Shyne Lab AG

Trademark Trial and Appeal Board

Jan 6, 2021

79254013 (T.T.A.B. Jan. 6, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 6, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Shyne Lab AG
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Serial No. 79254013
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Ursula B. Day, Esq., for Shyne Lab AG.

Julie Vo, Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.
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Before Kuczma, Lynch, and Dunn,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

I. Background
Shyne Lab AG (“Applicant”) seeks registration on the Principal Register of the
mark SHYNE, in standard characters, for:
Non-medicated toiletry preparations; non-medicated body
cleaning and beauty care preparations; bath preparations,
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not for medical purposes; non-medicated skin, eye and
nail care preparations; hair removal and shaving
preparations, namely, hair removing cream, wax for
removing body hair; non-medicated hair care preparations
and treatments; cosmetics; make-up; perfumery; essential
oils and aromatic extracts being aromatic oils; non-
medicated soaps; air fragrancing preparations; sunscreen
preparations for household use; hair lotions; hair dyes;
hair spray; hair nourishers; adhesives for affixing false
hair; false eyelashes; bleaching preparations and other
substances for laundry use; cleaning preparations;
dentifrices in International Class 3.1
The Examining Attorney refused registration of Applicant’s mark under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), as merely descriptive of the
identified goods. After the Examining Attorney made the refusal final, Applicant
appealed. Both Applicant and the Examining Attorney have filed briefs.
II. Descriptiveness
Section 2(e)(1) of the Trademark Act precludes registration of “a mark which,
(1) when used on or in connection with the goods of the applicant is merely
descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). “A mark is merely descriptive if it
immediately conveys information concerning a feature, quality, or characteristic of
the goods or services for which registration is sought.” Real Foods Pty Ltd. v. Frito-
Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1373 (Fed. Cir. 2018) (quoting In
re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017)). “The
major reasons for not protecting such [merely descriptive] marks are: (1) to prevent
the owner of a mark from inhibiting competition in the sale of particular goods; and

1 Application Serial No. 79254013 has a filing date of December 19, 2018 under Section
66(a) of the Trademark Act, 15 U.S.C. § 1141f, and requests an extension of protection
under the Madrid Protocol of International Registration No. 1454849. Applicant claims a
priority date of June 26, 2018.
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(2) to maintain freedom of the public to use the language involved, thus avoiding
the possibility of harassing infringement suits by the registrant against others who
use the mark when advertising or describing their own products.” In re Stereotaxis
Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1090 (Fed. Cir. 2005) (quoting In re Abcor
Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978)).
Descriptiveness must be assessed “in relation to the particular goods 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 goods because
of the manner of its use or intended use.” In re Bayer AG, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007) (citing Abcor Dev., 200 USPQ at 218). The
descriptiveness analysis concentrates on the identification of goods set forth in the
application. See In re Cordua Rests., Inc. 823 F.3d 594, 118 USPQ2d 1632, 1636
(Fed. Cir. 2016) (quoting Octocom Sys., Inc. v. Houston Comput. Servs., Inc., 918
F.2d 937, 16 USQP2d 1783, 1787 (Fed. Cir. 1990)). Evidence that a term is merely
descriptive to the relevant purchasing public “may be obtained from any competent
source, such as dictionaries, newspapers, or surveys.” Bayer AG, 82 USPQ2d at
1831; see In re Virtual Indep. Paralegals, 2019 USPQ2d 111512, *2 (TTAB 2019).
“These sources may include Websites, publications, and use ‘in labels, packages, or
in advertising material directed to the goods.’” N.C. Lottery, 123 USPQ2d at 1710
(citation omitted). The mark need not be merely descriptive of all the recited goods,
as we affirm the refusal if the mark describes at least one of the goods in each class.
See In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219
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(Fed. Cir. 2012) (for single-class applications, stating that a descriptiveness refusal
is proper, “if the mark is descriptive of any of the goods for which registration is
sought”) (quoting Stereotaxis Inc., 77 USPQ2d at 1089).
The Examining Attorney contends that the proposed mark is a minor
misspelling and phonetic equivalent of “shine,” which describes a feature of at least
certain of Applicant’s goods, specifically the non-medicated hair care preparations
and treatments. “Shine” is defined in relevant part as “to reflect light; glint or
glisten.”2 According to the Examining Attorney, “[t]he word “shine” is used to
describe a feature, characteristic, use or purpose of applicant’s hair care
preparations and treatments by reflecting light and making hair shine.3 Applicant
submitted an entry for “shine” from Vocabulary.com that includes the following
explanatory language: “…things that reflect light can be said to shine too, like a
diamond ring or clean, glossy hair.”4
To further support the refusal, the Examining Attorney introduced a screenshot
from Applicant’s own website promoting its “Color Protect Conditioner,” which
according to Applicant “moisturizes the hair, maintains its color intensity and
makes it shine.”5 See In re Reed Elsevier Props., 482 F.3d 1376, 82 USPQ2d 1378,
1380 (Fed. Cir. 2007) (appropriate to consider the applicant’s website to provide
context for and inform the understanding of the identification); In re

2 March 22, 2019 Office Action, TSDR 2 (American Heritage Dictionary).
3 6 TTABVUE 6 (Examining Attorney’s Brief).
4 October 2, 2019 Response to Office Action, TSDR 28 (vocabulary.com) (emphasis added).
5 December 10, 2019 Office Action, TSDR 2 (myshyne.com) (emphasis added).
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Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420 (Fed. Cir. 2005) (examining the
subject website in order to understand the meaning of terms in the mark). She also
submitted evidence of third party websites describing hair care treatments using
the word “shine,” such as the following (with emphasis added):
The Kerastase website features hair masks and
conditioner under the heading “Enhanced Shine &
Softness.6
The Ulta Beauty website offers “Kenra Professional
Shine Spray” for hair, “Matrix Biolage Styling Smoothing
Shine Milk,” “Devacurl High Shine Multi-Benefit Hair
Oil,” along with other hair care treatments under the
heading “Gloss & Shine.”7
The Virtue website includes a Q&A section on its
products, responding to a question about silicone as an
ingredient that “[s]ilicones tend to be very beneficial to
hair for smoothing, silkiness, and shine.”8
The NatureLab website promotes “Perfect Shine daily
detox shampoo, weightless conditioner and absolute-wow
shine mist to gently remove product build-up and add
immense shine.” The site reports that “80% of consumers
saw an improvement in hair luster and shine in 30 days!”9
An article on the TotalBeauty website is titled “14 Best Shine Serums and Sprays
for Lustrous Locks,” noting that “they create serious shine,” and that readers
“share which serums and sprays make their hair shine like a new penny.”10

6 March 22, 2019 Office Action, TSDR 3 (kerastase-usa.com).
7 Id. at 4-5 (ulta.com).
8 December 10, 2019 Office Action, TSDR 8 (support.virtuelabs.com).
9 Id. at 9-10 (naturelab.com).
10 December 10, 2019 Office Action, TSDR 3 (totalbeauty.com) (emphasis added).
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Applicant takes several approaches to countering the descriptiveness refusal.
First, Applicant briefly questions whether SHYNE would be perceived merely as a
misspelling of “shine.” Applicant argues that “Shyne” is a name. During
prosecution, Applicant submitted, for example, an October 2000 Washington Post
article about a rapper “who goes by the name Shyne,”11 a character on several
seasons of the TV series “Empire” referred to as “Leslie ‘Shyne’ Johnson,”12 and an
online “Names List” that includes an entry for “Shyne.”13 The latter webpage states,
“Shyne is very very [sic] rare boy name with few occurrences i.e., 2005, 2008, during
the decade which is not even used by anyone since 2009. Only 7 people have Shyne
as their first name.”14 The Babycenter website lists “Shyne” as “#13,188” in
popularity as a boy’s name.15 The Seven Reflections website, which features services
such as astrology readings, numerology readings, love tests, and tarot readings,
provides a meaning of the name “Shyne.”16 Given the nature and quantity of this
evidence, and considering the mark “in its commercial context,” N.C. Lottery, 123
USPQ2d at 1709, we do not find the evidence persuasive to show that consumers
would perceive Applicant’s mark as a name.

11 October 2, 2019 Response to Office Action, TSDR 6
12 Id. at 16 (Wikipedia.com), 50-51 (referring to the “Rapper Turned Actor” as playing the
character “Leslie ‘Shine’ Johnson on “Empire”), 64 (listing “Shyne Johnson, Shine Johnson”
from “Empire”).
13 Id. at 66.
14 Id.
15 Id. at 75.
16 Id. at 80.
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In the context of Applicant’s goods, and especially given that Applicant’s website
promotes its goods as imbuing hair with “shine,” we find that consumers would
perceive SHYNE as a misspelling of “shine.” A novel spelling or an intentional
misspelling that is the phonetic equivalent of a generic term is also descriptive if
purchasers would perceive the different spelling as the equivalent of the descriptive
term. See Nupla Corp. v. IXL Mfg. Co., 114 F.3d 191, 196, 42 USPQ2d 1711, 1716
(Fed. Cir. 1997) (holding CUSH-N-GRIP generic for cushioned tool handles); In re
Calphalon Corp., 122 USPQ2d 1153, 1164 (TTAB 2017) (holding SHARPIN, the
phonetic equivalent of “sharpen,” merely descriptive of knife blocks with built-in
sharpeners); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding
URBANHOUZING would be perceived by consumers as the equivalent of the
descriptive term URBAN HOUSING); In re Ginc UK Ltd., 90 USPQ2d 1472, 1475
(TTAB 2007) (“The generic meaning of ‘togs’ is not overcome by the misspelling of
the term as TOGGS in applicant’s mark. A slight misspelling is not sufficient to
change a descriptive or generic word into a suggestive word.”); Micro Motion Inc. v.
Danfoss A/S, 49 USPQ2d 1628, 1631 (TTAB 1998) (holding MASSFLO generic for
mass flowmeters).
Second, Applicant objects to the Examining Attorney’s focus only on hair care
treatments and preparations, to the exclusion of the other goods listed in the
identification. However, as noted above, if the mark is merely descriptive of any of
the goods identified in this single-class application, we affirm the refusal. See
Chamber of Commerce of the U.S., 102 USPQ2d at 1219. Thus, we must reject
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Applicant’s contention that the focus on hair preparations “is too narrow and
misleading.”17 While Applicant seeks to distinguish Chamber of Commerce of the
U.S., precedent is clear that “[i]f the Board affirms a refusal of an entire class based
on the descriptiveness of the mark for one or more goods in the class, then the
entire class will fail.” In re Positec Grp. Ltd., 108 USPQ2d 1161, 1171 (TTAB 2013);
see also In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988) (“it is a well settled
legal principle that where a mark may be merely descriptive of one or more items of
goods in an application but may be suggestive or even arbitrary as applied to other
items, registration is properly refused if the subject matter for registration is
descriptive of any of the goods for which registration is sought”), aff’d without pub.
op., 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989).
Third, Applicant maintains that its products do not themselves shine, and that
while “shine” may be “a result (or not!) upon application of such products,” this does
not render the mark descriptive.18 We disagree. A mark is merely descriptive if it
“‘conveys information regarding a function, or purpose, or use of the goods.’ In re
Abcor, [200 USPQ2d at 217] (citations omitted).” DuoProSS Meditech Corp. v. Inviro
Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012). In
Chamber of Commerce, 102 USPQ2d at 1220, the Federal Circuit pointed out that
in Stereotaxis, 77 USPQ2d 1087, it affirmed a Board finding that “STEREOTAXIS
was descriptive of certain magnetic medical devices and services because it

17 4 TTABVUE 5 (Applicant’s Brief). We note that Applicant had the option to pursue a
request to divide the application. See Trademark Rule 2.87, 37 C.F.R. § 2.87; TMEP
§ 1110.11.
18 4 TTABVUE 6 (Applicant’s Brief).
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described their functions and purposes....” In this case, “shine” describes a function
and purpose of Applicant’s goods. A consumer of hair care treatments would
immediately perceive Applicant’s mark as referring to the treatments making hair
shine. That is why third-party competitors such as Kerastase, Matrix Biolage, and
others use the term “shine” descriptively, and why the record shows that “shine” is
used to refer to types of hair care treatments. Finally, Applicant suggests in passing
that “it is entirely debatable whether these goods really actually do what the
Examiner says they are doing, i.e. conferring ‘shine’ to hair.”19 We find this
argument unconvincing, both because the evidence shows that hair care treatments
and preparations commonly are described as imbuing hair with shine, and because
Applicant touts that its own product “makes [hair] shine.”20
We find that “shine” merely describes a feature and purpose of Applicant’s hair
care treatments and preparations.
Decision: We affirm the refusal to register the proposed mark on the ground
that it is merely descriptive of Applicant’s goods under Trademark Act Section
2(e)(1).

19 4 TTABVUE 9 (Applicant’s Brief).
20 December 10, 2019 Office Action, TSDR 2 (myshyne.com) (emphasis added).