Grant Stevens, M.D., Inc. dba Marina Plastic Surgery Associates

Trademark Trial and Appeal Board

Jul 25, 2016

No. 85842423 (T.T.A.B. Jul. 25, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: July 25, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Grant Stevens, M.D., Inc. dba Marina Plastic Surgery Associates
_____
Serial No. 85842423
_____

Elisabeth A. Evert of Hitchcock Evert LLP,
for Grant Stevens, M.D., Inc.

Caitlin Watts-FitzGerald, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
_____
Before Seeherman, Taylor and Lynch,
Administrative Trademark Judges.
Opinion by Lynch, Administrative Trademark Judge:

Grant Stevens, M.D., Inc. dba Marina Plastic Surgery Associates (“Applicant”)
seeks registration on the Principal Register of the mark for “Non-
Serial No. 85842423
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invasive cosmetic medical procedures” in International Class 44.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under § 2(e)(1), 15 U.S.C. § 1052(e)(1), as merely descriptive of the identified
services, or, in the alternative, deceptively misdescriptive of them. Also, the
Examining Attorney rejected as insufficient Applicant’s claim, in the alternative, of
acquired distinctiveness. Applicant filed a notice of appeal and a request for
reconsideration, so the Board instituted this appeal and remanded the application
to the Examining Attorney to address the request for reconsideration. After the
Examining Attorney denied the request for reconsideration, the appeal was
resumed, and was fully briefed. Upon review of the file, the Board once again
remanded the case to the Examining Attorney to address Applicant’s proposed
amendment, in the alternative, to the Supplemental Register, that had been
overlooked in the request for reconsideration. The Examining Attorney then issued
an Office Action indicating the acceptability of the alternative amendment to the
Supplemental Register, such that it need not be included in the issues on appeal.
The appeal again was resumed.
We affirm the refusals to register.
I. Alternative Refusals Under Section 2(e)(1)

A. Descriptiveness

Section 2(e)(1) of the Trademark Act precludes registration of “a mark which,
(1) when used on or in connection with the [services] of the applicant is merely

1 Application Serial No. 85842423 was filed on February 6, 2013, asserting both first use
and first use in commerce on November 8, 2011.
Serial No. 85842423
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descriptive or deceptively misdescriptive of them.” 15 U.S.C. § 1052(e)(1); see also
15 U.S.C. § 1053 (service marks subject to same registration provisions as
trademarks). A term is merely descriptive within the meaning of Section 2(e)(1) “if
it immediately conveys knowledge of a quality, feature, function, or characteristic of
the goods or services with which it is used.” In re Chamber of Commerce of the U.S.,
675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); see also
In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015).
The Examining Attorney asserts that Applicant’s cosmetic procedures involve
the freezing of fat, and therefore FREEZE THE FAT merely describes a significant
feature of Applicant’s services. As evidentiary support, she points to Applicant’s
own promotional materials and statements, as well as websites showing numerous
competitors and other third parties using “freeze the fat” and similar wording to
describe the same type of cosmetic procedures.
Applicant argues that its mark is not descriptive because the “supercool[ing]” of
fat cells that occurs during its procedures does not involve actual freezing of the
fat.2 Although Applicant acknowledges its and others’ use of the terminology in the
mark to refer to these types of procedures, it contends that this is merely to “avoid
highly technical jargon when advertising their services,” and “[t]heir doing so does
not mean that the procedure does freeze fat cells.”3 In addition, Applicant claims
that because “freeze” is used in connection with more than one type of cosmetic

2 13 TTABVUE 7.
3 13 TTABVUE 8.
Serial No. 85842423
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procedure, and therefore has multiple connotations, it does not immediately convey
the nature of Applicant’s services. Having conceded that its mark apparently
misdescribes the services, Applicant nonetheless argues against the deceptively
misdescriptive refusal on the basis that skeptical consumers would not believe that
the cosmetic procedure truly involves freezing fat.
We assess Applicant’s mark “in relation to the [services] for which registration is
sought, the context in which it is being used, and the possible significance that the
term would have to the average purchaser of the [services] because of the manner of
its use or intended use.” See Bayer Aktiengesellschaft, 82 USPQ2d at 1831 (citing In
re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)).
Applicant identifies its services as non-invasive cosmetic medical procedures,
and the evidence shows that the proposed mark is used in connection with a
procedure referred to as “CoolSculpting,” a type of cryolipolysis, a medical
treatment that destroys fat cells.4 Applicant is just one provider of the
CoolSculpting procedure, under a non-exclusive license of equipment and the
patented procedure from ZELTIQ Aesthetics, Inc.5 The record includes voluminous
evidence of “freeze the fat” and very similar wording being used to describe such
procedures. A sample of the evidence includes:

4 August 5, 2014 Office Action at 33.
5 13 TTABVUE 2; November 27, 2013 Response to Office Action at 14-15.
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• A Florida-based news channel’s online article describing how to “get rid of fat
without surgery” because “doctors are using a new machine to freeze the
fat.”6
• A California-based news channel’s online article describing a “body shaping
treatment called Zeltiq that claims to freeze the fat away.”7
• An online stock recommendation article relating to the Coolsculpting
procedure, in which the stock analyst states that “This game-changing new
procedure, approved by FDA a little over a year ago, literally freezes the fat
away. This proprietary system freezes fat cells, causing them to die off over a
few-month period.”8
• The webpage of Dermatology Associates states, “By applying a low-
temperature treatment applicator to the area(s) of unwanted fat,
CoolSculpting freezes the fat cells beyond their viability.”9
• An online news article about “cool sculpting” with the headline “Freeze the
fat: New weight loss procedure turning heads.”10
• An online article in the New York Daily News with the tag line, “Freezing off
your fat? It sounds crazy, but doctors claim a new procedure, currently being
tested, will do just that.” The article quotes the author of a recent review of

6 May 21, 2013 Office Action at 2-3 (www.wsvn.com).
7 Id. at 33 (www.abclocal.go.com).
8 Id. at 5 (www.stockgumshoe.com).
9 Id. at 17 (www.dermatlanta.com).
10 Id. at 36 (www.fox4now.com).
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the cryolipolysis procedure (used in CoolSculpting) as saying, “Fat freezes at
a higher temperature than the rest of the skin does.”11
• An online article on cryolipolysis and CoolScultping from The American
Society for Aesthetic Plastic Surgery with the headline, “Does fat freezing
yield results similar to liposuction?”12
• An online article from Fox News about CoolSculpting, which states that “The
quick, FDA-approved procedure works by freezing a targeted area of fat
though [sic] a non-invasive applicator, while leaving the outside layers of
your skin unaffected.” It describes the use of “cooling panels in order to freeze
the fat cells beneath the skin.”13
• Emory Healthcare’s blog post on CoolSculpting, which states, “How does it
actually work? CoolScultping uses a fat freezing technology to safely and
effectively kill unwanted fat cells.”14
• An online article from ABC News on cryolipolysis quotes a medical journal
article stating that “Fat freezes at a higher temperature than the rest of the
skin does. Thus, at a certain temperature you can freeze the fat, but not
harm the skin.”15

11 Id. at 40 (www.nydailynews.com); see also December 16, 2013 Office Action at 7
(Applicant’s website, www.freezethefat.com, states that “CoolSculpting is an FDA-cleared
alternative to liposuction that uses Cryolipolysis fat-freezing technology to safely and
effectively kill unwanted fat cells.”).
12 December 16, 2013 Office Action at 11 (www.surgery.org).
13 Id. at 21-22 (www.magazine.foxnews.com).
14 August 5, 2014 Office Action at 2 (www.advancingyourhealth.org).
15 Id. at 4 (www.abcnews.go.com).
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• An article on Northwestern University’s website regarding cosmetic
procedures, which states, “Is it more effective to freeze your love handles,
killing the fat cells between two super-cooled plates in a procedure known as
cryolipolysis, or vacuum them away with liposuction?”16
• The “Fat Freezing Procedure” website describing the origins of cryolipolysis,
or CoolSculpting, and what led “to the investigation of the use of freezing fat
cells for the purpose of spot reduction in fat layers in other parts of the
body.”17
• The CoolSculpting website, which states, “CoolSculpting’s unique technology
uses controlled cooling to freeze and eliminate unwanted fat cells without
surgery or downtime.” In a description of the scientific origins of the
procedure, the webpage describes the controlled cooling technology, noting
“The treated fat cells are crystallized (frozen), then die.”18
• The Wikipedia entry for “Cryolipolysis,” which gives a description of the
controlled cooling in the procedure and states, “Generically the process can
also be known as ‘Fat Freezing.’”19
• An article from the Glamour website that refers to CoolSculpting as “a
procedure that freezes fat cells away. (More specifically: It creates ice crystals
in fat cells, which ultimately destroys them.)”20

16 Id. at 8 (www.northwestern.edu).
17 Id. at 17 (www.fatfreezingprocedure.org).
18 Id. at 19-22 (www.coolsculpting.com).
19 Id. at 33 (www.wikipedia.org).
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In addition, Applicant’s own promotional materials use close variations on the
terminology in the mark in a descriptive manner to explain its cosmetic procedure.
For example, the record includes:
• A page from Applicant’s website stating that “CoolSculpting has helped many
Los Angeles men and women freeze away their fat with no incisions, no
downtime and no surgery.”21
• A page from Applicant’s website describing CoolSculpting as “innovative fat-
freezing technology” and stating that “the CoolSculpting device will use a
combination of gentle vacuum pressure and deep cooling to treat the fat
below the skin and freeze unwanted fat cells.”22
The evidence shows that cosmetic procedures like Applicant’s freeze the fat of a
patient, such that the wording in the mark describes a significant feature and
function of Applicant’s services. Applicant concedes in its brief that “many
consumer-facing medical sources – including Applicant – euphemistically refer to
this biological process (called ‘cryolipolysis’) as ‘freezing’ of fat cells.”23 We find
unpersuasive Applicant’s argument that, regardless of this admitted widespread
usage of “freeze the fat” and very similar wording to describe the identified cosmetic
procedures, the wording is not descriptive because it is not technically accurate.
First, we find “freeze” to be a reasonably accurate description of what happens to

20 October 28, 2015 Office Action at 3 (www.glamour.com).
21 December 16, 2013 Office Action at 4 (www.freezethefat.com).
22 May 21, 2013 Office Action at 21-22 (www.freezethefat.com).
23 13 TTABVUE 8.
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the fat cells during the procedure at issue. One of the definitions of “freeze” included
in the record indicates it means being killed by cold,24 which is consistent with
Applicant’s characterization in its brief of CoolSculpting: “fat cells are supercooled
to a temperature that causes them to shut down their normal cellular function.”25
Second, the overwhelming use of “freeze” by others in the industry to explain this
procedure is sufficient to show that it is a correct description. For example, as noted
above, ZELTIQ, the source of the equipment and patented procedure licensed by
Applicant and others to perform this type of procedure, describes CoolSculpting as
freezing the fat.26
Third, even assuming, arguendo, that we were to accept Applicant’s
representations about the science of the procedure, the wording in a mark need not
be scientifically accurate to be descriptive. See, e.g., In re MetPath, Inc., 223 USPQ
88, 89 (TTAB 1984) (“In view of the common significance of the term ‘Pap test’ as a
test for detecting cancer of the female reproductive tract, we are of the opinion that
members of the general consuming public who encounter the designation ‘MALE-
P.A.P. TEST’ used in connection with applicant’s testing services are likely to
immediately perceive the designation as an indication that applicant’s services
involve tests for the detection of cancer of the male reproductive tract; that is, tests
for men which are analogous in nature to the ‘Pap test’ for women.”).

24 May 21, 2013 Office Action at 26 (“freeze: … To be killed or harmed by cold or frost”).
25 13 TTABVUE 7.
26 August 5, 2014 Office Action at 19-22 (www.coolsculpting.com).
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Finally, Applicant’s contention that the use of “freeze” in conjunction with other
cosmetic procedures, such as Botox injections to “freeze” facial muscles or the face,27
does not detract from the descriptiveness of “freeze the fat.” Considering Applicant’s
proposed mark in its entirety, it describes Applicant’s services, as shown by the
widespread use of the same wording to refer to or describe others’ identical
CoolSculpting services. The use of the word “freeze” with other wording to describe
a different type of cosmetic procedure does not undermine the descriptiveness of
“freeze the fat” in the context of Applicant’s services.
Accordingly, consumers would immediately understand FREEZE THE FAT,
when used in connection with Applicant’s services, to describe the key feature of
them. We therefore find that FREEZE THE FAT is merely descriptive.
B. Misdescriptiveness

We next turn to the alternative refusal based on misdescriptiveness. A mark is
considered deceptively misdescriptive if: (i) the mark misdescribes a quality,
feature, function, or characteristic of the goods or services with which it is used; and
(ii) consumers would be likely to believe the misrepresentation. See In re White
Jasmine, 106 USPQ2d 1385, 1394 (TTAB 2013); In re Quady Winery, Inc., 221
USPQ 1213, 1214 (TTAB 1984); TMEP § 1209.04 (April 2016).
Although we have held that the wording in the mark is descriptive of Applicant’s
procedures, for the purposes of this alternative refusal, we will accept Applicant’s
factual premise and presume that its cosmetic procedures do not technically involve

27 E.g., February 5, 2015 Office Action at 61-64.
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freezing fat, and therefore that the wording FREEZE THE FAT misdescribes the
services. Applicant argues that the second prong of the misdescriptiveness test
cannot be satisfied because consumers would not believe the misdescription.
Applicant contends that consumer skepticism about “imprecise and euphemistic
language” used to describe cosmetic procedures28 forecloses believability. Applicant
analogizes to words such as “burn” or “melt” in relation to fat,29 and contends that
consumers do not literally believe that burning or melting occurs. Thus, Applicant
claims consumers do not literally believe its procedure involves freezing fat. We
agree with the Examining Attorney that Applicant’s proffered analogy to “burning”
fat, a colloquial reference to “burning” calories, does not parallel “freeze the fat.”
Applicant submitted evidence regarding false or misleading advertising,
particularly of weight loss or beauty products, but did not include evidence specific
to skepticism about either cosmetic procedures in general or CoolSculpting in
particular.30 We cannot extrapolate from Applicant’s evidence that consumers would

28 13 TTABVUE 9.
29 E.g., February 5, 2015 Response to Office Action at 74-99, consisting of Google search
results list for the query “burn fat.” An Internet search engine “hit list” generally has little
probative value, because such a list does not show sufficient context in which the term is
used on the listed web pages. See Bayer AG, 82 USPQ2d at 1833.
30 E.g., February 5, 2015 Response to Office Action at 123-31 (Google search results list for
the query “consumers skeptical of health claims” having little probative value due to lack of
context); 132-36 (a blog post regarding consumer views on advertising in general and
including alleged consumer survey results; little probative value due to lack of background
on the basis for the article or the details underlying the survey); 137-44 (article regarding
consumer deception and herbal supplements; little probative value due to lack of relevance
to cosmetic procedures); 145-48 (an article about a Senate hearing critical of weight loss
product claims made by Dr. Mehmet Oz; little probative value due to lack of relevance to
cosmetic procedures); 149-51 (Federal Trade Commission warning about weight loss
products; little probative value due to lack of relevance to cosmetic procedures); 152-55
(article regarding deceptive advertising for beauty products such as mascara and wrinkle
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be skeptical of the believability of a cosmetic procedure’s ability to freeze fat.
Moreover, where articles by news media, academic institutions, and beauty
magazines characterize this procedure as freezing the fat, the characterization is
not analogous to the type of puffery and exaggerated claims that are the subject of
Applicant’s consumer skepticism evidence. Instead, we find that the widespread
description by reputable sources of Applicant’s type of cosmetic procedure as a way
to “freeze the fat” makes the presumed misdescription believable to consumers.
Therefore, the wording is deceptively misdescriptive, in the alternative.
C. Degree of Stylization

Applicant argues that even assuming the descriptiveness or misdescriptiveness
of the wording in the mark, the stylization in the mark suffices to make it
registrable with a disclaimer of “freeze the fat.”

The determination of whether the stylization of an otherwise unregistrable
designation is sufficiently distinctive in character to “rescue” the designation as a
whole depends on whether the stylization is “sufficiently distinctive so as to create a
commercial impression separate and apart from the unregistrable components.” In

cream; little probative value due to lack of relevance to cosmetic procedures);156-59 (article
in Lucky online entitled “5 Beauty Claims That Should Leave Women Skeptical,” none of
which relate to cosmetic procedures); 160-62 (article regarding a class action lawsuit arising
from anti-wrinkle cream advertising; little probative value due to lack of relevance to
cosmetic procedures); 163-64 (article from the Better Business Bureau of Tyler and
Longview, Texas regarding misleading weight loss programs and diet products; little
probative value due to lack of relevance to cosmetic procedures).
Serial No. 85842423
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re Bonni Keller Collections Ltd., 6 USPQ2d 1224, 1227 (TTAB 1987).31 The
presentation of Applicant’s mark in an unremarkable block blue font simply does
not possess the degree of stylization necessary to warrant allowance on the
Principal Register without proof of acquired distinctiveness. See In re Sadoru Group
Ltd., 105 USPQ2d 1484 (TTAB 2012) (stylization insufficient where the descriptive
word was shown in “slightly stylized block lettering”). Applicant’s stylization is
nowhere near the stylization of other marks that met the standard, such as the
CONSTRUCT-A-CLOSET mark discussed in In re Clutter Control Inc., 231 USPQ
588 (TTAB 1986), with its “tube-like rendition of the letter ‘C’ in the words
‘construct’ and ‘closet,’” bringing to mind a closet hanging rod. Id. at 589; see also
Sadoru Group, 105 USPQ2d at 1486-88 (reviewing precedential cases on degree of
stylization, with depictions of the marks at issue therein). Nothing about
Applicant’s block lettering or use of the blue colors in its font creates an impression
separate and apart from the wording “freeze the fat.” See In re Ervin, 1 USPQ2d
1665, 1666 (TTAB 1986) (“As to applicant’s contentions that its slanting script with
quotation marks bounding ORIGINAL in THE ‘ORIGINAL’ transforms the
laudatory/descriptive connotations of the mark into a distinctive designation, it is
difficult to see how this would alter the clear meaning of the mark’s dominating
word matter”). While the blue colors of the font may sometimes be associated with
cold temperatures, the color in Applicant’s mark does not make a separate

31 Applicant makes an argument in its brief on this issue, citing TMEP § 1202.05 (“Color as
a Mark”), which relates to marks consisting only of color. However, the cited TMEP section
is irrelevant to Applicant’s mark, which consists of stylized wording in a colored font.
Serial No. 85842423
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commercial impression that would cause it to be regarded as a distinctive element.
Thus, the degree of stylization in the case of this special form mark is not
sufficiently striking, unique or distinctive to overcome the descriptiveness or
deceptive misdescriptiveness of the mark as a whole, and allow for registration with
a disclaimer of “freeze the fat.”
II. Acquired Distinctiveness under Section 2(f)

Descriptive and deceptively misdescriptive marks may be registered on the
Principal Register under Section 2(f) with a showing of acquired distinctiveness.
Accordingly, we now consider Applicant’s claim and evidence of acquired
distinctiveness. Applicant bears the burden to establish a prima facie case of
acquired distinctiveness. See Yamaha Int’l Corp. v. Hoshino Gakki Co., Ltd., 840
F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988). The amount and character of
evidence required to establish acquired distinctiveness depends on the facts of each
case and on the nature of the mark sought to be registered. See Roux Labs., Inc. v.
Clairol Inc., 427 F.2d 823, 166 USPQ 34, 39 (CCPA 1970); In re Hehr Mfg. Co., 279
F.2d 526, 126 USPQ 381, 383 (CCPA 1960). Typically, more evidence is required
where a mark is so highly descriptive that purchasers seeing the matter in relation
to the named goods or services would be less likely to believe that it indicates source
in any one party. See, e.g., In re Bongrain Int’l Corp., 894 F.2d 1316, 13 USPQ2d
1727, 1729 (Fed. Cir. 1990); In re Seaman & Assocs., Inc., 1 USPQ2d 1657, 1659
(TTAB 1986); In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984).
Serial No. 85842423
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While we have reviewed the entire record, Applicant emphasized in support of
its claim of acquired distinctiveness the following evidence, some of which is
detailed in declarations by Dr. Grant Stevens, Applicant’s president:32
• Use of the mark since November 8, 2011;
• Applicant’s freezethefat.com website, which launched on November 18, 2011,
has received more than 144,000 visits from more than 97,509 unique
visitors;33
• Applicant’s “affiliated websites,” which promote Applicant’s services and
feature the mark, with visitors totaling “more than 885,000 since 2012”;34
• Applicant’s “40,000 email blasts sent out each month that contain the
FREEZE THE FAT mark;”35
• Ten billboards in the Los Angeles area that feature the mark, including one
in proximity to the Los Angeles Airport, for which Applicant provides an
estimated number of potential viewings based on traffic statistics;36
• Advertising expenditures of approximately $2 million, including for
billboards, ESPN advertisements, radio advertisements in the Los Angeles

32 13 TTABVUE 12-13 (Applicant’s brief).
33 November 27, 2013 Response to Office Action at 2-3 (Declaration of Grant Stevens, M.D.,
Applicant’s President).
34 Id. at 3; February 5, 2015 at 166 (Declaration of Grant Stevens, M.D., Applicant’s
President).
35 November 27, 2013 Response to Office Action at 3.
36 Id.; February 5, 2015 Response to Office Action at 206.
Serial No. 85842423
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and Dallas areas, email blasts, and print advertising (the specific publication
cited was the Los Angeles Times) featuring the mark;37
• Consumer exposure to the mark through radio and television advertisements
featuring the mark;38
• Applicant’s President’s uncorroborated assertion that its freezethefat.com
website “has been and remains currently the first result returned from a
search for ‘FREEZE THE FAT’ through the Google and Bing search
engines;”39
• Declaration of Lisa A. Rosas of ZELTIQ Aesthetics, Inc., a company which
developed and commercializes the CoolSculpting system, stating that during
research on the Los Angeles market for CoolSculpting, some consumers (no
number of consumers was provided) “inquired as to whether CoolSculpting
was related to FREEZE THE FAT.” Ms. Rosas stated that FREEZE THE
FAT was not included in the market research, and she characterized the
inquiries as “unaided brand recognition.”40
• Applicant’s licenses of the mark to four third-party medical groups in Dallas-
Fort Worth, Texas, Raleigh-Durham-Cary, North Carolina, Sonoma and

37 November 27, 2013 Response to Office Action at 3-4 ($1.2 million); February 5, 2015
Response to Office Action at 165-66 (declaration of Grant Stevens, M.D., Applicant’s
President) ($2 million); id. at 210-213; id. at 220-221.
38 February 5, 2015 Response to Office Action at 167-68, 182-85 (declaration includes
estimated numbers of viewers and listeners for the relevant radio and TV stations during
certain timeframes but does not include the number or timing of Applicant’s
advertisements).
39 November 27, 2013 Response to Office Action at 4.
40 Id. at 14-15.
Serial No. 85842423
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Napa Counties, California, and Charlotte, North Carolina, and examples of
the licensees’ use, through which Applicant claims additional use that inures
to its benefit; licensing revenue totaling more than $2 million; Applicant’s
four licensees each provided a declaration attesting to their belief that the
mark is a distinctive source-identifier;41
• Administration of more than 11,000 CoolSculpting procedures under the
mark;
• $2 million in revenue from Applicant’s CoolSculpting procedures under the
mark in 2013;42
• Applicant’s distribution of 100,000 hot beverage sleeves featuring the mark in
the Los Angeles area;43 and
• A brief discussion of Applicant’s services in an episode of the web series
“Comedians in Cars Getting Coffee,” precipitated by the stars of the episode
seeing one of Applicant’s aforementioned Los Angeles area billboards.44
The substantial evidence that the media and third parties in Applicant’s field
frequently use “freeze the fat” or substantially the same wording to describe these
cosmetic procedures shows that the mark is highly descriptive and, indeed,
indicates that consumers would not regard the phrase as a source indicator.
Therefore, Applicant has a heavy burden to show that its mark has acquired

41 July 7, 2014 Response to Office Action at 1, 119; February 5, 2015 Response to Office
Action at 1, 165, 168-69, 215-218.
42 February 5, 2015 Response to Office Action at 166.
43 Id. at 168, 208.
44 November 27, 2013 Response to Office Action at 1.
Serial No. 85842423
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distinctiveness. After a careful review of the record, we find that Applicant’s
evidence of acquired distinctiveness is insufficient to show that the applied-for mark
has come to be recognized as a source indicator for Applicant. Consumers frequently
encounter this wording as a general description of this type of cosmetic procedure,
and it is against this backdrop that we must weigh Applicant’s claim of acquired
distinctiveness.
With respect to Applicant’s claim of use of the mark since late 2011, we note that
this relatively short time does not even rise to the five-year mark that the
Trademark Act provides may be accepted as prima facie evidence of distinctiveness.
Moreover, any such use must be “substantially exclusive and continuous.” 15 U.S.C.
§ 1052(f). In that regard:
In respect of registration, there must be a trademark, i.e.,
purchasers in the marketplace must be able to recognize
that a term or device has or has acquired such
distinctiveness that it may be relied on as indicating one
source of quality control and thus one quality standard.
When the record shows that purchasers are confronted
with more than one (let alone numerous) independent
users of a term or device, an application for registration
under Section 2(f) cannot be successful, for distinctiveness
on which purchasers may rely is lacking in such
circumstances.

Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 940-41 (Fed. Cir.
1984); see also Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1682 (TTAB 2007).
The evidence of record shows that numerous third parties have used the same or
similar wording to describe the cosmetic procedure.
Serial No. 85842423
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Turning to the sales and adverting expenditures, while gross sales and
advertising figures may be indicative of Applicant’s success, especially in the Los
Angeles area market,45 they are not necessarily sufficient to prove acquired
distinctiveness. See In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056
(Fed. Cir 1999) (claim based on annual sales under the mark of approximately
eighty-five million dollars, and annual advertising expenditures in excess of ten
million dollars, not sufficient to establish acquired distinctiveness in view of highly
descriptive nature of the mark); In re Melville Corp., 228 USPQ at 972 (affirming
the rejection of Section 2(f) as insufficient, regardless of substantial advertising and
revenue figures, given “the absence of any direct evidence that the purchasing
public has come to recognize applicant’s slogan as a term identifying applicant’s
services”).
Similarly, while Applicant’s promotional website, emails, and beverage sleeves
feature the mark and have reached a large number of people, the same consumers
presumably may frequently encounter “freeze the fat” as a description of the
procedure used by many others. Also, Applicant’s promotion typically includes
source indicators identifying the providers of the services, such as “The Stevens
Institute” or “Marina Plastic Surgery,” such that consumers may not necessarily
view the descriptive wording FREEZE THE FAT as source indicating. In addition,
Applicant’s own descriptive use of the same or similar wording on its website
undercuts its reliance on this type of evidence to show acquired distinctiveness. And

45 February 5, 2015 Response to Office Action at 182-199, 224.

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Applicant’s success, whether in volume of proceedings or revenue therefrom, does
not indicate consumer recognition as a mark, given the highly descriptive nature of
the mark and widespread descriptive use by others of the same wording.
The declaration of Lisa Rosas provides no specifics whatsoever regarding
numbers of “consumers” who inquired about FREEZE THE FAT, and pertains only
to consumer perception in the Los Angeles area market.46 Moreover, given the lack
of detail, it is unclear whether consumer inquiries about “freeze the fat” referred to
the phrase as a descriptor for this type of cosmetic procedure, or whether they
actually referred to Applicant. Therefore, this evidence has little probative value.
The four identical licensee declarations submitted by Applicant are quite
conclusory, providing no background or rationale for the stated belief that the mark
has “achieved prominence” and is a “unique source identifier.”47 Thus, they do not
persuade us of the consumer perception of FREEZE THE FAT as a source indicator.
See In re Chem. Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828, 1830 (Fed. Cir.
1988) (finding conclusory declaration from applicant’s vice-president insufficient
without the factual basis for the declarant’s belief that the design had become
distinctive).
Ultimately, having considered the entire evidentiary record, we find that
Applicant has failed to prove that the relevant consumers view the proposed mark
as a distinctive source indicator for Applicant’s services. Although Applicant has

46 November 27, 2013 Response to Office Action at 14-15.
47 February 5, 2015 Response to Office Action at 215-218.

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demonstrated success in its business and substantial promotion of its services,
given the highly descriptive nature of the proposed mark, Applicant’s evidence does
not suffice to show that FREEZE THE FAT has achieved secondary meaning. “Our
society is better served if … highly descriptive or generic terms remain available for
use among competitors.” In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89, 91
(CCPA 1980) (footnote omitted). The record in this case reflects that the public,
including Applicant’s competitors, describe the CoolSculpting procedure using the
wording in the mark, or very similar wording. “Such a highly descriptive and
informative slogan should remain available for other persons or firms to use to
describe the nature of their competitive services.” In re Melville Corp., 228 USPQ at
972.
Decision: The refusal to register Applicant’s mark as merely descriptive, or in
the alternative, deceptively misdescriptive, and the rejection of Applicant’s claim of
acquired distinctiveness are affirmed. The alternative amendment to the
Supplemental Register will be entered, and the application will proceed to
registration on the Supplemental Register.