| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 76646306 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
| This is in response to the Office Action dated March 8, 2008, which issued in connection with the above-identified application. REMARKS Applicant wishes to withdraw the previously filed amendment to allege use, and proceed under the original Section 1(b) basis. The Examining Attorney has refused registration of Applicant's mark on the Principal Register under Section 2(e)(1) of the Trademark Act on the basis that the mark is merely descriptive of the services. It is the Examining Attorney's position that, in view of the previously submitted specimen, the mark "CANDY LIP GLOSS" (also referred to as "Applicant's Mark") immediately describes a characteristic of Applicant's proposed goods. In view of the following remarks, Applicant respectfully submits that Applicant's Mark is not merely descriptive under Section 2(e)(1) when considered in connection with Applicant's proposed goods. As the Board stated in In re The Rank Organization Limited, 222 USPQ 324 (TTAB 1984): Whether or not a term is merely descriptive in a trademark sense must be considered in relation to the goods for which registration is sought, the context in which it is used on labels, packages, or advertising material directed to these goods, and the likely reaction thereto by the average purchaser as he or she encounters the goods in the marketplace [citations omitted]... As a general rule, if a mark imparts or conveys an immediate idea of the qualities or characteristics or the goods, the term is descriptive, while the term would be considered suggestive if, as applied to the goods, it requires imagination, thought or perception to reach a conclusion as to the nature thereof. [Citations omitted].
Id. at 326. In that case, the Board held that "LASER" was registrable for high-fidelity loudspeakers that were manufactured using a laser hologram. In allowing registration, the Board stated: We conclude that the term "LASER" requires mature thought and imagination in order to determine what features or characteristics applicant's goods possess.
Id. (accord In re Hutchinson Technology, 7 USPQ2d 1490, 1493 (Fed. Cir. 1988) (In order for a mark to be deemed "merely descriptive," the term must convey an immediate idea of the "ingredients, qualities, or characteristics of the goods." (citing Abcor Dev., 200 USPQ 215, 217 (CCPA 1978)). Applicant's mark "CANDY LIP GLOSS" does not immediately convey an idea of the qualities or characteristics of Applicant's goods as applied to those goods. Applicant has previously disclaimed the term "CANDY", the sole arguably descriptive portion of Applicant's Mark. However, when viewed as a whole, even as applied to candy, Applicant's Mark does not immediately tell a consumer the precise nature of Applicant's goods, as required for a mark to be deemed merely descriptive. Applicant submits 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. The present application is not one for trade dress or packaging protection. In encountering "CANDY LIP GLOSS", one does not immediately know the characteristics of Applicant's candy. Therefore, it can in no way be said that Applicant's mark immediately conveys any idea about Applicant's goods, as is required for the mark to be deemed "merely descriptive." Any doubt as to whether a term is merely descriptive or suggestive should be resolved in favor of the applicant. In In re Intelligent Medical Systems, Inc., 5 USPQ2d 1674, 1676 (TTAB 1987), the Board remarked on a number of occasions that "there is a thin line between a suggestive and a merely descriptive designation, and where reasonable men may differ, it is the Board's practice to resolve the doubt in applicant's favor..." See also, In re The Rank Organization Ltd., 222 USPQ 324, 326 (TTAB 1984); In re J. Ray McDermott & Co., Inc., 170 USPQ 524, 525 (TTAB 1971); In re Shop-Vac Corp., 219 USPQ 470, 472 (TTAB 1983) (resolving doubts in favor of applicant and holding "WET/DRY BROOM" for electric vacuum cleaners to be suggestive, not merely descriptive); In re American Hospital Supply Corp., 219 USPQ 949, 951 (TTAB 1983) (resolving all doubts in favor of applicant and finding that "HEPATIC-AID" for nutritional supplement comprising caloric source formulation of amino acid is only suggestive); and In re Priefert Mfg. Co., Inc., 222 USPQ 731, 733 (TTAB 1984) ("HAY DOLLY" is not merely descriptive of self-loading trailers for hauling bales). Here, the goods at issue are not packaging. Rather, the goods are candy and other treats and confections. 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?" That act of questioning itself renders Applicant's mark suggestive. See, e.g., Merritt Foods Company v. Americana Submarine, 209 USPQ (BNA) 591 (TTAB 1980) ("Bomb" suggestive as applied to missile or bomb-shaped frozen confections). To be refused registration under 2(e)(1) of the Act, a mark must be merely descriptive or generic of the goods or services. The statutory language imposes a stringent burden since the term "merely" is to be taken in its ordinary meaning of "only" or "solely" -that is, when considered with the particular goods or services, the mark, because of its meaning, does nothing but describe them. As is well recognized, to be regarded as "merely descriptive," a mark must have no significance other than as a descriptive term. Blisscraft of Hollywood v. United Plastics Co., 131 USPQ 55, 60-61 (2d Cir. 1961). A suggestive mark, on the other hand, is one which "requires imagination, thought and perception to reach a conclusion as to the nature of the goods." Stix Products, Inc. v. United Merchants & Manufacturers, Inc., 160 USPQ 777, 785 (SDNY 1968). Accord, The Comic Strip, Inc. v. Fox Television Stations, Inc., 10 USPQ2d 1608, 1611 (SDNY 1989) (holding the service mark "THE COMIC STRIP" for comedy clubs suggestive and thus inherently distinctive). A mark that is "merely suggestive of a possible desirable end result" and does not describe the goods with which it is used, cannot be denied registration on the Principal Register. In re Frank J. Curran Co., 189 USPQ 560 (TTAB 1975) ("CLOTHES FRESH" for clothes and shoe deodorant held to be suggestive). "CANDY LIP GLOSS" is no more descriptive than any of the marks cited herein. See also Bellbrook Dairies, Inc. (Edlo, Inc., assignee, substituted) v. Rubin, 115 USPQ (BNA) 30 (Comm'r Pat. & Trademarks 1957) ("Slim" is suggestive when applied to skim milk, frozen desserts made from skim milk, and water ice). In fact, "CANDY LIP GLOSS" immediately conveys nothing to the consumer about the nature of Applicant's candy, such as flavor, color, taste, texture, or other truly descriptive characteristics of candy. The mark playfully suggests to consumers that Applicant's goods may be applied like cosmetics, at least in some cases. CONCLUSION In view of the foregoing, Applicant respectfully requests that the Examining Attorney pass this application to publication and, in due course, registration. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 030 |
| DESCRIPTION | |
| 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 | |
| FIRST USE ANYWHERE DATE | At least as early as 06/08/2007 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/08/2007 |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 030 |
| DESCRIPTION | |
| 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 | |
| FIRST USE ANYWHERE DATE | At least as early as 06/08/2007 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/08/2007 |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Michael F. Snyder/ |
| SIGNATORY'S NAME | Michael F. Snyder |
| SIGNATORY'S POSITION | Attorney of Record |
| DATE SIGNED | 09/08/2008 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Sep 08 13:08:37 EDT 2008 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20080908130837748310-766 46306-430c2673e273a4dbb5b 0b28bfff4c09718-N/A-N/A-2 0080908104104339955 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
This is in response to the Office Action dated March 8, 2008, which issued in connection with the above-identified application.
REMARKS
Applicant wishes to withdraw the previously filed amendment to allege use, and proceed under the original Section 1(b) basis.
The Examining Attorney has refused registration of Applicant's mark on the Principal Register under Section 2(e)(1) of the Trademark Act on the basis that the mark is merely descriptive of the services. It is the Examining Attorney's position that, in view of the previously submitted specimen, the mark "CANDY LIP GLOSS" (also referred to as "Applicant's Mark") immediately describes a characteristic of Applicant's proposed goods.
In view of the following remarks, Applicant respectfully submits that Applicant's Mark is not merely descriptive under Section 2(e)(1) when considered in connection with Applicant's proposed goods.
As the Board stated in In re The Rank Organization Limited, 222 USPQ 324 (TTAB 1984):
Whether or not a term is merely descriptive in a trademark sense must be considered in relation to the goods for which registration is sought, the context in which it is used on labels, packages, or advertising material directed to these goods, and the likely reaction thereto by the average purchaser as he or she encounters the goods in the marketplace [citations omitted]... As a general rule, if a mark imparts or conveys an immediate idea of the qualities or characteristics or the goods, the term is descriptive, while the term would be considered suggestive if, as applied to the goods, it requires imagination, thought or perception to reach a conclusion as to the nature thereof. [Citations omitted].
Id. at 326. In that case, the Board held that "LASER" was registrable for high-fidelity loudspeakers that were manufactured using a laser hologram. In allowing registration, the Board stated:
We conclude that the term "LASER" requires mature thought and imagination in order to determine what features or characteristics applicant's goods possess.
Id. (accord In re Hutchinson Technology, 7 USPQ2d 1490, 1493 (Fed. Cir. 1988) (In order for a mark to be deemed "merely descriptive," the term must convey an immediate idea of the "ingredients, qualities, or characteristics of the goods." (citing Abcor Dev., 200 USPQ 215, 217 (CCPA 1978)).
Applicant's mark "CANDY LIP GLOSS" does not immediately convey an idea of the qualities or characteristics of Applicant's goods as applied to those goods. Applicant has previously disclaimed the term "CANDY", the sole arguably descriptive portion of Applicant's Mark. However, when viewed as a whole, even as applied to candy, Applicant's Mark does not immediately tell a consumer the precise nature of Applicant's goods, as required for a mark to be deemed merely descriptive.
Applicant submits 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. The present application is not one for trade dress or packaging protection. In encountering "CANDY LIP GLOSS", one does not immediately know the characteristics of Applicant's candy. Therefore, it can in no way be said that Applicant's mark immediately conveys any idea about Applicant's goods, as is required for the mark to be deemed "merely descriptive."
Any doubt as to whether a term is merely descriptive or suggestive should be resolved in favor of the applicant. In In re Intelligent Medical Systems, Inc., 5 USPQ2d 1674, 1676 (TTAB 1987), the Board remarked on a number of occasions that "there is a thin line between a suggestive and a merely descriptive designation, and where reasonable men may differ, it is the Board's practice to resolve the doubt in applicant's favor..." See also, In re The Rank Organization Ltd., 222 USPQ 324, 326 (TTAB 1984); In re J. Ray McDermott & Co., Inc., 170 USPQ 524, 525 (TTAB 1971); In re Shop-Vac Corp., 219 USPQ 470, 472 (TTAB 1983) (resolving doubts in favor of applicant and holding "WET/DRY BROOM" for electric vacuum cleaners to be suggestive, not merely descriptive); In re American Hospital Supply Corp., 219 USPQ 949, 951 (TTAB 1983) (resolving all doubts in favor of applicant and finding that "HEPATIC-AID" for nutritional supplement comprising caloric source formulation of amino acid is only suggestive); and In re Priefert Mfg. Co., Inc., 222 USPQ 731, 733 (TTAB 1984) ("HAY DOLLY" is not merely descriptive of self-loading trailers for hauling bales).
Here, the goods at issue are not packaging. Rather, the goods are candy and other treats and confections. 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?" That act of questioning itself renders Applicant's mark suggestive. See, e.g., Merritt Foods Company v. Americana Submarine, 209 USPQ (BNA) 591 (TTAB 1980) ("Bomb" suggestive as applied to missile or bomb-shaped frozen confections).
To be refused registration under 2(e)(1) of the Act, a mark must be merely descriptive or generic of the goods or services. The statutory language imposes a stringent burden since the term "merely" is to be taken in its ordinary meaning of "only" or "solely" -that is, when considered with the particular goods or services, the mark, because of its meaning, does nothing but describe them. As is well recognized, to be regarded as "merely descriptive," a mark must have no significance other than as a descriptive term. Blisscraft of Hollywood v. United Plastics Co., 131 USPQ 55, 60-61 (2d Cir. 1961).
A suggestive mark, on the other hand, is one which "requires imagination, thought and perception to reach a conclusion as to the nature of the goods." Stix Products, Inc. v. United Merchants & Manufacturers, Inc., 160 USPQ 777, 785 (SDNY 1968). Accord, The Comic Strip, Inc. v. Fox Television Stations, Inc., 10 USPQ2d 1608, 1611 (SDNY 1989) (holding the service mark "THE COMIC STRIP" for comedy clubs suggestive and thus inherently distinctive). A mark that is "merely suggestive of a possible desirable end result" and does not describe the goods with which it is used, cannot be denied registration on the Principal Register. In re Frank J. Curran Co., 189 USPQ 560 (TTAB 1975) ("CLOTHES FRESH" for clothes and shoe deodorant held to be suggestive).
"CANDY LIP GLOSS" is no more descriptive than any of the marks cited herein. See also Bellbrook Dairies, Inc. (Edlo, Inc., assignee, substituted) v. Rubin, 115 USPQ (BNA) 30 (Comm'r Pat. & Trademarks 1957) ("Slim" is suggestive when applied to skim milk, frozen desserts made from skim milk, and water ice). In fact, "CANDY LIP GLOSS" immediately conveys nothing to the consumer about the nature of Applicant's candy, such as flavor, color, taste, texture, or other truly descriptive characteristics of candy. The mark playfully suggests to consumers that Applicant's goods may be applied like cosmetics, at least in some cases.
CONCLUSION
In view of the foregoing, Applicant respectfully requests that the Examining Attorney pass this application to publication and, in due course, registration.