Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1960 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Request for Reconsideration after Final Action
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
88213270 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 125 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/88213270/mark.png |
| LITERAL ELEMENT |
BESSTOIL |
| STANDARD CHARACTERS |
YES |
| USPTO-GENERATED IMAGE |
YES |
| MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) |
| US Application No 88213270 Mark: BESSTOIL Amended Goods in class 003 Non-medicated soaps, none of the foregoing containing essential oils Section
2(e) Refusal. The Examiner has raised a descriptiveness objection to the present trademark BESSTOIL as describing a feature, characteristic, purpose, function, subject matter, or use of applicant?s
goods. Whether a mark is merely descriptive is determined in relation to the goods for which registration is sought and the context in which the mark is used, not in the abstract or on the basis of
guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, we evaluate whether someone who knows what the goods
are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). A mark need not immediately
convey an idea of each and every specific feature of the goods in order to be considered merely descriptive; it is enough if it describes one significant attribute, function or property of the goods.
See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). The determination that a mark is merely descriptive is a finding of
fact and must be based upon substantial evidence. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). The correct test is whether the phrase forthwith conveys an
immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511 (TTAB 2016). Soap is generally unrelated to
oil in the mind of a consumer, since soap is the ?opposite? to oil, as it is generally perceived as removing oil from the skin. Examiner cites a number of examples of soaps advertised in relation to
essential oils, which provide a fragrance to the oil, and would thereby provide a connection for a consumer. Applicant agrees and amends the goods ID to exclude the use of essential oils in the
soaps, thereby removing the possibility of descriptiveness of the mark BESSTOIL in relation to the goods in class 003, namely non-medicated soaps. After the amendment of the goods, the word BESSTOIL
does not provide an immediate idea of a characteristic of the goods, which consists of non-medicated soap. Mark is Suggestive A suggestive mark is one that is not descriptive of a feature,
characteristic, purpose, function, subject matter, or use of applicant?s goods. The ?degree of imagination? test is still relevant as it is part of the concept of suggestiveness. ?A suggestive mark
requires imagination, thought and perception to reach a conclusion as to the nature of the goods, while a merely descriptive mark forthwith conveys an immediate idea of the ingredients, qualities or
characteristics of the goods.? StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing DuoProSS, 103 USPQ2d at 1755 (internal quotation marks
omitted)). BESSTOIL has no immediate meaning for a consumer. Rather, the consumer must think about the meaning, and be imaginative, to come up with something meaningful to the consumer. It may
provide a consumer with some inkling that something about the product is the ?best? and related to ?oil?. However, since the consumer understands the difference between soap and oil, the idea would
not be immediate. The Board resolves doubts as to the mere descriptiveness of a mark in favor of the applicant. In re Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB 1994), and the Applicant kindly
requests that the mark be forwarded to publication. |
| EVIDENCE SECTION |
| EVIDENCE FILE NAME(S) |
| ORIGINAL PDF FILE |
evi_1212522146-20191122141954226927_._BESSTOIL_Descriptiveness_Office_Action_Response.pdf |
CONVERTED PDF FILE(S)
(3 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\882\132\88213270\xml13\RFR0002.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\882\132\88213270\xml13\RFR0003.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\882\132\88213270\xml13\RFR0004.JPG |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/s/ |
| SIGNATORY'S NAME |
Nyall Engfield |
| SIGNATORY'S POSITION |
Attorney of Record, CA Bar |
| SIGNATORY'S PHONE NUMBER |
7602341231 |
| DATE SIGNED |
11/22/2019 |
| AUTHORIZED SIGNATORY |
YES |
| CONCURRENT APPEAL NOTICE FILED |
NO |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Fri Nov 22 14:27:08 EST 2019 |
| TEAS STAMP |
USPTO/RFR-XX.XXX.XXX.XX-2
0191122142708181071-88213
270-7006b6f6d3733e67ef27c
ced3c2623be43e2a12da49849
f2509e3619f6719fce-N/A-N/
A-20191122141954226927 |
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1960 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Request for Reconsideration after Final Action
To the Commissioner for Trademarks:
Application serial no.
88213270 BESSTOIL(Standard Characters, see http://uspto.report/TM/88213270/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
US Application No 88213270 Mark: BESSTOIL Amended Goods in class 003 Non-medicated soaps, none of the foregoing containing essential oils Section 2(e) Refusal. The Examiner has raised a
descriptiveness objection to the present trademark BESSTOIL as describing a feature, characteristic, purpose, function, subject matter, or use of applicant?s goods. Whether a mark is merely
descriptive is determined in relation to the goods for which registration is sought and the context in which the mark is used, not in the abstract or on the basis of guesswork. In re Abcor Dev.
Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, we evaluate whether someone who knows what the goods are will understand the mark
to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). A mark need not immediately convey an idea of each and
every specific feature of the goods in order to be considered merely descriptive; it is enough if it describes one significant attribute, function or property of the goods. See In re Gyulay, 3 USPQ2d
at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). The determination that a mark is merely descriptive is a finding of fact and must be based upon
substantial evidence. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). The correct test is whether the phrase forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use of the goods. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511 (TTAB 2016). Soap is generally unrelated to oil in the mind of a consumer,
since soap is the ?opposite? to oil, as it is generally perceived as removing oil from the skin. Examiner cites a number of examples of soaps advertised in relation to essential oils, which provide a
fragrance to the oil, and would thereby provide a connection for a consumer. Applicant agrees and amends the goods ID to exclude the use of essential oils in the soaps, thereby removing the
possibility of descriptiveness of the mark BESSTOIL in relation to the goods in class 003, namely non-medicated soaps. After the amendment of the goods, the word BESSTOIL does not provide an
immediate idea of a characteristic of the goods, which consists of non-medicated soap. Mark is Suggestive A suggestive mark is one that is not descriptive of a feature, characteristic, purpose,
function, subject matter, or use of applicant?s goods. The ?degree of imagination? test is still relevant as it is part of the concept of suggestiveness. ?A suggestive mark requires imagination,
thought and perception to reach a conclusion as to the nature of the goods, while a merely descriptive mark forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the
goods.? StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing DuoProSS, 103 USPQ2d at 1755 (internal quotation marks omitted)). BESSTOIL has no
immediate meaning for a consumer. Rather, the consumer must think about the meaning, and be imaginative, to come up with something meaningful to the consumer. It may provide a consumer with some
inkling that something about the product is the ?best? and related to ?oil?. However, since the consumer understands the difference between soap and oil, the idea would not be immediate. The Board
resolves doubts as to the mere descriptiveness of a mark in favor of the applicant. In re Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB 1994), and the Applicant kindly requests that the mark be
forwarded to publication.
EVIDENCE
Original PDF file:
evi_1212522146-20191122141954226927_._BESSTOIL_Descriptiveness_Office_Action_Response.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
SIGNATURE(S)
Request for Reconsideration Signature
Signature: /s/ Date: 11/22/2019
Signatory's Name: Nyall Engfield
Signatory's Position: Attorney of Record, CA Bar
Signatory's Phone Number: 7602341231
The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and
any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another
U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed
revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter;
or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.
The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.
Serial Number: 88213270
Internet Transmission Date: Fri Nov 22 14:27:08 EST 2019
TEAS Stamp: USPTO/RFR-XX.XXX.XXX.XX-2019112214270818
1071-88213270-7006b6f6d3733e67ef27cced3c
2623be43e2a12da49849f2509e3619f6719fce-N
/A-N/A-20191122141954226927
