UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/152454
APPLICANT: Helen of Troy Texas Corporation
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CORRESPONDENT ADDRESS: Stewart L. Gitler Hoffman, Wasson & Gitler, P.C. Suite 522 2361 Jefferson Davis Highway Arlington VA 22202 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom113@uspto.gov
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MARK: ION
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: sgitler@hwglw.com |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/152454
The Office has reassigned this application to the undersigned examining attorney.
The assigned examining attorney has reviewed the statement of use filed on October 7, 2003 and determined the following:
Upon further review of the application, specimens and evidence, the examining attorney reinstates the refusal under Section 2(e)(1) for the mark being merely descriptive when used in relation to the identified goods.
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.
A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods/services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).
The applicant applied to register the mark ION for “electric hair curling irons and hand held electric hot air brushes” and for “hand held electric hair dryers.”
The applicant’s mark is merely descriptive because it immediately conveys to prospective consumers a feature of the goods, namely, hair dryers, blowers and other hair styling products utilizing ions or negative ions. See attached articles from the Lexis-Nexis database evincing the descriptive nature of the term ION in relation to hair drying and styling products. Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1).
The applicant should also note the following additional ground for refusal.
Mark does not Function: Improper Specimen of Use for Goods (SOU) – International Class 9
The Examining Attorney refuses registration because the proposed mark does not function as a trademark in relation to the goods in International Class 9. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127. The proposed mark neither identifies and distinguishes those goods from those of others nor indicates their source. In Re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987). TMEP §§1202 et seq. Please note that the proposed mark does not function as a trademark in Class 9 because the specimen submitted with the statement of use is unacceptable as evidence of actual trademark use; therefore, the proposed mark cannot identify and distinguish the applicant's goods from those of others nor indicate their source.
The specimen is unacceptable as evidence of actual trademark use because the mark is used strictly to identify a “feature of” or technology incorporated in, the hand-held styler. Specifically, the term ION in the phrase “featuring ION/CERAMIC TECHNOLOGY” does not function as a source indicator.
The applicant must submit a specimen showing the mark as it is used in commerce. 37 C.F.R. §§2.56 and 2.88(b)(2). Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging. TMEP §§904.04 et seq. The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use. 37 C.F.R. §2.59(b); TMEP §§904.09 and 1109.09(b).
If an amendment of the dates-of-use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. §2.20. 37 C.F.R. §2.71(c); TMEP §§903.05 and 1109.09(a).
Pending an adequate response to the above, the examining attorney refuses registration under Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127, because the record does not show use of the proposed mark as a trademark.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issues:
In order to allow for proper examination of this application, including the final determination as to whether the mark is merely descriptive in relation to the goods, the applicant must submit samples of advertisements or promotional materials for the goods or, if unavailable, for goods of the same type. If such materials are not available, the applicant must describe the nature, purpose and channels of trade of the goods identified in the application. In addition, the applicant must state whether the mark has any meaning in relation to the goods. 37 C.F.R. Section 2.61(b); TMEP sections 814.
Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class. The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Michael Kazazian/
Trademark Examining Attorney
Law Office 113
(703) 308-9113 ext. 207
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
MAIL-IT REQUESTED: DECEMBER 9, 2003 10083K
CLIENT:
LIBRARY: NEWS
FILE: ALLNWS
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
"ION DRYERS"
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 16
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
2-3,5
DISPLAY FORMAT: 30 VAR KWIC
SEND TO: KAZAZIAN, MICHAEL
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
**********************************05825**********************************
Copyright 2002 Chattanooga Publishing Company
Chattanooga Times Free Press (Tennessee)
October 30, 2002 Wednesday
SECTION: LIFESTYLE; Pg. E1
LENGTH: 780 words
HEADLINE: The cutting edge of extreme hair care
BYLINE: Jan Galletta Staff Writer
BODY:
... in it for 72 hours," she said. "That leaves a dent."
Touch-ups to new hair growth may be needed six to eight months later. And while the salon fee may be prohibitive to some patrons, it includes an ion dryer, which further promotes the satiny texture the straightening process achieves, according to Ms. Arendale.
Embracing the Bridge Salon's new regime may entail a considerable financial commitment, too, according to Mr. Atkins. He said the program pairs products and treatments devised ...
Copyright 2002 The Japan Times Ltd.
The Japan Times
August 18, 2002, Sunday
LENGTH: 859 words
HEADLINE: Shopping for invisible assets
BODY:
... healthy hair by drying it with negative ions."
And sure enough, a shopper from Saitama Prefecture who was browsing through the products said she planned to buy one because her friend said her hair has "turned more beautiful" after using the negative-ion dryer.
Although figures are not yet available for the value of the negative-ion products market nationwide, store operators are in unanimous agreement that the products have helped to boost their sales in the past year. And according to industry sources, hair dryers - whose sales ...
Copyright 2002 Gale Group, Inc.
ASAP
Copyright 2002 Racher Press, Inc.
Chain Drug Review
June 24, 2002
SECTION: No. 11, Vol. 24; Pg. 80; ISSN: 0164-9914
IAC-ACC-NO: 88586583
LENGTH: 674 words
HEADLINE: Conair extends personal care appliance lines; Marketplace 2002/Corporate Profiles; Conair Corp., electronic hair care equipment, home spa equipment; Brief Article
BODY:
Ion dryers form the fastest-growing specialty segment of the hair care appliance market, according to vice president of new product development Marty Cohen. And, in contrast to competing products, Conair's dryers allow users to see the ports that emit ions, he notes.
...
MAIL-IT REQUESTED: DECEMBER 9, 2003 10083K
CLIENT:
LIBRARY: NEWS
FILE: ALLNWS
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
"ION HAIR DRYERS"
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 25
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
5,7,10,14,25
DISPLAY FORMAT: 30 VAR KWIC
SEND TO: KAZAZIAN, MICHAEL
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
**********************************05880**********************************
Copyright 2003 The Korea Herald
THE KOREA HERALD
January 8, 2003, Wednesday
LENGTH: 120 words
HEADLINE: Negative ion hair dryer from Shinwoo Good Item Co.
BODY:
Shinwoo Good Item Co. has produced a "negative ion" hair dryer that the manufacturer says "will moisturize the follicles of your hair rather than steaming away moisture from your hair."
Copyright 2002 Plain Dealer Publishing Co.
Plain Dealer (Cleveland, Ohio)
October 23, 2002 Wednesday, Final / All
SECTION: ARTS & LIFE; Pg. E6
LENGTH: 558 words
HEADLINE: Hair stylin' with ion
BYLINE: Roxanne Washington, Plain Dealer Reporter
BODY:
The word in hair care these days is "ion."
Ion hair dryers are said to dry hair in half the usual time, even though they emit less heat, and leave the hair straighter and shinier than traditional blow dryers.
Makers of ion hair brushes claim that they strengthen and tighten damaged hair shafts and even ...
Copyright 2002 Gale Group, Inc.
ASAP
Copyright 2002 Racher Press, Inc.
Chain Drug Review
June 24, 2002
SECTION: No. 11, Vol. 24; Pg. 80; ISSN: 0164-9914
IAC-ACC-NO: 88586583
LENGTH: 674 words
HEADLINE: Conair extends personal care appliance lines; Marketplace 2002/Corporate Profiles; Conair Corp., electronic hair care equipment, home spa equipment; Brief Article
BODY:
STAMFORD, Cairn. -- A host of innovative products from Conair Corp. promise continued growth for retailers in the hair care appliance, grooming and home spa categories.
The success of the supplier's ion hair dryers has led to the launch of the Conair 1,875-watt Ion Shine quiet dryer with two ionic ports. The double-port design is said to double ionic energy output with the promise of keeping hair shiny and healthy looking.
Copyright 2002 Gale Group, Inc.
ASAP
Copyright 2002 Fairchild Publications, Inc.
HFN The Weekly Newspaper for the Home Furnishing Network
January 14, 2002
SECTION: Pg. 115 ; ISSN: 1082-0310
IAC-ACC-NO: 82548763
LENGTH: 1604 words
HEADLINE: PERSONAL CARE VENDORS GROOMED FOR BUSINESS; exhibitors at International Housewares Show
BODY:
... products for the line.
New paraffin baths with a brand new color scheme are here from Revlon Spa. The baths feature advanced heating technology, resulting in fully heated wax in 50 to 60 minutes.
Due to the success of its initial ion hair dryers, seven new products are being added to HoT's ion lineup. Many additions come to the Vidal Sassoon brand, but the company is adding ion technology to its Revlon hair dryers as well.
For the Dr. Scholl's brand the focus is on its memory ...
Copyright 2000 Information Access Company,
a Thomson Corporation Company;
ASAP
Copyright 2000 Latina Publications LLC
Latina
May 1, 2000
SECTION: No. 11, Vol. 4; Pg. 38 ; ISSN: 0288-8661
IAC-ACC-NO: 61791648
LENGTH: 1329 words
HEADLINE: notas de belleza; TT: Beauty tips.
BODY:
... St., New York City
Why: Victor Palacio, a jack-of-all-trades, is skilled not only in hair coloring, styling, and cutting but also in makeup. In addition, he provides a great blow-out with his secret tool, the ion hair dryer, which utilizes ions and oxygen to give a smooth, slick finish. How did he become proficient in all things beauty? Practicing on his five sisters while growing up in Colombia came in handy. Y.A.
Sal n ...