Professional Product Research, Inc.

Trademark Trial and Appeal Board

Jan 11, 2001

No. 75461701 (T.T.A.B. Jan. 11, 2001)

1/11/01 Paper No. 10
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Professional Product Research, Inc.
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Serial No. 75/461,701
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William H. Cox of Janvey, Gordon, Herlands, Randolph,
Rosenberg & Cox, LLP for Professional Product Research,
Inc.
Kelley L. Williams, Trademark Examining Attorney, Law
Office 115 (Tomas Vlcek, Managing Attorney).
_______
Before Seeherman, Quinn and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
An application has been filed by Professional Product
Research, Inc. to register on the Principal Register the
mark TEA TREE FOR TOES for “fungal medications, namely,
creams, ointments and sprays for foot care purposes
containing Tea Tree Oil” in International Class 5.1
Applicant included a disclaimer of the words “tea tree” in
its original application.
1 Application Serial No. 75/461,701, filed April 3, 1998, in
which applicant alleges a bona fide intention to use the mark in
commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/461701
2
Registration has been refused under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis that
the mark TEA TREE FOR TOES, when applied to the goods of
the applicant, is merely descriptive of them.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm.
The Examining Attorney contends that the mark TEA TREE
FOR TOES is merely a combination of the descriptive words
“tea tree” referring to “tea tree oil,” which is an
ingredient in applicant’s fungal medications, and “for
toes” which identifies the body part on which applicant’s
goods are to be applied; that these ordinary descriptive
terms convey an immediate idea to potential purchasers that
applicant’s goods consist of a fungal medication which has
“tea tree oil” as an ingredient and it is for the toes and
the foot.
In support of the refusal to register, the Examining
Attorney submitted (i) several excerpts from a Nexis search
to establish that tea tree oil is applied to toes to treat
fungal conditions; and (ii) several third-party
registrations containing disclaimers of words in marks
which identify the body parts for which the goods (relating
Ser. No. 75/461701
3
to medication or treatment) were intended (e.g., “hand(s),”
“foot” or “feet,” and “skin”).
A few examples of the excerpted Nexis stories
submitted by the Examining Attorney are reproduced below
(emphasis added):
(1) Headline: This Just In, What’s New?
Tea Tree for toes and feet, Tea
tree oil may not be advertised
during the evening news, but it is
a hot-selling remedy, according to
its promoters, “Sarasota Herald-
Tribune,” May 3, 1999;
(2) Headline: How to keep your feet
well-heeled, Avoid sharing towels
with people, as warm, moist areas
are ideal for the spread of
infections. Apply tea tree oil
between the toes to treat and
prevent athlete’s foot, “The
Gloucester Citizen,” July 21, 1999;
and
(3) Headline: Indian summer; Ayurvedic
remedies for summertime ailments,
Tea Tree Oil: The first solution to
this annoying problem is to clean
the feet with tea tree oil. Rub
this natural antiseptic oil between
your toes with a cotton swab,
“Natural Health,” May 15, 1998.
Applicant argues that its mark is suggestive and not
merely descriptive because (i) “tea tree is not one of the
ingredients” of applicant’s product, rather applicant’s
product is “tea tree oil in solution,” but it is not tea
tree branches, leaves, bark, roots, etc., and (ii)
Ser. No. 75/461701
4
applicant’s product can be used “all over the body,” not
just on the feet; that in this case the combination of
descriptive terms “creates a unique commercial impression”
(brief, pp. 2-4); and that there are three2 third-party
registrations which include the words ‘TEA TREE’ in the
mark and are for goods which include tea tree oil, but are
registered on the Principal Register. Further, applicant
argues that the mark is suggestive of or “brings to mind
sandals or shoes made of tea tree wood, toe cushions,
plasters or bandages made of tea tree leaves, socks woven
from parts of a tea tree, jewelry to adorn the foot, such
as rings, could be made of a part of a tea tree or a foot
or nail brush made of tea tree.” (Brief, p. 3.)
The test for determining whether a mark is merely
descriptive 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, or intended to be
used. See In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215 (CCPA 1978); and In re Bright-Crest, Ltd., 204
2 In its brief on appeal applicant included a reference to a
fourth registration. Despite the untimeliness thereof under
Trademark Rule 2.142(d), and the improper mere listing of same
[see In re Duofold, Inc., 184 USPQ 638 (TTAB 1974)], the
Examining Attorney stated that she did not object thereto. Thus,
we have considered all four third-party registrations, discussed
infra.
Ser. No. 75/461701
5
USPQ 591 (TTAB 1979). 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).
In the present case, we agree with the Examining
Attorney that TEA TREE FOR TOES is merely descriptive of
fungal medications containing tea tree oil for foot care.
The ordinary, commonly understood meanings of the words
“tea tree” and “for toes,” combined in the mark TEA TREE
FOR TOES, and used in the context of applicant’s goods,
immediately inform prospective purchasers that applicant’s
fungal medication is intended as a product for the
Ser. No. 75/461701
6
treatment of conditions of a person’s feet, and
specifically the toes. The mark names an ingredient in
applicant’s product and the part of the body that the goods
are intended to be used on. Thus, the mark TEA TREE FOR
TOES provides straight-forward information about the goods.
Applicant’s argument that the purchasing public would
think of other possible meanings (e.g., jewelry, sandals,
or other products which might have been made from a tea
tree) would require considering the mark in a vacuum.
These meanings would clearly not come to mind when the mark
is viewed in connection with fungal medication. Thus, in
the context of applicant’s goods (“fungal medications,
namely, creams, ointments and sprays for foot care purposes
containing Tea Tree Oil”), the mark merely describes the
goods to the purchasing public.
Applicant’s mark is not incongruous, creates no double
meaning, takes no imagination or thought as to meaning, and
does not create a commercial impression or meaning which
relates to anything except an ingredient of the goods and a
part of the foot.3
3 The case now before us is distinguishable from cases that
involve marks which are suggestive of a desired result of the use
of the goods such as, In re Nalco Chemical Company, 228 USPQ 972
(TTAB 1986) (VERI-CLEAN held not merely descriptive when used on
anti-fouling additives for use in refineries), and the cases
cited therein, including In re Pennwalt Corporation, 173 USPQ 317
Ser. No. 75/461701
7
Applicant’s argument regarding four third-party
registrations, all for marks which include the words “TEA
TREE,” is not persuasive. Those registrations include
words or elements which were considered not to be merely
descriptive, as a result of which the registrations were
issued with a disclaimer of “TEA TREE.” In the present
case, however, the mark as a whole, including all of the
elements, is merely descriptive.
Decision: The refusal to register under Section
2(e)(1) is affirmed.
(TTAB 1972) (DRI-FOOT held not merely descriptive when used on
anti-perspirant deodorant for feet).