Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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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. 78948734 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

The applicant has separately filed an Allegation of Use, to change the basis of this application from Section 1(b), intent-to-use, to Section 1(a), use in commerce. Applicant requests suspension of this application, because an opposition is now pending at the Trademark Trial and Appeal Board, as to allowed and published Application Serial No. 78034003 for NATURAL ION, cited herein. The parties are in discussions to negotiate a settlement, that once concluded, is expected to address the objection in this Office Action related to the Application Serial No. 78034003 for NATURAL ION, and available as an existing registration to support this application.

 

As to the other objections raised for NATURAL IONIC ENERGY application 78/948734, Applicant responds as follows:

 

Applicant notes that the Examiner has not found any similar registered marks and/or pending applications that would bar registration under 15 USC §1052(d), TMEP §704.02.   

 

As to the Section 2(e)(1) - Descriptive Refusal, applicant responds as follows:

 

The degree of descriptiveness (or distinctiveness) of a trademark can be determined only by considering it in relation to the specific goods or services. Remington Products, Inc. v. North American Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444, 1448 (Fed. Cir. 1990) (the mark must be considered in context, i.e., in connection with the goods). The examining attorney must consider whether a mark is merely descriptive in relation to the identified services, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).

 

It is black-letter law that completely arbitrary or fanciful trademarks, when used in relation to the goods or services, are easily protected. Suggestive marks are less so, but still protectable, followed by merely descriptive marks. Generic terms for the goods or services are at the opposite end of the continuum from arbitrary or fanciful marks, but are not the same as descriptive marks. As stated in H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986), "[t]he generic name of a thing is in fact the ultimate in descriptiveness."

 

The mark here consists of three words: NATURAL IONIC ENERGY. Appliances and hairbrushes are manufactured items (man-made, as it were). They are not “natural” products. The use of “natural” is suggestive as applied here. Even in industries (such as food), where products are in fact grown in nature, words like “natural” are suggestive. Thus, even if the mark is used as part of a process of mined minerals that create a particular effect, as with food products in fact grown entirely in nature, words like “natural” are suggestive. While not citable as precedent of the TTAB, the reasoning in In re ProMark Brands Inc. case (U.S. Patent and Trademark Office, Trademark Trial and Appeal Board, Serial No. 75941977) makes sense (that a product is “natural” is highly suggestive, and it hardly need be stated that this suggestion is pervasive in the food industry).

 

The word “natural” is suggestive at worst when applied to non-food items, particularly as applied to hair appliances and hair care items. See NATURAL CURL, Registration Number 2,897,928 electric hair setters. (Principal Register), and SO NATURAL hair brushes; hair combs, Serial Number 78/716736, wherein final review before registration has been completed for this Intent to Use application and it will register in due course; NATURAL WAY combs and brushes for pets, Serial Number 78/727908, which has been allowed and published, and a request for the first extension of time to file a statement of use has been granted; and JILL'S NATURAL hair brushes, hair combs; Registration Number 2,891,795 (Principal Register). Copies of citations for all marks to USPTO are attached.

 

As to the rest of the mark “IONIC ENERGY”, the definitions of the goods do not support a descriptiveness objection in whole or in part. Copies of citations to dictionary references are attached. An “iron” is a noun, and is defined as a metal appliance with a handle and a weighted flat bottom, used when heated to press wrinkles from fabric, Dictionary.com, based on The American Heritage (r) Dictionary of the English Language, Fourth Edition, Copyright (c) 2006 by Houghton Mifflin Company, OR an “iron” is a noun, and is defined as an appliance with a flat metal bottom, used when heated, as by electricity, to press or smooth clothes, linens, etc. Dictionary.com, based on the Random House Unabridged Dictionary, (c) Random House, Inc. 2006.

 

Much like a “curling iron”, that is used for curling the hair, Dictionary.com, based on the Random House Unabridged Dictionary, (c) Random House, Inc. 2006, or a rod-shaped metal implement used when heated to curl the hair, Dictionary.com, based on the The American Heritage (r) Dictionary of the English Language, Fourth Edition, Copyright (c) 2006 by Houghton Mifflin Company, or a cylindrical metal home appliance that heats a lock of hair that has been curled around it, Dictionary.com, based on WordNet(r) 3.0, © 2006 by Princeton University, a “flat iron” (sometimes called a straightening iron) is used to make the hair “flat” or “straight”.See http://beauty.about.com/od/flatironscurlingirons/qt/flatironfaq.htm on How to Use a Flat Iron.

 

A “hairbrush” is a noun, and is simply defined as a brush for smoothing and styling the hair, Dictionary.com, based on the Random House Unabridged Dictionary, (c) Random House, Inc. 2006. Hair brushes are basic, functional products. http://www.beautytips.ayurvediccure.com/hair-care/hair-brushing.htm. There is nothing inherently descriptive about a hairbrush that would require “energy”, ionic or otherwise. A hairbrush in Class 21 is not powered by electricity, so adding a concept like energy is suggestive at worst as applied to hairbrushes.

 

Heat is required to flatten (straighten) hair. While that heat could be generated by electricity, and electricity by energy, there is no requirement that the energy be ionic in nature. In addition, energy means much more than electricity or a source of heat or usable power: it can be quite suggestive, as in an enterprising or ambitious drive, an imaginative lively style, or a healthy capacity for vigorous activity. See http://dictionary.reference.com/browse/energy. As to the complete mark, the definitions do not remotely relate to or reference one, two or all three words in the trademark. Therefore, “NATURAL IONIC ENERGY” cannot be descriptive, let alone merely descriptive, of appliances and hairbrushes, as it does not relate to the function, use, characteristic or nature of the goods.

 

Lastly, as regards all products in the goods description, even if the proposed mark is in part descriptive, merely descriptive marks may be registrable on the Supplemental Register. 15 U.S.C. §1091.

 

In light of the above, Applicant believes that it has responded to all issues raised in the Office Action, and submits the application is now in condition for publication on the Principal Register. In the alternative, should these arguments be rejected in part, Applicant would request publication on the Supplemental Register under 15 U.S.C. §1091. Early and favorable consideration is respectfully requested.

 

The Examining Attorney is invited and encouraged to contact the Applicant’s Attorney should there be any further questions concerning the application or the issues addressed.

 

Evidence
Evidence in the nature of Documents referenced in the argument. has been attached.
Original PDF file:
evi_639858254-123913710_._NATURAL_CURL.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_639858254-123913710_._SO_NATURAL.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_639858254-123913710_._SO_NATURAL_TARR_status.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_639858254-123913710_._NATURAL_WAY.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_639858254-123913710_._NATURAL_WAY_TARR_status.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_639858254-123913710_._JILLS_NATURAL.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_639858254-123913710_._iron.pdf
Converted PDF file(s) (15 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Original PDF file:
evi_639858254-123913710_._RAIGHTENING_IRON_http___www.sallybeauty.com_shop_1650_255087.pdf
Converted PDF file(s) (1 page)
Evidence-1
Original PDF file:
evi_639858254-123913710_._hairbrush.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_639858254-123913710_._curling_iron.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_639858254-123913710_._http___dictionary.reference.com_browse_energy.pdf
Converted PDF file(s) (8 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8

Additional Statements

The applicant has separately filed an Allegation of Use, to change the basis of this application from Section 1(b), intent-to-use, to Section 1 (a), use in commerce. Applicant requests suspension of this application, because an opposition is now pending at the Trademark Trial and Appeal Board, as to allowed and published Application Serial No. 78034003 for NATURAL ION, cited herein. The parties are in discussions to negotiate a settlement, that once concluded, is expected to address the objection in this Office Action related to the Application Serial No. 78034003 for NATURAL ION, and available as an existing registration to support this application.

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: /danielmvincenzo/      Date: 06/14/2007
Signatory's Name: Daniel M. Vincenzo
Signatory's Position: Attorney

Response Signature
Signature: /danielmvincenzo/     Date: 06/14/2007
Signatory's Name: Daniel M. Vincenzo
Signatory's Position: Attorney

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
        
Serial Number: 78948734
Internet Transmission Date: Thu Jun 14 12:49:03 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20070614124903778
430-78948734-370579454a543694dce9d5a70ae
fd5574b7-N/A-N/A-20070614123913710067