Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/275257

 

 

This letter responds to the applicant’s communication filed on March 7, 2002.

 

The applicant has (1) amended the identification of goods, (2) responded to the Section 2(e)(1) refusal.  Item (1) is accepted.  For the following reasons, item (2) is not accepted.

 

Final Refusal Based on Section 2(e)(1) - Descriptiveness

Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), because the subject matter for which registration is sought is merely descriptive of the identified goods.

 

The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(e)(1) is maintained and made FINAL.

 

The applicant has applied to register GLOSS STIXX for cosmetics, namely, lip stick, in International Class 3.

 

The proposed mark is merely descriptive of the nature and type of the identified goods because it immediately and clearly conveys to prospective buyers that the applicant’s lip stick has a gloss effect.

 

The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).  TMEP §1209.01(b).  There is a very close relationship and similarity between lip stick and lip gloss. 

 

There is evidence to support that the proposed mark is merely descriptive for the identified goods.  The examining attorney refers to the excerpted articles from the examining attorney's search in a computerized data base in which “GLOSS STICK”  in NEWS library and US file appeared in 18 stories.  See attachments.  The following is a representative sample of the descriptive uses of the proposed mark.

 

Story 5:                        “Hot Items:  Look this fall for eye shows in ivy, black plum, smoke and vanilla and a shimmer and high shine gloss stick in 10 new shades.”  The News and Observie (Raleigh NC), Aug. 12, 2002, p. C3.

 

Story 6:                        “Cover girl Outlast All-Day Lip color two-piece color and clear gloss stick for lasting moistness.”  The News and Observer (Raleigh, NC), July 29, 2002, p. C1.

 

Story 7:                        “First you apply the liquid color with a sponge tip applicator, pretty much the same way that you put on lip gloss.  You let the color set for about a minute and then slick on a clear glossifier so that color looks fresh and not desert dry.  You’re supposed to carry the gloss stick with you to touch up during the day, but the color should last for a full eight hours.”  Chicago Tribune, June 13, 2001, p. 5.

 

Story 10:                        “The convenience store chain is attempting to woo kids with a new line of eyeshadows, lipcolors and gloss sticks called Heart & Soul.”  The Boston Herald, Oct. 26, 2000, p. 49.

 

Story 12:                        “You also can buy custom color makeup kits that include a lipstick, a gloss stick, mascara, lip liner, eyepencil, blush, eye shadow and cosmetic bag for $19.95.”  Chicago Tribune, Jan. 24, 1999, p. 5.

 

The Trademark Trial and Appeal Board has held that materials obtained through computerized text searching are competent evidence to show the descriptive use of terms under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1).  In re National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984).

 

The fact that the applicant spells “sticks” as “STIXX” does not make the mark inherently distinctive.  They are phonetic equivalents.  The fact that a term is not found in the dictionary is not controlling on the question of registrability.  In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977).  TMEP §1209.03(b). 

 

Because the merely descriptive nature of the applicant’s mark precludes the consumer from identifying the source of the goods and differentiating them from those of others, the refusal to register the mark under Section 2(e)(1) is continued and made FINAL.

 

Proper Response to Final Action - Substantive Refusal or Requirement

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

 

 

 

 

/Sophia S. Kim/

Examining Attorney

Law Office 106

703-308-9106 x236

703-308-7192 fax

sophia.kim@uspto.gov - for inqueries

 

 

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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.