Applicant's Policing Efforts Lead to TTAB Reversal of Mere Descriptiveness Refusal of "PERFECTING SERUM" For Skin Moisturizer
Giving the benefit of the doubt to the Applicant, as required, the Board reversed a Section 2(e)(1) refusal to register the mark PERFECTING SERUM, finding it not merely descriptive of "skin moisturizer" [SERUM disclaimed]. Applicant Murad countered the Examining Attorney's third-party user evidence by showing that, through its enforcement efforts, all but two had stopped using the term or were actually selling Applicant's product. In re Murad, Inc., Serial No. 77556539 (February 4, 2010) [not precedential].
The Examining Attorney relied on dictionary definitions of "perfecting" and "serum," and on several third-party uses of the applied-for phrase. She argued that, even though some third-party users have stopped, that evidence is still relevant because "consumers have been extensively exposed to those advertisements." However, because of the lack of any evidence as to the length of use or the number of hits at the third-party websites, the Board could not draw any conclusions regarding this assertion.
The Board recognized that some third-party users may have stopped not because of a recognition of Applicant's trademark rights, but because of a desire to avoid litigation. Nonetheless, Applicant "has taken steps to ensure that third-party use has not caused the mark PERFECTING SERUM to lose whatever distinctiveness or exclusivity it has achieved."
Other than the two remaining third-party users, the Board found no evidence that the word "perfecting" is used by others in the industry, or that consumers understand that word "to describe a quality, characteristic or function of skin moisturizers or any other cosmetic or personal care product." The term "requires and effort of imagination on the part of the observer to resolve the incongruity between skin moisturizer and the term 'Perfecting' and 'Serum' (i.e., a serum does not normally perfect something.)"
The Board concluded that, because the record did not resolve its doubts regarding descriptiveness, it must rule in favor of the Applicant.
TTABlog comment: A Supplemental Registration plus aggressive policing paid off. Another reason why one should not scoff at a Supplemental Registration.
Text Copyright John L. Welch 2010.