UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/443693
APPLICANT: BEN'S BEAUTY SUPPLY DIST.
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CORRESPONDENT ADDRESS: DAVID S. YOON BEN'S BEAUTY SUPPLY DIST. 5631 HARTSDALE DR. HOUSTON, TX 77036
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom106@uspto.gov
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MARK: PURESILK
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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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 76/443693
The assigned examining attorney has reviewed the referenced application and determined the following.
TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 1,956,686 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978). TMEP §§1207.01 et seq.
In the instant case, the applicant seeks registration of the wording “PURESILK” for hair and skin care products, namely, shampoo, conditioner, styling gel, hair pomade, hair treatment products and skin creams. The cited registered mark is “PURE SILK,” in typed form, for women’s shaving cream.
The proposed and cited marks are essentially identical in sound, appearance and commercial impression. If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981). TMEP §1207.01(a).
Moreover, the goods on which the parties marks are used are very closely related and could be found in the same channels of trade. As evidence of the relatedness of the goods, the examining attorney refers to the attached sampling of third party registrations in which marks are registered for use on goods such as those offered under both the applicant’s and registrant’s marks.
The goods of the parties need not be identical or directly competitive to find a likelihood of confusion. They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source. In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Therefore, with the contemporaneous use of both marks, consumers are likely to mistakenly believe the goods are related and originate from a common source.
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.
The applicant should also note the following additional ground for refusal.
TRADEMARK ACT SECTION 2(e)(1) REFUSAL – MARK IS MERELY DESCRIPTIVE
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. §1052(e)(1); TMEP §§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. 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 seeks registration of “PURESILK” for hair and skin care products, namely, shampoo, conditioner, styling gel, hair pomade, hair treatment products and skin creams.
“Silk” is commonly used as an ingredient in cosmetics and beauty products. The examining attorney refers to the attached sampling of articles from the Lexis/Nexis® database as evidence of the descriptiveness of “silk” in relation to goods such as those offered by the applicant. 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. §1052(e)(1). In re National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984).
“Pure” is defined as, in part, “free from adulterants or impurities.” The American Heritage® Dictionary of the English Language, (3rd ed. 1992).
It is likely the applicant’s goods, or the goods which the applicant’s mark will certify, will feature “pure silk” as an ingredient. Accordingly, the proposed mark is merely descriptive of the goods and must be refused registration under Section 2(e)(1).
Amendment to the Supplemental Register: Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. §1051(b), is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88 has been timely filed. 37 C.F.R. §2.47(c); TMEP §815.02, 816.02 and 1102.03. When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use. 37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.
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 informalities.
In order to allow for proper examination of the 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 ingredients used in the applicant’s goods, or in the goods which the applicant’s mark will certify, will feature silk or any form thereof. 37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).
It appears that the applicant has filed on the wrong form and that the applicant intended to file an application for a trademark as opposed to a certification mark.
If the applicant did intend to seek registration of a trademark, then the applicant must complete the enclosed form and adopt the changes required in the Office action. At the top of the form, insert “SUBSTITUTE PAPERS FOR APPLICATION SERIAL NO. 76/443693.” No additional fee is required unless the applicant amends the application to add an international class.
CERTIFICATION STATEMENT OMITTED – CERTIFICATION MARK APPLICATION
If the applicant did, in fact, intend to seek registration for a certification mark, as opposed to a trademark, then the applicant must submit a certification statement identifying the characteristic, standard, or other feature that is certified or intended to be certified by the mark. TMEP section 1306.06(g)(i).
The statement may begin with the wording, “The certification mark, as intended to be used by authorized persons, certifies _____________________ (list all of the characteristics or features that the mark will certify).” Id.
Identification for a trademark: The wording “hair treatment products” in the identification of goods is unacceptable as indefinite for a trademark application. The applicant may adopt the following identification, if accurate: “hair and skin care products, namely, shampoo, conditioner, styling gel, hair pomade, non-medicated hair treatment preparations, and skin creams,” in International Class 3. TMEP §1402.01.
Please note that, if the applicant’s “hair treatment products” are actually “medicated hair treatment preparations” then they will be classified in International Class 5. In this instance, the applicant will be required to either delete the goods or add a class to the application. See the following section regarding multiple class applications.
Identification for a certification mark: If the applicant is in fact, seeking registration of a certification mark, then the language is acceptable as is, however applicant must amend the application to classify the goods in International Class A.
Additions not allowed: Please also note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.
The application identifies goods that may be classified in several international classes. Therefore, the applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.
Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date. 37 C.F.R. §2.6(a)(1).
If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.
(1) The applicant must list the goods by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
The drawing is unacceptable because the mark is presented in handwritten form as opposed to typed form. TMEP section 807.06. The applicant must submit a substitute drawing depicting the mark in typed form. The mark must be typed entirely in capital letters, without spaces between the letters. 37 C.F.R. §2.52; TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.06.
Please note that, if the applicant actually intended to seek registration of a special form mark, then the applicant must submit a drawing depicting the mark as it will appear on the specimen of use. TMEP section 807.14.
The requirements for a special‑form drawing are as follows:
(1) The drawing must appear in black and white; no color is permitted.
(2) Every line and letter must be black and clear.
(3) The use of gray to indicate shading is unacceptable.
(4) The lining must not be too fine or too close together.
(5) The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide. It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.
(6) If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.
37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a). The Office will enforce these drawing requirements strictly.
The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application. 37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.
In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant’s telephone number.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Martha L. Fromm/
Trademark Attorney
Law Office 106
Phone: (703) 308-9106 ext. 221
Fax: (703) 746-8106
ecom106@uspto.gov
Fee increase effective January 1, 2003:
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 and services will be $335.00 per class for classes added on or after January 1, 2003.
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: JANUARY 26, 2003 10083K
CLIENT:
LIBRARY: NEWS
FILE: CURNWS
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
SILK W/5 HAIR
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 716
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
65,73,141,143
DISPLAY FORMAT: KWIC
SEND TO: FROMM, MARTHA
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAIL BOX 3104
ARLINGTON VIRGINIA 22202-4600
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Copyright 2002 Gale Group, Inc.
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Copyright 2002 Wilmington Publishing Ltd.
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... at least the ends. When shopping for a conditioner, look for ingredients such as protein (marine or hydrolyzed wheat), keratin, and silk--they penetrate the hair shaft and help restore what has been lost through styling. And make sure you also use a rich, creamy shampoo that contains proteins and ...
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