In re Celmatrix Corp.

• Decision Date: 06 July 2015
• Docket Number: Serial 85785844
• Court: Trademark Trial and Appeal Board
• Parties: In re Celmatrix Corporation

In re Celmatrix Corporation

Serial No. 85785844

United States Patent and Trademark Office, Trademark Trial and Appeal Board

July 6, 2015

This Opinion is Not a Precedent of the TTAB

Steven J. Hultquist, Esq., for Celmatrix Corporation.

David Taylor, Trademark Examining Attorney, Law Office 112, Angela Bishop Wilson, Managing Attorney.

Before Quinn, Kuhlke and Hightower, Administrative Trademark Judges.

OPINION

Quinn Administrative Trademark Judge.

Celmatrix Corporation ("Applicant") seeks registration on the Principal Register of the mark shown below for "medicinal hair growth preparations; medicinal preparations for stimulating hair growth" in International Class 5.^[1] A description of the mark reads as follows: "The mark consists of a vertically extending rectangular strip bearing vertically oriented wording Re-Grow." The application also includes the statement "Color is not claimed as a feature of the mark."

The Trademark Examining Attorney refused registration on two grounds: 1) that Applicant's mark, when applied to Applicant's goods, so resembles the previously registered mark shown below (IMAGE OMITTED) for "hair care preparations, namely, hair moisturizing lotion and scalp moisturizer" in International Class 3, and "medicated hair preparations, namely, hair growth stimulants" in International Class 5, ^[2] as to be likely to cause confusion under Section 2(d) of the Trademark Act 15 U.S.C. § 1052(d); and 2) that Applicant's mark when applied to Applicant's goods, is merely descriptive thereof under Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1).

When the Examining Attorney made the refusals final, Applicant appealed. Applicant and the Examining Attorney filed briefs.^[3]

MERE DESCRIPTIVENESS

The Examining Attorney maintains that the proposed mark merely describes a function or feature of Applicant's goods, namely that Applicant's medicinal hair growth preparations "are used to help hair grow, or to grow anew." (6 TTABVUE 12). In support of the refusal, the Examining Attorney introduced a dictionary definition, and excerpts of third-party websites.

The sum of Applicant's argument is the following: "Applicant's trademark has been impermissibly deconstructed, with the wording extracted with complete disregard for the presence of a vertically extending rectangular strip bearing vertically oriented wording, as a distinctive composite mark." (4 TTABVUE 17).

A mark is deemed to be merely descriptive of goods, within the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods. In re Chamber of Commerce of the United States of America, 675 F.3d 1297, 102 U.S.P.Q.2d 1217 (Fed. Cir. 2012); In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 U.S.P.Q.2d 1828 (TTAB 2007); In re Abcor Development, 588 F.2d 811, 200 U.S.P.Q. 215, 217-18 (CCPA 1978). A mark need not immediately convey an idea of each and every specific feature of the applicant's goods in order to be considered merely descriptive; rather, it is sufficient that the mark describes one significant attribute, function or property of the goods. In re H.U.D.D.L.E., 216 U.S.P.Q. 358 (TTAB 1982); In re MBAssociates, 180 U.S.P.Q. 338 (TTAB 1973). Whether a mark is merely descriptive is determined not in the abstract, but in relation to the goods for which registration is sought, the context in which it is being used on or in connection with the goods, and the possible significance that the mark would have to the average purchaser of the goods because of the manner of its use. In re Bright-Crest, Ltd., 204 U.S.P.Q. 591, 593 (TTAB 1979). In other words, the question is whether someone who knows what the goods are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 U.S.P.Q.2d 1753, 1757 (Fed. Cir. 2012); In re Tower Tech, Inc., 64 U.S.P.Q.2d 1314, 1316-17 (TTAB 2002); In re Patent & Trademark Servs. Inc., 49 U.S.P.Q.2d 1537, 1539 (TTAB 1998). "On the other hand, if one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive." Coach Servs. Inc. v. Triumph Learning LLC, 96 U.S.P.Q.2d 1600, 1616 (TTAB 2010) (quoting In re Tennis in the Round, Inc., 199 U.S.P.Q. 496, 497 (TTAB 1978)), vacated-in-part on other grounds, 668 F.3d 1356, 101 U.S.P.Q.2d 1713 (Fed. Cir. 2012).

The terminology "regrow" is defined as "to grow (as a missing part) anew; to continue growth after interruption or injury." () (Office action dated Dec. 21, 2012). Applicant's specimen, an informational brochure about the goods, shows the following statement on the brochure's cover: "Clinically Proven To Help Regrow Hair." The Examining Attorney also introduced excerpts retrieved from third-party websites showing descriptive usage of the terminology "regrow" (or similar terminology such as "regrowth") in connection with hair growth preparations. (Office action dated May 19, 2014). The following are representative:

ROGAINE® Foam revitalizes hair follicles and is clinically proven to help regrow hair in men who used it every day for 4 months. ()

Hair Regrowth Treatment for Men Uses – to regrow hair on the top of the scalp ()

How To Regrow Hair in 10 days ()

How to Regrow Hair After Hair Loss ()

How to Regrow Hair

Here's A Powerful Regrow Hair Remedy That Works ()

No imagination is required by a prospective purchaser or user to discern that a purpose or feature of Applicant's "medicinal hair growth preparations; medicinal preparations for stimulating hair growth" is to regrow hair. The terminology "regrow" in Applicant's mark immediately describes, without conjecture or speculation, a significant feature of the goods. Purchasers will clearly understand that the goods are used to regrow hair.

Applicant does not contend to the contrary, only arguing that the design features of Applicant's mark somehow negate the descriptiveness of the terminology to create a distinctive composite mark. Suffice it to say that the design features of the mark do not negate or otherwise mitigate the mere descriptiveness of the terminology RE-GROW, which clearly dominates the mark, even when oriented in a vertical manner. We agree with the Examining Attorney's assessment that any stylization of RE-GROW is minimal or virtually nonexistent, and that the vertical rectangular strip in the mark is merely a non-distinct background design that does not add source-indicating capability to the merely descriptive terminology. That is, given the highly descriptive nature of the terminology RE-GROW in Applicant's mark, the addition of the non-distinct design features and vertical orientation of the terminology does not transform the mark as a whole into an inherently distinctive mark. Cf. In re Carolyn's Candies, Inc., 206 U.S.P.Q. 356 (TTAB 1980).

Applicant also hints that even if its mark were merely descriptive, Applicant could show acquired distinctiveness under Section 2(f), 15 U.S.C. § 1052(f). In this connection, Applicant relies upon the declaration of Shane Malek, Applicant's founder and chief executive officer. Applicant states:

[T]he examining attorney's allegation of mere descriptiveness of the applicant's mark would still be rebutted by the evidence presented by the applicant in its Declaration, of record, of over 100, 000 bottles of the applicant's product sold nationwide under its mark in the period since 2010. In these five years, the Applicant has achieved substantial brand identity and customer recognition of its mark that is inconsistent with the notion of mere descriptiveness of such mark. (4 TTABVUE 17)

Notwithstanding these remarks, however, Applicant continues to maintain that its proposed mark is inherently distinctive; so as to be clear, Applicant did not seek to amend its application to assert a claim, in the alternative, that its mark has acquired distinctiveness under Section 2(f). TMEP § 1212.02(c) (2015); TBMP § 1215 (2015) ("[I]t is the applicant's responsibility to make clear that it is taking alternative positions."). See, e.g., In re Brouwerij Bosteels, 96 U.S.P.Q.2d 1414, 1419 (TTAB 2010); In re Binion, 93 U.S.P.Q.2d 1531, 1538 (TTAB 2009). Accordingly, to the extent that Applicant's remarks constitute an attempt to claim the benefit of Section 2(f), we have given no consideration to it.

We conclude that Applicant's mark RE-GROW and design, when applied to Applicant's "medicinal hair growth preparations; medicinal preparations for stimulating hair growth, " is merely descriptive thereof.

Accordingly, the Section 2(e)(1) refusal is affirmed.

LIKELIHOOD OF CONFUSION

Our determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E. I du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 U.S.P.Q. 24 (CCPA 1976).

We first direct our attention to the second du Pont factor regarding the similarity/dissimilarity between the goods. It is settled that in making our determination regarding the relatedness of the goods, we must look to the goods as identified in the application and the cited registration. See Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 U.S.P.Q.2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 U.S.P.Q.2d 1990, 1991 (TTAB 2011). Thus, we compare Applicant's ...