Johnson & Johnson

Trademark Trial and Appeal BoardJan 12, 2012

No. 77464726 (T.T.A.B. Jan. 12, 2012)

Hearing: Mailed: July 26, 2011 January 12, 2012 Bucher UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Johnson & Johnson ________ Serial No. 77464726 _______ Anthony J. Palumbo, Norm D. St. Landau, Mary Pat Weyback and Brian A. Coleman of Drinker Biddle & Reath LLP for Johnson & Johnson. Tina H. Mai, Trademark Examining Attorney, Law Office 108 (Andrew Lawrence, Managing Attorney). _______ Before Bucher, Holtzman and Wolfson, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Johnson & Johnson seeks registration on the Principal Register of the term MICRO-GROOVES (in standard character format) for “dental floss” in International Class 21.1 The Trademark Examining Attorney refused registration on the ground that the term is merely descriptive under 1 Application Serial No. 77464726 was filed on May 2, 2008, based upon applicant’s allegation of a bona fide intention to use the mark in commerce. A second amendment to allege use (AAU) was filed on October 19, 2009, alleging first use anywhere and first use in commerce at least as early as July 17, 2009. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77464726 - 2 - Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). After the Trademark Examining Attorney made the refusal final, applicant appealed to this Board, and an oral hearing was conducted on July 26, 2011, before this three-member panel of the Board. We affirm the refusal to register. Applicant contends that the term “Micro-Grooves,” when used in connection with dental floss is ambiguous to the consuming public; the evidence of record fails to demonstrate that it immediately describes the form of applicant’s dental floss; there is no competitive need for this distinctive term; and if there is any uncertainty about descriptiveness, doubt regarding the registrability of “Micro-Grooves” must be resolved in applicant’s favor, with the mark being published for opposition so that any third party who believes it may be damaged by the registration of applicant’s mark can file an opposition. By contrast, the Trademark Examining Attorney argues that the evidence of record demonstrates that the term “micro-grooves” “merely describes a feature, form, use, purpose, and/or the nature of applicant’s dental floss, i.e., the floss contains small spaces on its surface.” Trademark Examining Attorney’s brief at unnumbered 3. She also points to third party usage of the term “micro-grooves” Serial No. 77464726 - 3 - in connection with other dental products as demonstrating the descriptive nature of applicant’s proposed mark, and as an indication that members of the public have been exposed to this wording in the dental field. “Merely descriptive” under Section 2(e)(1) of the Act A mark is merely descriptive, and therefore unregistrable pursuant to the provisions of Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it immediately conveys information of significant ingredients, qualities, characteristics, features, functions, purposes or uses of the goods or services with which it is used or is intended to be used. See In re MBNA America Bank N. A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003) [MONTANA SERIES and PHILADELPHIA CARD merely descriptive of “credit card services.” The Court found that a “mark is merely descriptive if the ultimate consumers immediately associate it with a quality or characteristic of the product or service.”]. Hence, the ultimate question before us is whether the term MICRO-GROOVES conveys information about a significant feature, function or characteristic of applicant’s goods with the immediacy and particularity required by the Trademark Act. Serial No. 77464726 - 4 - A mark is suggestive, and therefore registrable on the Principal Register without a showing of acquired distinctiveness, if imagination, thought or perception is required to reach a conclusion on the nature of the goods or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) [APPLE PIE merely descriptive of potpourri mixture: “Whether a given mark is suggestive or merely descriptive depends on whether the mark ‘immediately conveys … knowledge of the ingredients, qualities, or characteristics of the goods … with which it is used,’ or whether ‘imagination, thought, or perception is required to reach a conclusion on the nature of the goods.’”]. The question of whether a particular term is merely descriptive is not decided in the abstract. That is, when we analyze the evidence of record, we must keep in mind that the test is not whether prospective purchasers can guess what applicant’s goods are after seeing applicant’s mark alone. In re Abcor, 200 USPQ at 218 [“Appellant’s abstract test is deficient – not only in denying consideration of evidence of the advertising materials directed to its goods, but in failing to require consideration of its mark ‘when applied to the goods’ as required by statute”]; In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB Serial No. 77464726 - 5 - 1990) [NEW HOME BUYER’S GUIDE is merely descriptive of “real estate advertisement services”];and In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985) [APRICOT is merely descriptive of apricot-scented dolls]. Rather, the proper test in determining whether a term is merely descriptive is to consider the alleged mark in relation to the goods or services for which registration is sought, the context in which the mark is used, and the significance that the mark is likely to have on the average purchaser encountering the goods or services in the marketplace. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987) [the term “first tier” describes a class of banks]; In re Intelligent Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996) [the term VISUAL DESIGNER is merely descriptive of “computer programs for controlling the acquisition of data from measurement devices”]; In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991) [MULTI-VIS is merely descriptive of “multiple viscosity motor oil”]; In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986) [DESIGN GRAPHIX merely descriptive of computer graphics programs]; and In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979) [COASTER-CARDS descriptive of a coaster suitable for direct mailing]. Serial No. 77464726 - 6 - Prosecution History With the initial Office action, the Trademark Examining Attorney took the position that “it appears that the mark might describe the form of the floss,” and she attached evidence from the Internet showing three disparate uses of the term “Micro-Grooves” in connection with dental goods.2 We agree with applicant that these references to “microgrooves” in wholly distinguishable contexts, i.e., on screws, dental implants, and tooth enamel, are hardly relevant to a showing of descriptiveness for floss. With her Final refusal of January 31, 2009, the Trademark Examining Attorney included more Internet evidence purporting to show descriptive uses of “Micro-Grooves” by applicant and by third parties: 2 (1) An article from The Angle Orthodontist entitled “Effects of Microgrooves on the Success Rate and Soft Tissue Adaptation of Orthodontic Miniscrews,” discussing the effect that “microgrooves on orthodontic miniscrews” have on soft tissue adaptation in animal experiments; (2) An article from Resident & Staff Physician entitled “BioHorizons Introduces Its New Tapered Internal Implants Featuring Laser-Lok® Microgrooves” announcing the launch of the LASER-LOK tapered internal dental implants with “a unique thread design and proven surface engineering technology”; and (3) a printout from the HELLERDENT® Professional Dental Products website that describes the following action during teeth bleaching: “during the bleaching procedure active oxygen is released that gets into the micro grooves of the enamel and whitens the discoloured parts.” Serial No. 77464726 - 7 - Johnson & Johnson Healthcare Products Division of McNEIL-PPC, Inc., an innovator in oral care for more than a century, introduces the NEW REACH® ULTRACLEAN™ Toothbrush and Floss that are proven in head-to-head clinical trials to deliver superior plaque removal. NEW REACH® ULTRACLEAN™ Floss is the only flexible dental floss with proprietary MICRO-GROOVES™ technology that removes up to two times more plaque than Glide® floss products* and slides as easily as the leading Glide® floss product.1 The NEW REACH® ULTRACLEAN™ Toothbrush removes more plaque than the leading toothbrush and up to 90 percent of plaque in places that are hard to reach.2 . . . The NEW REACH® ULTRACLEAN™ Floss contains MICRO-GROOVES™ that flex to adapt to the contours between the teeth to provide superior cleaning. The exclusive MICRO-GROOVES™ work like a squeegee to grab and remove plaque. The end result – the unique, stretchy, no-shred dental floss offers a comfortable cleaning experience that is gentle on the gums.3 Johnson & Johnson Healthcare Products introduces the REACH® ULTRACLEAN™ Toothbrush and Floss. According to the company, REACH ULTRACLEAN Floss is the only flexible dental floss with proprietary MICRO- GROOVES™ technology that removes up to two times more plaque than Glide® floss products* and slides as easily as the leading Glide floss product. … The MICRO-GROOVES on the floss flex to adapt to the contours between the teeth, working like a squeegee to grab and remove plaque.4 Revolutionary MICRO-GROOVES™ Technology stretches to get between teeth, then grips, to remove more plaque5 Reach Ultraclean Dental Floss is mint flavored, 30 yards. Floss features micro-grooves for superior cleaning, and is easy sliding. Slides as easily as Glide Original Mint floss and removes up to 2x more plaque. Flexible, shred- resistant and easy to grip. Unique Micro-Grooves flex to the contours of your teeth for superior plaque removal.”6 3 http://www.jnj.com/connect/news/all/20080923_0800 accessed by the Trademark Examining Attorney on January 31, 2009. 4 http://www.orthodonticproductsonline.com/news/2008-10- 16_01.asp accessed by the Trademark Examining Attorney on January 31, 2009. 5 http://www.jjdentalprofessional.com/global/why-reach- flosses.html accessed by the Trademark Examining Attorney on January 31, 2009. 6 http://cgi.ebay.com accessed by the Trademark Examining Attorney on January 31, 2009. Serial No. 77464726 - 8 - PLAQUE REMOVAL OF A REVOLUTIONARY MONOFILAMENT FLOSS WITH FLEXIBLE MICRO-GROOVES™7 Our unique Micro-Grooves™ flex to the contours of your teeth for superior plaque removal.8 I recently started to use a new type of dental floss. It’s made by Johnson and Johnson and it’s called REACH Ultraclean. It is far superior to any other type of floss and I’ve tried them all. It has micro-grooves and is advertised to remove up to two times more plaque than regular floss. It appears to live up to those claims.9 The secret lies in revolutionary technology called micro-grooves. These flexible micro-grooves stretch to slide between the teeth, then grips, to remove more plaque. . . . Reach Ultraclean Floss stretches to slide easily between teeth, even between tight contacts. . . . Once the floss slides between the teeth, the technology of the micro-grooves allows it to grip and remove more plaque. Though not distinguishable by the naked eye or touch, micro-grooves remove plaque from between the teeth and along the gumline, resulting in more plaque removal than Glide® Original Mint. . . . Revolutionary micro-grooves on the floss stretch to slide easily between the teeth and grip to remove more plaque. . . . Micro-Grooves™ stretch, then grip, to remove up to 2X more plaque than Glide® Original Mint . . . REACH OUT AND GRAB IT!10 Finally, this refusal contained three more Internet printouts showing use of the word “grooves,” again in distinguishable contexts, i.e., in reference to “fastening grooves” on a handheld flosser,11 “grooves to facilitate 7 http://iadr.confex.com/iadr/2009miami/webprogram/Paper118588.html accessed by the Trademark Examining Attorney on January 31, 2009. 8 http://www.drugstore.com and http://www.dentist.net/specialty-floss.asp, both accessed by the Trademark Examining Attorney on January 31, 2009. 9 Part of a letter dated January 17th, 2009 from one “Sharlene” to David Snape, http://tobeinformed.com/tag/reach-ultraclean/ accessed by the Trademark Examining Attorney on January 31, 2009. 10 This script was drawn from the text of a video applicant had made available on its website, at http://www.jjdentalprofessional.com/global/why-reach-flosses.html 11 www.wipo.int accessed by the Trademark Examining Attorney on January 31, 2009. Serial No. 77464726 - 9 - gripping” on a floss dispenser,12 and “chew-clean grooves” on a dog chew toy.13 Analysis As described in this record, applicant originally submitted information about the introduction of its all new Ultraclean floss.14 This was later “rebranded,” re-introduced as Total Care floss, and was available nationwide during September 2009. Despite the rebranding efforts, the descriptions of the underlying technology and the overall features of the dental floss remained quite similar: • Infused with LISTERINE® flavors • Revolutionary MICRO-GROOVES™ Technology stretches to get between teeth • Removes up to 2x more plaque than Glide® Floss products1 • Slides easily between teeth, so it's easy to use o Slides as easily as Glide® Original Mint™1 o Shred-resistant • Extremely flexible and gentle on gums • Comfortable on fingers • Available in 5-yard trial and 90-yard sizes MICRO-GROOVES™ Technology can lead to better patient compliance.15 12 http://www.enotes.com/dental-floss-reference/dental-floss accessed by the Trademark Examining Attorney on January 31, 2009. 13 www.strictlypetsupplies.com accessed by the Trademark Examining Attorney on January 31, 2009. 14 http://www.jjdentalprofessional.com/global/why-reach- flosses.html attached to applicant’s response of January 28, 2009, to the initial Office Action. 15 http://www.jjdentalprofessional.com/available-products.html as accessed by applicant on October 12, 2009 and attached to response of October 19, 2009. Serial No. 77464726 - 10 - The record as a whole suggests that applicant’s involved dental floss relies upon an innovative technology. As described in applicant’s literature and product packaging, this product is monofilament floss with a cross section having twenty-two offset ribs running the 16 length of the floss. This provides for multiple cleaning surfaces designed to remove more plaque and provides for superior cleaning while remaining gentle on the gums. These stretchy, flexible ribs act like tiny “squeegees” as they grip the contours between the teeth. This portion of the trade dress on the Total Care packaging reproduced herein is the closest that applicant comes to illustrating the technology to the average consumer of dental floss. As part of her prima facie case of descriptiveness, the Trademark Examining Attorney has provided dictionary definitions for each of these separate words: 16 http://www.jjdentalprofessional.com/global/why-reach.html as accessed by applicant on October 12, 2009 and attached to response of October 19, 2009. Serial No. 77464726 - 11 - micro-: small17 groove: a long narrow hollow space cut into a surface18 We find these definitions to provide strong support for the Trademark Examining Attorney’s case. Applicant’s own literature and packaging seem to confirm that there are indeed small, narrow spaces running the length of each side of applicant’s flat floss. Furthermore, applicant touts in its literature that its floss “contains micro grooves.” Hence, the ordinary dictionary definitions of these common English-language words -- “micro” and “grooves” -- seem to fit with our understanding of the technology. We agree with applicant that substantially all of the Internet evidence that the Trademark Examining Attorney placed into the record purportedly demonstrating use of one or both of these terms in connection with dental applications other than floss is largely irrelevant. Applicant is also correct that there is no evidence that others are using this term to describe any other brand of 17 http://dictionary.cambridge.org, Cambridge Advanced Learner’s Dictionary, 2008. 18 Id. Serial No. 77464726 - 12 - dental floss on the market. Nonetheless, the Trademark Examining Attorney argues that given applicant’s product innovation, it may not be surprising that applicant is the first and/or only user of these merely descriptive words. We agree, and find that the Trademark Examining Attorney is right in arguing that the basic dictionary definitions of the words, when put together, merely describe a significant feature of the goods. As to the repeated uses in the record of the words in connection with dental floss, while it appears that all are references to applicant’s product, we need not resort to examples of arguably careless usage reproduced above created by online vendors or blogging consumers. Rather, applicant’s own literature explains that its floss “contains micro-grooves.” “Micro-grooves” used as a noun tells the consumer that micro-grooves are a “thing.” “Micro-grooves” are not just any “thing,” but function as a significant feature of these innovative goods. Inasmuch as the combination of “Micro” and “Grooves” does not render applicant’s mark unique or incongruous, the descriptive aspect of applicant’s alleged mark is not lost in the combined form. That is, consistent with the Trademark Examining Attorney’s dictionary definitions, the highlighted feature refers to small elongated spaces between raised ribs Serial No. 77464726 - 13 - on the surfaces of the floss. In this sense, applicant’s own uses of the term provide the most damaging evidence that its alleged mark would be perceived by the purchasing public as conveying immediately information about the product. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987). In such situations, we do not require evidence of third-party usage in order to find that the mark is merely descriptive. In fact, considering that the goods involve innovative technologies that may or may not be covered by patent protection,19 the absence of this type of evidence is not at all surprising. Accordingly, on this record, we have no doubt about the descriptive nature of this term in connection with the identified goods. Decision: The refusal to register the term MICRO- GROOVES under Section 2(e)(1) of the Lanham Act is hereby affirmed. 19 The answer to this question is not clear from the record.