Levlad, Inc.

Trademark Trial and Appeal Board

Jan 13, 2004

No. 76185349 (T.T.A.B. Jan. 13, 2004)

Mailed: January 13, 2004
Paper No. 14
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Levlad, Inc.
________
Serial No. 76185349
_______
Robert Berliner of Fulbright & Jaworski L.L.P. for Levlad,
Inc.
Richard A. Straser, Trademark Examining Attorney, Law
Office 114 (Margaret Le, Managing Attorney).
_______
Before Seeherman, Hohein and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On December 23, 2000,1 Levlad, Inc. (a California
corporation) filed an application to register the mark
ORGANIC SPA COLLECTION on the Principal Register for goods
amended to read as follows:
1 In applicant’s “Response to Final Office Action” filed
September 3, 2002 (via certificate of mailing), applicant
requested that “the filing date be corrected to December 22,
2000.” The Board cannot change the filing date of an
application. If applicant chooses to pursue this matter, it may
file a petition to the Director pursuant to Trademark Rule 2.146.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76185349
2
“hair shampoo; hair conditioners; hair
rinses; suntan lotion; after-bath
splash-on; face wash; facial masks;
hand and body lotion; moisturizing
lotion; skin cream; toothpaste;
personal deodorants; non-medicated
scalp treatment cream; non-medicated
ointment for the treatment of burns,
rashes and minor skin disorders” in
International Class 3; and
“medicated preparations for scalp care
and the treatment of dandruff; dandruff
shampoo; medicated ointment for the
treatment of burns, rashes and minor
skin disorders” in International Class
5.
Applicant disclaimed the word “organic.” The application
is based on applicant’s assertion of a bona fide intention
to use the mark in commerce in connection with the
identified goods.
The Examining Attorney refused registration for both
classes of goods on the ground that applicant’s mark,
ORGANIC SPA COLLECTION, is merely descriptive of
applicant’s goods under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. §1052(e)(1).
When the refusal was made final, applicant appealed to
this Board. Both applicant and the Examining Attorney have
filed briefs;2 an oral hearing was not requested.
2 Applicant submitted two exhibits with its request for
reconsideration filed September 3, 2002 (via certificate of
mailing). (Exhibit A consists of papers relating to applicant’s
request that the filing date of the application be changed, and
Exhibit B consists of printouts from the USPTO’s Trademark
Ser. No. 76185349
3
The Examining Attorney contends that the proposed mark
merely describes characteristics and qualities of
applicant’s goods, namely, a spa collection of various
organic products, sold together to consumers; that
applicant’s proposed mark consists of three words with
commonly understood English meanings; that the mark does
not create a unique or incongruous mark with a separate,
non-descriptive meaning; and that neither imagination nor a
multi-stage reasoning process is needed to discern the
significant characteristics and features of applicant’s
goods.
Specifically, the Examining Attorney contends as
follows (Final Office action, p. 2):
The terms “organic” and “spa
collection” are highly descriptive for
a spa collection featuring organic
goods … . Organic products are highly
marketed and are recognizable products
to consumers. Various “spa
collections” feature applicant’s
products… .
The Examining Attorney concludes that the evidence he
submitted into the record -- dictionary definitions of the
Electronic Search System (TESS) of several third-party
registrations which include the word “ORGANIC” in the marks.)
The Examining Attorney denied applicant’s request for
reconsideration without comment on either of these issues and/or
exhibits. However, in his brief on appeal, the Examining
Attorney erroneously objected to these exhibits as being untimely
filed. The Examining Attorney’s objection is overruled.
Ser. No. 76185349
4
three words comprising the mark, evidence retrieved from
the Nexis database and the Internet, and third-party
registrations with the term “collection” disclaimed --
establishes a prima facie case of mere descriptiveness,
which applicant did not successfully rebut.
Applicant argues that the mark ORGANIC SPA COLLECTION,
when considered as a whole, and not dissected into its
separate parts, requires prospective purchasers to go
through a multi-stage reasoning process to understand the
connection between applicant’s goods and the mark ORGANIC
SPA COLLECTION; that because the mark requires
“imagination, thought and perception to reach a conclusion
as to the nature of the goods” (Response to first Office
action, p. 6) it is only suggestive of the goods; that the
dictionary definitions of the words “organic” and “spa”
include multiple definitions of those words; that there are
numerous third-party registrations on the Principal
Register of marks which include the word “ORGANIC” and
another word or words; that the Examining Attorney has not
met the burden of proof to establish the mark is merely
descriptive; and that doubt is resolved in applicant’s
favor.
The test for determining whether a mark is merely
descriptive is whether the term or phrase immediately
Ser. No. 76185349
5
conveys information concerning a significant quality,
characteristic, function, ingredient, attribute or feature
of the product or service in connection with which it is
used or is intended to be used. See In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001); In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA
1978); In re Eden Foods Inc. 24 USPQ2d 1757 (TTAB 1992);
and In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
Further, it is well-established that the determination
of mere descriptiveness must be made not in the abstract or
on the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the term or phrase is being used or is intended to be
used on or in connection with those goods or services, and
the impact that it is likely to make on the average
purchaser of such goods or services. See In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); and In
re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).
Consequently, “[w]hether consumers could guess what the
product [or service] is from consideration of the mark
alone is not the test.” In re American Greetings Corp.,
226 USPQ 365, 366 (TTAB 1985). Rather, the question is
whether someone who knows what the goods or services are
will understand the term or phrase to convey information
Ser. No. 76185349
6
about them. See In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990).
The Examining Attorney has made of record the
following definitions from The American Heritage Dictionary
of the English Language (Third Edition 1992):
(1) organic adjective …2. of,
relating to, or derived from
living organisms: organic matter.…
3c. simple, healthful, and close
to nature: an organic lifestyle….;
(2) spa noun 1. a resort providing
therapeutic baths. 2. a resort
area having mineral springs. 3. a
fashionable hotel or resort. A
health spa. … [After Spa, a
resort town of eastern Belgium.]
Regional Note: The word spa, taken
from the name of the famous
mineral springs in Spa, Belgium,
has become a common noun denoting
any place with a medicinal or
mineral spring.; and
(3) collection noun 2. a group of
objects or works to be seen,
studied, or kept together… .
Applicant’s disclaimer of “organic” confirms what the
evidence of record shows, i.e., this word is at least
merely descriptive in relation to applicant’s various
cosmetic products and medicated products. See In re K-T
Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787 (Fed. Cir.
1994); Quaker State Oil Refining Corporation v. Quaker Oil
Ser. No. 76185349
7
Corporation, 453 F.2d 1296, 172 USPQ 361 (CCPA 1972); and
In re Ampco Foods, Inc., 227 USPQ 331 (TTAB 1985).
Further, the Nexis and Internet evidence, examples of
which are reproduced below, demonstrates that the terms
“organic” and “spa collection” immediately convey
information about the major characteristics of applicant’s
goods:
Headline: Finding a Bluebird of
Happiness
…The result, Bluebird Herb Farm, is home
to more than 150 herb varieties that are
put to many uses: culinary, medicinal,
potpourri, meditation and butterfly
attractors; a line of uniquely formulated
fine organic herbals including shampoos
and hair treatments, skin care lotions
and oils, bath salts and soaks, teas, pet
care (including an herbal dog biscuit
mix), household products and aromatherapy
treatments. “Albuquerque Journal,”
September 25, 2000;
Headline: Restaurants; A Great Escape
…walls are paintings of local scenes by
local artists. Wooden shelves hold a
library of well-used cookbooks and even a
few items for sale (if you happen to need
wax paper or organic toothpaste). … “The
New York Times,” July 16, 2000;
Headline: Blocking the Rays; Sun
Protection First; Put Sunscreens in Your
Plans for Summer Fun
…For those who prefer a holistic approach
to skin care, Dr. Hauschka’s sunscreen
lotions and creams are made from organic,
“biodynamically” grown plants and pure
essential oils said to be good for
sensitive skin. The collection is
Ser. No. 76185349
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available at Sephora, Beechwood Place. …
“The Plain Dealer,” May 25, 2000;
Headline: Brown Cow Adds a Store
…Wooley’s mohair, cotton and wool saddle
blankets used to be the only goods, but
the inventory now includes beaded
halters, hardwood rocking horses, chaps,
hats, medicines and organic shampoos.
Leasing retail space at the Mall of
America was no mean feat. … “Albuquerque
Journal,” September 20, 2001;
Headline: Killer Looks
…And yet he remarks in a voice-over one
morning while peeling off his organic
facial mask, “I simply am not here.” …
“The Oregonian,” April 4, 2000;
Headline: Were All the Pillows There to
Sleep On or Just Used to Cushion the
Fall?
…include a multi-colored flower make-up
bag containing nail polish in Tropical
Orchid and a copper color; a small bottle
of Revitalizing perfume; and a bottle of
Revitalizing Moisture Lotion by Mary Kay
Private Spa Collection. … “The
Commercial Appeal (Memphis, TN),”
November 14, 2001;
Headline: Spa Treatments Come Home
…Photo: State of Mind’s home spa
collection includes a myriad of shampoos,
conditioners, exfoliators, tub teas, body
muds, candles and incense. … “St. Louis
Post Dispatch,” February 13, 1999;
Headline: Shipyards Vie to Raise the
Titanic (clone)
…Selling Soap
Princess Cruises has begun selling its
own line of bath and shower products.
The Grand Spa Collection includes,
shampoo, conditioner, bath and shower
gel, moisturizer, body silk, bath and
body oil, soap and bath sea salts in four
Ser. No. 76185349
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fragrances. … “The San Francisco
Examiner,” April 19, 1998;
Gaylord Opryland Resort
Gilchrist & Soames English Spa Collection
Ultimate Spa Collection Basket…included
are … body lotion and mineral bath,…
shampoo, conditioner and mineral bath,
large loofah scrubber…, … soap
Spa Collection Basket…included are … body
lotion, mineral bath, shampoo,
conditioner, small loofah scrubber …
soap…,
www.gaylordopryland.com;
Botanical Bath & Body Essentials
Private Spa Collection.
…makes it possible for spa treatment in
your bath or shower…
www.geocities.com;
Exuviance Spa Collection
This collection contains:
Purifying body wash…, hand & body
lotion…. The Spa Collection comes in a
clear plastic drawstring bag and is
excellent for [a] holiday gift
suggestion….
www.skin-beauty.com;
Atlantis Herbs “For All Your Natural
Health and Wellness Needs”
Body Care Herbs Homeopathic
Aromatherapy Pet Care Videos
…Gift Baskets and kits are a great way to
say “thank you” to that special person!
Avalon Lavender Spa Collection Tote Bags
4 pc A walk through a lush lavender
field on a pristine organic farm inspired
the creation of Avalon Organic
Botanicals. This unique line of
therapeutic body care products is derived
from certified, organic aromatic flowers
and herbal botanicals for a remarkable
spectrum of therapeutic, life enhancing
Ser. No. 76185349
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benefits for a healthy body, mind and
spirit.
www.atlantisherbs.com;
Sea Enzyme…The Balancer
Wellness Spa Collection for Face, Body,
Hands & Feet
Sea Enzyme puts balance back in your
hands, feet and body with botanical sea
algae, and sea minerals. For centuries,
plants, sea plants and minerals have been
used for their therapeutic benefits,
combined with natural vitamins and
infusions of essential oils. … High
substances of anti-oxidants. Such as
vitamins, chamomile, lemon grass,
lavender and marine minerals are building
blocks that help to protect cell
membranes from the damage of free
radicals. Pure, botanical skin care can
be your best source for healthy,
beautiful skin.
www.skineffects.com;
Spa Collection in Star Basket
Aromatherapy Spa Collection by Spa
Renaissance includes… bath and body oil,…
hand and body lotion,… salt rub,…
www.romanticgiftsforher.com;
Ladies Echo Spa Collection
This Ladies Echo Spa Collection
Includes: Sea salts, shower gel, bath
foam and body lotion… .
www.greenparrotgifts.com; and
Mason James Salon
Repechage
The spa has served as a place of
pilgrimage since the times of the ancient
Romans for its natural means of healing
and rejuvenation. The Repechage® Sea Spa
Collection recreates these incredible
benefits in products specifically
designed to provide maximum results in
minimum time.
Ser. No. 76185349
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Skin Care Information Skin Care Kits
www.masonjamessalon.com.
We agree with the Examining Attorney that the mark
ORGANIC SPA COLLECTION, when considered as a whole, and in
the context of applicant’s goods (various cosmetic and
medicinal products such as hair shampoo, skin cream, hand
and body lotion, moisturizing lotion, and dandruff
shampoo), is merely descriptive. The phrase immediately
informs consumers that applicant’s goods are made of
“organic” or natural and not synthetic or artificial
ingredients, and that they are a collection of “spa”
products, i.e., they are products that are generally
available at a spa. The purchasing public would
immediately understand that the significant characteristics
of applicant’s goods are that they are made of “organic”
ingredients and that they are collections of products
typically available at a spa.
The combination of the words in applicant’s mark does
not create an incongruous, creative or unique mark.
Rather, applicant’s mark, ORGANIC SPA COLLECTION, when used
in connection with applicant’s identified goods,
immediately describes, without need of conjecture or
speculation, the primary characteristics of applicant’s
goods, as discussed above. Nothing requires the exercise
Ser. No. 76185349
12
of imagination or 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 phrase ORGANIC SPA
COLLECTION as it pertains to applicant’s goods. See In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In
re Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987); In re Intelligent Instrumentation Inc.,
40 USPQ2d 1792 (TTAB 1996); and In re Time Solutions, Inc.,
33 USPQ2d 1156 (TTAB 1994).
While we acknowledge that the record is perhaps
stronger with regard to the merely descriptive nature of
the mark in connection with the goods identified in Class
3, nonetheless, there is sufficient evidence (dictionary
definition of “spa,” and Nexis/Internet stories referring
to medicinal uses of organic products and the healing
nature of spa products) to make a prima facie case that the
mark is merely descriptive with regard to the goods
identified in Class 5.
Applicant’s argument that the words “organic” and
“spa” have several non-descriptive dictionary meanings is
unpersuasive because the other meanings are irrelevant in
the context of applicant’s goods. It is the significance
of the mark as used in connection with applicant’s goods
Ser. No. 76185349
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that we must consider, and in this context the dictionary
meanings we have set forth above would be the ones
consumers would attribute to the mark.
Applicant’s argument that “the term ‘ORGANIC’ is
registrable when used in conjunction with another term as
evidenced by the numerous registrations on the Principal
Register containing ‘ORGANIC’ and another term” (Response
to Final Office action, p. 6) is also unpersuasive. Some
of the third-party registrations issued under Section 2(f)
of the Trademark Act, thus indicating the descriptive
nature of the entire mark, including the term “ORGANIC.”
Also, several of the third-party registrations are
distinguishable on their face such as marks in which
“organic” describes a non-descriptive term, such as THE
ORGANIC WAY and leaf design, and ORGANIC GIANT, as a result
of which “ORGANIC” would not be viewed as describing the
goods; or the goods are not related to those involved
herein, such as cleaning compounds for commercial and
industrial use, furniture polish, oven cleaner, and air
fresheners.
In any event, while uniform treatment under the
Trademark Act is an administrative goal, the Board’s task
in this ex parte appeal is to determine, based on the
record before us, whether applicant’s mark is merely
Ser. No. 76185349
14
descriptive. As often noted by the Board, each case must
be decided on its own merits. We are not privy to the
records of the third-party registration files, and
moreover, the determination of registrability of those
particular marks by the Trademark Examining Attorneys
cannot control the merits in the case now before us. See
In re Nett Designs Inc., supra, 57 USPQ2d at 1566 (“Even if
some prior registrations had some characteristics similar
to [applicant’s application], the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”)
Decision: The refusal to register on the ground that
the mark is merely descriptive under Section 2(e)(1) of the
Trademark Act is affirmed as to both classes of goods.