IP Law Daily, TRADEMARK—TTAB: HAIR WATER is descriptive of hair care preparations, (Oct 12, 2022)

By Cheryl Beise, J.D.

The applicant’s proposed amendment exceeded the scope of it clearly identified goods.

A trademark examining attorney properly refused to register the term HAIR WATER on the ground that the proposed mark was descriptive of the applicant’s goods originally identified as “hair care preparations” in International Class 3. In affirming the refusal to register, the Trademark Trial and Appeal Board also affirmed the examining attorney’s rejection of the applicant’s proposal to amend its identification of goods to “Hair care preparations, namely, liquid nutritional supplements for the promotion of hair health … liquid nutritional supplements for the promotion of hair health … [and] dietary liquids and supplements for improving health of hair.” The applicant’s original identification of goods was unambiguous and the proposed amendment was beyond the scope of the original goods in violation of Trademark Rule § 2.71(a) (In re Celmatrix Corp., September 29, 2022, Greenbaum, C.).

Celmatrix Corp. filed an application seeking registration on the Principal Register of the proposed mark HAIR WATER (in standard characters) for Hair care preparations, in International Class 3 (“Original Goods”). The Trademark Examining Attorney refused registration of the applicant’s proposed mark under Section 2(e)(1) of the Trademark Act as merely descriptive of the Original Goods. The applicant responded to the descriptiveness refusal by proposing an amendment to the identification of goods from “Hair care preparations” to “Hair care preparations, namely, liquid nutritional supplements for the promotion of hair health; hair care preparations, namely, powdered nutritional supplements for the promotion of hair health; dietary liquids and supplements for improving health of hair.” The examining attorney: (1) rejected the proposed amendment because it exceeds the scope of Original Goods, in contravention of Trademark Rule § 2.71(a), 37 C.F.R. § 2.71(a); (2) made final the Section 2(e)(1) refusal based on the Original Goods; and (3) advised the applicant that the proposed mark appeared to be generic for the Original Goods. The applicant appealed.

Identification of goods. Trademark Rule § 2.71(a) provides, in relevant part, that “[t]he applicant may amend the application to clarify or limit, but not to broaden, the identification of goods ….” Where an application is filed under Section 1 of the Trademark Act, the USPTO looks to the “ordinary meaning of the wording apart from the class number designation” to determine the scope of an identification. TMEP § 1402.07(a).

The examining attorney contended that the proposed amendment was beyond the scope of the unambiguous Original Goods, because the “ordinary meaning of ‘hair care preparations’ is a topical preparation used to care for hair, and ordinary consumers would not understand the term to mean dietary supplements” … “which are foodstuffs, or are ingested orally.” The applicant argued that “hair care preparations” are not limited to topical preparations, and include all products that are prepared for hair care, including preparations that are ingested.

The Board agreed with the examining attorney that consumers would not understand “hair care preparations” to encompass dietary liquids and nutritional supplements, which are ingested. The applicant’s proposed amendment was properly denied as beyond the scope of the Original Goods.

Mere descriptiveness. The examining attorney asserted that HAIR WATER is descriptive of the identified “Hair care preparations” because it immediately describes a characteristic of the goods, namely, “cosmetic preparations for hair that contain, or are suspended in water.” The examining attorney relied on dictionary definitions of “Hair” and “Water,” which includes “liquid containing or resembling water: such as a (1): a pharmaceutical or cosmetic preparation made with water” and “an aqueous solution of a substance.” She also relies on excerpts from online articles in the hair-care industry and websites of third-party retailers that sell hair-care products, all of which used the term “hair water” to refer to certain hair care preparations.

The applicant presented no argument against the merits of the Section 2(e)(1) refusal as to the Original Goods, instead relying on its proposed amendment (and corresponding reclassification from Class 3 to Class 5) to obviate the refusal.

The Board was persuaded that based on the dictionary definitions, combined with the evidence of use of the term “hair water” by third parties who wrote about or offered for sale hair care products, consumers who encounter the proposed mark HAIR WATER would find the term to be merely descriptive of the applicant’s goods. In the absence of evidence showing that HAIR WATER had acquired distinctiveness as the applicant’s mark, the Board declined to deprive the applicant’s competitors from using “hair water” as a descriptive term. The refusal to register was affirmed.

The case is Serial No. 90244935.

Attorneys: Steven J. Hultquist (Hultquist PLLC) for Celmatrix Corp. Cheryl Kluwe, Trademark Examining Attorney, for USPTO.

Companies: Celmatrix Corp.

Cases: Trademark USPTO