Offc Action Outgoing

Applicant has applied for registration of the proposed mark CANDY LIP GLOSS for goods described as “confectionery drops, boiled sweets, lollipops of any kind, pastilles, bubble gum, chewing gum, jelly beans, licorice, chocolate, marzipan, ice cream, ice lollies, candy strips, liquid candy, candy gel, marshmallows, candy foam, candy powder, biscuits, cakes, pastry; sweets, namely, candies, gum sweets, sugarfree sweets; chewing gum, wine gum; candies containing jelly, fruit jellies; candies containing juice; candies containing liquid; candies containing gel.”

In its response, applicant argues that the mark is not merely descriptive in that the mark “does not immediately convey an idea of the qualities or characteristics of Applicant's goods as applied to those goods”; that “the mark ‘CANDY LIP GLOSS’ requires mature thought and imagination in order to determine what features or characteristics Applicant's goods possess, even if Applicant packages some of its candy in a container that appears to be a cosmetics container” and that “the present application is not one for trade dress or packaging protection”; that “goods at issue are not packaging [but] [r]ather the goods are candy and other treats and confections” and that “even if Applicant's ‘CANDY LIP GLOSS’ treats are packaged in cosmetics containers, a consumer of Applicant's goods, upon encountering the mark ‘CANDY LIP GLOSS’, would not immediately know that the goods are candy, and upon seeing a cosmetics package, would likely question, ‘Is this make-up? Or candy? Or both?’” and that “that act of questioning itself renders Applicant's mark suggestive.” Applicant has also requested a withdrawal of the allegation of use and to proceed under the original Section 1(b), intent-to-use basis. The trademark examining attorney has carefully considered applicant’s arguments, but finds them unpersuasive.

First, it must be noted outright that applicant may not withdraw the statement of use. TMEP section 1109.17 states, in pertinent part:

“Once an applicant has filed a statement of use, the applicant may not withdraw the statement of use, even if the Office determines that the statement of use does not comply with the minimum filing requirements. 37 C.F.R. §2.88(g). In re Informix Software, Inc., 32 USPQ2d 1861 (Comm’r Pats. 1993). Thus, an applicant may not amend the basis from §1(a) to §1(b) after a statement of use has been filed.”

Therefore, applicant’s request to withdraw the statement of use and proceed under the original Section 1(b) basis is inappropriate and denied.

It is well settled that the determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract. In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (finding DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (finding CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). “Whether consumers could guess what the product is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). That is, mere descriptiveness is determined from the viewpoint of the relevant consumer of applicant’s particular goods – not from the viewpoint of someone who views the mark in a vacuum, out of the context of the goods.

That is, applicant’s argument that even if some of its goods are sold in cosmetics-like containers a consumer would not understand what the goods were, is not persuasive. The goods are likely sold with other candy products, and the relevant consumer is one who is in the market for candy and probably specifically novelty candy such as applicant’s. It is not far fetched that a consumer would know, immediately and without thought or conjecture, that applicant’s CANDY LIP GLOSS is candy in the shape/form of a lip gloss.

Additionally, it has also been found by the USPTO Board that a term that describes the shape or form of a product is merely descriptive. In re Metcal Inc., 1 USPQ2d 1334 (TTAB 1986) (holding SOLDER STRAP merely descriptive of self regulating heaters in the form of flexible bands or straps); In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982) (holding TOOBS merely descriptive of bathroom and kitchen fixtures in the shape of tubes). Therefore, applicant need not be applying for the ‘packaging’, per se, of the goods for the mark CANDY LIP GLOSS to be merely descriptive of those goods. The fact that applicant’s candy is in the shape of a lip gloss is enough to find the mark is merely descriptive of those goods.

A mark is suggestive if some imagination, thought or perception is needed to understand the nature of the goods and/or services described in the mark; whereas a descriptive term immediately and directly conveys some information about the goods and/or services. In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005); TMEP §1209.01(a); see In re Shutts, 217 USPQ 363, 364 (TTAB 1983).

In the present case, there is no imagination, thought or perception needed to understand that applicant’s proposed mark CANDY LIP GLOSS merely describes candy that is in the form of lip gloss. One glance at the specimen of record clearly shows that the wording CANDY LIP GLOSS immediately and directly conveys to the prospective consumer that the goods are, indeed, candy in the form of a lip gloss.

Accordingly, based on the arguments above, the proposed mark CANDY LIP GLOSS is clearly merely descriptive of the goods and the refusal of registration on the Principal Register under Section 2(e)(1) is proper and is made FINAL.

RESPONSE GUIDELINES – FINAL REFUSAL

If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:

(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).

/Martha Santomartino/

Martha Santomartino

Trademark Attorney

Law Office 112 - USPTO

Martha.Santomartino@uspto.gov (for questions)

571-272-9416

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.