Reconsideration Letter

On May 23, 2014, the Examining Attorney reviewed the TICRS (Trademarks general examining) database and the TTABVUE (Trademark Trial and Appeal Board appeals) database and was not able to “view” the Notice of Appeal of 4/28/14. On 5/23/14, the application was Abandoned for failure to file a complete response (naming the arguments were unpersuasive and the Notice of Appeal was not visible on the databases). As of June 13, 2014, the Notice of Appeal of 4/28/14 is now of record in TTABVUE and jurisdiction has been restored to the Examining Attorney for “re-review” of the Request for Reconsideration. (The Request for Reconsideration was reviewed in full and considered fully at the earlier date and found unpersuasive. This is still true.) This Office Action places the application back in the correct status and returns the file to the TTAB for resumption of the Appeal.

The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is denying the request for the reasons stated previously (and summarized below). See 37 C.F.R. §2.64(b); TMEP §§715.03(a)(2)(B), (a)(2)(E), 715.04(a). The requirement(s) and/or refusal(s) made final in the Office action dated October 28, 2013 are maintained and continue to be final. See TMEP §§715.03(a)(2)(B), (a)(2)(E), 715.04(a).

To summarize, the almost seven years’ use is insufficient for this highly descriptive mark, the YouTube videos largely tend to describe the quality of the goods as opposed to the “recognition of the mark as a source identifier” feature the Office is looking for in 2(f) acquired distinctiveness analysis, there are several website examples using “chocolate” to describe the hair color such that “exclusivity” would be hard for the Applicant to show, and the predominant argument in the Request for Reconsider of the websites being or referencing foreign companies/sources is not persuasive to overcome the 2(f) insufficient/2(e)(1) refusal(s). The websites attached to the Final Office Action are all U.S. websites, and even though the Alibaba website promotes China companies - it’s still widely accessed in the U.S. Also, the Applicant failed to bulk up their 2(f) argument with more “actual” 2(f) evidence (e.g. promotional activities, sales, etc.) and taking it all together, the Applicant’s 2(f) arguments and evidence is insufficient.

The burden of proving that a mark has acquired distinctiveness is on the applicant. Yamaha Int’l Corp. v. Yoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372 (C.C.P.A. 1959); TMEP §1212.01. An applicant must establish that the purchasing public has come to view the proposed mark as an indicator of origin.

The ultimate test in determining acquisition of distinctiveness under Trademark Act Section 2(f) is not applicant’s efforts, but applicant’s success in educating the public to associate the claimed mark with a single source. TMEP §1212.06(b); see In re Packaging Specialists,221 USPQ at 920; In re Redken Labs., Inc., 170 USPQ 526 (TTAB 1971).

In the present case, applicant’s request has not resolved all the outstanding issue(s), nor does it raise a new issue or provide any new or compelling evidence with regard to the outstanding issue(s) in the final Office action. In addition, applicant’s analysis and arguments are not persuasive nor do they shed new light on the issues. Accordingly, the request is denied.

The filing of a request for reconsideration does not extend the time for filing a proper response to a final Office action or an appeal with the Trademark Trial and Appeal Board (Board), which runs from the date the final Office action was issued/mailed. See 37 C.F.R. §2.64(b); TMEP §715.03, (a)(2)(B), (a)(2)(E), (c).

Since the applicant has already filed a timely notice of appeal with the Board, the Board will be notified to resume the appeal. See TMEP §715.04(a).

/Gina M. Fink/

Trademark Examining Attorney

Law Office 109

Phone: (571) 272-9275

Law Office 109 Fax: (571) 273-9109