Tri-Coastal Design Group, Inc.

Trademark Trial and Appeal Board

Apr 3, 2013

No. 85294730 (T.T.A.B. Apr. 3, 2013)

Mailed: 4/3/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Tri-Coastal Design Group, Inc.
________

Serial Nos. 85294730, 85302389 and 85304240
_______

Tedd S. Levine, Esq. for Tri-Coastal Design Group, Inc.

James Stein, Trademark Examining Attorney, Law Office 107 (J.
Leslie Bishop, Managing Attorney).
_______

Before Quinn, Greenbaum and Masiello,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Tri-Coastal Design Group, Inc. filed intent-to-use
applications, under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b), to register the proposed marks TOFFEE CAKE (“TOFFEE”
disclaimed); APPLE STRUDEL (“APPLE” disclaimed); and VANILLA
BROWN SUGAR (“VANILLA” disclaimed), all in standard characters,1
for the following goods in International Class 3:
Bath gel; bath salts; bath soaps; body
cream; body lotion; body oil; body scrub;

1 Respectively, application serial nos. 85294730 (filed April 13,
2011), 85302389 (filed April 22, 2011), and 85304240 (filed April 25,
2011).
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser. Nos. 85294730, 85302389 and 85304240

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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.

The trademark examining attorney refused registration 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
applied to applicant’s goods, is merely descriptive of a scent
or flavor thereof.
When the refusal was made final, applicant requested
reconsideration. Upon denial of the request for
reconsideration, applicant appealed. Applicant and the
examining attorney filed briefs.
The three appeals involve common issues of law and fact,
and the evidentiary records and arguments are identical in part,
or otherwise substantially similar. Accordingly, 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; in applicant’ words, the
proposed marks give “a consumer a feeling of sweetness or
freshness, which requires unrestrained imagination,” and in the
case of APPLE STRUDEL, added feelings of “warmth and comfort.”
(Briefs, p. 3). In making its arguments, however, applicant
conceded that the terms “TOFFEE,” “APPLE,” and “VANILLA” in its
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respective marks are merely descriptive and, accordingly,
applicant disclaimed each term.
The examining attorney maintains that each of the proposed
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.
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
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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. 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
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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); 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); and In re Entenmann’s, Inc., 15 USPQ2d 1750 (TTAB
1990) (OATNUT is merely descriptive of bread containing oats and
hazelnuts), aff’d per curiam, 928 F.2d 411 (Fed. Cir. 1991).
Of particular interest in the present appeals is the
Federal Circuit’s opinion in In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987). Applicant filed to register the
term APPLE PIE as a trademark for “potpourri.” 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
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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 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.
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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.
TOFFEE CAKE
The term “toffee” means “a sweet made from sugar or treacle
boiled with butter, nuts, etc.” (collinsdictionary.com). The
term “cake” is defined as “a bread-like food made from dough or
batter that is usually fried or baked in small flat shapes and
is often unleavened.” (merriam-webster.com).2 The evidence also

2 Both applicant and the examining attorney submitted dictionary
evidence with their briefs in all three applications. 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
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includes a recipe for “Toffee Cake,” a combination of angel food
cake and crushed toffee. (allrecipes.com).
APPLE STRUDEL
The term “strudel” is defined as “a pastry made from a thin
sheet of dough rolled up with filling and baked.” (merriam-
webster.com; and collinsdictionary.com). The record includes a
Wikipedia listing for “apple strudel” showing that it is a type
of sweet or savory layered pastry with an apple filling inside,
and that apple strudel is the most widely known kind of strudel.
The record is replete with numerous examples showing third-
party uses of “apple strudel” as a scent for products such as
fragrance oil, candles, bath salts, body cream, bath and shower
gel, and body exfoliant.
VANILLA BROWN SUGAR
The term “vanilla” is defined as “a substance obtained from
vanilla pods or produced artificially and used to flavor foods
or to impart a fragrant scent to cosmetic preparations; the
fruit of the vanilla plant which is cured and then either used
in cookery or processed to extract an essence which is used for
flavor and fragrance.” (oxforddictionaries.com). The term
“brown sugar” is defined as “soft sugar whose crystals are
covered by a film of refined dark syrup.” (merriam-

editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Accordingly, we have considered the dictionary definitions.

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webster.com). The record includes a Wikipedia listing of “brown
sugar” which is “a sucrose sugar product with a distinctive
brown color due to the presence of molasses.”
The record also includes third-party uses that include Pure
Selects Vanilla Brown Sugar fragrance, Naturals vanilla body
lotion, Archipelago Botanicals brown sugar and vanilla body
lotion, Fake Bake Babe brown sugar lip gloss, and Chanel brown
sugar nail polish.
Analysis
To state the obvious, and as confirmed by the evidence of
record, 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 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
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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 have a toffee cake,
an apple strudel or a vanilla brown sugar scent or flavor.
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.