Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

---

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 78691057 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

                    The Examining Attorney has refused registration on the basis that the mark merely describes the goods - i.e., cosmetic preparations for body care, and dietary supplements.  The Examining Attorney claims that the mark is merely descriptive because it describes "any of a class of organic compounds corresponding to the inorganic salts and formed from an organic acid and an alcohol".  Applicant respectfully disagrees, for the reasons set forth below.

 

                    Applicant’s Mark ESTER is Not Merely Descriptive of the Goods

 

                    For a mark to be refused registration pursuant to Section 2(e)(1) of the Trademark Act on the basis that the mark is merely descriptive, the mark must immediately tell the potential consumer only what the goods are, their function, their characteristics or their use.  Ex Parte Heatube Corporation, 109 U.S.P.Q. 423 (Comm. Pat. 1956).

                    It is well settled that a mark or a component of a mark is merely descriptive only when it immediately describes a significant ingredient, quality, characteristic, function, feature, composition, purpose, attribute, or use of the goods or services identified in the application.  Henry Siegel Co. v. M & R Mfg. Co., 4 U.S.P.Q. 2d 1154, 1159 (T.T.A.B. 1987); In re Quick-Print Copy Shop Inc., 203 U.S.P.Q. 624 (T.T.A.B. 1979).  Accordingly, it is critical, when making a determination with respect to whether a disclaimer of descriptive terms is required, to carefully consider what specific goods or services will be associated with the mark.  The relevant inquiry is whether the mark, when considered in its entirety, conveys a merely descriptive significance as applied to the goods or services in question.  See In re Bright-Crest, Ltd., 204 U.S.P.Q. 591 (T.T.A.B. 1979).

                    In In re Colonial Stores Inc., the court recognized the usual practice of selling baked goods in stores which also sell sugar and spices as individual commodities, In re Colonial Stores Inc., 157 U.S.P.Q. 382 (C.C.P.A. 1968); however, the court considered the established usages and associations of the individual terms, and then compared them with the associations of the composite mark.  Id.  The court found that when the generic terms "sugar" and "spice" were combined and used on bakery goods, the phrase "may function as an indication of more than a mere description of the ingredients of the goods on which the mark is used," and, therefore, is "not 'merely descriptive' of such goods within the meaning of Section 2."  Id.  (While the court did acknowledge the fact that the term "sugar and spice" is reminiscent of the well-known nursery rhyme "Sugar and spice, and everything nice," it stated that "this in no way defeats the distinctive nature of the composite word mark as applied to the listed [bakery] products."  Id., 394 F.2d at 553, 157 U.S.P.Q. at 385).

                    In Application of Colgate-Palmolive Co., 160 U.S.P.Q. 733 (C.C.P.A. 1969), the Examining Attorney refused registration of the mark CHEW 'N CLEAN for a dentifrice, arguing that the mark immediately and directly related the information that applicant's dentifrice is a product that will clean teeth when it is chewed.  The Court reversed, stating "granted that 'CHEW 'N CLEAN' might well, and doubtless does, suggest a possible manner of use of the dentifrice, it is not merely descriptive of the dentifrice per se."  Id. at 973.

                    Applicant has applied to register the mark ESTER in connection with cosmetic preparations and dietary supplements.  The Examining Attorney contends that the mark ESTER is descriptive of the foregoing goods in Applicant's application.  However, Applicant submits that the proposed goods at issue doe not contain "esters"; rather, Applicant's current line of ESTER-C and ESTER-E branded goods, as well as the proposed goods in the instant application, are created through a different chemical process.  For example, Ester-C® Calcium Ascorbate (referred to as calcium ascorbate/threonate herein) is a powdered product containing the calcium salt of L-ascorbic acid (vitamin C) and L-threonic acid (an aldonic acid derived from vitamin C oxidation), along with minimal amounts of residual calcium carbonate and water. Calcium ascorbate/threonate is formed when ascorbic acid and calcium carbonate are neutralized when mixed together in water and then dried.  The calcium salt is principally formed together with small amounts of the calcium salt of threonic acid, a naturally occurring metabolite derived from the spontaneous oxidation and metabolism of vitamin C in vivo and in vitro.  Applicant has enclosed a technical explanation of the chemical process herewith, which explains in greater detail the nature of the goods, and makes clear they are not comprised of chemical "esters" or "esterified" ingredients.  In light of the foregoing, the mark is not descriptive of the proposed goods in the application.

                    Suggestive terms may shed light upon, but do not directly describe, the characteristics of the goods or services.  When applied to the goods or services, suggestive terms involve an element of incompleteness and require the effort of imagination on the part of the observer.  General Shoe Corp. v. Rosen, 111 F.2d 94, 45 U.S.P.Q. 196 (4th Cir.),  reh. denied, 112 F.2d 561, 45 U.S.P.Q. 590 (4th Cir. 1940).  Indeed, just because a consumer may understand the suggestion implied by the mark does not render it merely descriptive.  See In re Nalco Chemical Co., 228 U.S.P.Q. 972, 973 (T.T.A.B. 1986) (holding that VERI-CLEAN is suggestive, and not merely descriptive, of the applicant's cleaning additives.)  See also In re George Weston Ltd., 228 U.S.P.Q. 57, 58 (T.T.A.B. 1985) (SPEEDI BAKE is suggestive, not merely descriptive, of desirable characteristic of dough that quickly bakes into bread);  In re Shutts, 217 U.S.P.Q. 363, 365 (T.T.A.B. 1983) (SNO-RAKE is suggestive, not merely descriptive, of snow removal hand tool); In re Pennwalt Corp., 173 U.S.P.Q. 317, 319 (T.T.A.B. 1972) (DRI-FOOT is suggestive, not merely descriptive, of foot anti-perspirant);  In re Pointcast Inc., 1999 WL 651584 (T.T.A.B. 1999) (SMART SCREEN for computer software for composing a dynamic animation screen saver, as the mark was not descriptive. "In the case now before us, applicant did not apply for the mark SMARTSCREENSAVER for its goods or for the mark SMART SCREEN for screens for computer video monitors."); In re Casino Data Systems, 1998 WL 663311 (P.T.O. 1998)(DATAPORT not merely descriptive of computer hardware for gaming machines.  The Examining Attorney's evidence that the words "data port" were used in relatively close proximity to the word "microcontroller" was insufficient to show that the mark was merely descriptive of the applicant's goods).

                    Therefore, since some operation of "imagination, thought and perception" is necessary for the consumer to understand that Applicant's mark refers to dietary supplements and cosmetic preparations, but could also refer to dietary supplements and/or cosmetic preparations that contain esterified chemical compounds (although it does not), Applicant's mark ESTER is suggestive, and not merely descriptive. 

                    Thus, the mark ESTER has a meaning which is not immediately understood as applied to the goods for which Applicant is seeking to register the mark, and the mark is entitled to registration on the Principal Register.  See In re George Weston Limited, 228 U.S.P.Q. 57, 58 (T.T.A.B. 1985); see also In re Colonial Stores, Inc., 157 U.S.P.Q. 382, 385 (C.C.P.A. 1968) (SUGAR 'N SPICE found not merely descriptive of bakery goods because the "mark clearly does not tell the potential purchaser only what the goods are, their function, their characteristics or their use") (emphasis in original). 

 

                    Applicant's is the Owner of Several Existing Federal Registrations for "ESTER" Marks on the Principal Register

                    Applicant has been using "ESTER-__" marks in connection with dietary supplements since at least as early as 1983, therefore the ESTER mark has become associated with Applicant in connection with the goods identified in the instant application.  Applicant does not concede the Examining Attorneys' argument that Applicant's mark is merely descriptive of the goods identified in the instant application.  In addition to the foregoing arguments in support of Applicant's position, Applicant identifies several of its subsisting federal registrations on the Principal Register for similar marks in connection with similar goods, including the following:

Reg. No.	Mark
1,354,735	ESTER-C
1,598,104	ESTER-C
1,674,755	ESTEROL
1,742,066	ESTER-C
2,528,608	ESTER-C BOOST
2,884,890	ESTER-E
2,977,776	ESTER-C
3,056,085	ESTEROLA-C PLUS
2,872,619	ESTEROLA-C

 

                    In light of the subsistence of the foregoing registrations on the Principal Register, Applicant submits that it would be inappropriate to bar registration of the ESTER mark on the Principal Register on the basis of descriptiveness, and the Section 2(e)(1) claim should therefore be withdrawn. 

 

                    Doubt Must Be Resolved in Favor of the Applicant

                    It is well settled that where there is any doubt as to the character of the mark in question, that doubt must be resolved in favor of the Applicant.  See In re Bel Paese Sales Co., 1 U.S.P.Q. 2d 1233, 1235-1236 (T.T.A.B. 1986); In re Bed-Check Corp., 226 U.S.P.Q. 946, 948 (T.T.A.B. 1985); In re Rank Organization Ltd., 222 U.S.P.Q. 324, 326 (T.T.A.B. 1984).  Doubt is properly resolved by publishing the mark and allowing any person who believes he or she would be damaged by the registration of the mark to file an Opposition.  In re Bel Paese Sales Co., 1 U.S.P.Q. 2d at 1235.  Therefore, if there is any doubt as to whether Applicant's mark FIND A FLORIST is merely descriptive, that doubt should be resolved in favor of the Applicant, and refusal of registration should be withdrawn.

 

 

CONCLUDING REMARKS

                    In view of the foregoing, and as the Examining Attorney's search of Office records failed to reveal any similar registered or pending marks which would bar registration under Trademark Act Section 2(d), it is believed that the application is in condition for publication.  Such action is respectfully requested.

Evidence

Original PDF file:
evi_6310711710-192044906_._Exerpts_Technical__Bioavailbility_6.16.05.pdf
Converted PDF file(s) (7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7

Classification and Listing of Goods/Services
Applicant hereby deletes the following class of goods/services from the application.
Class 044 for Cosmetic preparations; dietary supplements

Applicant hereby adds the following class of goods/services to the application:
New:
Class 003 (Original Class: 044 ) for Cosmetic preparations for body care; cosmetic preparations, namely, skin cream or serum
Section 1(b), the applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).
Applicant hereby adds the following class of goods/services to the application:
New:
Class 005 for Dietary supplements
Section 1(b), the applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Fees
Fee(s) in the amount of $325 is being submitted.


Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /victor sapphire/      Date: 09/07/2006
Signatory's Name: Victor Sapphire
Signatory's Position: Attorney for Applicant

Response Signature
Signature: /victor sapphire/     Date: 09/07/2006
Signatory's Name: Victor Sapphire
Signatory's Position: Attorney for Applicant
        
RAM Sale Number: 900
RAM Accounting Date: 09/08/2006
        
Serial Number: 78691057
Internet Transmission Date: Thu Sep 07 19:26:22 EDT 2006
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2006090719262206
3786-78691057-340e954a6bf941e75c5aa264c2
ec9e88d9-DA-900-20060907192044906195