Victoria Principal Productions, Inc.

Trademark Trial and Appeal Board

Mar 25, 2009

No. 78245283 (T.T.A.B. Mar. 25, 2009)

Mailed:
March 25, 2009
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Victoria Principal Productions, Inc.
________

Serial No. 78245283
_______

Marnie Wright Barnhorst of The Trademark Group, APLC for
Victoria Principal Productions, Inc.

John Dwyer, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Walters, Bucher and Kuhlke, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Victoria Principal Productions, Inc. seeks registration
on the Principal Register of the mark SILVER BIRCH (in
standard character format) for goods identified in the
application as follows:
“skin and body care preparations namely, skin
cleansers, skin moisturizers, skin lotions,
skin soaps, sun screen preparations,
cosmetics, non-medicated hair care
preparations, nail care preparations,
colognes, perfumes and tooth whitening
preparations” in International Class 3.1

1 Application Serial No. 78245283 was filed on May 2, 2003
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78245283
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The Trademark Examining Attorney refused registration
on the ground that the term is merely descriptive under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1), or in the alternative, registration was
refused under Section 2(a) of the Trademark Act, 15 U.S.C.
§ 1052(a), on the ground that the mark is deceptive as to
the material content of the goods. The Trademark Examining
Attorney also refused registration based upon applicant’s
failure to provide information about the goods as required
under Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b).
After the Trademark Examining Attorney made the
refusals final, applicant appealed to this Board. We affirm
the refusals to register.
Requirement under 37 C.F.R. § 2.61(b)
In the Office action of June 18, 2007, the Trademark
Examining Attorney asserted that applicant must provide
additional information (e.g., promotional matter of
applicant’s or competitors’ products, the nature and purpose
of the goods, etc.) in order to properly examine the
application. He cited as authority for this request
37 C.F.R. § 2.61(b).
In its response of December 17, 2007, applicant
declined to provide any information about the goods, saying
Serial No. 78245283
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that it “fails to see why more information regarding the
nature of the goods is necessary.”
In his Final Office action, the Trademark Examining
Attorney made this response a second basis for finally
refusing registration:
To permit proper examination of the
application, applicant must submit additional
product information about the goods.
37 C.F.R. §2.61(b); In re DTI P'ship LLP,
67 USPQ2d 1699, (TTAB 2003); TMEP § 814. The
requested product information should include
fact sheets, instruction manuals, and/or
advertisements. If these materials are
unavailable, applicant should submit similar
documentation for goods of the same type,
explaining how its own product will differ.
If the goods feature new technology and no
competing goods are available, applicant must
provide a detailed description of the goods.

The submitted factual information must make
clear whether the goods will contain silver
birch as an ingredient. Conclusory
statements regarding the goods will not
satisfy this requirement.

Failure to respond to a request for
information is an additional ground for
refusing registration. DTI, 67 USPQ2d at
1701. Merely stating that information about
the goods is available on applicant’s website
is an inappropriate response to a request for
additional information and is insufficient to
make the relevant information of record. In
re Planalytics, Inc., 70 USPQ2d 1453, 1457-58
(TTAB 2004).

At this stage of the prosecution, applicant appears to
be hewing carefully to narrowly-drawn semantics:

Serial No. 78245283
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Applicant has shown through the Examining
Attorney’s evidence that the term “silver
birch” is a general one that can refer to any
of several species of birch tree that happens
to be silver in color. Even if some of
Applicant’s products did contain birch tree
oil or betulinic acid, it is unrealistic to
expect, or for Applicant to falsely state in
its application, that all of the birch trees
used to obtain the birch tree oil or betulinic
acid were “silver” in color.

This approach suggests that applicant is being evasive
because it fears that a totally truthful response might well
support the statutory refusals under Section 2(e)(1) or
Section 2(a), thereby hurting its chances of getting a
registration. The purpose of the Trademark Examining
Attorney’s request for more information was most clear. Yet
applicant’s hair-splitting responses on the merits combined
with a strategic refusal to supply the requested information
seemed calculated to interject just enough ambiguity into
the record to avoid a falsehood while defeating the ability
of the Trademark Examining Attorney to prove descriptiveness
or deceptiveness in an Intent-to-Use application without an
allegation of use, specimens, etc. Clearly, applicant’s
responses did not satisfy the Trademark Examining Attorney’s
request under Trademark Rule 2.61(b).
Merely Descriptive under Section 2(e)(1)

Although acknowledging that “an extract of a ‘Birch’
tree may be present as an ingredient in at least some of
Serial No. 78245283
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Applicant’s goods to which the mark is applied,” applicant
argues that the term “Silver Birch” is a suggestive term
that applicant “uses to evoke the image of a silvery-leaved
birch tree so that consumers will imagine the feelings of
shimmering beauty, lightness and serenity.” Applicant’s
brief at 7. Consistent with the evidence that the Trademark
Examining Attorney has placed into the record, applicant
admits that betulinic acid, extracted from a variety of birch
bark including the silver birch tree, is thought to have
therapeutic value. Yet applicant concludes that there is no
evidence in the record that betulinic acid, if indeed it is
derived from a birch tree, would have necessarily been
extracted “from a ‘silver’ colored birch tree.” Applicant’s
brief at 2. Applicant criticizes many of the articles put into
the record by the Trademark Examining Attorney because, it
argues, the word “cosmetics” does not actually appear in the
articles.
By contrast, the Trademark Examining Attorney argues
that the evidence of record clearly demonstrates that the
commercial impression of applicant’s alleged mark, examined
in its entirety in relation to applicant’s identified goods,
immediately conveys information about an ingredient in
applicant’s cosmetics, soaps, lotions, sun screens, and
similar skin care products.
Serial No. 78245283
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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 “knowledge of a quality, feature,
function, or characteristic of the goods or services.”
In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007) [ASPIRINA is merely descriptive
of analgesic product]. See also In re MBNA America Bank
N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003)
[MONTANA SERIES and PHILADELPHIA CARD are merely descriptive
of applicant’s “affinity” credit card services; a “mark is
merely descriptive if the ultimate consumers immediately
associate it with a quality or characteristic of the product
or service”]; In re Nett Designs, Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [THE ULTIMATE BIKE RACK
is merely descriptive for bicycle racks]; In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987) [APPLE
PIE is merely descriptive for a potpourri mixture]; and In re
Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507
(CCPA 1980). To be “merely descriptive,” a term need only
describe a single significant quality or property of the
goods. Gyulay, 3 USPQ2d at 1009. Descriptiveness of a mark
is not considered in the abstract, but in relation to the
Serial No. 78245283
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particular goods or services for which registration is
sought. 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
only applicant’s mark. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978) [GASBADGE merely
descriptive of a “gas monitoring badge”; “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.”]. Rather, the question 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 addition to considering the applied-for mark in
relation to the goods or services for which registration is
sought, the proper test for descriptiveness also considers
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. In
re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); In re Pennzoil Products Co., 20 USPQ2d 1753
Serial No. 78245283
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(TTAB 1991); and In re Engineering Systems Corp., 2 USPQ2d
1075 (TTAB 1986).
Hence, the ultimate question before us is whether the
term SILVER BIRCH conveys information about a significant
feature, characteristic or ingredient of applicant’s goods
with the immediacy and particularity required by the
Trademark Act.
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. “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.’” (citation
omitted) In re Gyulay, 3 USPQ2d at 1009; In re Home Builders
Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and
In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).
Applicant expresses the issue before us as

… whether the terms “SILVER” and “BIRCH”
when combined and used on skin and body care
preparations, hair care preparations, colognes,
perfumes, nail care preparations and tooth
whitening preparations can function as an
Serial No. 78245283
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indication of more than a “mere description”
of the ingredients or purpose of the goods on
which the mark is used. It is clear that an
extract of a “BIRCH” tree may be present as an
ingredient in at least some of Applicant’s
goods to which the mark is applied.
Applicant’s brief at 2. Furthermore, applicant argues that
“it cannot be said that ‘SILVER’ is descriptive of an
ingredient or purpose of any of the goods.” Id.
However, it seems somewhat disingenuous for applicant to
dissect its mark and act as if each of these words alone must
convey information about the involved goods. The record
clearly establishes that the combined term “Silver Birch” has
a readily understood meaning as applied to applicant’s goods.
Specifically, the “Silver Birch” is a deciduous tree
having smooth, silvery-white bark that is native to the
Northern Hemisphere. Located in the family Betulaceae, the
Silver Birch is closely related to the beech and oak tree
family. The specific Latin nomenclature that shows up
repeatedly in the record is Betula (genus) pendula (species)
(also formerly Betula alba).
silver birch -- sil·ver birch (plural silver birches or silver birch) noun
Definition: tree with silvery-white bark: a deciduous tree
with peeling silvery white bark. Native to: Europe, Asia.
Latin name Betula pendula.2

2 http://encarta.msn.com/dictionary_/silver%2520birch.html
ENCARTA WORLD ENGLISH DICTIONARY [North American Edition] 2009.

Serial No. 78245283
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Silver Birch (Betula Alba)
The Silver Birch is a tall tree with smooth, white-coloured bark. The
triangular-shaped leaves are often used in phytotherapy and contain
flavenoids with diuretic and depurative properties for treating water
retention. Recent scientific research has brought to light an active
substance, betulinic acid, obtained from Birch bark to help protect the
skin from serious changes caused by sun exposure.3

Birch
From Wikipedia, the free encyclopedia
Birch is the name of any tree of the genus Betula (Bé-tu-la), in the
family Betulaceae, closely related to the beech/oak family, Fagaceae…
Betula pendula - Silver Birch
Betula platyphylla (Betula pendula var. platyphylla) - Siberian Silver Birch4

Plants For A Future: Database Search Results
Betula pendula Silver Birch
Physical Characteristics
A deciduous Tree growing to 20m by 10m at a fast rate. It is
hardy to zone 2. It is in flower in April, and the seeds ripen from
July to August. The flowers are monoecious (individual flowers are
either male or female, but both sexes can be found on the same
plant) and are pollinated by Wind. It is noted for attracting wildlife.
The plant prefers light (sandy), medium (loamy) and heavy (clay)
soils, requires well-drained soil and can grow in heavy clay and
nutritionally poor soils. The plant prefers acid, neutral and basic
(alkaline) soils and can grow in very acid soil. It cannot grow in the
shade. It requires dry or moist soil. The plant can tolerate strong
winds but not maritime exposure…
Medicinal Uses
An oil obtained from the inner bark is astringent and is used in the
treatment of various skin afflictions, especially eczema and
psoriasis … A decoction of the leaves and bark is used for bathing
skin eruptions … 5

Birch
Botanical and Common Names
• Family Betulaceae
• Betula pendula syn. B. verrucosa (Silver Birch)
• Betula utilis (Himalayan Silver Birch)

3 http://sg.clarins.net/main.cfm?PlanteID=193

4 http://en.wikipedia.org/wiki/Birch

5 http://www.pfaf.org/database/plants.php?Betula+pendula
Serial No. 78245283
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• Betula alba, Alnus acuminata, Betula pubescens (White
Birch; Spanish: Alamo Blanco, Abedul; Nahuatl: Aylin,
Tepeylin)
…
History
The medicinal use of the tree has been known since the
earliest of times, but it was also known to have other valuable
uses. Its name is thought to have derived from the Sanskrit
"bhurga", meaning "tree whose bark is used for writing on".
Although the tree was known to classical writers, it was
Hildegard of Bingen, a medieval abbess and mystic who wrote
about herbal medicine. She was the first European to
document its medicinal properties.
In the Highlands of Scotland, birch sap is tapped in the
spring and drunk as a treatment for bladder and kidney
complaints.
Its name in the Nahuatl (Aztec) language was derived from
the location of the tree. Aylin means "birch growing by water".
Tepeylin means "birch growing in the mountains".
The Aztecs used the leaves in a formula for an enema to
treat dysentery. They also used the bark in a liquor to "clear
the bowels" and in a salve to heal wounds. In Sonora, the
plant is still used for wounds and indigestion.
Medicinal Parts
• Leaves, bark, sap.
• A German study indicated that the leaves were useful
in treating bacterial and inflammatory diseases of the urinary
tract.
Remedies
• infusion made from the leaves for the removal of
waste products in the urine thereby treating kidney and
bladder stones, rheumatic conditions, and gout.
• sap as a diuretic
• oil or expressed liquid from the leaves in preparations
for eczema, psoriasis, and other chronic skin complaints
• lotions made from decoctions for chronic skin
problems
• ointment for rheumatism and gout
• decoction of the bark on chronic skin conditions
Traditional Uses
Birch tar is a clear, dark brown oil obtained through a
distillation process and used for parasitic infestations of the
skin and other chronic skin complaints. It is also a constituent
of Unguentum contra scabiem used in the treatment of
scabies.
The leaves are used with other diuretic herbs to reduce fluid
retention and swellings.
The bark can be macerated in oil and applied to rheumatic
joints.
Serial No. 78245283
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The Himalyayan Silver Birch is used in Ayurvedic medicine
as a treatment for convulsions, dysentery, hemorrhages, and
skin diseases.
Mexicans use the leaves in a diuretic tea.6

We reject applicant’s hair-splitting arguments about
the various Latin and English-language terms for the
particular species of birch tree.7 That the “silver birch”
tree is also known as the “European white birch” (and that
the Trademark Examining Attorney, in one reference evidently
intended to write “silver birch” and inadvertently wrote
“white birch”) is not determinative under Section 2(e)(1) of
the Act. Rather, it is important to our determination that
the term “Silver Birch” is used repeatedly in this record in
a manner that immediately conveys information about an
ingredient in a variety of skin, hair and body care
products.
The record shows the wide range of medicinal uses of
Silver Birch, dating back thousands of years to pre-history

6 http://www.innvista.com/health/herbs/birch.htm

7 “The seven Internet articles provided by the Examining
Attorney with the June 18, 2007 Office Action actually
support Applicant’s position that ‘silver birch’ does not
refer to a specific plant or any specific characteristics
of a ‘silver birch,’ but is instead a general term that
could refer to any of a number of species of birch plant
all with different characteristics.”

Applicant’s brief at 5.

Serial No. 78245283
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and spanning the millennia all the way up to the still
unfolding promise for dealing with melanomas and HIV/AIDS:
Herbs Medicinal A guide for healing properties
A to B
Birch or silver birch
Betula Family: Betulacelae
Part used: leaves
Other names: Black birch, sweet birch, spice birch.
Actions: Anti-inflammatory Antirheumatic Diuretic Anthelmintic (expel worms) Astringent
Indications: Birch leaves show anti-inflammatory, antispasmodic and diuretic activities. Traditional
healers have been using Birch in remedy for skin rashes, hair loss and rheumatic complaints. Sweet
Birch can have good results against cellulite; it may help in eliminating toxins and has a diuretic mild
action.
Qualities: cold, dry.
Dosage and preparation:
INFUSION: 1 teaspoonful leaves to ½ cup of hot water, steep 2-3 min, strain and drink 1 cup per day,
1 mouthful at a time.
Caution: Salicylate sensitivity.

PREPARATION AND DOSAGE:
INFUSION: For one cup of boiling water use 1-2 teaspoonfuls of the dried herb, leave to infuse 10-15
minutes. should be drunk twice daily8

Birch essential oil information
Birch oil is extracted from Betula alba (also known as B. alba var. pubescens, B.
odorata, verrucosa or pendula), of the Betulaceae family and is also known
as European white birch or silver birch.
Oil properties
Birch oil has a balsamic smell and is pale yellow in color.
Origin of birch oil
This decorative tree is native to the northern hemisphere and grows up to 15-20
meters in height. It has slender branches, silver-white bark broken into
scales and light green oval leaves. Birch buds were formerly used as a tonic
in hair preparations.
In Scandinavia, young birch leaflets and twigs are bound into bundles and used in
the sauna to tone the skin and promote the circulation. The sap is also
tapped in the Spring and drank as a tonic.
Extraction
White birch oil is extracted from the leaf-buds by steam distillation.
Crude birch tar is extracted by slow destructive distillation from the bark; this is
subsequently steam-distilled to yield a rectified birch tar oil.

8 http://reviews.ebay.com.au/Herbs-Medicinal-A-guide-for-
healing-properties-A-to-B_W0QQugidZ10000000003202987
Serial No. 78245283
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Therapeutic properties
The therapeutic properties of birch oil are analgesic, antiseptic, astringent,
depurative, disinfectant, diuretic, febrifuge, insecticide and tonic.
Chemical composition
The main components of birch oil are salicylic acid, methyl salicylate, betulene
and betulenol.
Precautions
White birch oil is generally non-toxic, non-irritant and non-sensitizing but should
be avoided during pregnancy due to possible irritation occurring.
Uses
White birch oil is useful for dermatitis, dull or congested skin, eczema, hair care
and psoriasis, although it could irritate the skin.
It is also helpful in cases of poor circulation, the accumulation of toxins in the
muscles, for arthritis, rheumatism, muscular pains, edema and cellulite.
• Vapor therapy or used in a bath
o As vapor therapy or diluted in the bath, White Birch oil can help
with muscular aches and pains, arthritis and rheumatism.
• Cream and ointment
o The crude tar from birch is used in pharmaceutical preparations
for dermatological diseases.
Birch oil blends well with
Although most essential oils blend well together, birch oil blends particularly well
with benzoin, jasmine, sandalwood and rosemary.9

The British Journal of Dermatology state that ‘Background Actinic
keratoses (AKs) are among the most common cutaneous malignancies
and have previously been classified as in situ squamous cell carcinoma
with reported progression rates of up to 20% over 10 years.’ A study
published in the Journal of the German Dermatological Society
concluded. ‘In this pilot study, a standardized birch bark extract was
effective in the treatment of actinic keratoses. This therapy is easy to
perform and it has no side effects. Birch bark ointment may be a new
therapeutic option for actinic keratoses.’

Birch Used To Shrink Melanoma In Mice (28th March 1995)
‘A substance derived from birch bark shrank some human melanoma
tumors that had been placed in mice and virtually eliminated others, a
study has found. Indeed, the substance worked better than the drug
most commonly used on people to treat melanoma, a deadly skin
cancer, said the study's author, Dr. John Pezzuto, head of medicinal
chemistry at the Pharmacy School of the University of Illinois at
Chicago.’
--------------------------------------------------
Journal of the German Society of Dermatology
Treatment of actinic keratoses with birch bark extract: a pilot study
Available online at www.Blackwells-Synergy.com: Volume 4 Issue 2
Page 132 - February 2006 - Journal of the German Society of
Dermatology

9 http://www.essentialoils.co.za/essential-oils/birch.htm
Serial No. 78245283
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Summary: Background: Birch bark contains a variety of apoptosis-
inducing and anti-inflammatory substances such as betulinic acid,
betulin, oleanolic acid and lupeol. Therefore, birch bark extract may be
effective in the treatment of actinic keratoses. To address this issue, a
pilot study using a standardized birch bark ointment was performed.
(The Skincare Foundation describe Actinic keratosis (AK) as follows
‘also known as solar keratosis, is the result of prolonged exposure to
sunlight. It is a small crusty, scaly or crumbly bump or horn that arises
on the skin surface. The base may be light or dark, tan, pink, red, or a
combination of these... or the same color as your skin
(www.skincancer.org).
Methods: Twenty-eight patients with actinic keratoses were enrolled in
this prospective, non-randomized pilot study. Fourteen patients were
treated with birch bark ointment only; fourteen patients received a
combination therapy with cryotherapy and birch bark ointment.
Treatment response was assessed clinically after two months.
Results: Clearing of more than 75 % of the lesions was seen in 79 % of
the patients treated with birch bark ointment monotherapy. The
response rate of the combined treatment modality was 93 %. Therapy
with birch bark ointment was well tolerated.

Conclusion: In this pilot study, a standardized birch bark extract was
effective in the treatment of actinic keratoses. This therapy is easy to
perform and it has no side effects. Birch bark ointment may be a new
therapeutic option for actinic keratoses.

*This study was presented at the 43rd meeting of the DDG from 20-23
April 2005.
http://www.blackwell-synergy.com/doi/abs/10.1111/j.1610-
0387.2006.05906.x
--------------------------------------------------

Birch bark research & development
Published by the Royal Society of Chemists (www.rsc.org) 18th
September 2006
Pavel A Krasutsky
Received (in Cambridge) 15th May 2006
The review will detail progress made in the previous decade on the
chemistry and bioactivity of birch bark extractive products. Current
and future applications of birch bark natural products in
pharmaceuticals, cosmetics, and dietary supplements for the
prevention and treatment of cancer, HIV and other human pathogens
are reviewed.
‘Birch bark extract is currently undergoing trials by the US National
Institute of Health as an anti-cancer compound trialled as a compound
to fight skin cancer (malignant melanoma) as well as having anti-
bacterial and anti-fungal properties.’
‘Native Americans and native Siberians used Birch Bark as a source of
folk medicine. This historically recognised internal use of birch bark
coupled with the scientifically measured low toxicity of triterpenoids
support the use of birch bark chemicals not only in drugs, but as
Serial No. 78245283
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dietary supplements, cosmetics, biocides and washing materials.
Source ‘Birch Bark Research & Development’
--------------------------------------------------
White Birch (Silver Birch in UK)

Birch bark, buds, and leaves are used as folk medicines but have not
been studied to find out if they are safe or effective for these uses.
However, betulinic acid (found in birch bark) may hold promise as an
anticancer agent. Some studies have reported antitumor activity in the
lab and in some animal tests for betulinic acid. Additional studies are
underway to determine its potential role in treating melanoma and
certain brain cancers. Some researchers believe that betulinic acid,
which can be extracted from birch bark and other sources, causes some
types of tumor cells to start a process of self-destruction called
apoptosis. They also believe that betulinic acid slows the growth of
melanoma and other types of tumor cells, as well as the human
immunodeficiency virus (HIV). They also think that it has antibacterial
properties. Clinical studies are now being done to test these claims.
American Cancer Society
http://www.cancer.org/docroot/ETO/content/ETO_5_3x_White_Birch.as
p?sitearea=ETO 10

Substantially all of the many articles and
advertisements that the Trademark Examining Attorney has
drawn from the Internet searches of “Silver Birch” go
immediately to the therapeutic benefits of various parts of
the tree, namely, the bark with its extracted tar oil, the
sap from the trunk of the tree as well as the leaves.
Betula pendula
Materials derived from birch are used in the pharmaceutical, food,
cosmetic and chemical sectors. Worldwide 240 different pharmaceutical products
contain silver birch. The leaves are used for urological treatments, mouthwashes,
treatment of the alimentary tract and in cardiovascular applications. They are
used dried, as extracts or as an essential oil. Birch tar oil is used in skin
applications for the treatment of psoriasis and eczema. A chewing gum made
from the bark is used in dental hygiene. Intravenous solutions containing xylitol
from birch sap are used medically. In the food sector the sap is used in the
production of fruit wines. Highland Wineries uses some 3800 gallons of birch sap
per year. Also from the sap, a sugar, xylitol, is extracted, and is used as a natural
sweetener by diabetics. In the cosmetics industry the sap and leaves form a basis

10 http://www.poppyorganic.co.uk/index.php?pname= FAQ&option=
static&page_id=1281

Serial No. 78245283
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for shampoos. In the chemical sector a tar oil produced from birch is used in the
treatment of leather, in photography, and in insect repellents. The tar oil is
derived from the stem bark of the tree by destructive distillation.11

It is also instructive to look at the array of third-
party uses the Trademark Examining Attorney has placed into
the record, and to group them together around the very goods
identified by applicant.12
skin cleansers, skin moisturizers, skin lotions

silver birch leaf tincture
Betula alba
silver birch is traditionally used as a cleansing, diuretic remedy in
rheumatic conditions. It is an antiseptic plant and may be used externally
as a lotion for chronic skin conditions.13

11 http://193.62.154.38/cgi-bin/nph-readbtree.pl/usedata/
maxvals=10/firstval=1?SPECIES_XREF=Betula+pendula
Applicant objects to the fact this is a cached web page.
However, in its cached form, it is still identical to the text
the Trademark Examining Attorney placed into the record, and the
information contained in this excerpt merely corroborates
information available from less transient sites.

12 We note that some of these excerpts are from foreign,
English-language websites. Given the growing availability and
use of the Internet as a resource for news on therapeutic
products, we find that the U.K. websites in this record carry
probative value with respect to prospective consumer perceptions
in the United States, for example, that silver birch extract is
used as an ingredient in cosmetics and medicinal products. See
In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828
(Fed. Cir. 2007); In re Cell Therapeutics, Inc., 67 USPQ2d 1795,
1798] (TTAB 2003); and In re Remacle, 66 USPQ2d 1222, 1224 n.5
(TTAB 2002). Moreover, these advertisements and excerpts from
Great Britain merely corroborate the same information drawn from
websites in the United States.

13 http://www.artemisherbs.co.uk/info/Silver_birch_leaf
_Tincture__100ml.html

Serial No. 78245283
- 18 -

Muscle Soak
with Clary Sage
& Silver Birch

This muscle soak with Clary Sage and Silver Birch is
ideal for tense and tired bodies. Relax in this skin
softening, gently cleansing Muscle Soak, with added
Milk extract, Clary Sage and Silver Birch for added
after gardening care.14

Give your senses a blast of bracing energy with this deeply cleansing
body wash. Infused with extracts from the bark and leaves of the
Silverbirch tree, it will instantly enliven and cleanse while treating the
skin to a seriously conditioning workout. Oils of Cedarwood, Incense,
Cumin and Bergamot help to open your senses to fresh possibilities.
• Opens your senses to the therapeutic benefits
• Deeply refreshing and uplifting. Invigoratingly aromatic
• Cleansing.

14 http://www.ablegardener.co.uk/tmenu/home.asp

15 http://www.beautyexpert.co.uk/Bracing-Silver-Birch-Body-
Wash-300ml-PRODMOBS17/

Serial No. 78245283
- 19 -

Molton Brown Bracing Silver Birch Body Scrub 200ml
Powerhouse your skin tone with this Silverbirch extract enriched body
exfoliator. A fusion of ocean loofah and finely milled Olive stone cleanses and
provides a gentle but effective skin buffing effect to remove rough, dry skin
to instantly boost its texture. Extracts of Silverbirch and oils of Cedarwood,
Incense, Cumin and Bergamot combine to instantly invigorate the senses. The
Silverbirch tree has long been used for its therapeutic benefits. Its bark and
leaves are rich in vitamin C, Flavonoids and Saponins.
• Exfoliating for the complete body (excluding the face)
• Great for Hands and Feet
• Softening and smoothing.
• Skin brightening.16

Cade After Shave Balm 75 ml
Extracted from the wild juniper shrub that grows abundantly
on the Provencal hillsides, Cade essential oil naturally repairs,
protect and purifies the skin. This soothing aftershave balm
contains nourishing shea butter, purifying essential oil and
firming extract of silver birch to soothe the skin, help prevent
redness and to moisturise. This essential balm provides a
shield to protect the skin from daily irritants such as
pollution, sun and cold winds. To use: Apply to shaved
areas until completely absorbed. 17

16 http://www.beautyexpert.co.uk/Bracing-Silver-Birch-Body-
Scrub-200ml-PRODMOBC16/

17 http://www.twenga.co.uk/ The Trademark Examining Attorney
also found this or a very similar product on web pages drawn from
http://www.dooyoo.co.uk/, http://www.greatskin.com/, and
http://www.drugstore.com/.
Serial No. 78245283
- 20 -

Weleda Birch Cellulite Oil 100ml (2212)
Weleda
Birch Cellulite Oil – improves skin tone and
appearance. A genuinely natural product that visibly
improves the smoothness of the skin after just one
month of regular use. Formulated to tone and firm
skin, and tackle areas of cellulite, this natural body oil
is made from organic silver birch, to encourage
elimination processes, flush out toxins and restore
skin radiance. Combined with organic rosemary
extract to stimulate circulation and metabolic
processes, toning ruscus extract, and skin-smoothing
oils of revitalising apricot, vitamin-rich wheat germ
and replenishing jojoba. This is the lightest oil in the
Weleda body oil range, and is readily absorbed by the
skin and suitable for use as an all-over revitalising
body oil to work at a holistic level, not only nourishing
and smoothing the skin but also revitalising the
senses with its refreshing citrus fragrance. For detox
and to restore a healthy glow to your skin, we
recommend using the body oil in conjunction with our
organic Birch Juice, a natural health supplement to
help cleanse the system and leave skin looking clear
and healthy.18

With Sun Protection

WHAT MAKES OUR ORGANIC SKINCARE
DIFFERENT?
We are the only Organic Skincare Range to incorporate Birch Bark Extract (BBE):
Everyday application of Poppy Organic creams & balms delivers BBE directly onto the
skin, in a rich blend of organic oils and butters. We include a highly purified,

18 http://www.amazon.co.uk/Weleda-Birch-Cellulite-100ml-
106003/dp/B000T5VUNM/ref=sr_1_1?ie=UTF8&s=kitchen&qid=1237408759&
sr=8-1

Serial No. 78245283
- 21 -
powdered extract from the bark of Betula Alba (containing betulinic acid,
betulin, oleanolic acid and lupeol) researched for their ability to:
• Act a beneficial aid for Actinic keratoses (i.e a precursor to skin cancer - skin
carcinoma caused by sun damage).
• Prevent and help to treat UV-induced skin cancer.
• Prevent sunlight-caused signs of aging, wrinkles and blotches.
• Improve skin homogeneity and pigmentations to achieve skin lightening and
improve skin tone and clarity.
Reduce signs of cellulite and stimulate collagen synthesis. 19

sun screen preparations

Self Tanning Milk
With Sun Protection SPF 6

Ingredients:
…
- Sesame
- Silver Birch
- Vanilla20

Sun Wrinkle Control Cream
Moderate (and High) Protection

Ingredients:
…
- Pea
- Silver Birch
- Vanilla21

19 http://www.poppyorganic.co.uk/index.php?pname =FAQ&option=
static&page_id=1281

20 http://int.clarins.com/

21 Id. In response to the preceding advertisements for goods
with marks such as AbleGardner, Molton Brown, L’Occitane Cade,
Weleda, Poppy Organic, Clarins, etc., applicant argues these ads
contain “puffery” but not “official” or “comprehensive listing[s]
of ingredients.” We disagree with such a cavalier dismissal of
these ads, and find these promotional materials to be fairly
probative on the question of whether or not “silver birch”
conveys meaning to potential consumers of skin, hair and body
care products.
Serial No. 78245283
- 22 -
cosmetics, skin soaps

Silver birch
The birch is a tree of the northern hemisphere and its several species are distributed
throughout Europe, America and Asia. Most common on the Continent is the silver birch growing
in the wild from Italy to the Balkan Peninsula, northwards beyond the Arctic Circle and eastwards
far into Siberia. In central Europe it is plentiful from lowland to foothill elevations.
It attains heights of 20 to 25 metres and develops a slim bole topped with a crown of
slender, pendent branches. It has a fairly short life span, attaining an age of 100 to 200 years.
The twigs are covered with waxy warts. The bark is white and smooth, becoming blackish and
fissured at the base. The flowers appear in April, and the fruits mature in June, being gradually
dispersed great distances by the wind until the onset of winter. This, plus the fact that the tree
grows well even on poor soils, makes it an important colonist of forest clearings, pastures and
fallow land. The silver birch is a light-demanding species and stands up well to both frost and the
sun's heat. The white trunk and fresh green of its spring foliage make it an ornamental element in
the landscape.
The hard, tough and flexible wood is used for interior woodwork, for wheels and also as
fuel. The sap is used by the cosmetic industry, and the bark for dressing skins. 22

Birch
From Wikipedia, the free encyclopedia
Uses
Extracts of birch are used for flavoring or leather oil, and in cosmetics such as soap or
shampoo. …23

non-medicated hair care preparations
6.7 Fl. Oz.
Directions: Use 1 to 2 times per week.

For the scalp: Apply a thick layer of the formula at the root of dry hair before the shampoo
(no need to apply shampoo as usual.

For the face: Apply a thick layer of the formula on clean skin, gently rub and allow to activate
for 5 to 10 minutes. Rinse with warm water. It is the perfect preparation before applying Icy

22 http://everything2.com/index.pl?node=silver+birch&lastnode
id=124 Applicant correctly analogizes the “Everything2” website
to the more well-known Wikipedia.com website, and complains that
its content is not reliable. While we have in the past noted the
inherent problems regarding the reliability of purported evidence
drawn from wiki-type sites, we find that the several wiki articles
in this record merely corroborate information already in the
record or drawn from sources on which we can take judicial
notice.

23 http://en.wikipedia.org/wiki/Birch
Serial No. 78245283
- 23 -
Beauty Firming Treatment for Men.

Ingredients: Water, Actinidia Chinensis (Kiwi) Fruit Water, Cetearyl Alcohol, Kaolin,
Butyrospermum Parkii (Shea Butter), Isohexadecane, pEG-20 Stearate, Glycerin, Betula Alba
Sap, Propylene Glycol, Santalum Album (Sandalwood) Extract, Phellodendron Amurense Bark
Extract, Hordeum Distichon (Barley) Extract, Acer Campestre Bud Extract, Algae Extract,
Alcohol, Ilex Aquifloium, Hydrolyzed Rice Protein, Sodium Ursolate, Sodium Oeanolate,
Behentrimonium Methosulfate Tocopheryl Acetate, Polyquaternium-7, Sodium Lauroyl
Glutamate, Fragrance, Xanthan Gum, Methylparaben, Ethylparaben, Propylparaben,
Phenoxyethanol, CI 17200 (DC Red 33), CI 19140 (FD&C Yellow 5).24

tooth-whitening preparations, etc.

It is not necessary for us to conclude that each and
every one of applicant’s listed products may contain
extracts of silver birch in order to affirm the Section
2(e)(1) refusal made by the Trademark Examining Attorney.
Provided the term “Silver Birch” is descriptive of any of
the International Class 3 goods for which registration is
sought, it is proper to refuse registration as to the entire
class. In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB
1988), aff’d without pub. op., 871 F.2d 1097, 10 USPQ2d 1879
(Fed. Cir. 1989). Accordingly, even if we cannot be sure
from this record that silver birch extracts would ever be
found in enumerated items such as “nail care preparations,
colognes, perfumes and tooth whitening preparations,” that
does not help applicant’s position. In any case, as to
tooth whitening preparations, we do note that various
articles that the Trademark Examining Attorney placed into
the record suggest the usefulness of silver birch extract in

24 http://beautyexclusive.stores.yahoo.net/icybeicesosy1.html
Serial No. 78245283
- 24 -
dental hygiene (text at footnote 11) and in the lightening
of skin pigmentation (Poppy Organic ad at footnote 19, and
in U.S. Patent No. 5559146).
Conclusion: Mere Descriptiveness
We find on this record that informed consumers paying
the price for Principal Secret skin care products will know
about the therapeutic claims for silver birch extracts.
They will have seen the types of uses demonstrated by the
Trademark Examining Attorney herein for skin and body care
preparations such as skin cleansers, skin moisturizers, skin
lotions, skin soaps, sun screen preparations, cosmetics and
non-medicated hair care preparations, for example. Hence,
to the extent applicant’s goods contain extracts of silver
birch trees, this proposed mark is barred by Section 2(e)(1)
of the Lanham Act.
In the alternative, Deceptive under Section 2(a)

In order for a term to be held deceptive as applied to
particular goods, the Trademark Examining Attorney must
summit evidence which would support an answer of “yes” to
each of the following three questions: (1) Is the term
misdescriptive of the character, quality, function,
composition or use of the goods? (2) If so, are prospective
purchasers likely to believe that the misdescription
Serial No. 78245283
- 25 -
actually describes the goods? (3) If so, is the
misdescription likely to affect the decision to purchase the
goods? In re Budge Manufacturing, 857 F.2d 773, 8 USPQ2d
1259, 1260 (Fed. Cir. 1988); and In re ALP of South Beach
Inc., 79 USPQ2d 1009, 1010 (TTAB 2006).
In this case, applicant’s proposed mark is made up of
the term “Silver Birch,” which, as discussed above at some
length, indicates that the goods contain silver birch
extracts. This ingredient is important to a purchasing
decision because silver birch is believed to have
beneficial cosmetic and medicinal benefits including,
cleansing, moisturizing, whitening, and sun screening. As
seen above in the online advertisements for products such
as L’Occitane Cade, Clarins and Icy Beauty, merchants and
manufacturers tout the beneficial attributes of silver birch
extracts. In the event that applicant’s goods do not contain
silver birch extracts, this designation is misdescriptive.
The second part of the Budge test is whether any
prospective purchaser is likely to believe the
misdescription. Id. at 1010-11. In re Quady Winery Inc.,
221 USPQ 1213, 1214 (TTAB 1984). Given the extraordinary
cosmetic and medicinal benefits allegedly imparted by these
ingredients, informed and intelligent prospective purchasers
Serial No. 78245283
- 26 -
are the ones most likely to believe that the misdescription
actually describes applicant’s goods.
We turn then to the third and final prong for
deceptiveness under the Budge test. In re ALP of South
Beach Inc., 79 USPQ2d at 1013. Having found that
prospective purchasers of applicant’s skin and body care
preparations are likely to believe that the misdescription
actually describes the goods, we must still determine
whether the misdescription is likely to affect the decision
to purchase.
With ever more scientific information about the range
of benefits of these extracts, including as treatment for
deadly melanomas and HIV/AIDS, the perceived benefits of
“Silver Birch” as an ingredient in the identified goods also
promise to increase beyond its current elevated level.
Accordingly, we find that such a misdescription is likely to
affect the decision to purchase the goods.
Decision: The Trademark Examining Attorney’s refusal
to register the term SILVER BIRCH on the ground that it is
merely descriptive of the identified goods under Section
2(e)(1) of the Lanham Act is hereby affirmed. In the
alternative, in the event that applicant’s goods do not have
within them silver birch extracts, then the refusal to
Serial No. 78245283
- 27 -
register under Section 2(a) of the Act is hereby affirmed.
Finally, we also affirm the refusal to register based upon
applicant’s failure to provide information about the goods
as repeatedly required by the Trademark Examining Attorney
under Trademark Rule 2.61(b).