

5 While the blog has received some unsolicited media attention, there is no evidence that the
proposed mark is used for any other goods or services, has any other meaning or that it is
widely known.
6 Applicant’s reliance on third-party registrations for marks containing CAVIAR is
misplaced. Most of them are for unrelated goods or services, and thus not probative
concerning the misdescriptiveness of CAVIAR for skincare products. Of the three which are
registered for related products, one is on the Supplemental Register, and thus reveals nothing
about the treatment of CAVIAR under Section 2(e)(1). That leaves two third-party Principal
Register registrations for similar or identical goods, but there is no evidence concerning why
these marks were registered or whether or why the marks were not found to be
misdescriptive. Furthermore, one of these two, ZWYERCAVIAR (Reg. No. 4416522) is
registered for “personal care products containing caviar,” and that mark and the second
registration (MYOXY-CAVIAR, Reg. No. 3254121) could have been considered unitary. In
any event, neither the existence of third-party registrations nor any of the evidence in their
prosecution records (when it is of record) compels a specific result in later, allegedly
analogous cases. See, e.g., Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128
USPQ2d 1370, 1377 (Fed. Cir. 2018) (“these prior registrations do not compel registration of
[Applicant’s] proposed mar[k]”) (citing In re Cordua Rests., Inc., 823 F.3d 594, 600 (Fed. Cir.
2016)) (“The [US]PTO is required to examine all trademark applications for compliance with
each and every eligibility requirement, . . . even if the [US]PTO earlier mistakenly registered
a similar or identical mark suffering the same defect.”); In re Shinnecock Smoke Shop, 571
F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009) (“Even if all of the third-party
registrations should have been refused registration under section 1052(a), such errors do not
bind the USPTO to improperly register Applicant’s marks.”); In re Cooper, 254 F.2d 611, 117
USPQ 396, 401 (CCPA 1958) (“the decision of this case in accordance with sound law is not
governed by possibly erroneous past decisions by the Patent Office”). As we recently stated,
“[w]e do not believe that our decision here is inconsistent with the registration of the third-
party marks cited by Applicant, but to the extent that it is, it is the decision required under
the statute on the record before us.” In re Ala. Tourism Dept., 2020 USPQ2d 10485 at *11
(TTAB 2020).

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B. Prospective Purchasers Would Believe the Misdescription
Prospective purchasers would be likely to believe the misdescription. Indeed, the
record reveals that caviar is a fairly common ingredient in skincare products, so
consumers would believe that “caviar” identifies an ingredient in Applicant’s goods
as well, even though it does not. See e.g., In re White Jasmine, 106 USPQ2d at, 1392
(“Given the various types of teas (e.g. black, green, white and oolong), their popularity
and specific attributes, it is quite likely that customers of applicant’s products would
believe that applicant’s tea is white tea when it could be any of the above-noted
teas.”); In re E5, 103 USPQ2d at 1583 (where applicant sought registration of an
acronym used to identify copper even though its goods do not contain copper, “[w]e
find that, because the evidence shows that copper is a common supplement or
ingredient in dietary supplements, consumers will believe, based on the mark and
the goods at issue, that applicant’s goods contain copper”).
Applicant’s reliance on In re Canine Caviar is misplaced. There we found that
CANINE CAVIAR is not deceptive for pet food, in large part because while there was
a scintilla of evidence that caviar was on rare occasions offered to pets, “this is
overwhelmed by the countervailing evidence that caviar is almost never used as an
ingredient in pet food, and that after 20 years of use of CANINE CAVIAR, consumers
have not mistakenly believed it to contain caviar.” In re Canine Caviar, 126 USPQ2d
at 1597. Here, notwithstanding Applicant’s contention that caviar is an uncommon
ingredient in skincare products, the record establishes the opposite. Caviar is
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commonly used in skincare products, which is why consumers will be likely to believe
the misdescription.
C. The Misdescription is Likely to Affect Purchasing Decisions
Finally, because the record includes ample evidence that caviar is perceived as
beneficial for the skin, “the misdescription would make the product or service more
appealing or desirable to prospective purchasers.” In re White Jasmine, 106
USPQ2d at 1392-94; In re E5, 103 USPQ2d at 1584 (“Since the evidence shows that
copper has important and desirable health benefits, we find that its presence as an
ingredient … would be material to the decision of consumers to purchase applicant’s
dietary supplements.”); In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694,
1698-99 (TTAB 1992).
IV. Conclusion
Applicant’s proposed mark misdescribes Applicant’s goods as containing caviar, a
commonly-used and desirable ingredient of skincare products, and therefore some
consumers would not only believe the misdescription but be likely to purchase
Applicant’s goods as a result of it. The proposed mark is therefore deceptive.
Alternatively, even if the misdescription would not affect consumers’ purchasing
decisions, as set forth above the term CAVIAR in the proposed mark is deceptively
misdescriptive, because it misdescribes the goods and consumers would believe the
misdescription.

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Decision: The refusal to register Applicant’s proposed mark because it is deceptive
under Section 2(a) of the Trademark Act is affirmed. Alternatively, the refusal to
register under Sections 2(e)(1) and 6(a) of the Trademark Act in the absence of a
disclaimer of CAVIAR is affirmed, because that term is deceptively misdescriptive of
the goods. The Sections 2(e)(1) and 6(a) refusal only will be set aside if, within thirty
days of the mailing date of this order, Applicant submits to the Board a proper
disclaimer of CAVIAR. The disclaimer should be worded as follows: “No claim is made
to the exclusive right to use ‘CAVIAR’ apart from the mark as shown.” Any setting
aside of the Sections 2(e)(1) and 6(a) refusal as a result of Applicant submitting a
disclaimer will not affect the Section 2(a) refusal.