| To: | Physicians Formula, Inc. (admin@rubelmann.com) |
| Subject: | TRADEMARK APPLICATION NO. 77101667 - PHYSICIANS FORMULA - N/A |
| Sent: | 11/9/2007 9:48:32 AM |
| Sent As: | ECOM107@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/101667
MARK: PHYSICIANS FORMULA
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Physicians Formula, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 11/9/2007
This letter responds to applicant’s communication filed on September 11, 2007.
The following requirements have been satisfied and entered into the record: (1) modification of drawing; (2) amendment to identification; and (3) addition of classification. TMEP §714.04.
However, upon further review of the application, the trademark examiner has decided to issue the following refusal:
Registration Refused – Mark is Merely Descriptive
Registration is refused because the proposed mark merely describes a characteristic of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.
A term is merely descriptive if it conveys an immediate idea of the ingredients, qualities, or characteristics of the identified goods or services. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); Goodyear Tire & Rubber Co. v. Cont’l Gen. Tire, Inc., 70 USPQ2d 1067, 1069 (TTAB 2003); In re TMS Corp. of Ams., 200 USPQ 57, 58 (TTAB 1978).
A mark that combines descriptive terms may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning. In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382 (C.C.P.A. 1968) (holding SUGAR & SPICE not to be merely descriptive of bakery products). However, the mere combination of descriptive words does not automatically create a new nondescriptive word or phrase. E.g., In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) (finding GROUP SALES BOX OFFICE descriptive for theater ticket sales services). The registrability of a mark created by combining only descriptive words depends on whether a new and different commercial impression is created, and/or the mark so created imparts an incongruous meaning as used in connection with the goods and/or services. Where, as in the present case, the combination of the descriptive words creates no incongruity, and no imagination is required to understand the nature of the goods and/or services, the mark is merely descriptive. E.g., In re Copytele Inc., 31 USPQ2d 1540, 1542 (TTAB 1994); Associated Theatre Clubs, 9 USPQ2d at 1662.
Applicant’s mark is PHYSICIANS FORMULA. According to the attached Internet dictionary evidence, “physician” is defined as “a person who heals or exerts a healing influence” and “formula” is defined as “a prescription of ingredients in fixed proportion; a recipe.” See The American Heritage Dictionary of the English Language. (4th Ed. 2000). When combined together and used in connection with applicant’s cosmetic goods, the phrase implies that the cosmetics composed of ingredients recommended by a doctor. A potential consumer would view the mark and immediately perceive it as being descriptive of a characteristic of the cosmetics, namely, that it is in some way beneficial for the skin because it contains doctor-recommended ingredients. As such, the mark is descriptive of the goods and is refused registration on the Principal Register under Trademark Act Section 2(e)(1).
Although the trademark examiner has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Applicant should note the following advisory:
Applicant May Claim Acquired Distinctiveness Under Section 2(f)
Applicant may seek Principal Register registration under Trademark Act Section 2(f), 15 U.S.C. §1052(f), by claiming acquired distinctiveness through ownership of U.S. Registration 1187307. To do so, applicant must submit the following statement, if accurate:
The mark has become distinctive of the goods and/or services as evidenced by ownership of U.S. Registration 1187307 on the Principal Register for the same mark for related goods or services.
37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examiner directly at the number below.
/Julie Thomas/
Trademark Examiner
Law Office 107
Phone: (571) 272-3692
Fax: (571) 273-3692
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as 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.
