Primal Elements, Inc.

Trademark Trial and Appeal Board

Mar 9, 2004

No. 76339766 (T.T.A.B. Mar. 9, 2004)

Mailed: March 9, 2004
Paper No. 12
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Primal Elements, Inc.
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Serial No. 76339766
_______
Kit M. Stetina of Stetina Brunda Garred & Brucker for
Primal Elements, Inc.
John E. Michos, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Seeherman, Quinn and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On November 15, 2001, Primal Elements, Inc. (a
California corporation) filed an application to register
the mark BOTANICALLY BASED on the Principal Register for
goods identified as “candles, candle wax and candle
components, such as wicks” in International Class 4. The
application is based on applicant’s assertion of a bona
fide intention to use the mark in commerce on the goods.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76339766
2
In the first Office action, the Examining Attorney
refused registration on the ground that applicant’s mark,
BOTANICALLY BASED, is merely descriptive of applicant’s
goods under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1). The Examining Attorney also required (i)
informational materials regarding applicant’s goods; and
(ii) a more definite identification of goods, suggesting,
if appropriate, “candles, and candle wax and wicks, sold as
components of candles, all containing botanical
ingredients.” He explained that if the goods do not
contain botanical (plant based) ingredients, then the mark
would be deceptive or deceptively misdescriptive.
Applicant responded by stating that informational
materials about its recited goods “cannot be found at this
time”; proposing an amendment to the identification of
goods to “candles, and candle wax and wicks, sold as
components of candles”; and arguing that its mark is not
merely descriptive of the goods.
The Examining Attorney then made final both the
refusal to register the mark as merely descriptive, and the
requirement for an acceptable identification of goods,
stating that the phrase “all containing botanical
ingredients” must be included.
Ser. No. 76339766
3
Applicant filed a timely notice of appeal and it also
requested reconsideration as to the identification of goods
issue. The Examining Attorney denied the request for
reconsideration.
Both applicant and the Examining Attorney have filed
briefs;1 an oral hearing was not requested.
We consider first the Examining Attorney’s requirement
for a further amendment to the identification of goods.
The Examining Attorney contends that the identification of
goods is unacceptable because it does not indicate that the
goods contain botanical ingredients as stated in
applicant’s mark. Applicant argues that its proposed
identification of goods is acceptable under the rules and
policies of the USPTO.
1 Applicant submitted three exhibits with its appeal brief.
(Exhibit A consists of printouts of pages from the
mainstonline.com web site, which was one of the sites listed in a
Google search list previously made of record by the Examining
Attorney; Exhibit B consists of printouts of pages from
applicant’s web site (also one of the web sites listed in a
Google search list submitted by the Examining Attorney); and
Exhibit C consists of printouts of pages from three different web
sites which refer to candle holders and candle bases.) The
Examining Attorney did not object to the new evidence, and in
fact specifically addressed some of the information in his brief
on appeal. Although normally new evidence may not be filed after
an appeal is filed, see Trademark Rule 2.142(d), in this case,
the Examining Attorney did not object thereto and, instead,
treated it as being of record. With respect to the web pages
from sites which were in the Google listing previously submitted
by the Examining Attorney, these have been allowed because
applicant is allowed to place such fragments in context. See In
re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 820
(Fed. Cir. 1986).
Ser. No. 76339766
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We agree with applicant. According to the “Trademark
ID Manual,” the word “candles” alone is an acceptable
identification of goods. Thus, although the limiting
phrase “all containing botanical ingredients” provides
additional information about applicant’s products, the
inclusion of the phrase is clearly not necessary for an
acceptable identification of these goods. The amended
identification of goods presented by applicant is
acceptable. See TMEP §§1402.04 and 1402.05 (3d ed. 2002).
Accordingly, the Examining Attorney’s requirement for
a further amendment to the identification of goods is
reversed.
We turn then to the refusal to register the mark as
merely descriptive in relation to the identified goods.
The Examining Attorney contends that the proposed mark
merely describes characteristics and properties of
applicant’s goods, namely, that the candles, candle wax and
candle wicks contain botanical materials (i.e., components
or extracts made from plants). He specifically argues that
the words BOTANICALLY BASED are used to describe any
product which contains ingredients derived from plants
(e.g., skin care products, hair care products, cosmetics,
aromatherapy products and candles); that applicant’s own
web site refers to “botanically based candles” and to
Ser. No. 76339766
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“Herbaceous” candles with “fresh anise and sweet powdery
vanilla” or “evergreens”; and that a variety of products
based on natural ingredients is highly desirable to
consumers.
Applicant argues that the mark BOTANICALLY BASED is
not merely descriptive of the goods. Specifically,
applicant argues that the mark does not directly convey
information about applicant’s goods, but rather is
suggestive, requiring thought or perception to reach a
conclusion about the goods; that the words “botanically
based” could refer to the ingredients used in manufacturing
the candles, but the words could also refer to the candle
base, or to the appearance or fragrance of the candle
(brief, pp. 7-8); that the dictionary definition of the
word “base” includes multiple definitions; that the
Examining Attorney has not met the burden of proof to
establish that the mark is merely descriptive; and that
doubt must be resolved in applicant’s favor.
The test for determining whether a mark is merely
descriptive is whether the term or phrase immediately
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
Ser. No. 76339766
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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
about them. See In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990).
Ser. No. 76339766
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The Examining Attorney has made of record the
following definition from The American Heritage Dictionary
of the English Language (Third Edition 1992):
botanical adjective 1. of or
relating to plants or plant life… .
Applicant referred to the fact that there are several
definitions of the word “base” in Webster’s Ninth New
Collegiate Dictionary, such as “foundation,” “low in place
or position,” and “that part of a bodily organ by which it
is attached to another more central structure of the
organism.” However, applicant did not include a copy
thereof. (Applicant’s April 12, 2002 response, pp. 3-4.)
The Board hereby takes judicial notice of The American
Heritage Dictionary of the English Language (1976)
definition of “base.” As applicant contends, there are
several separate definitions of the word “base,” one of
which is “3. the fundamental ingredient from which a
mixture is prepared; … a paint with an oil base….”
Applicant’s assertion about the multiple meanings of
the word “base” is unpersuasive because those 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 that we must consider.
Moreover, applicant’s mark uses the word “based,” not
Ser. No. 76339766
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“base,” and this term follows the word “botanically.” In
this context, the dictionary meaning we have set forth
above would be the one consumers would attribute to the
mark.
As mentioned earlier, the Examining Attorney submitted
printouts from a list retrieved by a Google search for
“botanically based and candles,” which provided limited
excerpts from the various web sites listed therein. This
search indicated that 356 references were found. He also
submitted printouts of a few pages listing brief excerpts
from web sites retrieved by a Google search for “primal
elements botanically based.” These excerpts included a
short segment from applicant’s web site stating the
following: “… we believe our botanically based candles
will be ….” Normally such a Google search listing is not
particularly persuasive because it does not include
printouts of the pages from the listed web site, and it is
often difficult to understand the context in which the
retrieved phrase is used. However, in this case, the short
excerpt from applicant’s web site shows applicant’s use of
the applied-for term in a descriptive manner, and applicant
has not denied this, or given any other explanation of its
use. We also note that the web pages submitted by
applicant of its web site, while not showing the use of
Ser. No. 76339766
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“botanically based” indicated above, do tout applicant’s
candles as including such botanical ingredients or scents
as “anise,” “vanilla” or “evergreen.”
The Examining Attorney also made of record several
excerpted stories retrieved from the Nexis database,
examples of which are reproduced below, to show that
“botanically based” has a descriptive significance in
relation to a wide variety of products, particularly those
for health and beauty, lifestyle, aromatherapy, and the
like:
Headline: GF Tested
…Product claims: Botanical Kinetics
formulas are botanically based daily care
for all skin types. They soothe with
plant-derived emollients, protect with
natural anti-oxidants and nourish with …
“Palm Beach Post,” November 22, 2002;
Headline: Dry Hair? Try One of These
Conditioners
…loves Phytologie’s Phytocitrus Essential
Nutrition Hair Mask for dry and brittle
hair. Phytologie is a botanically based
line. This mask is packed with things
such as shea butter and grapefruit
extracts and is specially … “The Dallas
Morning News,” August 15, 2002; and
Headline: Organic Growth; Organic
Cosmetics and Toiletries
…Integrity is the key to our work. All
our products are botanically based and
driven and all ingredients are grown on
local farms. “Soap Perfumery &
Cosmetics,” October 1, 2001.
Ser. No. 76339766
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We agree with the Examining Attorney that the phrase
“botanically based is a commonly used marketing phrase
which describes the source of ingredients for a variety of
goods.” (Brief, p. 8.) The evidence shows that people are
conditioned to seeing the term “botanically based,” and
that people will understand the term as meaning that skin
care products, cosmetics, soaps and aromatherapy products
are made of plant ingredients. Candles, too, are general
consumer products, which are akin to aromatherapy products.
Thus, when purchasers see the words “botanically based”
used in connection with candles, the same meaning will be
understood, particularly in view of applicant’s own use of
the term.
Accordingly, we find that applicant’s mark,
BOTANICALLY BASED, when used in connection with applicant’s
identified goods, immediately describes, without need of
conjecture or speculation, the primary characteristics of
applicant’s goods. No exercise of imagination or mental
processing or gathering of further information is required
in order for purchasers of and prospective customers for
applicant’s goods to readily perceive the merely
descriptive significance of the phrase BOTANICALLY BASED.
See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.
1987); In re Omaha National Corporation, 819 F.2d 1117, 2
Ser. No. 76339766
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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).
Decision: The requirement for a further amendment to
the identification of goods is reversed, and the refusal to
register on the ground that the mark is merely descriptive
under Section 2(e)(1) of the Trademark Act is affirmed.