From: Genovese, Carrie
`
`Sent: 10/9/2009 1:02:22 PM
`
`To: TTAB EFiling
`
`CC:
`
`Subject: U.S. TRADEMARK APPLICATION NO. 76476330 - ILEX - 8535.10
`
`
`
`*************************************************
`Attachment Information:
`Count: 1
`Files: 76476330.doc
`
`

`
`
` SERIAL NO:
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`76/476330
`
`
`
`
`
`
`*76476330*
`
`
`GENERAL TRADEMARK INFORMATION:
`http://www.uspto.gov/main/trademarks.htm
`
`TTAB INFORMATION:
`http://www.uspto.gov/web/offices/dcom/ttab/index.html
`
`
`
`
`
` MARK: ILEX
`
`
`
` Medcon Products, Inc.
`
`
` CORRESPONDENT ADDRESS:
` John W. Patton, Esq.
`
` K&L Gates, LLP
` 1717 Main Street, Suite 2800
` Dallas TX 75201
`
`
` APPLICANT:
`
` CORRESPONDENT’S REFERENCE/DOCKET NO:
` 8535.10
` CORRESPONDENT E-MAIL ADDRESS:
` hltrademarks@klgates.com
`
`EXAMINING ATTORNEY'S APPEAL BRIEF
`
`Applicant, Medcon Products, Inc., appeals the examining attorney’s refusal to
`
`
`
`
`
`register the proposed mark “ILEX” for “Medicated skin care preparations, namely, skin
`
`paste for use by ostomy patients to protect the stomal region of the body and medicated
`
`skin paste for the treatment of diaper rash,” on the grounds that the mark is deceptive
`
`under Section 2(a) of the Trademark Act, 15 U.S.C. Section 1052(a) and deceptively
`
`misdescriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C. Section 1052(e)(1),
`
`and the denial of applicant’s claim of acquired distinctiveness under Section 2(f) of the
`
`Trademark Act, 15 U.S.C. Section 1052(f).
`
`
`
`FACTS
`
`On December 18, 2002, applicant applied for registration on the Principal
`
`Register of the mark “ILEX” for “Medicated skin care preparations, namely, skin paste
`
`for use by ostomy patients to protect the stomal region of the body and medicated skin
`
`

`
`paste for the treatment of diaper rash.”1 On March 30, 2003, the application was
`
`suspended pending disposition of three earlier filed applications, Application Serial
`
`Numbers 78099986, 78099987, and 78182422, which all abandoned in due course. On
`
`June 4, 2006, the examining attorney2 refused registration under Section 2(e)(1) of the
`
`Trademark Act, 15 U.S.C. Section 1052(e)(1), on the ground that the proposed mark
`
`merely describes the identified goods. In this Office action, the examining attorney also
`
`required that applicant submit additional information about the goods, specifically
`
`inquiring whether the goods contain “ilex” (i.e., holly) derivatives or ingredients.
`
`Applicant filed a response on December 5, 2006, stating that the goods do not contain
`
`any ingredients derived from the holly plant.
`
`On January 27, 2007, the examining attorney issued an Office action continuing
`
`the Section 2(e)(1) descriptiveness refusal pending two additional grounds for refusal,
`
`namely, that the mark is deceptive in relation to the goods under Section 2(a), 15 U.S.C.
`
`Section 1052(a), and that the mark is deceptively misdescriptive of the goods under
`
`Section 2(e)(1), 15 U.S.C. Section 1052(e)(1). In a response filed on May 22, 2007,
`
`applicant asserted that the proposed mark had acquired distinctiveness under Section 2(f),
`
`15 U.S.C. Section 1052(f), based on its substantially exclusive and continuous use of the
`
`mark for more than thirty years. On June 14, 2007, the examining attorney denied
`
`applicant’s claim of acquired distinctiveness, and maintained all of the outstanding
`
`refusals.
`
`
`1 As amended. The original identification of goods read as follows: “skin paste for use by ostomy patients
`to protect the stomal region of the body and medicated skin paste for the treatment of diaper rash,” in
`International Class 5.
`2 This application was originally assigned to examining attorney Toni Y. Hickey and was reassigned to the
`undersigned examining attorney on October 11, 2007.
`
`

`
`On April 15, 2008, after reassignment of the application, the current examining
`
`attorney issued an Office action requiring that applicant amend the identification of
`
`goods, submit additional product information and answer specific questions about the
`
`goods, maintaining all of the outstanding refusals. After examining applicant’s response
`
`to the information request, the Section 2(e)(1) descriptiveness refusal was withdrawn, but
`
`the remaining refusals were made final. This appeal follows the final Office action dated
`
`December 11, 2008, refusing registration because the mark is deceptive under Section
`
`2(a) and deceptively misdescriptive under Section 2(e)(1), and denying applicant’s claim
`
`of acquired distinctiveness under Section 2(f).
`
`
`
`DISCUSSION
`
`
`
`A. THE PROPOSED MARK “ILEX” IS DECEPTIVE IN RELATION TO
`THE IDENTIFIED GOODS.
`
`A mark is deceptive if the following criteria are met:
`
`
`
`
`
`(1) The applied-for mark consists of or contains a term that misdescribes
`the character, quality, function, composition, or use of the goods;
`
`
`(2) Prospective purchasers are likely to believe that the misdescription
`actually describes the goods; and
`
`
`(3) The misdescription is likely to affect a significant portion of the
`relevant consumers’ decision to purchase the goods.
`
`
`See In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988); In
`
`re ALP of S. Beach Inc., 79 USPQ2d 1009, 1010 (TTAB 2006); see also In re Spirits
`
`Int’l, N.V., 563 F.3d 1347, 1353, 1356, 90 USPQ2d 1489, 1492-93, 1495 (Fed. Cir. 2009)
`
`

`
`(holding that the test for materiality incorporates a requirement that a “significant portion
`
`of the relevant consumers be deceived”).
`
`
`
`
`
`1. The proposed mark “ILEX” misdescribes the character and composition of
`the goods.
`
`Applicant applied to register the mark “ILEX” used in connection with
`
`“Medicated skin care preparations, namely, skin paste for use by ostomy patients to
`
`protect the stomal region of the body and medicated skin paste for the treatment of diaper
`
`rash.” “ILEX” is defined as “any of various trees or shrubs of the genus Ilex; holly.” See
`
`the dictionary definition attached to the Office action dated June 4, 2006. The mark
`
`“ILEX” indicates that applicant’s goods contain ingredients derived from the holly plant.
`
`The evidence of record demonstrates that ilex (i.e., holly) is an ingredient commonly
`
`found in skin care products. For example:
`
`• “BROWSE PRODUCTS CONTAINING
`ILEX AQUIFOLIUM
`(ENGLISH HOLLY) OIL: Solange Lavender Gentle Cleansing Milk
`[and] Solange Moisture Mask with Shea Butter” (emphasis added). See
`Attachments to Office action dated December 11, 2008 at page 41.
`
`• “BROWSE PRODUCTS CONTAINING ILEX PARAGUARIENSIS
`(MATE) EXTRACT: Pangea Organics Japanese Matcha Tea with Acai &
`Goji Berry Facial Mask [and] Murad CitySkin Night Treatment with Anti-
`Pollution Complex” (emphasis added). See Attachments to Office action
`dated December 11, 2008 at page 43.
`
`
`
`
`
`• “Herbal Scrub Mask . . . contains . . . Mate (Ilex Paraguariensis)”
`(emphasis added). See Attachments to Office action dated December 11,
`2008 at pages 71 and 72.
`
`
`In addition, the evidence of record also demonstrates that holly extracts of the ilex genus
`
`are an active ingredient in many lotions and cleansers used to heal, soothe and protect the
`
`skin:
`
`

`
`• Wild Poppy Cleanser has “natural . . . Holly . . . extracts” (emphasis
`added). See Attachments to Office action dated December 11, 2008 at
`page 46.
`
`• Holly leaf extract is an active ingredient providing “healing, hydrating”
`and “hydrating and repairing” functions in Eminence body lotions and
`creams. See Attachments to Office action dated December 11, 2008 at
`pages 49 and 53.
`
`• “The active ingredients in the holly extract have an antioxidant effect and
`leave a protective film that can be felt on the skin” (emphasis added). See
`Attachments to Office action dated December 11, 2008 at page 59.
`
`• Ultra Free Cleansing Milk is intended for “Highly sensitive [skin],
`Rosacea, Pre and Post Procedure . . . designed for its calming and
`regenerative properties” and contains “holly leaf oil” (emphasis added).
`See Attachments to Office action dated December 11, 2008 at page 60.
`
`Applicant has stated for the record that the goods do not contain ilex (i.e., holly):
`
`
`
`
`
`
`
`
`
`“The Examining Attorney has required that Applicant indicate whether the goods are
`
`comprised of ilex (the holly bush/tree). The Examining Attorney is informed that the ilex
`
`is not part of the composition of the formula.” See Applicant’s Response dated
`
`December 5, 2006. Because applicant’s skin paste does not in fact contain ilex (i.e.,
`
`holly), the term “ILEX” misdescribes an ingredient of applicant’s goods.
`
`Applicant argues that the term “ILEX” is not misdescriptive in the context of the
`
`identified goods because applicant’s goods are only intended “for the treatment of post-
`
`surgical, open wounds connected to a patient’s digestive tract or for diaper rash,” and are
`
`not intended for cosmetic use. See Applicant’s Brief at page 7. However, although the
`
`evidence of record does not show products formulated for the same narrow purpose as
`
`applicant’s skin paste (stomal surgery recovery and diaper rash), both applicant’s “skin
`
`protectant paste” as well as skin care products containing ilex (i.e., holly) are used to
`
`protect the skin and relieve skin irritation.
`
`

`
`Applicant’s website states that its goods are intended to “heal and protect severely
`
`damaged skin” and that “Ilex® Skin Protectant Paste is . . . designed to provide soothing,
`
`healing relief to patients who suffer from skin breakdown and irritation.” See
`
`Attachments to Office action dated December 11, 2008 at page 26. Similarly, holly
`
`plants of the ilex genus are used as ingredients in skin creams specifically for their
`
`healing and soothing properties. Ilex (i.e., holly) is known for the ability to soothe skin
`
`as a compress:
`
`• “WINTERBERRY, CANADA HOLLY (ILEX VERTICILLATA) . . .
`externally, the bark was applied as a poultice to skin eruptions” (emphasis
`added). See Attachments to Office action dated December 11, 2008 at
`page 27.
`
`
`
`• About Ilex Paraguariensis: “A poultice of the leaves also is applied
`topically to anthrax skin ulcers (for which mate’s tannin content – highly
`astringent – may be the reasoning behind this issue).” See Attachments to
`Office action dated December 11, 2008 at page 31.
`
`
`In addition, a patent application for skin care products containing the holly extract “Ilex
`
`purpurea” states that the product is used to “improve the appearance of skin, especially
`
`by alleviating skin irritation.” See Attachments to Office action dated December 11,
`
`2008 at page 18.
`
`The evidence of record also demonstrates that ilex (i.e., holly) resin is a newly
`
`discovered natural material used in creams to heal and soothe skin by forming a
`
`protective film. The examining attorney made of record a patent application explaining
`
`that “skin treatment preparations containing Ilex resin produce a stable protective film on
`
`the skin” and describing the method of creating the product by “extracting leaves of Ilex
`
`aquifolium or Ilex paraguariensis” (emphasis added). See Attachments to Office action
`
`dated December 11, 2008 at pages 2 and 3. This patent application and articles
`
`

`
`discussing similar products demonstrate how ilex (i.e., holly) is used in skin treatment
`
`preparations to provide a protective film on the skin:
`
`• “Holly leaves seem to possess a highly effective coating protecting them
`against drying out even under extremely untoward conditions and
`imparting them their brilliant shine and deep colour. These observations
`led to a close investigation of the coating. By classic extraction, a water-
`repellent, highly refractive resin was isolated, which was found both in
`Ilex aquifolium and - in equal quality- in the closely related Paraguay tea
`shrub (Ilex paraguariensis) . . . Ilex resin in a skin cream formulation
`made it noticeably richer. . . . The renewable raw material ilex resin is
`available in practically unlimited quantities. . . . Like all natural
`substances, it has the intrinsic advantages of biodegradability, climatic
`safety and sparing of fossil resources” (emphasis added). See Attachments
`to Office action dated December 11, 2008 at page 66.
`
`• “Ilex Wax CO2 (Ilex Paraguariensis) Th[is] resin is very versatile in
`formulation. Used in skin care products a cream appears more nourishing.
`Depending on the concentration of Ilex resin the skin care action in o/w
`and w/o emulsions can be developed to produce really effective skin
`protection” (emphasis added). See Attachments to Office action dated
`December 11, 2008 at page 64.
`
`
`
`
`
`• “The active ingredients in the holly extract have an antioxidant effect and
`leave a protective film that can be felt on the skin” (emphasis added). See
`Attachments to Office action dated December 11, 2008 at page 59.
`
`
`Ilex resin is “water-repellant,” and provides a protective film on the skin, much like
`
`applicant’s water-repellant “barrier” cream.
`
`Applicant concedes that its “goods form a barrier on the skin.” See Response
`
`dated October 15, 2008. Applicant’s website further states that its goods act as a “skin
`
`barrier that seals out wetness to heal and protect severely damaged skin” and that “Ilex®
`
`Skin Protectant Paste is a topical barrier designed to provide soothing, healing relief to
`
`patients who suffer from skin breakdown and irritation.” See Attachments to Office
`
`action dated December 11, 2008 at page 26. Furthermore, applicant’s product is
`
`

`
`routinely referred to in its customer testimonials as a “barrier cream,” highlighting that
`
`the protective barrier function of applicant’s goods is one of its major attributes:
`
`• “If the skin is severely broken down and the skin is denuded and moist,
`Ilex . . . , a protective skin barrier, may be applied” (emphasis added).
`
`• “iLEX is the KING of barrier creams” (emphasis added).
`
`• “I think iLEX is the absolute best at protecting the skin and healing it too.”
`
`• “. . . Ilex which a lot of people would consider the last and best barrier
`cream . . .” (emphasis added).
`
`
`
`
`
`
`
`
`
`• “[T]ry Ilex – it doesn’t let anything get through.”
`
`
`See Response dated December 14, 2007 at pages 12 and 13. As shown above, ilex resin
`
`is a desirable ingredient because of its water-repellant nature and ability to form a
`
`protective film on the skin. Applicant’s goods provide this same function by creating a
`
`barrier that “seals out wetness to heal and protect severely damaged skin” and providing a
`
`“0.00cm/hr moisture penetration rate.” See Attachments to Office action dated December
`
`11, 2008 at page 26. Therefore, the term “ILEX” is misdescriptive of the goods because
`
`ilex (i.e., holly) is used in skin creams for a purpose very similar to the intended purpose
`
`of applicant’s skin care products, namely, skin soothing, healing, and protection.
`
`Applicant contends that the mark “ILEX” is a coined term, “derived from the
`
`combination of the word ‘ileostomy,’ a post-surgical medical condition that ILEX skin
`
`paste treats, and the word ‘excoriation,’ the breakdown of skin surrounding the stoma,
`
`which is a common complication for patients with an ileostomy.” See Applicant’s Brief
`
`at page 6. Although applicant may not have intended to adopt a deceptive term as its
`
`trademark, the term “ILEX” is defined as the genus of holly plants, and the evidence
`
`

`
`shows that ilex (i.e., holly) is used as an ingredient in healing and soothing skin creams.
`
`Accordingly, “ILEX” misdescribes an ingredient of the goods.
`
`Applicant also argues that the evidence of record demonstrates that “ilex (i.e.,
`
`holly) is contraindicated for the treatment of post-surgical open wounds because of the
`
`plant’s toxic nature.” See Applicant’s Brief at page 8. While certain species of the holly
`
`plant may have harmful properties in some circumstances, such as when large quantities
`
`of berries are eaten, the evidence of record demonstrates that it is being used in topical
`
`creams to soothe or protect the skin. See Attachments to Office action dated December
`
`11, 2008 at page 27. As the evidence cited by applicant states, “Seeds, bark and leaves
`
`are all somewhat toxic” (emphasis added), and yet, they are often used in skin care
`
`products. See Attachments to Office action dated December 11, 2008 at page 27. For
`
`example, holly leaf oil is used on “[h]ighly sensitive [skin], Rosacea, Pre and Post
`
`Procedure” and is specifically chosen for its “calming and regenerative properties.” See
`
`Attachments to Office action dated December 11, 2008 at page 60. Thus, although some
`
`species of holly can be harmful when applied improperly or accidentally ingested, skin
`
`care product manufacturers are using ilex for its healing, soothing and protective
`
`properties, and have presumably found ways to control the risk of damage to consumers.
`
`
`
`2. Prospective purchasers are likely to believe that applicant’s goods contain
`ilex (i.e., holly).
`
`Consumers are likely to believe the misdescription because they are accustomed
`
`
`
`to seeing the term “ILEX” on ingredient labels and packaging for skin care products. See
`
`Attachments to Office actions dated December 11, 2008 and January 27, 2007. Upon
`
`encountering applicant’s skin paste branded with the mark “ILEX,” consumers would
`
`

`
`likely believe that the goods contain holly as an active ingredient. Ilex is the genus name
`
`for holly, and the bark of the holly plant is used “externally in the treatment of indolent
`
`sores and chronic skin disease,” while holly leaves are used “externally in the treatment
`
`of . . . itchy skin.” See Attachments to Office action dated June 4, 2006 at page 9, and
`
`Attachments to Office action dated December 11, 2008 at page 13. Holly leaf oil extracts
`
`are used on “[h]ighly sensitive [skin], Rosacea, Pre and Post Procedure” and are
`
`specifically chosen for their “calming and regenerative properties.” See Attachments to
`
`Office action dated December 11, 2008 at page 60. Applicant’s skin paste is intended to
`
`heal surgical site irritation and soothe skin irritation caused by diaper rash. Although
`
`applicant’s goods are intended for a limited purpose, the function of the goods is the same
`
`as skin creams that contain ilex (i.e., holly), namely, to protect and soothe skin irritation.
`
`Applicant contends that purchasers are unlikely to believe the misrepresentation
`
`because it claims that the types of products that contain holly extracts are cosmetic, rather
`
`than medicinal. See Applicant’s Brief at page 9. However, medicinal creams also
`
`commonly contain ilex (i.e., holly), even if they are not formulated for the same narrow
`
`purpose as applicant’s skin paste. Consumers are accustomed to seeing ilex as an
`
`ingredient not just in cosmetic skin care products, but also in topical medicines. For
`
`example:
`
`
`
`• “BIOFREEZE products contain ILEX, an herbal extract from a South
`American holly shrub. ILEX is used around the world in various health &
`wellness formulations. BIOFREEZE topical analgesic . . . is a fast-acting,
` See
`penetrating,
`long
`lasting pain reliever” (emphasis added).
`Attachments to Office action dated January 27, 2007 at Page 6.
`
`• “We search for the highest quality ingredients such as: ILEX . . . ILEX is
`extracted from a holly shrub grown in South America and has been used
`by the Paraguay Indians to enhance the effects of their medicines for
`
`

`
`centuries” (emphasis added). See Attachments to Office action dated
`January 27, 2007 at Page 8.
`
`• “Pain Relieving Gel with ILEX” (emphasis added). See Attachments to
`Office action dated January 27, 2007 at Page 11.
`
`• A picture of CryoDerm Pain Relieving Spray with the term “ILEX”
`appearing largely on the front of the bottle and an explanation of the
`ingredient: “Research has shown that Ilex has anti-inflammatory,
` See
`antioxidant and antispasmodic properties” (emphasis added).
`Attachments to Office action dated January 27, 2007 at Pages 18 and 21.
`
`• ORTHOGEL “Topical Analgesic with Glucosamine • MSM • Aloe • E •
`ILEX” (emphasis added). See Attachments to Office action dated January
`27, 2007 at Page 24 through 25.
`
`
`
`
`
`
`
`
`
`• Tachyon skin products contain “Tachyonized Ilex Extract, a South
`American herb . . . proven to be highly effective in relieving pain,
`numbness, burning, and tingling” (emphasis added). See Attachments to
`Office action dated January 27, 2007 at Page 28 and 29.
`
`
`These examples highlight that ilex is commonly used as an active ingredient in topical
`
`medicines, and applicant’s goods are also topical medicines.
`
`These examples also demonstrate that ilex (i.e., holly) is known as a highly
`
`effective pain relief and anti-inflammatory medicine when used in topical skin products.
`
`Applicant’s skin paste appears to have anti-inflammatory and pain relief properties, even
`
`though these are not the stated purposes of the goods. Diaper rash is characterized by “an
`
`inflammation of the skin,” and therefore, a product that treats diaper rash has some type
`
`of anti-inflammatory effect. See Attachments to Response dated October 15, 2008 at
`
`page 6. Also, applicant’s website states that “[b]y easing the discomfort, this non-toxic
`
`petrolatum-based product may actually decrease the need for pain and anxiety
`
`medications.” See Attachments to Office action dated December 11, 2008 at page 26. If
`
`goods similar to applicant’s goods can and do possess the quality, function, composition
`
`or use that applicant’s mark misdescribes, it is reasonable to infer that purchasers will
`
`

`
`believe the misdescription. See In re Budge Mfg. Co., 857 F.2d 773, 776-77, 8 USPQ2d
`
`1259, 1261 (Fed. Cir. 1988).
`
`
`
`3. The misdescription is likely to affect a significant portion of the relevant
`consumers’ decision to purchase the goods.
`
`The misdescription will likely affect a significant portion of the relevant
`
`
`
`consumers’ decision to purchase the goods because ilex (i.e., holly) is an ingredient used
`
`in products that are intended to soothe or heal the skin. Applicant’s goods are
`
`specifically “designed to provide soothing, healing relief to patients who suffer from skin
`
`breakdown and irritation.” See Attachments to Office action dated December 11, 2008 at
`
`Page 26. The general purpose of applicant’s goods is very similar to the intended
`
`purpose of ilex (i.e., holly) in skin creams, namely, to heal and protect irritated skin. A
`
`significant portion of consumers would choose to purchase applicant’s goods based on
`
`the assumption that they contain ilex (i.e., holly) for its soothing and healing properties.
`
`Applicant contends that the misdescription would not affect the purchasing
`
`decision because the relevant consumers for its medicated skin paste are “post-surgical
`
`patients” and that its products are “recommended and provided by health care
`
`professionals and hospitals,” while skin care products containing ilex (i.e., holly) are
`
`“provided by chiropractors, massage therapists, day spas, beauticians, and beauty supply
`
`stores.” See Applicant’s Brief at page 10. However, applicant has not indicated that its
`
`goods are available only by prescription, and there is an “online ordering” section on
`
`applicant’s website, which indicates that applicant’s goods are available to anyone who
`
`finds them on the Internet and wishes to purchase them. See Attachments to Office
`
`action dated December 11, 2008 at page 26. Thus, the relevant consumers are purchasers
`
`

`
`searching for soothing and protective creams to heal skin irritation. Consumers with
`
`sensitive skin or skin irritation (whether caused by surgery or not) are able to seek out
`
`products on their own with soothing and regenerative properties, which includes skin care
`
`products containing ilex (i.e., holly) extracts. For example, holly leaf oil is used in
`
`products designed for “Highly sensitive [skin], Rosacea, Pre and Post Procedure.” See
`
`Attachments to Office action dated December 11, 2008 at page 60. Therefore, the
`
`misdescription in this case would likely affect the purchasing decision of consumers
`
`searching for soothing and protective skin creams in the marketplace because they would
`
`mistakenly believe the term “ILEX” indicates that the product contains holly extracts.
`
`In addition, the relevant consumer also encompasses people (who have not had
`
`surgery or gotten their product recommendations from a doctor) who are shopping for a
`
`general diaper rash cream, which does not require a prescription. These consumers
`
`would encounter both applicant’s goods and goods containing ilex (i.e., holly) when
`
`shopping online at drugstores or general websites like Amazon.com. When looking for
`
`diaper creams that have healing and soothing properties, this misdescription would
`
`materially affect their purchasing decision because consumers would believe applicant’s
`
`product contains natural holly extracts, desirable because of their ability to soothe and
`
`protect the skin.
`
`In addition, many of the examples showing skin care products containing ilex
`
`(i.e., holly) are “natural” or “organic” products. Upon encountering applicant’s goods,
`
`consumers familiar with the natural skin care market would be deceived into believing
`
`applicant’s diaper rash cream contains ilex (i.e., holly). Because applicant’s goods do
`
`

`
`not, in fact, contain ilex (i.e., holly), the applied-for mark will deceive a significant
`
`portion of consumers as to an important factor in their purchasing decisions.
`
`
`
`B. THE PROPOSED MARK “ILEX” IS DECEPTIVELY MISDESCRIPTIVE
`OF THE IDENTIFIED GOODS.
`
`A mark is deceptively misdescriptive if it describes an ingredient, quality,
`
`
`
`characteristic, function or feature of the relevant goods, and the description conveyed by
`
`the mark is both false and plausible. In re Woodward & Lothrop Inc., 4 USPQ2d 1412
`
`(TTAB 1987) (holding CAMEO deceptively misdescriptive of jewelry); In re Ox-Yoke
`
`Originals, Inc., 222 USPQ 352 (TTAB 1983) (holding G.I. deceptively misdescriptive of
`
`gun cleaning patches, rods, brushes, solvents and oils); TMEP §1209.04.
`
`The test for deceptive misdescriptiveness has two parts:
`
`(1) Whether the mark misdescribes an ingredient, characteristic, quality,
`
`function, feature, composition or use of the goods; and if so,
`
`(2) Would consumers be likely to believe the misrepresentation?
`
`See In re Berman Bros. Harlem Furniture Inc., 26 USPQ2d 1514 (TTAB 1993); In re
`
`Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987); In re Quady Winery, Inc.,
`
`221 USPQ 1213 (TTAB 1984); TMEP §1209.04.
`
`The entire test for deceptive misdescriptiveness comprises the first two prongs of
`
`the test for deceptiveness under Section 2(a). These two prongs were addressed in the
`
`previous section, and all of the arguments presented above are incorporated herein. The
`
`proposed mark “ILEX” misdescribes an ingredient of the goods because applicant’s
`
`goods do not contain holly plant extracts of the genus ilex. Consumers would likely
`
`believe the misrepresentation because they are accustomed to encountering the term
`
`

`
`“ILEX” used to identify a soothing, healing and protective ingredient in skin care
`
`products and topical medicines. If a term immediately conveys such an idea but the idea
`
`is false, although plausible, then the term is deceptively misdescriptive and is
`
`unregistrable under §2(e)(1).
`
`
`
`C. APPLICANT HAS NOT MET ITS BURDEN TO SHOW THAT THE
`PROPOSED MARK “ILEX” HAS ACQUIRED DISTINCTIVENESS.
`
`While marks that have been refused registration pursuant to Trademark Act
`
`
`
`Section 2(e)(1) on the ground of deceptive misdescriptiveness may be registrable on the
`
`Principal Register under Section 2(f) upon a showing of acquired distinctiveness, marks
`
`that are deceptive under Section 2(a) are not registrable on either the Principal Register or
`
`the Supplemental Register under any circumstances. Trademark Act Sections 2(f) and
`
`23, 15 U.S.C. §§1052(f), 1091; TMEP §1209.04. If the Board finds the mark to be
`
`deceptive under Section 2(a), then applicant’s claim of acquired distinctiveness is
`
`inapplicable.
`
`The claim of acquired distinctiveness is relevant only to the Section 2(e)(1)
`
`deceptively misdescriptive refusal. However, in this case the Section 2(f) claim is
`
`inadequate due to the nature of the mark (the ordinary name for a common ingredient in
`
`goods similar to applicant’s goods) and the lack of conclusive evidence. The amount and
`
`character of evidence needed to establish acquired distinctiveness depends on the facts of
`
`each case and particularly on the nature of the mark sought to be registered. Roux Labs.,
`
`Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970); see In re Hehr
`
`Mfg. Co., 279 F.2d 526, 126 USPQ 381 (C.C.P.A. 1960); TMEP §1212.05(a). Typically,
`
`more evidence is required where a mark is so highly descriptive that purchasers seeing
`
`

`
`the matter in relation to the named goods would be less likely to believe that it indicates
`
`source in any one party. See, e.g., In re Bongrain Int’l Corp., 894 F.2d 1316, 13 USPQ2d
`
`1727 (Fed. Cir. 1990); In re Seaman & Assocs., Inc., 1 USPQ2d 1657 (TTAB 1986).
`
`In this case, the proposed mark “ILEX” is deceptively misdescriptive of the
`
`goods, and is highly descriptive of a common ingredient in goods similar to applicant’s
`
`goods. The evidence of record shows examples of skin care products and topical
`
`medicines bearing the term “ilex” used to describe an ingredient of the goods, namely,
`
`holly plant extracts. Thus, consumers would be less likely to view the term “ilex” as an
`
`indicator of source because it is so highly descriptive of topical medicines and skin care
`
`products.
`
`In determining whether the proposed mark has acquired distinctiveness, the
`
`following factors are generally considered:
`
`(1) Length and exclusivity of use of the mark in the United States by
`
`applicant;
`
`(2) The type, expense and amount of advertising of the mark in the
`
`United States; and
`
`(3) Applicant’s efforts in the United States to associate the mark with
`
`the source of the goods, such as unsolicited media coverage and
`
`consumer studies.
`
`See In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir.
`
`2005). Evidence of acquired distinctiveness may include specific dollar sales under the
`
`mark, advertising figures, samples of advertising, consumer or dealer statements of
`
`recognition of the mark as a source identifier, affidavits, and any other evidence that
`
`

`
`establishes the distinctiveness of the mark as an indicator of source. See 37 C.F.R.
`
`§2.41(a); In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re
`
`Instant Transactions Corp., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et seq.
`
`The burden of proving that a mark has acquired distinctiveness is on the applicant.
`
`Yamaha Int’l Corp. v. Yoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed.
`
`Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372 (C.C.P.A. 1959);
`
`TMEP §1212.01. An applicant must establish that the purchasing public has come to
`
`view the proposed mark as an indicator of origin. The ultimate test in determining
`
`acquisition of distinctiveness under Trademark Act Section 2(f) is not applicant’s efforts,
`
`but applicant’s success in educating the public to associate the claimed mark with a single
`
`source. TMEP §1212.06(b); see In re Packaging Specialists, 221 USPQ at 920; In re
`
`Redken Labs., Inc., 170 USPQ 526 (TTAB 1971).
`
`Applicant asserted its claim of acquired distinctiveness based on use of the mark
`
`for more than thirty years, and has submitted customer testimonials and sales figures in
`
`support of this claim. Most of applicant’s customer testimonials are excerpted from an
`
`online message board, and while they show that applicant’s customers are pleased with
`
`its goods, they do not show that consumers have come to recognize the term “ILEX” as
`
`an indicator of source for applicant’s goods. In addition, applicant has provided evidence
`
`of high sales figures for the goods at issue; however, such evidence is not dispositive of
`
`whether the proposed mark has acquired distinctiveness. Such extensive sales and
`
`promotion may demonstrate the commercial success of applicant’s goods, but not that
`
`relevant consumers view the matter as a mark for such goods. Se