Dr. Harold Katz, LLC

Trademark Trial and Appeal BoardOct 15, 2015

No. 86076435 (T.T.A.B. Oct. 15, 2015)

This Opinion is not a Precedent of the TTAB Mailed: October 15, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Dr. Harold Katz, LLC _____ Serial No. 86076435 _____ Matthew H. Swyers of The Trademark Company, for Dr. Harold Katz, LLC. Barney L. Charlon, Trademark Examining Attorney, Law Office 104, Chris Doninger, Managing Attorney. _____ Before Bergsman, Kuczma and Masiello, Administrative Trademark Judges. Opinion by Kuczma, Administrative Trademark Judge: Dr. Harold Katz, LLC (“Applicant”) seeks registration on the Principal Register of the mark: for : Cosmetic preparations for the care of mouth and teeth; Mouth washes; Non-medicated mouth rinse; Tooth Serial No. 86076435 - 2 - cleaning preparations; Tooth gel, in International Class 3.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the proposed mark is merely descriptive. After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. Applicant and the Examining Attorney have filed briefs. We affirm the refusal to register. Descriptiveness A term is merely descriptive within the meaning of § 2(e)(1) if it immediately conveys knowledge of a quality, characteristic, function, feature, purpose or use of the goods with which it is used. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). Whether a particular term is merely descriptive must be determined not in the abstract, but in relation to the goods for which registration is sought, the context in which the term is used, and the possible significance that the term is likely to have to the average prospective purchaser encountering the goods in the marketplace. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Phoseon Technology Inc., 103 USPQ2d 1822, 1823 (TTAB 2012). 1 Application Serial No. 86076435 was filed on September 27, 2013, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. The color(s) green and light green are claimed as a feature of the mark. Serial No. 86076435 - 3 - Registration of the applied-for mark THEBREATHCO. (Stylized) has been refused on the ground that the components of the applied-for mark are descriptive and retain their descriptive meanings when combined such that the overall composite mark is descriptive. Because THEBREATHCO. (Stylized) is a composite mark, the Examining Attorney is permitted to examine the meaning of each component individually, and then determine whether the mark as a whole is merely descriptive. See DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F3d 1247, 103 USPQ2d 1753, 1758 (Fed. Cir. 2012); In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004) (citing In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985)). In determining whether Applicant’s mark is merely descriptive, we must consider the mark in its entirety, with a view toward “what the purchasing public would think when confronted with the mark as a whole.” Cf. In re Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988). At the outset, we note that the fact that Applicant’s mark is presented as one term THEBREATHCO., is inconsequential. See Minnesota Mining & Mfg. Co. v. Addressograph-Multigraph Corp., 155 USPQ 470, 472 (TTAB 1967) (“[i]t is almost too well established to cite cases for the proposition that an otherwise merely descriptive term is not made any less so by merely omitting spaces between the words”). Moreover, the commercial impression engendered by the presentation of Applicant’s mark is as separate words (i.e., The Breath Co.). Serial No. 86076435 - 4 - The definition for “breath” is “the air inhaled and exhaled in respiration.”2 The term “Co.” is an abbreviation of the word “company”3 which is defined as a “business enterprise.”4 Business type designations and abbreviations such as “Corporation,” “Inc.,” “Company” and Ltd.” merely indicate Applicant’s business type or structure and generally have no source-indicating capacity. See In re Lewis Cigar Manufacturing Co., 98 USPQ 265, 267 (CCPA 1953); In re Piano Factory Group, Inc., 85 USPQ2d 1522, 1526 (TTAB 2006); In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984). Here, the term “Co.” is descriptive of Applicant’s entity type in that it is a limited liability company. Adding the term “the” to a descriptive or generic term generally does not add any source-indicating significance or otherwise affect the term’s descriptiveness or genericness. See In re The Place Inc., 76 USPQ2d 1467, 1468 (TTAB 2005) (holding THE GREATEST BAR merely descriptive of restaurant and bar services; “the definite article THE . . . add[s] no source-indicating significance to the mark as a 2 From http://dictionary.reference.com/browse/breath, October 14, 2015, based on the Random House Dictionary, © Random House, Inc. 2015. The definition of “breath” submitted by the Examining Attorney in the November 27, 2013 Office Action was “the vapour, heat, or odour of exhaled air” also from http://dictionary.reference.com /browse/breath?s=t, TSDR p. 7 of 17. However, inasmuch as it was unclear to the panel whether the Examining Attorney’s definition, which included the words “vapour” and “odour,” was from the American or British dictionary definitions for breath, we took judicial notice of the definition of “breath.” The Board may take judicial notice of dictionary definitions, University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (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, 1378 (TTAB 2006). 3 From http://dictionary.reference.com/browse/co.?s=t, November 27, 2013 Office Action, TSDR p. 9 of 17. 4 From http://dictionary.reference.com/browse/Company, November 27, 2013 Office Action, TSDR p. 12 of 17. Serial No. 86076435 - 5 - whole”); Conde Nast Publications Inc. v. Redbook Publishing Co. , 217 USPQ 356, 357, 360 (TTAB 1983) (holding THE MAGAZINE FOR YOUNG WOMEN a “common descriptive or ‘generic’ name of a class or type of magazine” and incapable of indicating source; “[t]he fact that the slogan also includes the article ‘The’ is insignificant. This word cannot serve as an indication of origin, even if applicant’s magazine were the only magazine for young women.”); In re The Computer Store, Inc., 211 USPQ 72, 74-75 (TTAB 1981) (holding THE COMPUTER STORE merely descriptive of, and the common descriptive name for, computer-related services); see also In re G. D. Searle & Co., 143 USPQ 220 (TTAB 1964), aff’d, 360 F.2d 1966, 149 USPQ 619 (CCPA 1966) (holding “THE PILL” a common descriptive name for pharmaceutical preparations in tablet form, and thus does not serve as an indicator of source or origin in applicant). In addition to the definitions, the Examining Attorney points to the Applicant’s website, which describes Applicant as a “Bad Breath Expert,” and describes its products as being effective “in the fight against bad breath”5 and constituting “Your Path to Fresh, Clean Breath.”6 Additionally, Applicant’s website indicates that with Applicant’s product, “You can achieve optimal oral health while enjoying fresh, clean breath.” It also features products having labels or packaging bearing the mark THEBREATHCO. with the phrases “Fresh Breath” and “Bad Breath Sensitivity.”7 The website describes Applicant’s owner as “The World’s Foremost Bad Breath 5 June 22, 2014 Office Action, TSDR p. 3 of 33. 6 http://www.thebreathco.com/, January 13, 2015 Final Office Action, TSDR p. 5, 30-31 of 108. 7 January 13, 2015 Final Office Action, TSDR p. 30. Serial No. 86076435 - 6 - Expert.”8 It then goes on to state that “Since 1994, no one has helped more people fight bad breath than The Breath Company®. Over 6 million people in 98 different countries have used the clinically proven The Breath Company® System formulas to eliminate bad breath halitosis and regain lost confidence.”9 The website also references Applicant’s e-book containing “52 pages of Bad Breath Facts, Tips & Solutions.”10 Furthermore, it features a list of Applicant’s products that includes “Fresh Breath Toothpaste.”11 The Examining Attorney submitted evidence that the word BREATH is frequently disclaimed in trademark registrations for goods, such as Applicant’s goods, that are in the nature of goods for oral care in International Class 3.12 Third- party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (“Said third party registrations are of use only if they tend to demonstrate that a mark or a portion thereof is suggestive or descriptive of certain goods and hence is entitled to a narrow scope of protection. Used in this limited manner, ‘third party registrations are similar to dictionaries 8 January 13, 2015 Final Office Action, TSDR p. 31. 9 January 13, 2015 Final Office Action, TSDR p. 31. While the federal registration symbol is used on Applicant’s website with the wording THE BREATH COMPANY, USPTO records do not show this term to be registered in the United States. 10 January 13, 2015 Final Office Action, TSDR p. 31. 11 January 13, 2015 Final Office Action, TSDR p. 32. 12 Reg. No. 3199160 (LOCOMOTIVE BREATH, “BREATH” disclaimed), Reg. No. 3708649 (12 HOUR FRESH BREATH, “12 HOUR FRESH BREATH” disclaimed), Reg. No. 4440075 (.FRESHENS BREATH.THE LISTERINE WAY and Design, “FRESHENS BREATH” disclaimed), January 13, 2015 Final Office Action, TSDR p. 5, 8-9, 10-12, 15-17 of 108. Serial No. 86076435 - 7 - showing how language is generally used.’”) (Internal citation omitted.) “Such third party registrations show the sense in which the word is used in ordinary parlance and may show that a particular term has descriptive significance as applied to certain goods or services.” Institut National des Appellations D’Origine v. Vintners International Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992) (third- party registrations found to be “persuasive evidence”); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006). While only three of the registrations submitted by the Examining Attorney are active registrations, they provide some evidence of the descriptive significance of the word “breath” for products such as mouth rinses, mouthwash and toothpaste, which are the same products as those in Applicant’s application. Additionally, the Examining Attorney submits a generous sample of third-party registrations13 for marks featuring the same structure as Applicant’s mark, i.e., 13 Reg. No. 3272018 (THE TAN COMPANY registered under 2(f)), Reg. No. 4128223 (THE HEARING COMPANY registered under 2(f)), Reg. No. 4183014 (THE RENT COMPANY registered under 2(f)), Reg. No. 4215725 (THE ALKALINE COMPANY Supplemental Register), Reg. No. 4307008 (THE ENERGY CONSERVATION COMPANY Supplemental Register), June 22, 2014 Office Action, TSDR p. 3, 5-7, 8-10, 11-13, 14-15, 16-18 of 33 and Reg. No. 4085308 (THE ORIGINAL APPETIZER COMPANY Supplemental Register), Reg. No. 3947773 (THE HAIR CARE COMPANY, “THE HAIR CARE COMPANY” disclaimed), Reg. No. 4027216 (THE GOURMET SUPPLY COMPANY, Supplemental Register), Reg. No. 4299500 (THE MACHINE LEARNING COMPANY, Supplemental Register). Reg. No. 4285405 (THE CLASSIC CARTRIDGE COMPANY, “CARTRIDGE COMPANY” disclaimed and § 2(f) as to “CLASSIC CARTRIDGE COMPANY”), Reg. No. 4278762 (THE GREEN TRUCK MOVING COMPANY, “THE GREEN TRUCK MOVING COMPANY” disclaimed), Reg. No. 4479664 (THE FAJITA COMPANY, “FAJITA” disclaimed, § 2(f) as to entire mark), Reg. No. 4265991 (THE RANKING COMPANY INC., Supplemental Register), Reg. No. 4349412 (THE MATTRESS COMPANY, “THE MATTRESS COMPANY disclaimed), Reg. No. 4445318 (THE DIGITAL ENGAGEMENT COMPANY, Supplemental Register), Reg. No. 4430237 (THE WHISKEY ICE CO., Supplemental Register, “ICE CO.” disclaimed), Reg. No. 4500766 (THE NATURAL DRINKS COMPANY and Design, “THE NATURAL DRINKS COMPANY” disclaimed), Reg. No. 4519474 (THE POETRY Serial No. 86076435 - 8 - marks that include the word THE followed by a descriptive term and the entity designation CO. or COMPANY, noting they typically are registered under § 2(f) of the Trademark Act based on acquired distinctiveness, are registered on the Supplemental Register, or are registered subject to a disclaimer of such wording. Unlike those registered marks, Applicant’s mark is not submitted for registration under § 2(f), on the Supplemental Register, or with a disclaimer. Applicant argues that the registered marks cited by the Examining Attorney are not relevant because the intervening word appearing after the definite article THE and before the word or abbreviation COMPANY, unlike the word BREATH in its mark, is a product which is designed or made by the company in question.14 Applicant contends its mark does not contain the “name of a product, type of product or of a discrete commodity.” Despite Applicant’s conclusion, several of the “intervening words” set forth in the registrations cited by the Examining Attorney, like Applicant’s mark, do not contain COMPANY, Supplemental Register), Reg. No. 4496538 (THE HAWAII FUDGE COMPANY, Supplemental Register, “FUDGE COMPANY” disclaimed), Reg. No. 4519520 (THE ORIGINAL CD LOCATOR & FINANCIAL SERVICE CO., Supplemental Register, “FINANCIAL SERVICE CO.” disclaimed), Reg. No. 4618919 (THE CUTTING COMPANY, Supplemental Register), Reg. NO. 4661991 (THE SLIDING DOOR COMPANY and Design, “THE SLIDING DOOR COMPANY” disclaimed), Reg. No. 4557713 (THE BAMBOO CLOTHING COMPANY, Supplemental Register, “CLOTHING” disclaimed), Reg. No. 4626242 (THE PASSPORT & VISA COMPANY, “THE PASSPORT & VISA COMPANY” disclaimed), Reg. No. 4654493 (THE CHANNEL COMPANY, Supplemental Register), Reg. No. 4668903 (THE DRIVER PERFORMANCE COMPANY, Supplemental Register), Reg. No. 4657913 (THE SUPERFOOD COMPANY, Supplemental Register, “SUPEFOOD” disclaimed), Reg. No. 4634501 (THE INFORMATION AGILITY COMPANY, Supplemental Register), Reg. No. 4594773 (THE JOINT PRESERVATION COMPANY, Supplemental Register) from January 13, 2015 Final Office Action pp. 33-35, 36-38, 39-41, 42-44, 45-47, 48-50, 51-53, 54-56, 57-59, 60-62, 63-65, 66-68, 69-71, 72-74, 75-77, 78-79, 80-82, 83-85, 86- 88, 89-91, 92-94, 95-97, 98-100, 101-103, 104-106. 14 Applicant’s Brf. p. 14 (4 TTABVUE 15). Serial No. 86076435 - 9 - the name of a product, type of product or of a discrete commodity, for example they contain words such as, TAN, RENT, HEARING, RANKING, DIGITAL ENGAGEMENT, DRIVER PERFORMANCE, ENERGY CONSERVATION, and JOINT PRESERVATION. However, it does not matter whether the “intervening words” in the registrations are the “name of a product, type of product or of a discrete commodity.” A mark or term may be merely descriptive of a product even if it is not the name of the product. See, e.g., In re Petroglyph Games Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (BATTLECAM merely descriptive for computer game software); In re Putman Publishing Co., 39 USPQ2d 2021, 2022 (TTAB 1996) (FOOD & BEVERAGE ON-LINE merely descriptive of a news and information service for the food processing industry). Additionally, the fact that Applicant may have been the first or only user of a merely descriptive designation does not justify registration if the only significance conveyed by the term is merely descriptive. See In re Alpha Analytics Investment Group LLC, 62 USPQ2d 1852, 1856 (TTAB 2002); In re National Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983). When considering the mark as a whole in connection with the goods at issue, the Examining Attorney contends that THEBREATHCO. (Stylized) would be perceived by consumers as nothing more than a description of goods provided by a company whose products are designed to improve one’s breath, and thus is merely descriptive of Applicant’s products which are used to fight bad breath.15 15 June 22, 2014 Office Action, TSDR p. 3 of 33; November 27, 2013 Office Action, TSDR p. 3 of 17; January 13, 2015 Final Office Action, TSDR p. 5 of 108. Serial No. 86076435 - 10 - Applicant, however, argues that “the ‘mental link’ between the mark THEBREATHCO. and Applicant’s services [sic] as recited in the application is neither immediate nor instantaneous. Rather, it is suggestive, as it requires the consumer to engage in a multi-step reasoning process to arrive at a description of the services [sic] offered.”16 Applicant asserts that the word “breath” is not descriptive of its goods because it “has both a literal and figurative meaning. Literally, it can refer to the process of respiration in general, the rate of a person or animal’s respiration, or to the air which is inhaled and exhaled from the body during the process. Figuratively, it can refer to a moment of respite from chaos (as in ‘I am so busy I can’t catch a breath’), a refreshing deviation from the expected or normal course of events (as in ‘that new team member has been a breath of fresh air’), or even as a term for imparting energy and animation into something (as in ‘breathing life’ into a previously stagnant process or system).”17 Determining the descriptiveness of a mark is done in relation to an applicant’s identified goods, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use. See In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). Descriptiveness of a mark is not considered in the abstract. In re Bayer Aktiengesellschaft, 82 USPQ2d at 1831. The question is not whether someone 16 Applicant’s Brf. p. 10 (4 TTABVUE 11). Applicant’s applied-for mark is intended to be used on goods, not services. 17 Applicant’s Brf. p. 12 (4 TTABVUE 13). Serial No. 86076435 - 11 - presented only with the mark could guess the products or activities listed in the description of goods. Rather, the question is whether someone who knows what the products are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 103 USPQ2d at 1757 (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). As the above-referenced excerpts from Applicant’s website clearly show, the word “breath” immediately conveys information about Applicant’s goods because their purpose is to promote clean and fresh breath and to eliminate bad breath. The primary focus of Applicant’s goods is one’s “breath.” Thus, the word “breath” must be deemed to describe a feature, characteristic, purpose and use of Applicant’s goods. That Applicant’s website refers to “breath” in various formulations, including, “clean breath,” “fresh breath,” “bad breath” and “breath expert,” underscores the descriptive significance of this term in and of itself in relation to the goods at issue. Applicant contends that “the word ‘BREATH’, when viewed in conjunction with the other words in the mark, specifically, the structure of the mark, creates a playful incongruity in the viewer’s immediate reaction. According to Applicant, this incongruity invites the viewer to investigate, and to engage in the multi-step reasoning process required to arrive at an accurate description of the product Serial No. 86076435 - 12 - offered by the Applicant.”18 The viewer needs to take another step to arrive at a description of Applicant’s goods, by assessing how the word BREATH is used in the context of the mark, arriving at the conclusion that it is from this reference to the odor of air exhaled by a person. The final step of the process takes the viewer from the odor of exhaled air to Applicant’s products for improving the quality of this odor.19 Applicant maintains that the “mental link” between the mark THEBREATHCO. and its goods requires the consumer to engage in a multi-step reasoning process to arrive at a description of the services offered.20 In view of the foregoing, Applicant submits that the average consumer would not arrive at an immediate understanding of the nature of the goods when encountering the mark in commerce. Thus, Applicant contends that its mark is not merely descriptive, but suggestive of its goods. However, a consumer does not have to exercise “mature thought or follow a multi-stage reasoning process” to determine the characteristics of Applicant’s product. See e.g., In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978). Applicant’s mark THEBREATHCO. (Stylized) describes a feature or purpose of Applicant’s goods which are goods that affect the odor of exhaled breath. Thus, no imagination, thought or perception is needed to understand the nature of the identified goods. 18 Applicant’s Brf. pp. 12-13 (4 TTABVUE 13-14). 19 Applicant’s Brf. p. 13 (4 TTABVUE 14). 20 Applicant’s Brf. p. 10, (4 TTABVUE 11). Serial No. 86076435 - 13 - That Applicant’s mark includes stylized letters in shades of the color green, does not create a separate commercial impression over and above that made by the descriptive term THEBREATHCO. The descriptive matter in Applicant’s mark is not registrable on the Principal Register unless the design features of the mark create an inherently distinctive impression on the purchasers such that the mark as a whole is not merely descriptive, or if it can be shown by evidence that the particular display which the Applicant has adopted has acquired distinctiveness. In re Sadoru Group Ltd., 105 USPQ2d 1484, 1486 (TTAB 2012); In re Guilford Mills Inc., 33 USPQ2d 1042, 1043 (TTAB 1994); TMEP § 1202.05(c) (2015) (an applicant may not seek to register the color of the wording or design apart from the words or designs themselves if the color does not create a separate commercial impression). Applicant has not made a claim of acquired distinctiveness and the stylization and colors in the mark are not sufficiently distinctive to create an inherently distinctive impression. After considering the case law involving the registrability of marks consisting of merely descriptive or generic words depicted in stylized format, even with color schemes, we find that the stylization and coloring of the lettering in which Applicant’s mark appears does not create a separate and inherently distinctive commercial impression apart from the words themselves. In re Cordua Restaurants LP, 110 USPQ2d, 1227, 1232 (TTAB 2014). Thus, we find that the mark as a whole is merely descriptive. While it is the Board’s policy to resolve doubts in favor of the applicant and allow a mark to be published, see In re Morton-Norwich Products, Inc., 209 USPQ 791 Serial No. 86076435 - 14 - (TTAB 1981); In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972), here, however, there is no such doubt about the descriptiveness of the applied-for mark. Moreover, it is well established that simply because Applicant may have been the first or only user of a merely descriptive designation does not necessarily render it incongruous or distinctive if the only significance conveyed by the term is merely descriptive, as is the case here. See In re Phoseon Technology, 103 USPQ2d at 1826; In re Hunter Fan Co., 78 USPQ2d 1474, 1476 (TTAB 2006). Decision: The refusal to register Applicant’s mark under § 2(e)(1) of the Trademark Act is affirmed.