TEAS Request Reconsideration after FOA

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)

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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. 88267563  (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8826756 3/large) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Pursuant to the last office action issued by Examiner, Applicant is re-submitting the previous arguments, adding the referenced evidence as attachments in the required manner, including full printouts which list the URL and date. Applicant is also making a claim of acquired distinctiveness to overcome any non-distinct arguments. Please find applicant's previous arguments below: Examiner rejected this trademark as functional and non-distinct. Applicant respectfully disagrees with Examiner's conclusions. Any packaging can be considered "functional" in that it functions as a container for goods. But not every container looks similar. Applicant's trademark containers have a distinct look and have obtained significant consumer recognition in the marketplace. The specific lip gloss container can have any number of shapes, designs and looks to it and still adequately contain the goods. Applicant's packaging is unique in that is has an internal inverted cone shape, a silver thick collar, and the specific angle of the narrowing of the product compartment, combined with the amount of packaging surrounding that area, is not functional and is unique to Applicant's trademark container. Other similar products do not have the inverted cone shape, go all the way to the end, or taper less aggressively. Additionally, the clear portion at the top of the cap is not functional in any way and is unique and distinctive to Applicant's brand. In response to Examiner's information requests: 1) this design is not yet the subject of a patent application, but is being considered for a design patent. 2) Applicant has marketed and sold the unique design on its website and in stores worldwide for many years. See Applicant's website at www.doseofcolors.com and specifically the lip gloss section at http://doseofcolors.com/collections/stay-glossy-lip-gloss to see a number of products marketed that utilize this unique design. 3) Competitors use similar lip gloss shapes that do not have both the specific internal angular tapering, silver collar and clear bottle top. Two of the top competitors in this specific niche are Revlon, which uses rounded or square caps without a clear top portion, and straight bottoms (http://www.revlon.com/lips/lip-gloss-and-lacquer? sort=product%20type) and MAC Cosmetics, which also has a straight bottom and no clear top cap (http://www.maccosmetics.com/product/13853/309/products/makeup/lips/lipgloss/ lipglass). Others include Maybelline who use rectangular packaging (http://www.maybelline.com/lip-makeup/lip-gloss), Estee Lauder who uses cylindrical with rectangular caps (http://www.esteelauder.com/makeup/lip-gloss), Clinique which uses various shapes and sizes for its pakcaging but none match either of Applicants (http://www.clinique.com/products/1603/makeup/lip-glosses), and Urban Decay which uses odd shapes and sizes (http://www.urbandecay.com/shop/lips/lip-gloss). 4) The cost to manufacture this type of packaging is not significantly different from other types. It is just a design alternative and if anything may cost more to have these design features. As seen by the above evidence and explanations, Applicant's design is unique and distinctive, which also addresses Examiner's second concern of the non-distinctive product packaging. There are endless shapes and combinations of designs of bottles and caps for lip gloss, but the combination of Applicant's clear top of the cap, inverted cone shape interior body, and silver thick collar create a distinctive, non-functional and unique design that is registrable as a trademark, especially given the worldwide recognition the brand has gained since first using this design in 2014. None of the cited evidence provided by Examiner nor popular brands now referenced by Applicant contain this exact unique combination of design elements. As such, the application is now in a condition for allowance.

EVIDENCE
Evidence has been attached: PDF files of the websites referenced in the arguments
Original PDF file:
evi_7582112189-2020080718 4032291095_._Clinique1.pdf
Converted PDF file(s) ( 1 page) Evidence-1
Original PDF file:
evi_7582112189-2020080718 4032291095_._decay1.pdf
Converted PDF file(s) ( 1 page) Evidence-1
Original PDF file:
evi_7582112189-2020080718 4032291095_._Dose1.pdf
Converted PDF file(s) ( 15 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15
Original PDF file:
evi_7582112189-2020080718 4032291095_._Estee1.pdf
Converted PDF file(s) ( 1 page) Evidence-1
Original PDF file:
evi_7582112189-2020080718 4032291095_._Mac1.pdf
Converted PDF file(s) ( 1 page) Evidence-1
Original PDF file:
evi_7582112189-2020080718 4032291095_._Mayb1.pdf
Converted PDF file(s) ( 7 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7
Original PDF file:
evi_7582112189-2020080718 4032291095_._Revlon1.pdf
Converted PDF file(s) ( 5 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Dose of Colors, Inc., a corporation of California, having an address of
      7545 N. San Fernando Rd.
      Burbank, California 91505
      United States

Proposed: Dose of Colors, Inc., a corporation of California, having an address of
      7545 N. San Fernando Rd.
      Burbank, California 91505
      United States
      Email Address: XXXX

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.

Correspondence Information (current):
      Sevag Demirjian
      PRIMARY EMAIL FOR CORRESPONDENCE: sevag@foundationlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Sevag Demirjian
      PRIMARY EMAIL FOR CORRESPONDENCE: sevag@foundationlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): valerie@foundationlaw.com

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /sevag demirjian/      Date: 08/07/2020
Signatory's Name: Sevag Demirjian
Signatory's Position: Attorney of record, California bar member
Signatory's Phone Number: 3108703977


Request for Reconsideration Signature
Signature: /sevag demirjian/     Date: 08/07/2020
Signatory's Name: Sevag Demirjian
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 3108703977

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 filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    Sevag Demirjian
   Foundation Law Group LLP
   
   5200 Lankershim Blvd., Suite 850
   North Hollywood, California 91601
Mailing Address:    Sevag Demirjian
   Foundation Law Group LLP
   5200 Lankershim Blvd., Suite 850
   North Hollywood, California 91601
        
Serial Number: 88267563
Internet Transmission Date: Fri Aug 07 19:04:38 ET 2020
TEAS Stamp: USPTO/RFR-XX.XX.XXX.XXX-2020080719043820
1272-88267563-740d2591d93fd2e6fea5d9bcd3
6971dba7ddf844a518f6a4ea2bc689c1583979-N
/A-N/A-20200807184032291095