For its part, Clairol relies chiefly on the fact that it has used the slogan "Hair Color So Natural Only Her Hairdresser Knows For Sure" in nearly all of its extensive advertising of its "Miss Clairol" products in various media since 1956, including point-of-sale displays, to establish that the slogan has become well-known to the purchasing public and serves to point to Clairol as the source of the products in association with which the slogan is used. Clairol further contends:

**That the advertising referred to was highly effective in driving home the fact that the slogan mark here involved identifies the applicant, as the source of the goods in connection with which that mark is displayed, is very definitely established by Applicant's Exhibits 10 and 11, *

[3] Those latter exhibits, illustrating many parodies on the slogan and for the most part written by or representing the views of persons in the advertising, newspaper and magazine professions, are of relatively little assistance as direct evidence in determining whether the slogan does serve as an indication of origin to the purchasing public, simply because the record does not establish to what extent, if any, those persons are members of the class who purchase Clairol's goods in the market. In re Duvernoy & Sons, Inc., 41 CCPA 856, 212 F.2d 202, 101 USPQ 288 (1954). But that evidentiary void is not necessarily fatal to Clairol's case. See In re Hollywood Brands, Inc., 41 CCPA 1001, 214 F. 2d 139, 102 USPQ 294 (1954). We are left, then, with the extensive advertising carrying the slogan and promoting its product that Clairol has sponsored over the years, and whatever inference can be drawn from that advertising and the remaining evidence of record.

Clearly, the board found an inference favorable to Clairol :

Based on the record herein, which also includes various references to and/or parodies on applicant's slogan both by the press and advertising trade, there can be no question that applicant has so extensively promoted its slogan that it must have made some impact on the purchasing public as an indication of origin. While opposer urges that the advertising and promotion of the product is all directed to "MISS CLAIROL", and that the phrase "HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER KNOWS FOR SURE" is merely a laudatory phrase which is directed to the character or quality of "MISS CLAIROL" hair coloring, we are not persuaded that this is, in fact, the case. Applicant's slogan is no doubt laudatory and somewhat descriptive of the desired result to be obtained from the use of applicant's product. On the other hand, it is not so highly laudatory or descriptive as to be incapable of acquiring distinctiveness as a trademark. * * * [Emphasis supplied.]

common descriptive name of the goods can and has "become distinctive" of the goods in commerce or, in trademark parlance, has acquired a "secondary meaning", it no longer is "merely descriptive" of them.

While Roux does not challenge the registrability of slogans on the principal register as a general proposition, it does criticize the board's extensive, if not exclusive, reliance on Clairol's advertising campaign for its "Miss Clairol" product as circumstantial evidence establishing that the slogan is a trademark and has become distinctive of the goods in the public eye. Typical of Roux's variously-stated views are the following excerpts from its brief:

*** That the material submitted failed to indicate any distinctiveness will be pointed out, but it is believed that the phrase is so totally laudatory and descriptive that it could not have acquired any distinctiveness even if proof of trademark use had been submitted.

No amount of money spent in advertising can change the inherent nature of this phrase and make it anything other than a generic advertising statement which merely describes the product. It is not an indication of origin.

The law provides for the registration of trademarks, not of advertisements.

*

Use of a trademark in extensive advertising may, of course, be used as one type of evidence tending to show that a trademark has been widely used and has become recognized. It must, however, be a trademark and used as a trademark.

The attempt to establish distinctiveness omitted any proof of trademark use or recognition of the phrase in question as a trademark.

***Examination of the many advertisements, submitted in connection with the file wrapper and in the exhibits submitted with appellee's stipulated facts, does not indicate, or even tend to establish, that HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER KNOWS FOR SURE was used as a trademark or is capable of functioning as such. True, in many of these advertisements, the phrase is prominently displayed. Mere size, however, does not change the obvious fact that the phrase describes and points to the claimed virtues of the hair coloring preparation sold as MISS CLAIROL and not to any HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER KNOWS FOR SURE hair coloring preparation. Such a product, bearing the phrase here involved, was not available on the market at any time (except for the single shipment) and, even as to that, the phrase could have been only generically descriptive and would not have been recognized as a trademark.

The claim that extensive advertising cost indicates distinctiveness of this phrase ignores the fact that the advertising is for the MISS CLAIROL hair color bath. ***

[4] The determination of whether a given slogan is a registrable trademark is a matter which historically has not been free of difficulty. Nor is it an easy task here. The mere fact that a combination of words or a slogan is adopted and used by a manufacturer with the intent

See, for example, Beran, Protection of Slogans in the Patent Office and the Courts, 57 TMR 219 (1967), and the chronology of cases discussed therein.

Clairol has manifested here that it identify its goods and distinguish them from those of others does not necessarily mean that the slogan accomplishes that purpose in reality. See In re The Standard Oil Co., 47 CCPA 829, 275 F.2d 945, 125 USPQ 227 (1960).

[5] The amount and character of the evidence, if any, required. to establish that a given word or phrase is a trademark or "has become distinctive" of the goods necessarily depends on the facts of each case and particularly on the nature of the alleged mark. At the outset, as noted earlier, it is not clear to us that Clairol's preliminary contention that the slogan is a fanciful, arbitrary, or even highly suggestive expression which, without more, presumptively functions as a trademark to indicate origin is necessarily correct. On the other hand, we do disagree with Roux's position, as [6] did the board, that the slogan is so highly descriptive or generic that it is utterly incapable of functioning as a trademark or acquiring distinctiveness, no matter what quantity of evidence of alleged distinctiveness or secondary meaning is submitted. [7] It is true, of course, that mere advertising or other evidence of supposed secondary meaning cannot convert something unregistrable by reason of its being the common descriptive name or generic name for the goods-the antithesis of a trademark-into a registrable mark. In re G. D. Searle & Co., 53 CCPA 1192, 360 F.2d 650, 149 USPQ 619 (1966); Weiss Noodle Co. v. Golden Cracker & Specialty Co., 48 CCPA 1004, 290 F.2d 845, 129 USPQ 411 (1961); J. Kohnstam, Ltd. v. Louis Marx & Co. et al., 47 CCPA 1080, 280 F.2d 437, 126 USPQ 362 (1960). That does not mean that extensive advertising considered with other factors cannot be used to show a developed distinctiveness in a mark perhaps originally having some degree of descriptive significance when applied to the goods but capable of distinguishing them from those of others.10 See Standard International Corp. v. American Sponge & Chamois Co., 55 CCPA 1155, 394 F.2d 599, 157 USPQ 630 (1968); Clinton Detergent Co. v. The Procter & Gamble Co., 49 CCPA 1146, 302 F.2d 745, 133 USPQ 520 (1962). Considering all the factors here-exclusive, prominent and repeated use of the slogan by Clairol for at least ten years in association with the goods, expenditures in that period of over 22 million dollars for point-of-sale displays and other advertising material resulting in over a billion separate audio and visual impressions of the slogan, and substantial sales of the product with which the slogan has been associated-we do not think the board erred in concluding that Clairol's slogan has made an impact upon the purchasing public

10 The size of advertising expenditures alone has been found to serve as strong evidence of secondary meaning. Goodyear Tire & Rubber Co. v. H. Rosenthal Co., 246 F. Supp. 724, 147 USPQ 92 (D.C. Minn. 1965).

as an indication of origin, separate from and in addition to the impact of its "Miss Clairol" mark. See In re Hollywood Brands, Inc.,

supra.

[8] In our view, Roux has not shown such an interest in the use of the particular slogan in issue in its business that damage to it will be presumed from registration by Clairol. It is apparent that the slogan is not in common use by Roux or others to describe the same or similar products, Clairol having used it exclusively for a number of years. Nor is it one that Roux finds or might find necessary to describe the features of its product in the ordinary course of business, the record showing that Roux has used several other descriptive expressions of somewhat similar import in its advertising copy to describe similar attributes of its goods. We agree with the board, as does Clairol, that damage to Roux cannot ensue from registration of the instant slogan inasmuch as that slogan is not merely descriptive and its registration will not prevent the continued use by Roux in its advertising of descriptive phrases like those it has used in the past. 15 USC 1115 (b) (4); In re Chesapeake Corp. of Virginia, 57 CCPA 838, 420 F. 2d 754, 164 USPQ 395 (1970); In re Automatic Radio Mfg. Co., 56 CCPA 817, 404 F.2d 1391, 160 USPQ 233 (1969).

One matter remains. We have assumed heretofore that the slogan has been used on the goods in commerce as defined in § 45 of the Act, 15 USC 1127. As noted by the board, however, Roux argued below that Clairol is not entitled to registration because, as shown by its stipulated testimony, it made only a single shipment of goods in commerce bearing the slogan (the slogan appeared on the cardboard containers in which glass bottles containing Clairol's hair coloring preparations were placed) prior to the filing of its application in 1962, and it has not used the slogan on its containers since that time.11 Here, Roux embellishes on that argument, adding that there obviously "was no intent to continue use of the phrase on the package, the use was not continued, and there has been no suggestion of any such intent." It seems to be Roux's position that, even were the slogan otherwise capable of being a trademark, Clairol nevertheless has not made bona fide use of it on its goods in commerce-at least on its containers

11 While the board, curiously enough, characterized the question raised by Roux as "ex parte in nature" even though it was pleaded in paragraph 10 of the Notice of Opposition, its decision on the matter appears to have been inter partes, perhaps in deference to this court's repeated admonitions not to render separate ex parte rulings in certain inter partes situations. See Fort Howard Paper Co. v. Kimberly-Clark Corp., infra; Golden Gate Salami Co. v. Gulf States Paper Corp., 51 CCPA 1391, 332 F. 2d 184, 141 USPQ 661 (1964); Roger & Gallet v. Janmarie, Inc., 46 CCPA 787, 263 F. 2d 350, 120 USPQ 484 (1959); The Gillette Co. v. George P. Kempel, 45 CCPA 920, 254 F. 2d 402, 117 USPQ 356 (1958). Neither party questions our right to pass on the issue here, both having developed their arguments fully in their briefs.

for the goods 12-adequate to support a registration, and thus is not an "owner of a trademark used in commerce." 15 USC 1051; cf. Fort Howard Paper Co. v. Kimberly-Clark Corp., 55 CCPA 947, 390 F. 2d 1015, 157 USPQ 55 (1968), cert. denied 393 US 831, 971.

Whatever the merits of Roux's stance may be with respect to Clairol's use of the slogan on containers, the board correctly observed that § 45 of the Act provides other means by which a mark may be used on goods in commerce than on their containers, viz. that a mark shall be deemed to be used in commerce on goods "when it is placed in any on the displays associated therewith *** and the goods are sold or transported in commerce." [Emphasis supplied.]

manner

***

On that point, Roux urges the board erred in concluding that Clairol's use of its slogan has fully complied with that provision of § 45. There is no suggestion in the evidence, Roux argues, that the pointof-sale display cards on which Crairol placed its slogan were actually used in association with the goods. It further contends:

That the language used in the definition in section 45 requires something more than a mere advertisement and necessarily must consist of something directly associated with the goods is apparent both from the language of the statute and the nature of trademark use. Otherwise, any advertisement which might be displayed in a shop would constitute trademark use.

[9] However true the latter contention may be,13 Roux's argument consistently overlooks paragraph 11 of Clairol's stipulated testimony 1 and its accompanying photographic exhibits, particularly exhibit items 5L2-5L4 and 5M. Those items, among others, were stipulated to be "typical of the many different displays of the same general

12 The record does show that Clairol has included the slogan on the direction sheet packed in each container of its "Miss Clairol" hair tint products since about March 1965. 13 See Powermatics, Inc. v. Globe Roofing Products Co., Inc., 52 CCPA 950, 341 F. 2d 127, 144 USPQ 430 (1965).

14 That paragraph reads:

11. Applicant's Exhibit 5 accompanying this stipulation is a collection of pointof-sale displays for the Miss Clairol Hair Color Bath hair tints, which show the slogan here opposed. Such displays have been prepared and distributed by applicant and its predecessor from time to time during the period from May 1956 to the present. Each such distribution has involved large quantities of the display pieces concerned, in the tens of thousands for each distribution. Such distributions have covered beauty salons and retail outlets throughout the country, and the items so distributed have been and are being displayed in such salons and retail outlets, where the Miss Clairol hair tints have been and are being used and sold. The copyright notice years shown on various items in Applicant's Exhibit 5 identify the respective years when the items were first distributed. The point-of-sale displays which comprise Applicant's Exhibit 5 are identified in the list which is Applicant's Exhibit 5-A. Such displays are only a few examples which are typical of the many different displays of the same general character which were distributed to and displayed and used in beauty salons and retail stores. During the period from May 1956 to the present there have been more than fifty (50) distributions of point-of-sale display pieces of these types, each of them prominently displaying the slogan here opposed:

HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER
KNOWS FOR SURE

The total number of all such point-of-sale pieces which have been distributed down to the present exceeds three million (3,000,000). [Emphasis supplied.]