From: Tierney, Margery
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`Sent: 2/24/2015 8:00:22 AM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 85967716 - MORINGA SKIN - 6597.002-02 - EXAMINER
`BRIEF
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`Attachment Information:
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`Count: 1
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`Files: 85967716.doc
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`Sent: 2/24/2015 8:00:22 AM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 85967716 - MORINGA SKIN - 6597.002-02 - EXAMINER
`BRIEF
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`*************************************************
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`Attachment Information:
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`Count: 1
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`Files: 85967716.doc
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
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`U.S. APPLICATION SERIAL NO. 85967716
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`MARK: MORINGA SKIN
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`*85967716*
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`CORRESPONDENT ADDRESS:
` THOMAS D FOSTER
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`GENERAL TRADEMARK INFORMATION:
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` TDFOSTER - INTELLECTUAL PROPERTY LAW
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`http://www.uspto.gov/trademarks/index.jsp
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` 11622 EL CAMINO REAL SUITE 100
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` SAN DIEGO, CA 92130
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`TTAB INFORMATION:
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`http://www.uspto.gov/trademarks/process/appeal/index.js
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`APPLICANT: j. debeaute
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`CORRESPONDENT’S REFERENCE/DOCKET NO:
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` 6597.002-02
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`CORRESPONDENT E-MAIL ADDRESS:
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` foster@tdfoster.com
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`1. PROSECUTION HISTORY
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` On June 24, 2013, applicant filed an application to register MORINGA SKIN for “lotions for face and
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`body care. On October 8, 2013, the Examining Attorney refused registration of the mark because it
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`describes a feature of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP
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`§§1209.01(b), 1209.03 et seq. Applicant responded on March 29, 2014 and argued against the refusal of
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`registration. On April 21, 2014, the Examining Attorney issued a final refusal. This appeal followed.
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`2. MORINGA SKIN DESCRIBES A FEATURE OF LOTIONS FOR FACE AND BODY CARE
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` A term is merely descriptive of goods or services within the meaning of Section
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`2(e)(1) if it forthwith conveys an immediate idea of an ingredient, quality,
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`characteristic, feature, function, purpose or use of the goods or services. In re
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`Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
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`Cir. 2012). See also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
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`Whether a mark or a component of a mark is merely descriptive is determined in
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`relation to the goods or services for which registration is sought and the context in
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`which the term is used, not in the abstract or on the basis of guesswork. In re Abcor
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`Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle,
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`66 USPQ2d 1222, 1224 (TTAB 2002). A term need not immediately convey an idea
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`of each and every specific feature of the goods or services in order to be considered
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`merely descriptive; it is enough if it describes one significant attribute, function or
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`property of them. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216
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`USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). This
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`requires consideration of the context in which the mark is used or intended to be
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`used in connection with those goods or services, and the possible significance that
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`the mark would have to the average purchaser of the goods or services in the
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`marketplace. See In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In
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`re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007);
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`In re Abcor Dev. Corp., 200 USPQ at 218; In re Venture Lending Assocs., 226 USPQ
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`285 (TTAB 1985). The question is not whether someone presented only with the
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`mark could guess the products or activities listed in the description of goods or
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`services. Rather, the question is whether someone who knows what the products or
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`services are will understand the mark to convey information about them. In re
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`Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent &
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`Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders
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`Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American
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`Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
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` When two or more merely descriptive terms are combined, the determination of
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`whether the composite mark also has a merely descriptive significance turns on the
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`question of whether the combination of terms evokes a new and unique commercial
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`impression. If each component retains its merely descriptive significance in relation
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`to the goods or services, the combination results in a composite that is itself merely
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`descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371
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`(Fed. Cir. 2004), quoting, Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S.
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`538, 543 (1920). See also In re Tower Tech, Inc., 64 USPQ2d at 1318
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`(SMARTTOWER merely descriptive of commercial and industrial cooling towers);
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`In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely
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`descriptive of computer programs for use in developing and deploying application
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`programs); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD &
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`BEVERAGE ONLINE merely descriptive of news and information services in the
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`food processing industry). However, a mark comprising a combination of merely
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`descriptive components is registrable if the combination of terms creates a unitary
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`mark with a unique, non-descriptive meaning, or if the composite has a bizarre or
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`incongruous meaning as applied to the goods or services. See In re Colonial Stores
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`Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for “bakery
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`products”); In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE for “a snow
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`removal hand tool having a handle with a snow-removing head at one end, the head
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`being of solid uninterrupted construction without prongs”). Thus, we must consider
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`the issue of descriptiveness by looking at the mark in its entirety.
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` “On the other hand, if one must exercise mature thought or follow a multi-stage
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`reasoning process in order to determine what product or service characteristics the
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`term indicates, the term is suggestive rather than merely descriptive.” In re Tennis
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`in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978). See also, In re Shutts, 217
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`USPQ at 364-65; In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB
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`1980). In this regard, “incongruity is one of the accepted guideposts in the evolved
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`set of legal principles for discriminating the suggestive from the descriptive mark.”
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`In re Shutts, 217 USPQ at 365. See also In re Tennis in the Round, Inc., 199 USPQ
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`at 498 (the association of applicant’s mark TENNIS IN THE ROUND with the
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`phrase “theater-in-the-round” creates an incongruity because applicant’s services do
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`not involve a tennis court in the middle of an auditorium). On the spectrum of
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`distinctiveness, the dividing line between merely descriptive and suggestive is a
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`fine one. In re Gyulay, 3 USPQ2d at 1010. See also In re Recovery, Inc., 196 USPQ
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`830, 831 (TTAB 1977).
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` As noted above, Applicant has applied to register the mark MORINGA SKIN for
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`“lotions for face and body care containing moringa.” The mark MORINGA SKIN is
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`merely descriptive because it immediately conveys to consumers that MORINGA
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`SKIN lotions are skin care product made from Moringa oil.
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` Moringa oil comes from the seeds of the Moringa oleifera tree. “Moringa oil is
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`among the most desired oils in the formulation of skin care products and cosmetics,
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`chosen for its many antioxidants and documented skin rejuvenation properties.”
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`MoringaSource
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`(moringasource.com)
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`(October 8, 2013 Office Action). The
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`StyleCraze.com (April 21, 2014 Office Action) explains in detail the benefits of
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`Moringa oil skin care products.
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`Moringa oil is exceptionally famous for the numerous
`benefits that it offers. It is really famous in the skin and
`beauty care industry. …
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`Moringa Oil Benefits for Skin:
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`This oil is getting popular day by day in the cosmetic
`industry purely because of
`its excellent anti-aging
`benefits and other important properties. Here are the skin
`benefits of Moringa oil:
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`Anti-aging oil:
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`Natural glow:
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`1.
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`This nutrient-dense oil is famous for its anti-aging
`properties. It helps removes wrinkles and prevents
`sagging of facial skin as well. It comes filled with
`antioxidants that slow the aging process down and help
`curb the activity of free radicals.
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`2.
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`Moringa oil actually helps fight skin fatigue and its oil
`secretion. It is really great in counterfeiting [sic] the ill
`effects of pollution on your skin. It’s a great skin purifier,
`making it glow naturally.
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`3.
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`Moringa oil is also known for its outstanding properties of
`curing acne. It works wonders in removing black heads
`and spots from your skin. A flawless skin is what we all
`crave for, Don’t [sic] we?
`4.
`Cures cuts, burns and rashes:
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`Moringa oil is also known to be good [sic] antiseptic and
`anti-inflammatory oil. It helps cure minor skin cuts,
`rashes or even burns. You may also use it for healing skin
`bites.
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`See also Joe Jerry Smith, “The Benefits of Anti-Aging Moringa Oil on the Skin,”
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`Fights acne, black heads and dark spots:
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`ezinearticles.com (April 21, 2014 Office Action) (“Moringa Oil … is one of the most
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`valued ingredients in the cosmetic industry, especially because of the anti-aging
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`properties. The oil is not only light, but it can be spread easily onto the skin without
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`making it sticky.”).
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` Thus, consumers in the market for “lotions for face and body care” encountering
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`the mark MORINGA SKIN will immediately know that the lotions for skin care
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`contain moringa oil. The combination of the two descriptive words “Moringa” and
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`“Skin” retain their original descriptive meanings. The combination does not form a
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`unitary mark with a unique, non-descriptive meaning, or an incongruous meaning
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`as applied to the goods.
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` Applicant, in its Brief on page 4, argues that “the combination of term ‘moringa’
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`and ‘skin’ creates a unique nondescriptive meaning with respect to face and body
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`lotions. Does the mark refer to the skin of the moringa fruit or does the mark refer
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`to the person’s skin?” However, as noted above, the determination of whether a
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`mark is merely descriptive is based on the description of goods and not in the
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`abstract. The following cases are illustrative: In re Positec Group Ltd., 108 USPQ2d
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`1161 (TTAB 2013) (SUPERJAWS merely descriptive for a variety of machine and
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`hand tools including jaws); In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB
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`2009) (BATTLECAM merely descriptive for computer game software); In re Carlson,
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`91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of real estate
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`brokerage, real estate consultation, and real estate listing services); In re
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`Leonhardt, 109 USPQ2d 2091 (TTAB 2008) (BOBBLE POPS held merely
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`descriptive for “candy,” which the record showed was a lollipop candy featuring a
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`bobble head device); In re Cox Enters. Inc., 82 USPQ2d 1040 (TTAB 2007) (THEATL
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`– a compressed version of the term “THE ATL,” a recognized nickname for the city
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`of Atlanta – held merely descriptive of printed matter of interest to residents of and
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`tourists and visitors to Atlanta, Georgia); In re King Koil Licensing Co. Inc., 79
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`USPQ2d 1048 (TTAB 2006) (THE BREATHABLE MATTRESS held merely
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`descriptive of “beds, mattresses, box springs and pillows,” based on dictionary
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`definitions of “breathable” and “mattress,” and excerpts of web pages that refer to
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`“breathable mattresses” and “breathable bedding”); In re Finisar Corp., 78 USPQ2d
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`1618 (TTAB 2006), aff’d per curiam, 223 Fed. App'x 984 (Fed. Cir. 2007)
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`(SMARTSFP held merely descriptive of optical transceivers).
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` Therefore, the analysis of whether MORINGA SKIN is merely descriptive is
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`from the standpoint of a consumer looking to purchase skin lotions, which directly
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`conveys information about the ingredients and their use. Namely, the proposed
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`mark immediately reveals that applicant’s skin lotions for the face and body contain
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`moringa oil. Further, there is nothing in the record that indicates that such a thing
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`as Moringa skin even exists and, if it does, whether it is used in the cosmetic
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`industry.
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`3. CONCLUSION
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` Accordingly, applicant’s proposed mark MORINGA SKIN describes a feature of its skin lotions for the
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`face and body since they contain moringa oil. For the foregoing reasons, the examining attorney
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`requests that the Trademark Trial and Appeal Board affirms the refusal to register the proposed mark
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`under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).
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`Respectfully submitted,
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`/Margery A. Tierney/
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`Trademark Examining Attorney
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`Law Office 111
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`571-272-9234
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`margery.tierney@uspto.gov
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`Robert L. Lorenzo
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`Managing Attorney
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`Law Office 111
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