Reconsideration Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

REQUEST FOR RECONSIDERATION DENIED

 

ISSUE/MAILING DATE: 1/24/2019

 

 

The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is denying the request for the reasons stated below.  See 37 C.F.R. §2.63(b)(3); TMEP §§715.03(a)(ii)(B), 715.04(a).  The following refusal made final in the Office action dated January 2, 2019 are maintained and continue to be final:  Section 2(a) of the Trademark Act.  See TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

In the present case, applicant’s request has not resolved the outstanding issue, nor does it raise a new issue or provide any new or compelling evidence with regard to the outstanding issue in the final Office action.  Specifically, applicant amended some of the wording in the identification of goods to overcome the deceptive refusal; however, the identification of goods still contains wording that does not overcome the refusal.  In addition, applicant’s analysis and arguments are not persuasive nor do they shed new light on the issues.  Accordingly, the request is denied for the reasons set forth below.

 

SUMMARY OF ISSUES:

• Refusal – Section 2(a) Deceptive

REFUSAL – SECTION 2(a) DECEPTIVE

THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

Beauty soap

Registration is refused because the applied-for mark consists of or includes deceptive matter in relation to the identified goods. Trademark Act Section 2(a), 15 U.S.C. §1052(a).

A term is deceptive when all three of the following criteria are met:

(1)       Is the term misdescriptive of the character, quality, function, composition or use of the goods [and/or services]?

(2)       If so, are prospective purchasers likely to believe that the misdescription actually describes the goods [and/or services]?

(3)       If so, is the misdescription likely to affect the purchasing decision of a significant portion of relevant consumers?

In re Tapco Int’l Corp., 122 USPQ2d 1369, 1371 (TTAB 2017) (citing In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988)); TMEP §1203.02(b); see also In re Spirits Int’l, N.V., 563 F.3d 1347, 1353, 1356, 90 USPQ2d 1489, 1492-93, 1495 (Fed. Cir. 2009) (holding that the test for materiality incorporates a requirement that a “significant portion of the relevant consumers be deceived”).

In this case, applicant’s mark includes the wording “SILVER”, indicating that the goods have or exhibit the following feature or characteristic:  silver or colloidal silver.  However, according to the evidence of record, some of applicant’s goods do not in fact have or exhibit this feature or characteristic. 

Consumers would be likely to believe this misdescription in the mark, because the previously attached Internet evidence shows that it is common in applicant’s industry for beauty and body care products to include colloidal silver, and consumers have come to expect such feature or characteristic.  Specifically, this evidence shows that beauty products and body care products such as soap contain colloidal silver as an active ingredient of the product.  See the previously attached evidence from  http://www.facebook.com/pg/Silver-Miracles-Colloidal-Silver-Products-183583385010720/photos/?ref=page_internal,  http://www.vermontcountrystore.com/silver-savior-soap/product/62613, and the attached evidence from http://www.vitacost.com/heritage-products-colloidal-silver-soap-3-5-oz, http://www.naturasil.com/collections/colloidal-silver-soap, and http://www.diynatural.com/what-is-colloidal-silver-benefits-safe-use/.  This evidence establishes that colloidal silver have anti-fungal, antiseptic and antibacterial properties and promotes healthy skin. 

A misdescriptive feature or characteristic would be material to the purchasing decision of a significant portion of the relevant consumers when the evidence demonstrates that the misdescription would make the product more appealing or desirable to prospective purchasers.  In re White Jasmine LLC, 106 USPQ2d 1385, 1392 (TTAB 2013) (citing In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1698-99 (TTAB 1992)); TMEP §1203.02(d). 

In the present case, the attached Internet evidence discussed above shows that the misdescriptive feature or characteristic, namely silver, renders the goods more appealing or desirable because this ingredient soothes, calms, and rejuvenates skin from various skin conditions to achieve healthy and beautiful skin.  Furthermore, the evidence shows that colloidal silver combats against harmful bacteria.  Thus, the misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase applicant’s goods.

A mark is deceptive even if only a portion of the mark is deceptive.  See In re White Jasmine LLC, 106 USPQ2d 1385, 1391 (TTAB 2013) (“It is well established that a mark may be found deceptive on the basis of a single deceptive term that is embedded in a larger mark . . . .”); Am. Speech-Language-Hearing Ass’n v. Nat’l Hearing Aid Soc’y, 224 USPQ 798, 808 (TTAB 1984).  Trademark Act Section 2(a) prohibits registration of deceptive matter, not merely deceptive marks.  See In re White Jasmine LLC, 106 USPQ2d at 1391; TMEP §1203.02.

Because some of the goods in this application do not contain silver or colloidal silver as an ingredient, and the evidence of record establishes that colloidal silver in beauty and body care products is a desirable ingredient in that it helps treat skin conditions and it has skin repair qualities, and combats against bacteria, consumers encountering applicant’s mark in connection with the identified goods are likely to believe that the goods contain such desirable ingredient. Thus, the applied-for mark is deceptive in connection with some of the identified goods in this application.  Accordingly, the request is denied.

Partial Abandonment Advisory

If applicant does not respond to this Office action within the six-month period for response, the following goods in International Class 003 will be deleted from the application “Beauty soap.”  The application will then proceed with the following goods in International Class 003 only:  “Adhesives for affixing false eyelashes; Anti-freckle creams containing colloidal silver; Antiperspirants containing colloidal silver; Antiperspirants for personal use containing colloidal silver; Beard dyes; Beauty masks containing colloidal silver; Cosmetic pencils; Cosmetic preparations for baths containing colloidal silver; Cosmetic preparations for slimming purposes; Cosmetic sun-tanning preparations; Cosmetics containing colloidal silver; Dentifrices containing colloidal silver; Depilatories; Depilatory preparations; Depilatory wax; Double eyelids tapes; Eyebrow pencils; Eyeshadows; Facial cleansers containing colloidal silver; False eyelashes; Hair colorants; Hair dyes; Lip glosses; Lipstick cases; Lipsticks; Make-up kits comprised of lipstick, lip gloss; Make-up powder; Moustache wax; Nail polish; Nail varnishes; Rouge; Sunscreen preparations; Tooth whitening pastes containing colloidal silver; Toothpastes containing colloidal silver; Bath soaps containing colloidal silver; Body cream soap containing colloidal silver; Eyebrow cosmetics; Non-medicated balms for use on hair, skin, lips containing colloidal silver; Non-medicated lip balms containing colloidal silver; Skin soap containing colloidal silver; Skin cleansing cream containing colloidal silver; Toilet soaps containing colloidal silver.”  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

Assistance

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

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

 

If no appeal has been filed and time remains in the six-month response period to the final Office action, applicant has the remainder of the response period to (1) comply with and/or overcome any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board.  TMEP §715.03(a)(ii)(B); see 37 C.F.R. §2.63(b)(1)-(3).  The filing of a request for reconsideration does not stay or extend the time for filing an appeal.  37 C.F.R. §2.63(b)(3); see TMEP §§715.03, 715.03(a)(ii)(B), (c). 

 

 

/Sahar Nasserghodsi/

Sahar Nasserghodsi

Examining Attorney

Law Office 115

(571)272-9192

Sahar.Nasserghodsi@uspto.gov

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 1/24/2019 FOR U.S. APPLICATION SERIAL NO. 87683150

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification. 

 

(2)  Respond within 6 months (or sooner if specified in the Office action), calculated from 1/24/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Sahar Nasserghodsi/

Sahar Nasserghodsi

Examining Attorney

Law Office 115

(571)272-9192

Sahar.Nasserghodsi@uspto.gov

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp. 

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.