Donnell, Inc.

Trademark Trial and Appeal Board

Sep 24, 2004

No. 75527923 (T.T.A.B. Sep. 24, 2004)

Mailed: September 24, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Donell, Inc.
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Serial No. 75527923
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Leslye B. Davidson of Davidson, Davidson & Kappel, LLC for
Donell, Inc.
Brian D. Brown, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
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Before Walters, Chapman and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by Donell, Inc. to register
the mark BOO BOO CREAM for the following goods, as amended:1
"a topical wound healing agent in the form of a cream for
skin wounds, insect bites and other skin irritations" in
International Class 5.
The trademark examining attorney refused registration on the
ground that the mark is merely descriptive of the goods under
Section 2(e)(1) of the Trademark Act.
1 Application Serial No. 75527923, filed July 30, 1998, based on an
allegation of a bona fide intent to use the mark in commerce. The word
"cream" is disclaimed.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 75527923
2
When the refusal was made final, applicant appealed.2
Applicant and the examining attorney have filed briefs. An oral
hearing was not requested.
The examining attorney argues that BOO BOO CREAM is merely
descriptive of a cream that is applied to an injury or scratch to
the skin. According to the examining attorney, there is nothing
novel or unique about the mark or any significance other than a
descriptive one in relation to applicant's goods. In support of
his position, the examining attorney has relied on two dictionary
listings for "boo boo," one defining the term as "a usually
trivial injury (as a bruise or scratch)—used especially by or of
a child," and the other defining the term as "a slight physical
injury, such as a scratch." We take judicial notice of another
2 By way of background, the examining attorney previously assigned to
this application had refused registration under Section 2(d) of the
Trademark Act based on Registration No. 1603369 for the mark BOO BOO
STRIPS (STRIPS disclaimed) for adhesive bandages. Applicant ultimately
filed an appeal from that refusal and at that point the application was
reassigned to the present examining attorney to write the brief. After
briefs were filed, the appeal was suspended by the Board pending
possible cancellation of the cited registration under Section 8 of the
Trademark Act. The Board dismissed the appeal as moot once the
registration was cancelled and the file was returned to the examining
attorney "for appropriate action." The action taken by the new
examining attorney was to issue a refusal to register under Section
2(e)(1) of the Act, and this appeal ensued. Once on appeal, the Board
noticed that applicant's brief contained an objection to the propriety
of the new ground for refusal, whereupon the Board suspended the appeal
and allowed applicant time to file a Petition to the Commissioner from
the examining attorney's action. The petition to the Commissioner was
filed and subsequently denied. Accordingly, the Board resumed this
appeal and allowed applicant time to file a supplemental brief on the
2(e)(1) issue, if desired, but applicant did not do so.
Serial No. 75527923
3
dictionary definition of "boo boo" as "a minor injury [baby
talk]."3
In arguing that BOO BOO CREAM is only suggestive of its
goods, applicant points to the existence of five third-party
registrations containing the term "BOO BOO"; BOO BOO STRIPS for
adhesive bandages (the previously cited registration), BOO BOO
ZAP for medicated facial lotion, BOO BOO GOO for typewriter
correction fluid, and two marks containing "BOO BOO" for clothing
items.4 Applicant claims that "BOO BOO" is not disclaimed in any
of these registrations.
A term is merely descriptive within the meaning of
Section 2(e)(1) if it immediately conveys knowledge of the
ingredients, qualities, or characteristics of the goods with
which it is used or intended to be used. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987). The question of whether a
particular term is merely descriptive must be determined not in a
vacuum or on the basis of speculation, but in relation to the
3 Webster's Encyclopedic Unabridged Dictionary of the English Language
(1996).
4 Although applicant submitted only a listing of these registrations,
the examining attorney has not objected to the list as being
unsupported by copies of the registrations. Therefore, this evidence
will be treated as if properly of record and considered for whatever
probative value it may have. Applicant also made reference to three
third-party applications. However, third-party applications are of no
probative value.
Serial No. 75527923
4
goods for which registration is sought. See In re Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986).
On the other hand, a term is suggestive if, in the context
of the goods, a purchaser must use imagination, thought, or some
type of multi-stage reasoning to understand the term's
significance. See Plyboo America Inc. v. Smith & Fong Co., 51
USPQ2d 1633 (TTAB 1999). As is often stated there is a thin line
of demarcation between a suggestive mark and a merely descriptive
one, with the determination of which category a mark falls into
frequently being a difficult matter involving a good measure of
subjective judgment and with any doubt on the matter being
resolved in applicant's favor. See Plyboo America Inc. v. Smith
& Fong Co., supra. See also, e.g., In re Atavio, 25 USPQ2d 1361
(TTAB 1992); and In re TMS Corp. of the Americas, 200 USPQ 57
(TTAB 1978). Moreover, the determination is often made on an
intuitive basis rather than as a result of precisely logical
analysis susceptible of articulation. See Plyboo America Inc. v.
Smith & Fong Co., supra.
We find that the mark BOO BOO CREAM, when considered in
relation to topical wound healing agents, falls on the suggestive
side of the line. There is an element of incongruity between the
meaning of a "boo boo" and its use in connection with applicant's
products. While a "boo boo" may broadly connote a minor injury,
the commercial impression of this term is something more than, or
Serial No. 75527923
5
other than, simply a minor injury. As the dictionary definitions
make clear, "boo boo" is "baby talk"; it is the language used by
a child to refer to an injury (or perhaps by an adult to a child
in referring to an injury). The term is unique and inventive in
the sense that it is a child's term used to denote a
sophisticated product. From a child's perspective, you do not
"heal" a boo boo, you "make it better" which in that child's mind
has nothing to do with "topical wound healing agents."
Therefore, we cannot find based on the dictionary
definitions that "boo boo" does nothing more than merely describe
applicant's goods. We find instead that BOO BOO CREAM would be
perceived as a source-identifying term, and that a request by a
consumer for BOO BOO CREAM would result in a sale of applicant's
product rather than an inquiry as to which brand of a topical
wound healing cream the purchaser desired.
While it is true, as the examining attorney indicates, that
third-party registrations are not conclusive on the issue of
descriptiveness, the treatment of "BOO BOO" marks by the Office
coupled with the fact that the previous examining attorney did
not refuse registration on this ground, are factors which raise
further doubts as to the merely descriptive nature of this term.
Moreover, this is not a situation, as suggested by the examining
attorney, where a once arbitrary or suggestive term has lost its
capacity to distinguish source through use in a descriptive sense
Serial No. 75527923
6
over a period of time. Contrary to the examining attorney's
apparent contention, nothing has occurred in the recent past to
now warrant the treatment of "boo boo" as a merely descriptive
term in the context of applicant's goods. The definition of "boo
boo" has not changed over time5 nor is there any evidence that
the term has been used in other than an origin denoting manner.
In view of the foregoing, and resolving doubt in favor of
applicant, as we must, we find that BOO BOO CREAM is suggestive
rather than merely descriptive of applicant's goods.
Decision: The refusal to register is reversed.

5 In this regard, we note that a 25-year old dictionary contains the
same definition of "boo boo" as the more recent dictionaries cited by
the examining attorney. See Webster’s New Collegiate Dictionary
(1979).