Maharishi Ayur-Ved Products Int'l., Inc.

Trademark Trial and Appeal Board

Mar 2, 2001

No. 75395048 (T.T.A.B. Mar. 2, 2001)

03/02/01 Paper No. 14
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Maharishi Ayur-Ved Products International, Inc.
________
Serial No. 75/395,046
Serial No. 75/395,048
_______
James C. Nemmers, Esq. for Maharishi Ayur-Ved Products
International, Inc.
Dominick J. Salemi, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney).
_______
Before Quinn, Chapman and Rogers, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
The two applications involved herein were filed on
November 24, 1997 by Maharishi Ayur-Ved Products
International, Inc. to register on the Principal Register
the marks KAPHA (application Serial No. 75/395,046) and
PITTA (application Serial No. 75/395,048), both for
“aromatherapy oils for personal use; massage oils; facial
masks, scrubs, creams and moisturizers; body lotions; and
hair conditioners and shampoos.” Applicant claimed a date
of first use of January 1992 in each application.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. Nos. 75/395046 & 75/395048
2
Registration has been finally refused in each
application under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the ground that applicant’s mark,
when used on applicant’s goods, is merely descriptive of
them.1
Applicant has appealed, and applicant and the
Examining Attorney have briefed the issue before us. An
oral hearing was not requested.
In view of the common questions of law and fact which
are involved in these two applications, and in the
interests of judicial economy, we have consolidated the
applications for purposes of final decision. Thus, we have
issued this single opinion.
The Examining Attorney contends that the words KAPHA
and PITTA each connote a particular body type (one of the
three body types in the Ayurveda, an alternative health or
medicine system2); and that the terms immediately describe
both the results or purpose of the goods (to alleviate
1 Both applications were published for opposition on July 7,
1998. However, letters of protest were granted by the Assistant
Commissioner for Trademarks, and jurisdiction in both
applications was restored to the Examining Attorney, who then
refused registration in each case.
2 The third Ayurveda body type is VATA (air/wind). Applicant
applied to register that term (application Serial No.
75/395,370), and the Board affirmed the Examining Attorney’s
refusal to register under Section 2(e)(1), in a decision dated
July 25, 2000. Application Serial No. 75/395,370 was held
abandoned by this Office in September 2000.
Ser. Nos. 75/395046 & 75/395048
3
various skin and hair conditions which are typical of the
involved Ayurveda body type) and the intended users of
applicant’s goods (persons of the specific Ayurveda type).
That is, these two terms will be understood by the
purchasing public to refer to products that will control or
alleviate problems relative to the body type defined as
“kapha” or “pitta,” respectively.
In support of the refusal to register in each
application, the Examining Attorney relied on the evidence
of record submitted with the letter of protest which
included, inter alia, the following: (i) definitions of
“kapha” (phlegm) and “pitta” (bile) from the Sanskrit -
English Dictionary; and (ii) excerpts from numerous printed
publications and from the Internet. Examples of the latter
include: Ayurveda: What Is My Body Type?, by Dr. Mary Jo
Cravatta, wherein she stated that “The translation of
‘kapha’ is biological water and its bodily principles are
from the two elements, earth and water,” and “‘Pitta’ is
translated as fire, although the term does not literally
mean ‘fire’...the bodily heat-energy, the pitta-doshas,
which manifests as metabolism...”; and Living Wholeness:
Concepts of Ayurveda: Vata, Pitta, and Kapha: The Three
Doshas [of the body] of Ayurveda, wherein it is stated that
Ser. Nos. 75/395046 & 75/395048
4
“Vata governs movement... Pitta governs heat... Kapha
governs structure and lubrication....”
The Examining Attorney also relies on applicant’s
specimens of record which include the following wording,
respectively: “HERBAL CONDITITONER FOR KAPHA” and “This
formula is especially for normal to oily hair (Kapha
type)”; and “HERBAL SHAMPOO FOR PITTA” and “This formula is
especially for fine, thinning, reddish or prematurely
graying hair (Pitta type).”
Applicant acknowledges that the respective terms KAPHA
and PITTA “may certainly suggest that the particular goods
with which the mark is used would be most beneficial if
used by someone with that particular mind-body type or
‘dosha’” (brief – Serial No. 75/395,046, p. 3); and that
the marks “suggest a purpose or use for a body care product
through a suggestive reference to a characteristic of the
user” (brief – Serial No. 75/395,048, p. 4). However,
applicant contends that while the words suggest the
characteristics to be treated, they do not impart a direct
connection between the mark and the goods; that because the
terms KAPHA and PITTA suggest a broad range of products and
services, consumers must exercise imagination, thought and
perception in order to conclude what the nature of the
goods or services may be; that registration of the
Ser. Nos. 75/395046 & 75/395048
5
applicant’s applied-for marks will not preclude legitimate
descriptive uses of the words “kapha” and “pitta”; and that
applicant’s parent company owns registrations for the marks
KAPHA and PITTA for “tea.”3
The test for determining whether a mark is merely
descriptive under Section 2(e)(1) of the Trademark Act is
whether the term immediately conveys information concerning
a quality, characteristic, function, ingredient, attribute
or feature of the product or service in connection with
which it is used. See In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture
Associates, 226 USPQ 285 (TTAB 1985); and In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979). A mark does not
have to describe every quality, feature, function, etc. of
the goods or services in order to be found merely
descriptive; it is sufficient for the purpose if the mark
describes a single significant quality, feature, function,
etc. thereof.
3 Applicant did not submit a copy of any registration. The fact
that applicant’s parent company may own registrations of the
currently applied-for terms for unrelated goods from those in
issue in these two applications is not relevant. Moreover, even
if copies of the registrations had been properly submitted, the
Board does not have the record of those registration files before
us, and each case must be decided on its own record. See In re
Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977).
Ser. Nos. 75/395046 & 75/395048
6
Further, it is well-established that the determination
of mere descriptiveness must be made not in the abstract or
on the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the term or phrase is being used on or in connection
with those goods or services, and the impact that it is
likely to make on the average purchaser of such goods or
services. See In re Consolidated Cigar Co., 35 USPQ2d 1290
(TTAB 1995); and In re Pennzoil Products Co., 20 USPQ2d
1753 (TTAB 1991). The question is not whether someone
presented with only the mark could guess what the goods
are. Rather, the question is whether someone who knows
what the goods are will understand the mark to convey
information about them. See In re Home Builders
Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and
In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).
We note that our primary reviewing court, the Court of
Appeals for the Federal Circuit, commented on the test for
mere descriptiveness in the case of In re Omaha National
Corporation, 819 F.2d 1117, 2 USPQ2d 1859, at 1861 (Fed.
Cir. 1987) as follows:
Finally, appellant would limit
merely descriptive rejections, as a
matter of law, to terms which identify a
characteristic or quality of an article
or service, for which proposition it
Ser. Nos. 75/395046 & 75/395048
7
cites Citibank, N.A. v. Citibanc Group,
Inc., 724 F.2d 1540, 1545, 222 USPQ 292,
296 (11th Cir. 1984). We cannot agree.
The factual situations in which mere
descriptiveness must be resolved are too
varied to lend themselves to resolution
under any rigid formula. Accord In re
Abcor, 588 F.2d at 813, 200 USPQ at 217-
218...
We agree with the Examining Attorney that the words
KAPHA and PITTA immediately and directly convey information
about both a significant result or purpose of applicant’s
goods, body lotions, shampoos, moisturizers, etc., (to
alleviate oily skin/hair conditions4), and the intended
users of the goods (people with oily skin/hair). The
record relied on by the Examining Attorney establishes that
the terms KAPHA and PITTA are associated with oily
skin/hair, and it is clear from applicant’s specimens of
use that its involved goods (body lotions, massage oils,
facial creams and moisturizers, hair conditioners and
shampoos, etc.) are specially formulated to alleviate the
problem of oily skin/hair.
4 Both the “kapha” and the “pitta” body types are described as
having oily hair and/or skin. See e.g., Ayurveda The Science of
Self-Healing, by Dr. Vasant Lad, at page 35, wherein the hair
characteristics of the “kapha” type are described as “thick,
oily, wavy, dark or light” and those of the “pitta” type are
described as “soft, oily, yellow, early gray, red”; and the skin
characteristics of the “kapha” type are described as “thick,
oily, cool, pale, white” and those of the “pitta” type are
described as “soft, oily, warm, fair, red, yellowish.”
Ser. Nos. 75/395046 & 75/395048
8
Thus, when the marks KAPHA and PITTA are viewed in the
context of applicant’s goods, the purchasing public
(including, but not limited to, those familiar with the
Ayurveda health system) would immediately understand the
purpose of the goods, namely, that applicant’s various
personal care products are for relieving or moderating the
condition of oily skin/hair. See In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Omaha National
Corporation, supra; In re Intelligent Instrumentation Inc.,
40 USPQ2d 1792 (TTAB 1996); and In re Time Solutions, Inc.,
33 USPQ2d 1156 (TTAB 1994).
In addition, the purchasing public would immediately
understand that the intended users of the goods are people
with oily skin/hair. See Hunter Publishing Co. v.
Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986). See
also, In re Camel Manufacturing Company, Inc., 222 USPQ
1031 (TTAB 1984), and cases cited (and distinguished)
therein.
The argument made by applicant that its marks are only
suggestive of a characteristic of the products or of a
characteristic of the intended consumer of the products is
not persuasive. Consumers will readily understand that
applicant’s body lotions, massage oils, hair shampoos, etc.
are for oily skin/hair, the “kapha type” or “pitta type”
Ser. Nos. 75/395046 & 75/395048
9
within the three body-mind types of the Ayurveda health
system. Applicant’s marks require no imagination or
thought in order to ascertain their meaning in relationship
to the goods either in the context of the purpose of the
goods or in referring to intended users of the goods. That
is, the terms immediately and without conjecture or
speculation describe a significant result/purpose of the
goods, as well as the intended users of the goods, and we
believe competitors would have a competitive need to use
this term. See 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §11:18 (4th ed. 2000).
When the totality of evidence referring to “kapha” and
that referring to “pitta” is considered, we are of the
opinion the applied-for marks KAPHA and PITTA are each
merely descriptive of the goods on which applicant uses the
marks, “aromatherapy oils for personal use; massage oils;
facial masks, scrubs, creams and moisturizers; body
lotions; and hair conditioners and shampoos.”
Decision: The refusal to register under Section
2(e)(1) is affirmed in each application.