Metabeauty, Inc.

This Opinion is not a
Precedent of the TTAB
Mailed: June 24, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Metabeauty, Inc.
_____
Serial Nos. 97613026 (parent)
97979708 (child)
_____
Heidi Tandy of Shutts & Bowen,1
for Metabeauty, Inc.
Brian Callaghan, Trademark Examining Attorney, Law Office 108,
Kathryn Coward, Managing Attorney.
_____
Before Heasley, Stanley, and Brock,
Administrative Trademark Judges.
Opinion by Heasley, Administrative Trademark Judge:
In these consolidated appeals, Applicant Metabeauty, Inc. challenges the
Trademark Examining Attorney’s final refusals to register its proposed standard
character mark MEDICAL ADVICE ON SKIN CARE on the Principal Register for:
“Downloadable electronic newsletters delivered by e-mail in the field of
skincare, skincare products and other dermatological issues; Downloadable
mobile applications for determining an individual user's skin type and
recommending skin care products for that individual,” in International Class
9 (consolidated parent appeal 97613026);
1 Applicant’s change of correspondence address is noted. 17 TTABVUE. Citations to the briefs
and other materials in the appeal record refer to the Board’s TTABVUE online docket system.

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“Providing a website featuring information about health and wellness, namely,
skin care and other dermatological issues,” in International Class 44
(consolidated parent appeal 97613026); and
“On-line retail store services featuring cosmetic and dermatological products;
Retail store services featuring cosmetic and dermatological products,” in
International Class 35 (consolidated child appeal 97979708).
The refusals rest on the ground that the proposed mark is merely descriptive—
indeed, highly descriptive—of Applicant’s identified goods and services, and has not
acquired distinctiveness under Trademark Act Section 2(f). 15 U.S.C. § 1052(f).
I. Prosecution History
In its Application Serial No. 97613026, filed on September 29, 2022, Applicant
identified all three classes of goods and services set forth above, claiming first use
and first use in commerce of all three as of June 6, 2014. 15 U.S.C. § 1051(a).
Applicant’s attorney, Heidi Tandy, verified the facts recited in the Application by her
declaration.2
The Examining Attorney issued a nonfinal Office Action refusing registration on
the ground of mere descriptiveness, 15 U.S.C. § 1052(e)(1),3 and Applicant responded
by invoking Section 2(f): “The mark has become distinctive of the goods/services
through the applicant’s substantially exclusive and continuous use of the mark in
commerce that the U.S. Congress may lawfully regulate for at least the five years
2 Application 97613026, Sept. 29, 2022 at 7-8, 10. Citations to the prosecution file refer to the
USPTO’s Trademark Status & Document Retrieval (“TSDR”) system and identify the
documents by title, date, and page in the downloadable .pdf version.
3 May 15, 2023 Office Action.

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immediately before the date of this statement.”4 Applicant’s attorney verified this
averment.5
In the next Office Action, the Examining Attorney interposed a refusal based on
genericness, and, in the alternative, mere descriptiveness.6 In particular, the
Examining Attorney maintained, “[a]s the mark in this case would be deemed highly
descriptive, applicant’s evidence is not sufficient to show acquired distinctiveness.”7
Applicant responded that its proposed mark, MEDICAL ADVICE ON
SKINCARE, “is descriptive of Applicant’s Applied-For Services and Applied-For
Goods, and as it is merely descriptive and not highly descriptive, it has manifested
secondary meaning through years of exclusive use in connection with the Applied-For
Services and Applied-For Goods.”8
The Examining Attorney issued a final Office Action withdrawing the genericness
refusal, but continuing the mere descriptiveness refusal, reasoning that “the
allegation of five years’ use is insufficient to show acquired distinctiveness because
the applied-for mark is highly descriptive of applicant’s goods and/or services.”9 The
Examining Attorney advised Applicant that it “may respond to the refusal by arguing
in support of registration and/or amending the application to seek registration on the
4 November 15, 2023 Response to Office Action at 3, 5.
5 Id. at 5-6.
6 December 28, 2023 Office Action at 2, 4.
7 Id. at 4.
8 March 28, 2024 Response to Office Action at 4.
9 May 29, 2024 Office Action at 4.

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Supplemental Register.”10
Applicant divided its Class 35 services into a new “child” application, which was
accepted, forming Application Serial No. 97979708.11
In its November 25, 2024 Response to Office Action/Request for Reconsideration,
Applicant reiterated that its proposed mark “is not highly descriptive, but is at most
merely descriptive, and secondary meaning has vested therein because of
approximately 10 years of exclusive use in connection with Applicant’s applied-for
goods and services.”12 Applicant stated that “the applicant has the ultimate burden
of proving acquired distinctiveness when registration is sought under Section 2(f), …
[but] the Examining Attorney also has the burden of making a prima facie case that
the mark is highly descriptive.”13 This argument becomes a major theme in
Applicant’s appeals, which it filed the next day.
After filing the appeals, Applicant again requested reconsideration, which the
Examining Attorney denied, allowing the appeals to proceed. In light of the similar
records and legal issues in the cases, the Examining Attorney’s motion to consolidate
the appeals was granted.14
10 May 29, 2024 Office Action at 6.
11 November 23, 2024 Request to Divide; February 12, 2025 Notice that Processing of Request
to Divide Application Is Completed: “The request to divide application serial no. 97613026
filed on November 23, 2024, has been processed as follows: (1) Parent (original) application
serial no. 97/613,026 contains the goods and services in Classes 9 and 44. (2) Child application
serial no. 97/979,708 contains the services in Class 35.” Id. at 3.
12 November 25, 2024 Response to Office Action at 2.
13 Id. at 5.
14 11-12 TTABVUE in ex parte Appeal 97613026 (parent), and 6-7 TTABVUE in ex parte
Appeal 97979708 (child). All references in this opinion to the prosecution history and filings
on appeal will be to the parent Appeal No. 97613026, unless otherwise stated.

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For the reasons discussed below, we affirm the refusals to register.
II. Discussion and Analysis
“Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of ‘a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive . . . of them,’ unless the mark has been shown to have
acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).”
In re Yarnell Ice Cream, LLC, No. 86824279, 2019 WL 3183842, *6 (TTAB 2019). “A
mark is merely descriptive if it immediately conveys information concerning a
feature, quality, or characteristic of the goods or services for which registration is
sought.” Real Foods Pty v. Frito-Lay N. Am., Inc., 906 F.3d 965, 972 (Fed. Cir. 2018)
(quoting In re N.C. Lottery, 866 F.3d 1363, 1367 (Fed. Cir. 2017)) (internal
punctuation omitted)).
Where, as here, an applicant seeks a registration based on acquired
distinctiveness under Section 2(f), the statute accepts a lack of inherent
distinctiveness as an established fact. … The applicant may nevertheless
register the presumptively descriptive mark under Section 2(f) if it can
prove the mark has become distinctive of the applicant’s goods [or services]
in commerce. 15 U.S.C. § 1052(f).
Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 17 F.4th 129, 147 (Fed. Cir.
2021) (citing Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352,
1358 (Fed. Cir. 2009) (“Where an applicant seeks registration on the basis of Section
2(f), the mark’s descriptiveness is a nonissue; an applicant’s reliance on Section 2(f)
during prosecution presumes that the mark is descriptive.”) (internal punctuation
omitted)).

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“A descriptive mark can be registered if it has obtained ‘secondary meaning’ or
‘acquired distinctiveness,’ whereby the mark has come to serve a trademark function
of identifying a particular source of goods or services. See Two Pesos, Inc. v. Taco
Cabana, Inc., 505 U.S. 763, 769 … (1992).” In re Chamber of Commerce of the U.S.,
675 F.3d 1297, 1300 (Fed. Cir. 2012). The Federal Circuit explains:
Secondary meaning, required to register a descriptive mark, “occurs when,
in the minds of the public, the primary significance of a mark is to identify
the source of the product rather than the product itself.” Wal-Mart Stores,
Inc. v. Samara Bros., Inc., 529 U.S. 205, 211 … (2000).
…
Acquired distinctiveness, i.e., “[s]econdary meaning,” “is a term of art
which denotes that there is an association formed in the minds of the
consumers between the mark and the source or origin of the product.” Tone
Bros., Inc. v. Sysco Corp., 28 F.3d 1192, 1201 (Fed. Cir. 1994).
Real Foods v. Frito-Lay, 906 F.3d at 978; see also Inwood Labs., Inc. v. Ives Labs., 456
U.S. 844, 851 n. 11 (1982).
Section 2(f) is not a basis for refusing registration, “but is a provision under which
an applicant has a chance to prove that he is entitled to a federal trademark
registration which would otherwise be refused.” Yamaha Int’l Corp. v. Hoshino Gakki
Co., 840 F.2d 1572, 1580 (Fed. Cir. 1988). The applicant bears the burden of proving
acquired distinctiveness. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335 (Fed.
Cir. 2015).
The level of the applicant’s burden varies with its proposed mark’s degree of
distinctiveness:
Where a mark sits on a sliding scale of descriptiveness impacts the burden
a proposed registrant must bear with respect to its claim of acquired
distinctiveness. See In re Steelbuilding.com, 415 F.3d 1293, 1300 (Fed. Cir.
2005) (“[T]he applicant’s burden of showing acquired distinctiveness
increases with the level of descriptiveness; a more descriptive term

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requires more evidence of secondary meaning.”). In assessing acquired
distinctiveness, accordingly, the Board must first determine whether the
proposed mark is highly descriptive rather than merely descriptive.
Royal Crown Co., Inc. v. The Coca-Cola Co., 892 F.3d 1358, 1365 (Fed. Cir. 2018).
Applicant acknowledges its burden of proof, but maintains on appeal, as it did
during prosecution, that the Examining Attorney failed to meet his “burden” of
proving that MEDICAL ADVICE ON SKINCARE is highly descriptive of Applicant’s
goods and services:
Applicant does not deny that the mark is descriptive of the goods and
services; it is. However, the Examining Attorney must show that the mark
is highly descriptive of the services, and no such showing has been made.
… While … applicant has the ultimate burden of proving acquired
distinctiveness when registration is sought under Section 2(f), … the
Examining Attorney also has the burden of making a prima facie case that
the mark is highly descriptive.15
Consequently, Applicant argues, if its proposed mark is not highly descriptive, its
burden of proof is commensurately lighter, and therefore its claim of substantially
exclusive and continuous use of the mark in commerce for five years before the date
on which the claim of distinctiveness is made establishes acquired distinctiveness in
the eyes of the purchasing public.16
In truth, though, Applicant’s discussion of the respective burdens “is itself
burdened with an inexactness that has helped to mask the relevant issues in this
appeal.” Yamaha v. Hoshino Gakki, 840 F.2d at 1575. It is in fact the Board’s
responsibility to determine an applied-for mark’s degree of descriptiveness, based on
all of the evidence of record, considered as a whole. In re Sausser Summers, PC, No.
15 Applicant’s main brief, 9 TTABVUE 4, 6.
16 Id. 9 TTABVUE 18.

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88626569, 2021 WL 2392480, *2 (TTAB 2021); In re Yarnell Ice Cream, 2019 WL
3183842, at *11.
“Evidence of the public’s understanding of [a] term may be obtained from any
competent source.” Royal Crown, 892 F.3d at 1366. We therefore consider, in roughly
chronological order, all competent evidence of record.
The Examining Attorney contends that MEDICAL ADVICE ON SKINCARE is
highly descriptive because “the evidence demonstrates that Applicant’s goods and
services feature the provision of medical advice on skincare regimens for various skin
types.”17 Applicant’s original specimens describe how Applicant’s founder, Leslie
Baumann, M.D., devised a system that classifies patients’ skin types, thereby
enabling health care providers (such as dermatologists) to advise their patients on
appropriate care for their classified skin types. Applicant’s proposed mark is
sometimes displayed to the left of Applicant’s SKIN TYPE SOLUTIONS and Design
mark:
17 Examining Attorney’s brief, 13 TTABVUE 5.

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18
The specimens also display the proposed mark in capital letters, as with
Applicant’s other subheadings:
19
18 Sept. 29, 2022 Specimen at 2.
19 Id. at 3.

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The specimens further describe how Applicant’s system helps health care
providers provide appropriate dermatological advice:
. . .
20
21
20 Id. at 9 (the arrow is provided by the Board for reference).
21 Id. at 17 (the arrow is provided by the Board for reference).

Serial Nos. 97613026, 97979708
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In the first Office Action, the Examining Attorney adduced dictionary definitions
showing that “MEDICAL” means “of, relating to, or concerned with physicians or the
practice of medicine,”22 “ADVICE” means “recommendation regarding a decision or
course of conduct,”23 and “SKINCARE” means “the care of the condition and
appearance of the skin.”24
That same Office Action contains an article quoting Applicant’s founder, Dr.
Baumann:
25
Yet another article, this one written by Dr. Baumann, discusses her “system that
was developed to empower physicians and their staff to provide medical advice on
skincare in an ethical and scientific manner.”26 “It took a decade of trial and error
22 Merriam-webster.com, May 15, 2023 Office Action at 8.
23 Merriam-webster.com, id. at 16.
24 CollinsDictionary.com, id. at 24.
25 Medium.com, id. at 34.
26 NextStepsInDerm.com, id. at 45 (emphasis added).

Serial Nos. 97613026, 97979708
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to come up with an ethical and streamlined approach to give accurate medical
advice on skincare.”27 Further, Applicant advertises:
28
In its November 15, 2023 Response to Office Action, Applicant added a specimen
showing shelf displays of skin care products designed to treat patients’ differing skin
types:
29
27 Id. at 46 (emphasis added).
28 GlowSpaSeattle.com, May 15,2023 Office Action at 52.
29 Nov. 15, 2023 Response to Office Action at 11.

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The Examining Attorney’s December 28, 2023 Office Action attached website
excerpts referring to Applicant’s goods and services, such as “an innovative,
customized diagnostic system that was developed to empower physicians and their
staff to provide medical advice on skincare in an ethical and scientific manner.”30
Another excerpt states, “[i]t took a decade of trial and error to come up with an ethical
and streamlined approach to give accurate medical advice on skincare.”31
Dr. Baumann is quoted: “Our motto is medical advice on skincare, because I truly
believe that patients should get their skincare from their doctor. Especially as
dermatologists, we are the ones trained, we have gone through years of school, and
we know more about what’s right for our patients.”32
The May 24, 2024 Office Action offers excerpts from Applicant’s website:
33
Applicant’s website states that it updates its product recommendations frequently
based on data received from dermatologists. “That’s why doctors and medical
30 NextStepsInDerm.com, Dec. 28, 2023 Office Action at 3, 11 (emphasis added).
31 Id. at 12 (emphasis added).
32 PracticalDermatology.com, id. at 4, 41 (emphasis added).
33 SkinTypeSolutions.com, May 29, 2024 Office Action at 14.

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providers trust us to teach their staff how to give medical advice on skincare and
guide their patients to the very best outcomes.”34
To this, the Examining Attorney adds evidence of third parties using the phrase
“medical advice on skincare” or variations thereof. For example:
• “[I]ndividuals with [sensitive skin] are more likely to seek dermatology care
and more likely to rely on medical advice for skincare product
purchases….”35
• “This makes it important to always talk to a dermatologist for proper medical
advice about skincare for older skin.”36
• “The move reflects changing consumer behavior, particularly among younger
generations, who increasingly turn to social media platforms like TikTok for
medical advice on skincare.”37
• “The same questions that once preoccupied Dr. Sabine Schwarz herself are
now asked by thousands of women and men who seek her medical advice on
skincare year after year.”38
Applicant attempts to diminish the force of this evidence, but ultimately grasps at
straws.
Applicant contends that the evidence of highly descriptive use “is substantively
identical to the evidence the Examining Attorney had used to try and show
34 SkinTypeSolutions.com, id. at 17 (emphasis added).
35 JDOnline.com, March 25, 2025 Office Action at 6 (emphasis added)
36 TruPureOrganics.com, id. at 23 (emphasis added).
37 NetInfluencer.com, id. at 16.
38 Dr.SabineSchwartz.com, May 29, 2024 Office Action at 9.

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genericness of the Applied-For Mark, but that issue was withdrawn, so the evidence
cannot show either genericness, or a high level descriptiveness herein.”39 Applicant
is mistaken.
To the contrary:
The evidence discussed above in connection with the genericness refusal is
equally probative on the question of the level of descriptiveness of
Applicant’s asserted mark, because the two inquiries are so closely
related. Cf. H. Marvin Ginn Corp. [v. Int’l Ass’n of Fire Chiefs, Inc., 782
F.2d 987, 989 (Fed. Cir. 1986)] (“The generic name of a thing is in fact the
ultimate in descriptiveness.”) (citations omitted).
In re GJ & AM, LLC, No. 86858003, 2021 WL 2374670, *16 (TTAB 2021) (on remand).
The evidence shows that Applicant, founded and operated by a medical doctor,
categorizes its customers’ skin types and advises them to use certain treatments
appropriate to those skin types. If one asked, “what does Applicant provide?” the
answer would be, “medical advice on skincare.” “Thus, within the merely descriptive
category of marks on the spectrum of distinctiveness, the term is closer to the generic
than suggestive line.” Id. (finding COOKINGPELLETS.COM “is, at the very least,
highly descriptive.”). See also Sausser Summers, 2021 WL 2392480, at *4 (“On the
basis of the dictionary definitions, third-party uses … and Applicant’s own description
of its business model, we find that ‘on the scale ranging from generic to merely
descriptive,’ Royal Crown Cola, [the term] is much closer to the generic end of the
scale than to the merely descriptive end, making it highly descriptive….”).
With respect to dictionary definitions, Applicant notes that Merriam-Webster and
the Collins dictionary define “MEDICAL,” “ADVICE,” and “SKINCARE” separately,
39 Applicant’s main brief, 9 TTABVUE 7.

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but that there is no definition of the phrase “MEDICAL ADVICE” apart from the Free
Dictionary, which is not mainstream.40 That, however, is a distinction without a
difference. The individual terms “medical” and “advice” are defined, and there is no
evidence that their meanings would change when connected. Each component retains
its descriptive significance. In Real Foods v. Frito-Lay, for example, the Federal
Circuit affirmed the Board’s finding that CORN THINS and RICE THINS are “highly
descriptive” of Real Foods’ goods, as “a consumer will immediately understand, when
encountering the proposed marks, that a feature or characteristic … is that they are
thin in cross section and made primarily of corn in one instance and rice in the other.”
906 F.3d at 974-75.
Here, as we have seen, a consumer encountering MEDICAL ADVICE ON SKIN
CARE will immediately understand that the term describes a key feature and
characteristic of Applicant’s goods and services: downloadable electronic newsletters
and mobile applications for determining an individual user’s skin type and
recommending skin care products for that individual, (App. Ser. No. 97613026, Class
9); a website about skin care and other dermatological issues (App. Ser. No. 97613026,
Class 44); and retail services offering dermatological products (i.e., skin care)
appropriate to one’s skin type (App. Ser. No. 97979708, Class 35). The term is highly
descriptive. Id.; see also In re Guaranteed Rate, Inc., No. 87054820, 2020 WL 4383820,
*4 (TTAB 2020) (“We find that the term ‘GUARANTEED RATE’
is highly descriptive when used in connection with mortgage lending services because
40 Id., 9 TTABVUE 7-8 (referring to TheFreeDictionary.com: “Medical advice” means “Advice
by a medical professional,” Dec 28, 2023 Office Action at 3, 54).

Serial Nos. 97613026, 97979708
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it immediately conveys a feature of the services (i.e., a mortgage rate that will not
change”)).
Applicant concedes that “evidence that a term is descriptive may be found in its
third-party usage in connection with products or services similar or related to those
at issue.”41 But, Applicant argues, the third parties may improperly depict a mark in
lower case due to their unfamiliarity with proper trademark usage.42 And they may
use variant phrases that are not identical to Applicant’s phrase.43
None of these arguments is persuasive. Third parties, such as competitors, may
properly use “medical advice on skin care” in lower case because the wording is, in
fact, highly descriptive in the context of skincare products and services. The third-
party uses, including close variants such as “medical advice about skincare,”
corroborate the highly descriptive nature of the phrase. E.g., Sausser Summers, 2021
WL 2392480, at *7. “Our society is better served if ... highly descriptive or generic
terms ... remain available for use among competitors.” In re Water Gremlin Co., 635
F.2d 841, [844] (CCPA 1980).” Spiritline Cruises LLC v. Tour Mgmt. Servs., Inc., No.
91224000, 2020 WL 636467, *15 (TTAB 2020).
41 Applicant’s main brief, 9 TTABVUE 5.
42 Id., 9 TTABVUE 13-14.
43 Id., 9 TTABVUE 9-11. Applicant also argues that a foreign third-party website maintained
by Dr. Sabine Schwartz, Dr.SabineSchwartz.com, may show use that is not exposed to
consumers in the United States. Applicant’s main brief, 9 TTABVUE 11-12 (referring to May
29, 2024 Office Action at 9). It is unclear whether this foreign website is exposed to U.S.
consumers, so we accord it no probative value. See, e.g., In re Tracfone Wireless, Inc., 2019
WL 2511861, *5 n. 7 (TTAB 2019) (“although the foreign websites are in English, they are
clearly directed to local consumers or readers and there is no basis in this record to conclude
that U.S. consumers of telecommunications services are likely to have been exposed to
them.”).

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We therefore agree with the Examining Attorney that Applicant’s proposed mark
is highly descriptive of its goods and services, and that it bears, in consequence, a
commensurately high burden of proving acquired distinctiveness. See In re
Steelbuilding.com, 415 F.3d 1293, 1301 (Fed. Cir. 2005) (stating that, where a
“proposed mark is highly descriptive,” the “applicant had the burden to show a
concomitantly high level of secondary meaning”), quoted in Real Foods v. Frito-Lay,
906 F.3d at 979.
In the final analysis, though, it doesn’t matter whether Applicant’s proposed mark
is highly descriptive or just merely descriptive. In either case, its proof of acquired
distinctiveness falls short. During the course of prosecution, the Examining Attorney
advised Applicant that it might prove acquired distinctiveness, or secondary
meaning, by the various means outlined by the Federal Circuit:44
(1) association of the trade[mark] with a particular source by actual
purchasers (typically measured by customer surveys); (2) length, degree, and
exclusivity of use; (3) amount and manner of advertising; (4) amount of sales
and number of customers; (5) intentional copying; and (6) unsolicited media
coverage of the product embodying the mark.
Converse, Inc. v. Int’l Trade Comm’n, 909 F.3d 1110, 1120 (Fed. Cir. 2018), quoted in
In re SnoWizard, Inc., No. 87134847, 2018 WL 6923620, *5 (TTAB 2018).
Applicant, however, chose to rely solely on the claim made in its application,
repeated during prosecution, and verified only by its counsel, that it has made
substantially exclusive use of the proposed mark for over five years.45
44 May 29, 2024 Office Action at 6.
45 Application 97613026, Sept. 29, 2022 at 7-8, 10; November 15, 2023 Response to Office
Action at 3, 5-6.

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“Although Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f), provides that the
PTO may accept five years of ‘substantially exclusive and continuous’ use as prima
facie evidence of acquired distinctiveness, the statute does not require the PTO to do
so.” Guaranteed Rate, 2020 WL 4383820, at *8 (quoting La. Fish Fry, 797 F.3d at
1336-37 (“Particularly for a mark that is as highly descriptive like FISH FRY
PRODUCTS, the Board was within its discretion not to accept Louisiana Fish Fry’s
alleged five years of substantially exclusive and continuous use as prima
facie evidence of acquired distinctiveness.”)). We decline to do so here. Even though
the Examining Attorney invited Applicant to introduce corroborating evidence,
“Applicant introduced no evidence of, for example, advertising expenditures,
exclusivity of use, media coverage, survey results, or third-party affidavits asserting
source-indicating recognition.” In re Olin Corp., No. 86651083, 2017 WL 4217176, *13
(TTAB 2017). Whether its proposed mark is deemed highly descriptive, which we find,
or merely descriptive, which it admits, its bare-bones assertion of compliance with
Section 2(f) falls far short of establishing acquired distinctiveness.
Applicant’s reply brief abruptly shifts gears, asking us to return jurisdiction over
this matter to the Examining Attorney to consider In re Bayou Grande Coffee
Roasting Co., 160 F.4th 1370 (Fed. Cir. 2025).46
We find Bayou inapposite. In that case, the Board affirmed an examining
attorney’s refusal to register KAHWA for cafe and coffee shop services on the bases
of genericness and descriptiveness. Id. at 1372. The record before the Board
46 Applicant’s reply brief, 14 TTABVUE 2.

Serial Nos. 97613026, 97979708
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established that KAHWA is the name of a type of green tea beverage and that cafes
and coffee shops serve a variety of tea beverages, which would include selling kahwa
tea beverages. The Federal Circuit reversed, finding neither refusal supported by
substantial evidence because “there is no record evidence showing any café or coffee
shop in the United States has ever sold kahwa.” Id. at 1376. Thus, there was “no
evidence selling kahwa is a key aspect of café and coffee shop services” to establish
genericness, id. at 1374, and there was “no evidence selling kahwa is a ‘characteristic
of the goods or services’ of cafés or coffee shops, let alone evidence showing relevant
customers would immediately know selling kahwa is a characteristic of cafés and
coffee shops” to establish descriptiveness. Id. at 1375.
In light of Bayou, Applicant now argues:
In its analysis and arguments before the Federal Circuit’s ruling in Bayou
was issued, Applicant was willing to accept, for the sake of argument, that
MEDICAL ADVICE ON SKINCARE was merely descriptive for the
services at issue…; however, post-Bayou, while Applicant is willing to
continue that issue for the sake of this filing, Applicant believes that it is
possible that the applied-for mark is suggestive, and not merely
descriptive, for the services in the three classes at issue….47
It is undisputed that there is no record evidence showing any provider,
store, shop, vendor, wholesaler or medical office in the United States –
other than those operated by Applicant – that claims they provide services
under the tagline, phrasing, sentence, mark or other communicative
content “Medical Advice on Skincare”. Yes, there are providers who use two
or three of those words, but none – of record –use all four of those words,
in that order. This, per Bayou, means that there is no evidence that
“Medical Advice on Skincare” is a “characteristic of the goods or services”
[identified by Applicant.]48
47 Applicant’s reply brief, 14 TTABVUE 4.
48 Applicant’s reply brief, 14 TTABVUE 5.

Serial Nos. 97613026, 97979708
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Applicant is mistaken. Bayou addressed the evidence necessary to show
consumers would understand the name of a tea beverage to describe a characteristic
of café services. The Court in Bayou did not purport to change the well-settled legal
principles and evidentiary considerations for establishing descriptiveness of a
proposed mark outside the context of that case. One such principle is that whether
an applicant may be the first and only user of a descriptive designation does not
justify registration if the evidence shows the significance conveyed by the term is
merely descriptive. See J. Kohnstam, Ltd. v. Louis Marx & Co., Inc., 280 F.2d 437
(CCPA 1960) (holding appellant’s first use of a term does not compel registration of
an otherwise descriptive term); see also KP Permanent Make-Up, Inc. v. Lasting
Impression I, Inc., 543 U.S. 111, 122 (2004) (trademark law does not countenance
anyone obtaining “a complete monopoly on use of a descriptive term simply by
grabbing it first”). Another is that an applicant’s own descriptive use of the term
sought to be registered is highly probative of how consumers perceive it. In re Berkeley
Lights, Inc., No. 88895703, 2022 WL 15733123, *6 (TTAB 2022) (“an applicant’s own
website and marketing materials may be . . . ‘the most damaging evidence’ in
indicating how the relevant purchasing public perceives a term”), quoting In re Gould
Paper, 834 F.2d 1017, 1019 (Fed. Cir. 1987) (relying on the applicant’s specimen of
use that referred to SCREENWIPE as a wipe for screens as evidence of genericness);
see also In re Gyulay, 820 F.2d 1216, 1217 (Fed. Cir. 1987) (applicant’s catalog was
the primary evidence that APPLE PIE would be understood as referring to the
potpourri scent).

Serial Nos. 97613026, 97979708
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Here, we are determining the significance of MEDICAL ADVICE ON SKINCARE
in the context of skincare goods and services. The record establishes that third parties
use the identical phrase “medical advice on skincare,” as well as substantively
identical phrasing: “medical advice for skincare.”49 Such close variants corroborate
the highly descriptive nature of the phrase when used for the goods and services
identified in the application. Sausser Summers, 2021 WL 2392480, at *7. We have,
moreover, Applicant’s own repeated lower-case use of the phrase to explain how its
skin typing system enables it to provide medical advice on skin care.50 We accordingly
find Bayou inapposite, and maintain that Applicant’s proposed mark is indeed highly
descriptive.51
III. Conclusion
For the foregoing reasons, we find that Applicant’s proposed mark is merely
descriptive, indeed, highly descriptive, within the meaning of Section 2(e)(1), 15
U.S.C. § 1052(e)(1), and has not acquired distinctiveness under Section 2(f), 15 U.S.C.
§ 1052(f).
49 See nn. 35-38, supra.
50 See, e.g., nn. 20-21, 25-28 supra.
51 Applicant requests in the alternative that its proposed mark be registered in all three
classes on the Supplemental Register. Applicant’s reply brief, 14 TTABVUE 10. That request
is untimely and is denied. See Trademark Rule 2.142(g) (“An application which has been
considered and decided on appeal will not be reopened except for the entry of a disclaimer ...
or upon order of the Director”). TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP) § 1218. In re Integrated Embedded, No. 86140341, 2016 WL 7368696,
*8 (TTAB 2016).

Serial Nos. 97613026, 97979708
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Decision: The refusals to register Applicant’s proposed mark, MEDICAL
ADVICE ON SKIN CARE in Application Serial Nos. 97613026 and 97979708 are
affirmed.