Image Laboratories , Inc.

Trademark Trial and Appeal Board

Jun 18, 1997

EX (T.T.A.B. Jun. 18, 1997)

THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB JUNE 18, 1997
Paper No. 11
EWH/kk
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Image Laboratories, Inc. dba Modern Research
Laboratories
________
Serial No. 74/603,930
_______
Kenneth J. Hovet for Image Laboratories, Inc. dba Modern
Research Laboratories
Cheryl Butler, Trademark Examining Attorney, Law Office 107
(Janice O'Lear, Acting Managing Attorney)
_______
Before Sams, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Image Laboratories, Inc. (applicant) seeks registration
of EUCALYPTUS CLENZ in typed capital letters for "hair care
products, namely, medicated dandruff shampoo." The intent-
to -use application was filed on November 28, 1994.
The examining attorney refused registration pursuant to
section 2(e)(1) of the Lanham Trademark Act on the basis
Ser No. 74/603930
2
that applicant's mark is merely descriptive of applicant's
goods.
When the refusal was made final, applicant appealed to
this Board. Applicant and the Examining Attorney filed
briefs. Applicant's prior attorney requested an oral
hearing. On January 30, 1997 applicant appointed a new
attorney who on April 7, 1997 withdrew applicant's request
for an oral hearing.
In deciding whether a term is descriptive, it is
important to keep in mind two legal principles which are
pertinent to this case. First, the descriptiveness of a
term is not determined in the abstract, but rather it is
determined in relationship to the goods or services for
which it is used. See In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215, 218 (CCPA 1978)("Appellant's
proposed abstract test is deficient ... in failing to
require consideration of its mark 'when applied to the
goods' as required by the [trademark] statute."). Thus,
applicant's argument that a consumer viewing a product and
"only observing that it bears a label with a EUCALYPTUS
CLENZ mark, likely would not be able to discern what [the
product] is based solely on the mark," is misplaced.
(Applicant's brief page 3). The proper inquiry is whether a
prospective purchaser of medicated dandruff shampoo would,
upon seeing the term EUCALYPTUS CLENZ on that particular
product, be informed as to an ingredient, quality or
Ser No. 74/603930
3
characteristic of the product. Abcor Development, 200 USPQ
at 218.
Second, it must be remembered that in order for a term
to be held descriptive as applied to particular goods and
services, it need not describe all of the qualities,
characteristics or ingredients of the goods or services. A
term is descriptive if it describes but "one of the
qualities or properties of the goods." In re Gyulay, 820
F.2d 216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). At page 5
of its brief, applicant lists a number of "functions,
purposes or uses" of its product which its purported mark
EUCALYPTUS CLENZ "does not identify." Applicant states that
"nowhere in the mark is [there] any mention of scalp buildup
... [and] nowhere in the mark is [there] any mention of
itching and flaking." (Applicant's brief page 5).
Applicant's contentions are correct. However,
applicant has conceded that its product contains eucalyptus
and that its product cleanses hair. Indeed, applicant
stated that it "does not intend to claim exclusive rights to
the ingredient descriptive [sic], 'eucalyptus.'"
(Applicant's brief page 3). Moreover, applicant has also
conceded that it "does not claim exclusive rights to the
term 'clenz.'" (Applicant's brief page 3.) Applicant has
also stated that its proposed "compound mark contains words
that define an ingredient or purpose of a related good."
(Applicant's brief page 6). Hence, we find that the
proposed mark EUCALYPTUS CLENZ is descriptive of medicated
Ser No. 74/603930
4
dandruff shampoo in that it informs prospective purchasers
not only of an ingredient of the product, but also of a
function of the product (i.e. to cleanse hair). Moreover,
the fact that applicant has misspelled the word "cleanse"
(i.e. "clenz") does not change the descriptive character of
the mark. Indeed, as previously noted, applicant has stated
that it "does not claim exclusive right to the term
'clenz.'" (Applicant's brief page 3).
Finally, applicant has argued that "the present mark
[EUCALYPTUS CLENZ], in its entirety, is not merely
descriptive." (Applicant's brief page 6, original
emphasis). While it is occasionally possible to combine two
or more descriptive terms to form "an incongruous
expression" that in its entirety is not descriptive of the
relevant goods and services, such is not the case here.
Gyulay, 3 USPQ2d at 1010. Applicant has offered no
explanation as to why the combination of EUCALYPTUS with
CLENZ results in such an incongruous combination. Quite to
the contrary, applicant has stated that "a consumer viewing
a product having a label with the present mark [EUCALYPTUS
CLENZ] may form an impression that it is a cleaning solution
which contains or provides the effects of eucalyptus
extract." (Applicant's brief page 4).
Ser No. 74/603930
5
Decision: The refusal to register is affirmed.
J. D. Sams
E. W. Hanak
T. J. Quinn
Administrative Trademark
Judges, Trademark Trial
and Appeal Board