Monday, April 05, 2010

"ILEX" Not Deceptive or Deceptively Misdescriptive for Medicated Skin Paste, Says TTAB

The Board reversed two refusals to register the mark ILEX, finding it not deceptive for (Section 2(a)) and not deceptively misdescriptive of (Section 2(e)(1)) "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." In re Medcon Products, Inc., Serial No. 76476330 (March 26, 2010) [not precedential].

The Examining Attorney contended that "ilex" is a plant of the holly genus, that ingredients derived from ilex plants are commonly found in skin care preparations, that Applicant's products do not contain ingredients derived from ilex, and that consumers are likely to buy Applicant's products with the mistaken belief that they do contain ilex ingredients.

Applicant argued that "ilex" is a coined term that combines “ileostomy,” a postsurgical condition that its skin paste is used to treat, and the word “excoriation,” the breakdown of skin surrounding the stoma, which is a common complication for patients with an ileostomy, that there is no need to include ilex in its product, and that the Examining Attorney's evidence pertains to cosmetic products or products taken orally, not a medicated skin paste.

Section 2(a) Deceptiveness: The Board applied its standard three-part test for determining whether a mark is deceptive under Section 2(a):

1) is the term misdescriptive of the character, quality, function, composition or use of the goods; (2) are prospective purchasers likely to believe that the misdescription actually describes the goods; and (3) is the misdescription likely to affect the decision to purchase.

As to the first prong, the Board found no evidence that medicated skin paste like Applicant's contains ingredients derived from ilex (holly) plants. "Given this, we do not see how the term ilex misdescribes applicant's goods."

Assuming arguendo that "ilex" does misdescribe the goods, the Board found the second and third prongs unmet. [Have you ever met a prong? - ed.] "Ilex" is the scientific plant name for "holly," and "it is highly unlikely that purchasers would be familiar with the term." Applicant's explanation of the derivation of the term was "entirely plausible." And so purchasers are not likely to be deceived by the mark into believing that the medicated skin past contains ingredients derived from ilex plants. "On the contrary, they are likely to view applicant's mark ILEX as a coined term."

Moreover, the evidence failed to show that ilex-derived ingredients are a desirable component of Applicant's product, and so any misdescription would not materially affect the purchasing decision.

Section 2(e)(1) Deceptive Misdescriptiveness: The test here consists of the first two prongs of the deceptiveness test. Those prongs were not met.

And so the Board reversed the refusal.

TTAB trivia?: Who sang the holiday favorite, "Holly, Jolly Christmas?" Burl Ilex.

Text Copyright John L. Welch 2010.


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