Tri-Coastal Design Group, Inc.

Trademark Trial and Appeal Board

Apr 2, 2013

No. 85291243 (T.T.A.B. Apr. 2, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 2, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Tri-Coastal Design Group, Inc.
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Serial Nos. 85291243, 85291532 and 85295846
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Tedd S. Levine for Applicant Tri-Coastal Design Group, Inc.

James Stein, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop,
Managing Attorney).
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Before Quinn, Greenbaum and Masiello, Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Tri-Coastal Design Group, Inc. applied to register on the Principal Register
the standard character marks POMEGRANATE GARDENIA, WATERLILLY
PEAR, and ORANGE CHIFFON for “bath gel; bath salts; bath soaps; body cream;
body lotion; body oil; body scrub; body sprays; bubble bath; dusting powder; foot
scrubs; lip balm; lip gloss; liquid soap; nail polish; reeds and scented oils sold as a
unit for use in room scent diffusers,” in International Class 3.1

1 Serial Nos. 85291243 (filed April 10, 2011), 85291532 (filed April 11, 2011) and 85295846
(filed April 14, 2011), respectively, based on applicant’s bona fide intent-to-use the marks in
commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
Serial Nos. 85291243, 85291532 and 85295846
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The examining attorney refused registration of applicant’s marks on the
Principal Register on the ground that each mark merely describes a scent or flavor
of the identified goods under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1).
When the refusals were made final, applicant filed requests for reconsideration in
which it conceded that the terms POMEGRANATE, PEAR and ORANGE merely
describe the scent, flavor and/or color of its bath and body products, and disclaimed
those terms;2 however, upon reconsideration the examining attorney maintained his
refusals. These appeals ensued. Applicant and the examining attorney have filed
briefs.
As the three appeals involve common issues of law and fact, and the
evidentiary records and arguments are highly similar, the Board will decide the
appeals in this single opinion.
The Arguments
In each application applicant contends that the proposed mark as a whole is
just suggestive. Applicant argues that the terms “GARDENIA,” “WATERLILLY”
and “CHIFFON” give a consumer “a feeling of the tropics”, “a feeling of tranquility
and calmness” and “a feeling of silkiness or something feminine,” respectively, all of
which require “unrestrained imagination.” (App. Br., p. 3).
The examining attorney maintains that each of the marks is merely
descriptive of a scent or flavor of applicant’s goods. Each application file includes
evidence introduced by the examining attorney that shows third-party uses of
various names of scents and flavors in connection with bath and/or body products.

2 See also App. Br., pp. 3 and 5.
Serial Nos. 85291243, 85291532 and 85295846
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The Law
A mark is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function, purpose or use of the goods or
services. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (TTAB
2007); and In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A mark need not immediately convey an idea of each and every specific
feature of the applicant’s goods or services in order to be considered merely
descriptive; rather, it is sufficient that the mark describes one significant attribute,
function or property of the goods or services. In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973). A
descriptiveness refusal is proper if the mark is merely descriptive of any of the
goods or services for which registration is sought. In re Chamber of Commerce of
the United States of America, 675 F.3d 1297, 102 USPQ2d 1217 (Fed. Cir. 2012);
and In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005).
Whether a mark is merely descriptive is determined not in the abstract, but in
relation to the goods or services for which registration is sought, the context in
which it is being used on or in connection with the goods or services, and the
possible significance that the mark would have to the average purchaser of the
goods or services because of the manner of its use. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). It is settled that “[t]he question is not whether
someone presented with only the mark could guess what the goods or services are.
Serial Nos. 85291243, 85291532 and 85295846
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Rather, the question is whether someone who knows what the goods or services are
will understand the mark to convey information about them.” In re Tower Tech
Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
When two or more merely descriptive terms are combined, the determination
of whether the composite mark also has a merely descriptive significance turns on
the question of whether the combination of terms evokes a new and unique
commercial impression. If each component retains its merely descriptive
significance in relation to the goods or services, the combination results in a
composite that is itself merely descriptive. See, e.g., DuoProSS Meditech Corp. v.
Inviro Medical Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753 (Fed. Cir. 2012)
(SNAP SIMPLY SAFER is merely descriptive for “medical devices, namely,
cannulae; medical, hypodermic, aspiration and injection needles; medical,
hypodermic, aspiration and injection syringes”); In re Oppedahl & Larson LLP, 373
F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM is merely descriptive
of computer software for managing a database of records that could include patents
for tracking the status of the records by means of the Internet); In re Petroglyph
Games, Inc., 91 USPQ2d 1332 (TTAB 2009) (BATTLECAM is merely descriptive of
computer game software); In re Tower Tech Inc., 64 USPQ2d at 1317
(SMARTTOWER is merely descriptive of commercial and industrial cooling towers);
and In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS is
merely descriptive of computer programs for use in development and deployment of
application programs).
Serial Nos. 85291243, 85291532 and 85295846
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The Federal Circuit’s opinion in In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987), in which an applicant filed to register the term APPLE PIE as a
trademark for “potpourri”, is of particular interest in the present appeals. In that
case, the Board affirmed the refusal to register under Section 2(e)(1) on the ground
that the applied-for mark is merely descriptive of the scent of the potpourri, that is,
the potpourri is scented to smell like apple pie. Applicant’s catalog showed this
scent among others for its potpourri, including “Gingerbread,” “Spice Cake,” “Cherry
Cobbler,” “Blueberry Muffin,” “Peach Cobbler,” “Strawberry Shortcake,” and
“Cinnamon Roll.” In affirming the Board’s decision, the Federal Circuit relied on a
decision of its predecessor court finding that the term CRÈME DE MENTHE is
merely descriptive of a flavor for candy. In re Andes Candies Inc., 478 F.2d 1264,
178 USPQ 156 (CCPA 1973). The Federal Circuit also pointed out that a term may
be descriptive even though it merely describes only one of the qualities or properties
of the goods, and that such qualities or properties include “color, odor, function,
dimensions, or ingredients.” In re Gyulay, 3 USPQ2d at 1010, citing Zatarains, Inc.
v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 217 USPQ 988, 994 (5th Cir. 1983).
The Federal Circuit concluded that the term APPLE PIE describes the scent of
applicant’s goods, especially because potpourri is sold for and by its scent.
The Record
The appeals before us include some overlapping evidence, as well as evidence
that is specific to the respective marks sought to be registered. We will first set
Serial Nos. 85291243, 85291532 and 85295846
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forth the evidence that is present in all of the files, and then make reference to the
more specific evidence introduced with respect to each proposed mark.
Insofar as the overlapping evidence is concerned, the examining attorney
introduced excerpts of third-party websites showing the names of various scents
and flavors commonly used in connection with bath and/or body products, as well as
with fragrance oils. The examining attorney’s substantial evidence shows that
certain bath and body products are promoted as smelling like particular fruits,
flowers and foods, such as grapefruit, coconut, plum, jasmine, mint chocolate and
even root beer. Further, products such as lip gloss and lip balm commonly are
flavored, with the evidence showing flavors such as fruit punch, apple, cherry cola,
coconut, peppermint cocoa and even bacon.
We next turn to examine the specific evidence introduced in the respective
applications.3
POMEGRANATE GARDENIA
The term “pomegranate” is defined as “a chambered, many-seeded, globose
fruit, having a tough, usually red rind and surmounted by a crown of calyx lobes,
the edible portion consisting of pleasantly acid flesh developed from the outer seed
coat.” (dictionary.com). The term “gardenia” means “a large white flower that

3 The examining attorney submitted dictionary evidence with his briefs in all three
applications, to which we add definitions of “orange” and “chiffon” from dictionary.com. The
Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular
fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Accordingly, we
have considered the dictionary definitions.

Serial Nos. 85291243, 85291532 and 85295846
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smells very sweet.” (macmillandictionary.com). The record also includes a
Wikipedia listing describing “gardenia” as “prized for the strong sweet scent of their
flowers, which can be very large in some species.”
In addition, the record includes several third-party uses of “pomegranate” or
“gardenia” for goods identical to those identified in the application, including: Burt’s
Bees Pomegranate Lip Balm; Bubble & Bee Pomegranate Kiss Lip Balm; Clear
Hills Honey Natural Beeswax Sweet Pomegranate Lip Balm; Valerie Rowan’s
Argan and Pomegranate Bath Gel; Aeracures gardenia fragrance oil; and the Breast
Cancer Awareness Pink Ribbon Goat’s Milk Soap that “smells like gardenia and
tuberose.”4
WATERLILLY PEAR
The term “waterlilly” means “any of various aquatic plants. . . with floating
leaves and usually showy flowers.” (merriam-webster.com). Backyardgardner.com
identifies “waterlilly” as a showy plant known to be “fragrant, showy [and]
unusual.” The term “pear” means “a fruit that is smaller toward the stem end, is
white inside, and has yellow, green, or brown skin. It grows on a pear tree.”
(merriam-webster.com).
The record also includes several third-party uses of “waterlilly” or “pear” for
bath and body products identical or closely related to those identified in the
application, including: MOP (Modern Organic Products) Pear Shampoo; MOP Pear
Detangler Spray; Clear Hills Honey Natural Beeswax Juicy Pear Lip Balm; Khol

4 September 19, 2012, Request for Reconsideration Denial (Docket Entry #11).
Serial Nos. 85291243, 85291532 and 85295846
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Apple-Pear Bath Salts; Stambry’s Crescent Moon Water Lilly Soap; and Nellie’s All
Natural One Soap Water Lilly Lotus.
ORANGE CHIFFON
The word “orange” is defined as “a globose, reddish-yellow, bitter or sweet,
edible citrus fruit,” and the word “chiffon” means “(in cooking) having a light, frothy
texture as certain pies and cakes containing beaten egg whites.” (dictionary.com).
The record also includes a recipe for “Orange Chiffon” cake from www.yummly.com,
listing, among other ingredients, 4 egg whites, fresh orange juice and grated orange
rind, and several pages from Google.com listing links to various “Orange Chiffon”
cake recipes. Material obtained from the Internet is generally accepted as
competent evidence. See In re Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB 2006)
(accepting Internet evidence to show genericness); In re Fitch IBCA Inc., 64
USPQ2d 1058, 1060-61 (TTAB 2002) (accepting Internet evidence to show
descriptiveness). The examining attorney’s evidence indicates that a recognizable
taste or aroma of an orange chiffon cake (suggestive of ingredients such as orange
rind and baked egg whites) may be simulated in applicant’s goods.
Analysis
To state the obvious, and as the evidence of record confirms, body and bath
products and fragrance oils are often identified by scent, and in the case of lip
products, by flavor. Due to this industry practice, consumers are accustomed to
making their purchasing decision based on their desire for a particular scent or
flavor. The applicant has admitted that several of the terms included in its marks
Serial Nos. 85291243, 85291532 and 85295846
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are descriptive of the goods’ flavor, scent and/or color. With respect to the
remaining terms, i.e., GARDENIA, WATERLILLY, and CHIFFON, the third-party
uses are an indication that manufacturers and retailers, as well as ultimate
consumers will view such terms as merely descriptive terms for the scent or flavor
of a product. We find that to be the case with respect to each of the applied-for
marks for applicant’s body and bath products, as well as its scented oils, that is,
consumers will view the proposed marks as nothing more than the names of the
scents or flavors of the products.
Each of the words comprising applicant’s proposed marks is individually
descriptive, and the combination of these merely descriptive terms does not evoke a
new and unique commercial impression for any of applicant’s three marks. Rather,
each component of each of the composite marks retains its merely descriptive
significance in relation to applicant’s goods, thus resulting in a composite that is
itself merely descriptive. No imagination is required by a prospective purchaser or
user to discern that applicant’s respective products are characterized by
combinations of the scents and/or flavors of pomegranate and gardenia, waterlilly
and pear, or orange chiffon. Accordingly, each of the proposed marks, when
considered as a whole, is merely descriptive of applicant’s goods.
Decision: The refusal to register in each application is affirmed.