XL BBL and Petite BBL are generic for what you think they're generic for

Andre P. Marshall, M.D. Inc. v. Squlpt Management, LLC, 2025 WL 2025000, No. 2:24-cv-01784-SB-AS (C.D. Cal. Jul. 14, 2025)

The interesting false advertising component of this case doesn’t get resolved on summary judgment, but we do get a finding that XL BBL and Petite BBL are generic terms for Brazilian butt lifts,” cosmetic surgical procedures that enhance the size and shape of the buttocks by transferring fat from other areas of the body, as applied to procedures that move more or less fat than average. Defendants (SML) had a registered trademark for “XL BBL” for medical procedures and applications for “Petite BBL” published for opposition (plaintiff APM opposed). APM sought cancellation of the XL registration and rejection of the Petite applications (now ok in the 9^th Circuit) and also asserted false advertising claims; defendants counterclaimed for infringement.

Defendants claimed first use of Petite BBL in September 2020 and XL BBL in February 2021. The parties offer cosmetic surgery services in the Los Angeles area. APM began using the term Petite BBL on Instagram in June 2019, before SML applied to register it as a mark. After the USPTO approved the Petite BBL mark for publication, one defendant, “mistakenly believing the mark had been registered,” sent cease and desist messages to APM’s owner requesting that APM stop using “Petite BBL.” This suit followed.

The false advertising allegations were that defendants digitally altered before-and-after photographs of patients in a way that misleads consumers. Initially, defendants only produced one photo in discovery, arguing that they hadn’t edited any others; later, after the court said that wasn’t good enough, they produced over 86,000, in no particular order/unconnected with any ads; this also wasn’t good enough. Plaintiffs got fees connected to this dispute.

Standing as to the XL BBL term: APM didn’t use it in its business, so did the registration cause it to suffer an injury in fact? “In declaratory judgment actions involving trademark infringement, a plaintiff has standing if it demonstrates ‘a real and reasonable apprehension that [it] will be subject to liability if [it] continues with [its] course of conduct.’” APM’s owner offered a declaration that he had intended to and was ready to use the XL BBL mark before the complaint was filed but “held back from using the term out of fear of litigation.” This fear was reasonable given that SML (1) sent text messages to APM requesting that it remove “Petite BBL” from its Instagram posts; and (2) reported APM’s alleged infringement of the Petite BBL mark to Instagram and requested that the account be permanently removed. “It is not unreasonable to assume that using the ‘XL BBL’ mark would have prompted a similar response—or even a stronger one, since SML had a registration for XL BBL, unlike for Petite BBL.”

Merits: SML argued that the terms were suggestive. They were not. A generic mark answers the question “What are you?” whereas a distinctive, protectable mark answers the questions, “Who are you?” “Where do you come from?” and “Who vouches for you?”

Registration is “prima facie evidence of the mark’s validity and entitles the registrant to a strong presumption that the mark is protectable.” APM met its burden of showing genericity of XL BBL, while SML didn’t prove that the unregistered Petite BBL mark was protectable.

Starting with BBL, that term on its own was “undisputedly generic” and indeed disclaimed by SML. “The only question is whether the use of Petite and XL—common size descriptors—before BBL render the entire descriptions nongeneric. APM has submitted extensive evidence, both predating and postdating SML’s application, that the size descriptors do not have this effect.” The court noted that, when a term is “born generic,” evidence from any time period may be relevant, but even if evidence from after APM entered the market wasn’t relevant, APM would still prevail.

The evidence included third party doctors describing their uses, demonstrating “that consumers, medical professionals, and Defendants themselves use Petite and XL BBL generically to describe the amount of fat transferred.” Defendants’ own generic use showed that the terms weren’t suggestive; they described Petite BBL as appropriate for women with a “smaller frame” and a “20–33 BMI” and XL BBL as appropriate for women with a “medium or full-figured frame” and a “28–35 BMI.” “Indeed, it takes no imagination to understand that ‘Petite’ and ‘XL’ refer to the size of the fat transfer in a BBL procedure.”

Defendants’ only rebuttal evidence was “conclusory testimony” that the terms were suggestive.

Even if the terms were descriptive, there wasn’t a fact issue on secondary meaning. There was no consumer testimony (direct evidence). Defendants’ evidence was that they spent $2.5 million in advertising Petite BBLs and received $16.7 million in revenue for Petite BBLs and $4.6 million in revenue for XL BBLs. That didn’t create a genuine factual dispute. “Merely citing to advertising expenditures over a period of a few years—without providing any detail about the marketing efforts or any evidence of whether they created an association between the marks and their services—proves little. The same is true for sales revenues.” No reasonable juror could find protectability.

False advertising:  APM alleged that defendants altered the “after” photographs by removing scarring from the surgical incision points and airbrushing cellulite and stretchmarks. APM sought only injunctive relief. But it didn’t explain which specific ads had false alterations. Collective treatment of the ads, under the circumstances, wasn’t appropriate. E.g., “some of the before-and-after advertisements, for example, specifically address scarring, while others do not.” So there’d be a trial.