Johnson & Johnson, Inc.

Trademark Trial and Appeal Board

Sep 20, 2007

No. 78518703 (T.T.A.B. Sep. 20, 2007)

Hearing: Mailed: September 20, 2007
May 1, 2007 PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Johnson & Johnson, Inc.
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Serial No. 78518703
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Laurence S. Rickles of Johnson & Johnson, Inc. and Norm D.
St. Landau and Mary Beth Walker of Drinker Biddle & Reath
LLP for applicant.

Melissa Vallillo, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Hairston, Taylor and Mermelstein, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Johnson & Johnson, Inc. has filed an application to
register on the Principal Register, in standard character
form, the mark POWDER-GEL for “vaginal skin preparations,
namely, skin protectant creams” in International Class 5.”1

1 Serial No. 78518703, filed on November 17, 2004, which is based
on an allegation of a bona fide intention to use such mark in
commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78518703
2
Registration has been finally refused pursuant to
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that, when used in connection
with applicant’s goods, the mark POWDER-GEL is merely
descriptive thereof.
Applicant has appealed. Briefs have been filed and an
oral hearing was held.
The examining attorney contends that the terms “powder
gel” and “gel powder” are commonly used in the skin care
industry to describe products that are in the nature of a
gel and dry like a powder; that applicant’s goods feature a
gel-to-powder formulation; and therefore the term POWDER-
GEL immediately conveys a significant characteristic or
feature of applicant’s goods. In support of the refusal,
the examining attorney made of record Internet printouts
that contain references to “powder gel” and “gel powder” in
connection with skin care preparations. In particular, the
examining attorney relies on the following evidence: (1)
an online beauty information website recommending Smashbox
Anti-Shine skin preparation described as a “powder-gel
formula”; (2) an online beauty information website
discussing Lancome T-Controle Instant Matifying Gel and
indicating that the product has a “powder-gel consistency”;
(3) an online retail store website featuring Lancome T-
Ser No. 78518703
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Controle Gel described as a “smooth gel powder”; (4) an
online retail store website featuring Lancome Pure Focus T-
Zone Instant Matifying Powder-Gel described as a “unique
oil free texture that transforms into a powder gel on
contact with the skin,” and applicant’s own product
described as a formula “that combines the protective
benefits of lotion and powder;” (5) an online retail store
website featuring information about Lancome Pure Focus T-
Zone Matifier described as a “light gel-powder”; (6) an
online retail store website featuring T-Mat Express Oil
Free Gel Powder; (7) an online retail store website
featuring an instant matification gel described as a “gel-
powder”; (8) an online retail store website featuring
cosmetics with a “gel-powder formula”; and (9) an online
women’s health discussion group website featuring consumer
recommendations of applicant’s product with one consumer
describing the product as a “chaffing [sic] gel/powder.”
In addition, the examining attorney submitted an excerpt
from the Encarta online dictionary wherein the word
“powder” is defined as, inter alia, “[l]oose dry particles:
a substance in the form of a mass of very small, loose dry
grains;” an excerpt from the Compact Oxford English
Dictionary wherein the word “gel” is defined as, inter
alia, “[j]elly-like substance containing a cosmetic,
Ser No. 78518703
4
medicinal, or other preparation,” and “a semi solid
colloidal suspension of solid dispersed in a liquid;” and a
copy of Registration No. 2282120 (cancelled) issued to a
third-party for the mark MATITEX for goods identified as
“skin care preparations, namely, powder-gel facial
treatment preparations that control shine; silicon for use
as an ingredient in powder-gel facial treatment that
controls shine.”
Applicant, in urging reversal of the refusal to
register, maintains that the examining attorney’s evidence
fails to establish that the term POWDER-GEL is merely
descriptive of applicant’s goods. Applicant argues that
the term POWDER-GEL is only suggestive of its goods and
that thought is required to reach a conclusion as to the
nature of such goods. Further, applicant maintains that
there is no evidence that the term POWDER-GEL is used in
connection with goods similar to those of applicant; that
the term is not found in the dictionary; and that
competitors do not need to use the term. With respect to
the specific evidence submitted by the examining attorney,
applicant argues that apart from the fact that two of the
Internet printouts are from foreign websites, none of the
evidence shows use of the term “powder gel” in connection
with goods that are similar to those of applicant.
Ser No. 78518703
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Applicant itself submitted excerpts from the Merriam
Webster Online Dictionary to show the absence of entries
for the terms “powder-gel” and “powdergel”; definitions of
the terms “powder” and “gel” taken from the same dictionary
and which are very similar to the definitions submitted by
the examining attorney; the first fifty “hits” from a
search of the ALLNEWS database of LEXIS/NEXIS for “powder
w/1 gel” which shows only a single reference to “powder
gel” for goods that are far removed from applicant’s goods,
namely, explosives; an Internet advertisement for
applicant’s product; and the results of a GOOGLE search for
“POWDER-GEL” which shows that seven of the first ten
references are to applicant’s product. In view of this
evidence, applicant argues that the term POWDER-GEL is not
merely descriptive of its goods, but rather, the primary
significance of the term is a trademark for its goods.
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature of the goods in connection with which
it is used, or intended to be used. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); In re Abcor
Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
A term need not immediately convey an idea of each and
Ser No. 78518703
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every specific feature of the applicant’s goods in order to
be considered merely descriptive; it is enough that the
term describes one significant attribute or function of the
goods. Furthermore, descriptiveness is not determined in
the abstract, but in relation to the goods identified in
the application, the context in which the mark is used, and
the impact that it is likely to make on the average
purchaser of such goods. In re Polo International Inc., 51
USPQ2d 1061, 1062 (TTAB 1999); and In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979). In other words, the
issue is whether someone who knows what the goods are will
understand the mark to convey information about them. In
re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002);
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).
Applying these principles in this case, we find that
the term POWDER-GEL is merely descriptive of a feature or
characteristic of applicant’s vaginal skin protectant
creams. Specifically, it immediately and directly informs
purchasers that applicant’s creams are in the nature of a
gel which, when applied to the skin, dries like a powder.
In this regard, we note applicant’s Internet advertisement
Ser No. 78518703
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which states, in relevant part, that: “The formula is
unique: an easy to apply gel, it dries to form a silky,
breathable barrier that calms the skin … .” In view of
this statement, it is clear that applicant’s goods are in
the nature of a gel and applicant does not dispute that its
goods dry like a powder.
Additionally, the examining attorney has made of
record a third-party registration and several Internet
printouts where the term “powder gel” and the highly
similar term “gel powder” are used in a descriptive manner
in connection with skin care preparations that are in the
nature of a gel which, when applied to the skin, dries like
a powder. While two of the Internet printouts are from
foreign sources, we will not exclude them from
consideration, particularly where as here, they corroborate
the uses of the terms in Internet printouts from U.S.
sources. The Board has relaxed its earlier rulings
limiting the use of foreign publications. See In re
Remacle, 66 USPQ2d 1222 (TTAB 2002). In addition, the
Federal Circuit has stated that foreign Internet
publications may have probative value in certain cases.
See In re Bayer, 82 USPQ2d 1828 (Fed. Cir. 2007). We
recognize that the Internet printouts, as well as the
third-party registration, show descriptive use of the terms
Ser No. 78518703
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“powder gel” and “gel powder” in connection with facial
skin care preparations rather than the specific goods
involved herein, namely, vaginal skin protectant creams.
The fact that applicant’s creams are applied to a different
area of the body than the creams described in the evidence
does not alter our view of the probative value of this
evidence. The issue in this case is whether the term
POWDER-GEL is merely descriptive of a type of cream, i.e.,
a cream which is in the nature of a gel, which when applied
to the skin, dries like a powder. The descriptive
significance of the term “powder gel” as used in these
articles and registration is equally applicable to
applicant’s vaginal skin protectant creams. The feature or
characteristic of the goods which is described by the term
POWDER-GEL applies equally to applicant’s type of goods and
facial skin care preparations. In other words, consumers
would understand the term “powder gel” to have the same
meaning in both contexts.
In view of the foregoing, we conclude that, when
applied to applicant’s goods, the term POWDER-GEL
immediately describes, without conjecture or speculation, a
significant feature or characteristic of applicant’s goods,
namely, that applicant’s vaginal skin protectant creams are
in the nature of a gel, which when applied to the skin,
Ser No. 78518703
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dries like a powder. Nothing requires the exercise of
imagination, cogitation, mental processing or gathering of
further information in order for purchasers of and
prospective customers for applicant’s goods to readily
perceive the merely descriptive significance of the term
POWDER-GEL as it pertains to applicant’s goods. See, e.g.,
In re International Game Technology, Inc., 1 USPQ2d 1587
(TTAB 1986) [ON-LINE, ON-DEMAND held merely descriptive of
computer lottery terminals] and In re Copperloy Corp., 182
USPQ 384 (TTAB 1974) [CONTAINERAMP is a mere misspelling of
the term CONTAINER RAMP and held merely descriptive of
mobile loading ramps for moving containers].
We are not persuaded by applicant’s arguments to the
contrary. Although as applicant points out, the examining
attorney has not introduced any evidence, such as excerpts
from articles appearing in the NEXIS database or on the
Internet, of a need among applicant’s competitors to use
the term POWDER-GEL to describe vaginal skin protectant
creams, we note that neither has applicant submitted any
evidence demonstrating the lack of such a need in the
trade. There is nothing in the record, one way or the
other, regarding a possible competitive need to use the
term POWDER-GEL in the marketing of such goods. However,
even if potential competitors of applicant may be able to
Ser No. 78518703
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describe and advertise the same or similar goods by terms
other than POWDER-GEL, that does not mean that such term is
not merely descriptive of applicant’s goods. See, e.g.,
Roselux Chemical Co., Inc. v. Parsons Ammonia Co., Inc.,
299 F.2d 855, 132 USPQ 627 (CCPA 1962).
Further, it is not dispositive that the term POWDER-
GEL does not appear in the dictionary, or that applicant
may be the first or only user of the term in connection
with vaginal skin protectant creams. See, e.g. In re
Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB
1983).
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.