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  76/527507

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Office Search

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Refusal to Register - Merely Descriptive

 

The mark combines terms that describe the features and functions of applicant’s cosmetics and skin care products, namely, that they condition the skin and make it look as the skin does after salon studio care and treatments.  Whether or not the products actually achieve “studio” results, consumers’ decision to purchase applicant’s goods will be influenced by their perception that the products are capable of helping them to achieve skin care and appearance similar to that provided by professional skin care studios.  See attached definitions and selected excerpts from the Lexis/Nexis database.  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).

 

It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods to be merely descriptive.  It is enough if the term describes one attribute of the goods.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).  TMEP §1209.01(b). 

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Identification of Goods Amendment Required

 

The identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the common commercial names of the goods and arrange them by proper classification in ascending numerical order by international class.  If there is no common commercial name, the applicant must describe the product and its intended use.  TMEP §§1402.01, 1402.03, 1402.04(b) and 1402.11.  The applicant may access the Office’s Acceptable Identification of Goods and Services Manual at: http://www.gov.uspto.report/web/offices/TAC/doc/gsmanual.

 

Please 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 applicant may adopt the following identification, if accurate: 

 

Class 3:  Cosmetics, and skin care products, namely (identify the products by common commercial names, e.g., skin cream, skin lotion, skin moisturizer, skin soap, non-medicated skin care preparations, etc.)

 

Disclaimer Required

 

The applicant must disclaim the descriptive wording “SKIN” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive of applicant’s cosmetics and skin care products which are used for the skin.  See attached definitions.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use “SKIN” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Please submit all email communications to ecom106@uspto.gov unless otherwise instructed by the Examining Attorney.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

                                                            Barbara A. Gold

/Barbara A. Gold/

Examining Attorney

Law Office 106

703/ 308-9106 (140)

703/ 683-8547 (home office)

ecom106@uspto.gov

 

 

 

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.

 

 

                                                ******************************* 

 

 

3 of 8 DOCUMENTS

 

Copyright 1996 UMI, Inc.; ABI/INFORM

 

Copyright Advanstar Communications 1996

 

Drug & Cosmetic Industry

 

October 1996

 

SECTION: Vol. 159, No. 4 Pg. 12-19; ISSN: 0012-6527; CODEN: CPSEDU

 

LENGTH: 2120 words

 

HEADLINE: Italian beauty biz: More color in 1997

 

BYLINE: Barone, Amy B

 

BODY:

...launched his first makeup line at Cosmoprof in 1981. Named for his Milan-based beauty workshop, Makeup Studio, the line was followed by fragrance, skin care, body care, and sun care entries, although color cosmetics and professional training remain his domain.

According ing to a company spokeswoman, Dalla Palma does not follow seasonal trends strictly. ...

 

 

6 of 8 DOCUMENTS

 

Copyright 1996 Information Access Company, a Thomson Corporation Company

 ASAP

Copyright 1996 Advanstar Communications Inc. 

Drug & Cosmetic Industry

 

June, 1996

 

SECTION: Vol. 158 ; No. 6 ; Pg. 46; ISSN: 0012-6527

 

LENGTH: 2027 words

 

HEADLINE: Updating the trends in skin care and color cosmetics.

 

BYLINE: Sargisson, Susan

 

BODY:

...months. In the main, these represent new companies, rather than new lines from existing companies. Many are connected to or influenced by "professionals," i.e., makeup artists, studios/day spas and, especially in skin care, physicians. These brands come to the market backed by built-in credibility that presents serious competition to the traditional cosmetics ...

 

 

 

8 of 8 DOCUMENTS

 

Copyright 1989 Little Rock Newspapers, Inc. 

Arkansas Democrat-Gazette (Little Rock, AR)

 

March 19, 1989, Sunday

 

LENGTH: 832 words

 

HEADLINE:  Estee Lauder's Williams begins working on Alesa Davis.

 

BODY:

...not color. If you want a makeover, one of our beauty advisers is equipped to help you there," she said.

Williams said the concept of a skin care studio was conceived to encourage women to have professional treatments on a regular basis.

" We want you to think of me as you would your hairdresser or manicurist so that you'll make regular appointments and ...