Caswell-Massey Co., Ltd.

Trademark Trial and Appeal Board

Aug 2, 1999

No. 75076733 (T.T.A.B. Aug. 2, 1999)

Paper No. 16
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUGUST 2, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Caswell-Massey Co., Ltd.
________
Serial No. 75/076,733
_______
George W. Lewis of Spencer & Frank for Caswell-Massey Co., Ltd.
Charles L. Jenkins, Jr., Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Hohein, Hairston and Bottorff, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Caswell-Massey Co., Ltd. has filed an application to
register the mark "DR. HUNTER’S ORIGINAL REMEDIES" for "a line of
apothecary products[,] namely, non-medicated skin soap, hair
shampoo, bath gel, skin lotion, tooth paste, foot cream, hand
cream, mouth wash and shaving cream".1
Registration has been finally refused under Section
6(a) of the Trademark Act, 15 U.S.C. §1056(a), on the basis of

1 Ser. No. 75/076,733, filed on March 21, 1996, which alleges a bona
fide intention to use the mark in commerce and states that the name
"Dr. Hunter does not represent a living individual."
Ser. No. 75/076,733
2
applicant’s refusal to comply with a requirement for a disclaimer
of the words "ORIGINAL REMEDIES," which the Examining Attorney
maintains comprise a laudatory phrase which is merely descriptive
of applicant’s goods within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1).
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the requirement for a
disclaimer.
Applicant, while acknowledging in its initial brief
that some of the "materials" made of record by the Examining
Attorney, through his searches of the "NEXIS" data base, "suggest
that under certain circumstances and in conjunction with certain
goods, the term 'remedies' may have some descriptive
significance," argues that such term is not descriptive of its
goods because it offers a line of non-medicated products which
are not designed to treat bodily disorders. In consequence
thereof, applicant asserts that "the term 'original remedies'
does not, with any certainty, forthwith convey an immediate idea
of an ingredient, quality, characteristic, function or feature of
the products in connection with which it is [to be] used."
Applicant also contends that "the evidence of record is hardly
supportive" of the Examining Attorney's disclaimer requirement
inasmuch as none of the excerpts located in the "NEXIS" database
demonstrates, as stated in its reply brief, "descriptive use of
the wording 'Original Remedies' in relation to the Applicant's
product[s]." Thus, at best, applicant insists that such words
Ser. No. 75/076,733
3
are no more than suggestive of its goods and that a disclaimer
thereof is not warranted.
The Examining Attorney, on the other hand, urges that
it is well settled that "the word ’original’ is a laudatory
term," citing In re Ervin, 1 USPQ2d 1665 (TTAB 1986) and General
Foods Corp. v. Ralston Purina Co., 220 USPQ 990 (TTAB 1984). In
particular, the Examining Attorney relies upon the definition he
made of record from Webster’s II New Riverside University
Dictionary (1994), which defines "original" at 829 as an
adjective meaning "1. Preceding all others in time : FIRST".2
Referring to a definition from the Random House Unabridged
Dictionary (2d ed. 1993), which lists "remedy" at 1629 as a noun
connoting "1. something that cures or relieves a disease or
bodily disorder; a healing medicine, application or treatment,"3
the Examining Attorney further asserts that such term is merely
descriptive of applicant’s non-medicated products because such
goods "are remedies for different bodily disorders."
As to applicant’s criticism of the "NEXIS" excerpts
which were made of record, the Examining Attorney maintains that
such stories "demonstrate how the word ’remedy’ is descriptive in

2 Such term is further defined, in relevant part, as signifying: "2 a.
Not derived from something else
b. Showing a marked departure from previous practice : NEW 3. Productive of new things or new ideas :
INVENTIVE".
3 Inasmuch as judicial notice may properly be taken of dictionary
definitions, the request in the Examining Attorney’s brief that the
Board consider such definition is granted. See, e.g., Hancock v.
American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330,
332 (CCPA 1953) and University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 75/076,733
4
relation to the applicant’s goods". The following excerpts, like
dictionary definitions, are particularly relevant in establishing
that the meaning which the trade and general public would tend to
ascribe to the words "remedy" or "remedies" would include non-
medicated cures for healing disorders, restoring health or
treating bodily conditions (emphasis added):
"Though unproven, home remedies include
shampooing with tea tree oil, available in
health food stores ...." -- Sarasota Herald-
Tribune, March 4, 1998;
"Clairol addresses the chronic problem
of wavy, hard-to-manage hair with an
assortment of Frizz Control remedies -
Hydrating Shampoo and Taming Conditioner,
High Gloss Hair Serum for shine and smoothing
rough hair cuticles, Taming Balm to keep
split ends at bay, Restructurizing Mousse for
manageability and ’scrunching,’ and Defrizz
Refresher & Shiner ...." -- Plain Dealer,
February 12, 1998;
"When pint-size scholars catch the pesky
parasites, over-the-counter shampoos--or more
natural remedies--will kill the [lice]
problem." -- Atlanta Journal & Constitution,
November 24, 1997;
Other dandruff remedies include
Neutrogena’s T/Gel Shampoo ... and Nizoral
Dandruff Shampoo, which claims to be the
first and only product specifically designed
to target the dandruff-causing yeast ...." --
Community Pharmacy, August 1996;
"It has clerks who earnestly recommend
herbal shampoos and speak reverently of
natural remedies for everything from
allergies and anxiety to aggression and
arthritis." -- Arizona Daily Star, January
27, 1996;
"Others are promoting pollen pills,
beeswax candles, bee lip balm and bee stings
as potential remedies for arthritis, glaucoma
and HIV." -- Austin American-Statesman,
January 20, 1995;
Ser. No. 75/076,733
5
"Other remedies that have been
recommended include a cut onion held to the
sting, spirits of ammonia, or a paste of meat
tenderizer and vinegar." -- St. Louis Post-
Dispatch, May 27, 1991; and
"He said he tried every home remedy and
hand cream he could find [for dry hands and
cuticles] and nothing worked for long." --
Los Angeles Times, May 30, 1990.
The Examining Attorney, in view of the above-cited
case-law authority, dictionary definitions and "NEXIS" excerpts,
concludes that a disclaimer of the words "ORIGINAL REMEDIES" is
proper because:
The addition of the laudatory term "original"
to the descriptive word "remedy" does not
change the descriptive nature of [the
combination thereof in] the applicant’s mark.
.... The wording "original remedy" serves to
convey a claimed attribute, characteristic or
quality of the applicant’s products without
the need for deliberation, imagination or
forethought; its laudatory character meets
the classic test for differentiating [merely]
descriptive from suggestive or arbitrary
terminology. See In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215[, 217-18]
(CCPA 1978). Read together, the phrase
"original remedies" conveys to potential
consumers that the applicant’s apothecary
products were one of the first real solutions
to common everyday bodily disorders.
It is well settled that a term or phrase is considered
to be merely descriptive of goods or services, within the meaning
of Section 2(e)(1) of the Trademark Act, if it immediately
describes an ingredient, quality, characteristic or feature
thereof or if it directly conveys information regarding the
nature, function, purpose or use of the goods or services. See
In re Abcor Development Corp., supra. It is not necessary that a
Ser. No. 75/076,733
6
term or phrase describe all of the properties or functions of the
goods or services in order for it to be considered to be merely
descriptive thereof; rather, it is sufficient if the term or
phrase describes a significant attribute or aspect about them.
Moreover, whether a term or phrase 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 or is to be used in connection with those goods
or services and the possible significance that the term or phrase
would have to the average purchaser of the goods or services
because of the manner of its use. See In re Bright-Crest, Ltd.,
204 USPQ 591, 593 (TTAB 1979).
Classified within the category of merely descriptive
designations set forth above are those which Professor McCarthy
refers to as "self-laudatory terms". As explained in 2 J.
McCarthy, McCarthy on Trademarks & Unfair Competition §11.17 (4th
ed. 1999) (footnotes omitted):
Marks that are merely "laudatory" and
descriptive of the alleged merit of a product
are also regarded as being "descriptive."
This includes such terms as ... PREFERRED,
DELUXE, GOLD MEDAL, BLUE RIBBON, SUPER BUY,
and the like.
Since each tangible product carries with
it a "psychic load" of intangible consumer
psychological expectations about the product,
a mark could be "descriptive" of the product
itself or those intangible expectations, or
both. Self-laudatory or "puffing" marks are
regarded as a condensed form of describing
the character or quality of the goods. ....
In the present case, we find that the phrase "ORIGINAL
REMEDIES" is merely descriptive, in a laudatory sense, of the
Ser. No. 75/076,733
7
nature, function, purpose or use of applicant’s line of
apothecary products. Such phrase, therefore, must be disclaimed
inasmuch as it immediately conveys, without speculation or
conjecture, that applicant’s goods are the first or newest of
their kind for relieving a bodily disorder, treating a bodily
condition or restoring bodily health. We judicially notice, in
this regard, that like the broader meaning shown by the "NEXIS"
excerpts, Webster’s New World College Dictionary (3rd ed. 1997)
defines "remedy" at 1135 as a noun signifying, in relevant part,
"1 any medicine or treatment that cures, heals or relieves a
disease or bodily disorder or tends to restore health .... --SYN.
CURE".4 Thus, while applicant’s goods, being identified as "non-
medicated skin soap, hair shampoo, bath gel, skin lotion, tooth
paste, foot cream, hand cream, mouth wash and shaving cream," are
not necessarily cures, as contended by the Examining Attorney,
for bodily disorders such as diseases, in common parlance they
are nevertheless original remedies for a variety of bodily
conditions. Viewed in this sense, consumers are bound to regard
"ORIGINAL REMEDIES" as a laudatorily descriptive phrase which
touts applicant’s line of non-medicated apothecary products as
the newest or first of their kind. See, e.g., In re Ervin, supra
at 1666 (mark "THE ORIGINAL" for an euchre game scorer is

4 The same dictionary lists "cure" at 339 as a noun meaning, in
pertinent part, "1 a healing or being healed; restoration to health
or a sound condition 2 a medicine or treatment for restoring health;
remedy 3 a system, method or course of treating a disease, ailment,
etc." Such dictionary further indicates that "cure specifically
suggests the elimination of disease, distress, ... etc., ... remedy
stresses the use of medication or a specific corrective treatment in
relieving disease, injury, distress, etc."
Ser. No. 75/076,733
8
laudatory in that it merely describes "first-of-its-kind"
attribute of such product); and General Foods Corp. v. Ralston
Purina Co., supra at 994 (mark "ORIGINAL BLEND" for cat food is
laudatory inasmuch as it "possesses nothing more than a merely
descriptive significance ... that the cat food ... is the first
in a line of flavor varieties and ... that this first-of-its-kind
variety is a blend of flavors").
Decision: The requirement for a disclaimer under
Section 6(a) is affirmed. Nevertheless, in accordance with
Trademark Rule 2.142(g), this decision will be set aside and
applicant’s mark will be published for opposition if applicant,
no later than thirty days from the mailing date hereof, submits
an appropriate disclaimer of the words "ORIGINAL REMEDIES".5
G. D. Hohein
P. T. Hairston
C. M. Bottorff
Administrative Trademark Judges,
Trademark Trial and Appeal Board

5 See In re Interco Inc., 29 USPQ2d 2037, 2039 (TTAB 1993). For the
proper format for a disclaimer, attention is directed to TMEP
§§1213.09(a)(i) and 1213.09(b).