Marabo North America Holdings Ltd.

Trademark Trial and Appeal Board

Oct 5, 2016

No. 86464788 (T.T.A.B. Oct. 5, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 5, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Marabo North America Holdings Ltd.
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Serial No. 86464788
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Matthew H. Swyers of The Trademark Company PLLC
for Marabo North America Holdings Ltd.

Sean Crowley, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
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Before Kuhlke, Adlin and Pologeorgis, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Marabo North America Holdings Ltd. (Applicant) seeks registration on the
Principal Register of the standard character mark JOINT’NMUSCLE for “Topical
analgesic creams,” in International Class 5.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark on the ground that JOINT’NMUSCLE is merely descriptive of Applicant’s
goods under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).

1 Application Serial No. 86464788, filed on November 25, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
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When the refusal was made final, Applicant appealed. The Examining Attorney
and Applicant filed briefs. We affirm the refusal to register.
Mere Descriptiveness
A mark is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1), if it immediately conveys information of a quality,
feature, function, or characteristic of the goods or services in connection with which
it is used, or intended to be used. In re Chamber of Commerce of the U.S., 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also In re TriVita, Inc., 783 F.3d
872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015). The determination of whether a mark
is merely descriptive must be made “in relation to the goods [or services] for which
registration is sought, the context in which it is being used, and the possible
significance that the term would have to the average purchaser of the goods because
of the manner of its use or intended use.” In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In re Abcor Dev. Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978)). It is not necessary, in order to find a mark
merely descriptive, that the mark describe each feature of the goods or services,
only that it describe a “single feature or attribute” of the goods or services. Chamber
of Commerce of the U.S., 102 USPQ2d at 1219; In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1010 (Fed. Cir. 1987).
Where a mark consists of multiple words, the mere combination of descriptive
words does not necessarily create a nondescriptive word or phrase. In re Phoseon
Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); In re Associated Theatre Clubs Co.,
Serial No. 86464788
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9 USPQ2d 1660, 1662 (TTAB 1988). If each component retains its merely
descriptive significance in relation to the goods or services, the combination results
in a composite that is itself merely descriptive. In re Oppedahl & Larson LLP, 373
F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004). However, a mark comprising a
combination of merely descriptive components is registrable if the combination of
terms creates a unitary mark with a nondescriptive meaning, or if the composite
has a bizarre or incongruous meaning as applied to the goods or services. See
generally In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968). See
also In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983).
The Examining Attorney contends that JOINT’NMUSCLE is “the phonetic
equivalent of the wording ‘joint and muscle’” and that “‘joint and muscle’ would
simply inform consumers of two of the types of pain treated by applicant’s topical
analgesic creams.” Ex. Att. Br., 8 TTABVUE 4, 7. In support of his position that the
term JOINT’NMUSCLE is merely descriptive of the applied-for goods, the
Examining Attorney submitted evidence in the form of third-party webpages
showing use of the terms “joint” and “muscle” together in connection with analgesic
creams. A few examples are reproduced below:2

2 October 19, 2015 Office action at 2, 4, 8.
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In addition, the Examining Attorney’s request that we take judicial notice of the
dictionary definition of “N” as an informal conjunction is granted.3
Applicant points to a variety of cases where the proposed mark that included
merely descriptive terms was nonetheless found to be inherently distinctive. As is
well established, we must make our decision in each case on its own merits “[e]ven
if some prior registrations had some characteristics similar to” the current
application, “the PTO’s allowance of such prior registrations does not bind the
Board … .” In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001). Moreover, many of the marks in these cases (UNDERNEATH IT ALL,
TENNIS IN THE ROUND, SUGAR & SPICE, HEARTWISE) present very different
circumstances that create incongruity or evoke other phrases.

3 Dictionary.com based on THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE (5th ed. 2016). The Board may take judicial notice of dictionary definitions,
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist
in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377
(TTAB 2006).
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Applicant also argues that there is “no instantaneous connection as to the nature
of the goods provided by Applicant” and that “competitors have numerous choices in
regard to alternative language” such as “ARTICULATIO AND BRAWN or
ARTICULATION & TISSUE.” App. Br., 6 TTABVUE 12.
To put it simply, there is no doubt of an instantaneous connection between the
goods, analgesic (a remedy that relieves or allays pain)4 creams, and the wording
JOINT’NMUSCLE areas commonly treated by analgesic creams to relieve pain.
Applicant’s argument does not take into account the perception of the consumer as
to meaning in the context of Applicant’s goods, i.e., what meaning is relevant to
analgesic creams. In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012); In re
Chopper Indus., 222 USPQ 258, 259 (TTAB 1984). In our analysis of the proposed
term, JOINT’NMUSCLE, we must consider “the context in which it is being used,
and the possible significance that the term would have to the average purchaser of
the goods because of the manner of its use or intended use.” Chamber of Commerce
of the U.S., 102 USPQ2d at 1219. Applicant’s broad identification encompasses
analgesic creams for treating joints and muscles. See Chamber of Commerce of the
U.S., 102 USPQ2d at 1219. See also In re Bayer Aktiengesellschaft, 82 USPQ2d at
1832 (Internet evidence may be considered for purposes of evaluating a trademark).
Indeed, in response to a request for more information Applicant answered that its

4 Dictionary.com based on RANDOM HOUSE DICTIONARY (2016).

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goods are joint and muscle creams intended to provide temporary relief of aches,
pains and stiffness.5
As to the other proffered option for competitors’ use, “ARTICULATION &
TISSUE,” it is difficult to imagine a consumer in the United States needing an
analgesic cream for joint and muscle pain would look for something that addresses
articulation and tissue.
Applicant contends that the “limited” evidence of competitor use “is most likely
simply of infringing activity” and should not be considered to support a finding of
descriptiveness. 6 TTABVUE 12. We have considered the examples of third-party
use of the words “joint and muscle” to merely describe their respective creams and
ointments and find them probative. There is nothing in the record to suggest these
uses are “infringing” and the uses clearly describe the feature, function and
characteristic of the goods, namely, that they are for the “joint and muscle.” In
response to Applicant’s assertion that there are only limited examples of third-party
use, we underscore that while the presence of third-party use could be probative on
the question of competitive need, the absence thereof is not dispositive. The fact
that an applicant may be the first or only user of a combination of merely
descriptive terms does not obviate the refusal. In re Phoseon Tech., Inc., 103
USPQ2d 1822, 1826 (TTAB 2012); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB
2009) (competitor need is not the test for descriptiveness); In re Sun Microsystems

5 September 10, 2015 Response to Office action.
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Inc., 59 USPQ2d 1084, 1086 (TTAB 2001); In re Nat’l Shooting Sports Found., Inc.,
219 USPQ 1018, 1020 (TTAB 1983).
The words “joint and muscle” immediately describe the type and location of the
pain the analgesic creams are meant to treat. Further, there is nothing in the record
to support a finding that the combination JOINT’NMUSCLE does not retain the
same descriptive meaning when used in connection with analgesic creams.
Applicant relies on a conveniently truncated quote from In re Colonial Stores Inc.,
157 USPQ 382 (SUGAR & SPICE held not merely descriptive of bakery products)
and asserts that “although the terms in Applicant’s mark, namely JOINT and
MUSCLE, may be deemed merely descriptive of Applicant’s products standing on
their own, surely under the constraint announced in Colonial Stores the telescoping
of the words by shortening the word ‘AND’ to a ‘’N’ to connect the words JOINT and
MUSCLE therewith must certainly draw this trademark under the protections of
the Colonial Stores decision.” App. Br., 6 TTABVUE 13-14. We begin by noting the
quote from Colonial Stores was based on a quote from another case Ex parte Barker,
92 USPQ 218, 219 (Com. Pat. 1952). Applicant omits the key passage in Colonial
Stores, 157 USPQ at 385:
The immediate impression evoked by the mark may well
be to stimulate an association of “sugar and spice” with
“everything nice.” As such, on the record below, the mark,
along with the favorable suggestion which it may evoke,
seems to us clearly to function in the trademark sense
and not as a term merely descriptive of goods. To the
extent that the nursery rhyme is familiar to one seeing or
hearing the mark, his recall is undoubtedly stimulated to
make the association with “everything nice” but this in no
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way defeats the distinctive nature of the composite word
mark as applied to the listed products.
The issue in that case was the double entendre of the phrase SUGAR & SPICE
evoking a nursery rhyme. There is no double entendre in this case, as shown above
“N” simply means “and,” so we have here the clear and unambiguous meaning joint
and muscle. The slight misspelling creating a phonetic equivalent does not create a
unique or incongruous term. In re ING Direct Bancorp, 100 USPQ2d 1681, 1690
(TTAB 2011) (PERSON2PERSON PAYMENT generic for direct electronic funds
transfers); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding
URBANHOUZING, in standard character form, would be perceived by consumers
as the equivalent of the descriptive term URBAN HOUSING, rather than as
including the separate word ZING); In re Ginc UK Ltd., 90 USPQ2d 1472, 1475
(TTAB 2007) (“The generic meaning of ‘togs’ not overcome by the misspelling of the
term as TOGGS. . .”); and In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1987)
(holding MINERAL-LYX generic for mineral licks for feeding livestock). See also In
re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355 (CCPA 1953) (FASTIE
merely descriptive of tube sealing machines).
We conclude that the combination JOINT’NMUSCLE does not present a unique
or incongruous term such that “the merely descriptive significance of the term[s]
[joint, ’n and muscle] is lost in the mark as a whole.” RiseSmart Inc., 104 USPQ2d
at 1934 (quoting In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983)). See also In re
Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) and In re Cryomedical
Sciences Inc., 32 USPQ2d 1377, 1379 (TTAB 1994). In the context of these goods,
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“topical analgesic creams,” the meaning of JOINT’NMUSCLE is clear, an analgesic
cream to treat joints and muscles; there is no incongruity or double entendre.
Decision: The refusal to register Applicant’s mark JOINT’NMUSCLE as merely
descriptive under Section 2(e)(1) is affirmed.