Perrigo Co. of Tennessee

Trademark Trial and Appeal Board

Nov 17, 1997

No. 74551764 (T.T.A.B. Nov. 17, 1997)

Paper No.
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV 17, 97
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Perrigo Company of Tennessee
___________
Serial Nos. 74/517,819, 74/551,764
___________
Harold W. Reick of Price, Heneveld, Cooper, DeWitt & Litton
for applicant.
Nancy L. Hankin, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
____________
Before Hohein, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Perrigo Company of Tennessee has filed two trademark
applications to register the mark HYDROXY RENEWAL for “skin
cream”1 and for “skin and bath preparations, namely, creams,

1 Serial No. 74/517,819, in International Class 3, filed April 28, 1994,
based on an allegation of a bona fide intention to use the mark in
commerce in connection with the identified goods.
Serial Nos. 74/517,819 and 74/551,764
2
lotions, oils, emollients, facial masques, moisturizers,
gels, ointments, bath oils and soaps.”2
In both cases, the Trademark Examining Attorney has
finally refused registration under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. 1052(e)(1), on the ground that
applicant’s mark is merely descriptive of its goods.
Applicant has appealed. In the interest of judicial
economy, as the issues in these two appeals are the same and
the facts are similar, we consider the appeals together and
issue a single opinion. Both applicant and the Examining
Attorney have filed briefs, but oral hearings were not
requested. We reverse the refusal to register in each case.
The Examining Attorney contends that HYDROXY RENEWAL is
merely descriptive of “the primary purpose of the goods
[which is] to accelerate cell renewal by using a product
containing alpha hydroxy acids, an exfoliant”; that
applicant’s skin creams, in fact, contain alpha hydroxy
acids; that the evidence of record supports the conclusion
that the term HYDROXY is recognized as a shortened reference
to alpha hydroxy acids; that the purpose of alpha hydroxy
acids is to facilitate skin renewal; that there is a
category of skin care products called renewal creams; and,
thus, that “HYDROXY and RENEWAL are descriptive when viewed

2 Serial No. 74/551,764, in International Class 3, filed July 21, 1994,
based on an allegation of a bona fide intention to use the mark in
commerce in connection with the identified goods. The application
includes a disclaimer of HYDROXY apart from the mark as a whole.
Serial Nos. 74/517,819 and 74/551,764
3
separately and retain the same descriptive meaning when
viewed together”. In support of the Examining Attorney’s
position, both records include excerpts of articles from the
LEXIS/NEXIS database.
Applicant contends, on the other hand, that the
Examining Attorney has improperly dissected the mark and
that the mark as a whole does not describe any particular
property or feature of applicant’s goods; that the evidence
of record does not show any descriptive use of the phrase
HYDROXY RENEWAL; that consumers would not recognize the term
HYDROXY as descriptive of a “constituent of a chemical
ingredient which may be contained by a skin cream”3; and
that “[w]hen combined with the word ‘Renewal,’ the composite
mark, at most, is only suggestive of a possible quality of
treatment or results obtained using the product and only
vaguely suggestive of a chemical element which it may
contain, and that only to a chemist and not an ordinary
consumer of the product”.
The test for determining whether a mark is merely
descriptive is whether the involved term immediately conveys
information concerning a quality, characteristic, function,
ingredient, attribute or feature of a product or service.
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); In re

3 We find applicant’s statement in this regard unpersuasive in view of
its disclaimer, in application Serial No. 74/551,764, of the term
HYDROXY.
Serial Nos. 74/517,819 and 74/551,764
4
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986). It is
not necessary, in order to find a mark merely descriptive,
that the mark describe each feature of the goods, only that
it describe a single, significant quality, feature, etc. In
re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
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 mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services. In
re Recovery, 196 USPQ 830 (TTAB 1977).
We take notice of the definition of HYDROXY as “adj. A
combining form used in the names of chemical compounds in
which the hydroxyl group is present”4 and of “hydroxyl” as
“n. The univalent radical or group OH, typical of bases,
certain acids, phenols, alcohols, carboxylic and sulfonic
acids, and amphoteric compounds.”5 The LEXIS/NEXIS evidence
submitted by the Examining Attorney includes numerous
references to “alpha hydroxy acid,” also referred to as AHA,
as an ingredient in skin creams and other cosmetics;6

4 The Random House Dictionary of the English Language, unabridged (2d
ed. 1987).
5 Webster’s II New Riverside University Dictionary, 1984.
6 For example: “Alpha hydroxy acids are considered the miracle workers
of the 1990’s. Derived mostly from fruit, they are highly touted
Serial Nos. 74/517,819 and 74/551,764
5
numerous references to a variety of chemical compounds
containing the term HYDROXY and pertaining to uses unrelated
to cosmetics; and single references to Ceramide Hydroxy
Acid, beta hydroxy acid, and olive hydroxy acid as
ingredients in cosmetics. The evidence also contains
several references to “renewal cream” as a particular type
of cosmetic skin cream.7
In each of the present cases, we find that the
Examining Attorney has not established that, when applied to
applicant’s goods, the term HYDROXY RENEWAL immediately
describes, without conjecture or speculation, a significant
feature or function of such goods. We believe that some
cogitation or mental processing would be required for
prospective customers of applicant’s goods to readily
perceive the merely descriptive significance of HYDROXY

because, like Retin-A, they speed up the . . . exfoliation process and
enhance the skin’s surface. They are available in varying strengths
from dermatologists and can be found in over-the-counter cosmetics
including night creams, hand lotion and lip gloss.” The Dayton Daily
News, February 13, 1996. “Alpha Nutrium is the main ingredient in
Pond’s new Age Defying Lotion and Self-foaming Facial Cleanser. Alpha
Nutrium delivers three alpha hydroxy acids, plus a unique mix of
vitamins A and E. The Plain Dealer, August 25, 1994.
7 For example: “Porcelana Renewal Cream is Dep’s entry into the
burgeoning category of alpha hydroxy acid products, which remove dead
skin cell leaving skin smoother.” Brandweek, April 18, 1994. “Oil of
Olay has created Visible Recovery Series, three products that nourish,
revitalize and renew the skin’s appearance. Renewal Cream is a
moisturizer with a hydroxy compound (salicylic acid) that . . .
exfoliates the skin’s top layers . . .” The Atlanta Journal and
Constitution, April 3, 1994. “In skin care Naturistics continues to
focus and expand its business. Last year’s introduction of Alpha
Natural skin renewal cream and lotion reformulated with a multifruit AHA
complex has been an important entry . . .” Chain Drug Review, July 3,
1995.
Serial Nos. 74/517,819 and 74/551,764
6
RENEWAL as it pertains to applicant’s skin care products.
The Examining Attorney has established that RENEWAL, in
combination with “cream” or “lotion,” would describe a type
of exfoliating skin product and that “alpha hydroxy acid” is
a common ingredient in an exfoliating cream or lotion.
However, considering the mark as a whole, we find that the
combination of HYDROXY and RENEWAL in the mark herein is
somewhat incongruous such that the meaning of the phrase is
not immediately apparent.8
We recognize that prospective purchasers are likely to
ultimately conclude, upon viewing the mark in connection
with the identified goods, that the product is a renewal
cream containing alpha hydroxy acids. However, we believe
that some thought process is required to draw that
conclusion and, therefore, while the mark may be highly
suggestive in connection with the identified goods, it is
not merely descriptive thereof. Further, we recognize that
we must resolve whatever doubt we may have regarding the
merely descriptive character of the mark in favor of
applicant and the mark should be published for opposition.
See, In re Rank Organization Ltd., 222 USPQ 324, 326 (TTAB
1984) and cases cited therein.

8 We note that these applications are based on a bona fide intention to
use the mark in commerce and, thus, no specimens are of record. If, at
such time as specimens are submitted, the mark on those specimens
appears to be HYDROXY RENEWAL CREAM, then the issues both of the mere
descriptiveness of the mark and whether such use is a material
alteration of the mark as originally applied for may bear consideration.
Serial Nos. 74/517,819 and 74/551,764
7

Serial Nos. 74/517,819 and 74/551,764
8
Decision: The refusal under Section 2(e)(1) of the Act is
reversed in each case.
G. D. Hohein
P. T. Hairston
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board