Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  March 12, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communications filed on 1/23/2020.

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

In a previous Office action dated 7/24/2019, the following issues were listed, and are hereby sustained or withdrawn, as follows:

 

• SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE – sustained.

 

The trademark examining attorney maintains and now makes FINAL the refusal under Section 2(e)1 as discussed below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes what applicant’s goods are.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

Applicant’s mark is “FEATHERWEIGHT CLASSIC LASHES” for “Cosmetic pads; Eye liner; Eyebrow gel; Facial washes; Gel for removing synthetic eyelash glue; Mascara; Wipes impregnated with a skin cleanser; Adhesives for affixing false eyelashes; Artificial eyelashes with a broad spread of lashes designed to give an appearance of thicker, fuller lashes; Make-up primer; Sealer coatings for use in eyelash extension” in class 3 and “Salon services, namely, artificial eyelash extension application services” in class 44.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

The term “FEATHERWEIGHT” is descriptive of a feature of applicant’s goods and services, namely, that they (namely, the eyelash extension being provided and/or applied) are light. The attached evidence from Merriam Webster Dictionary defines the term as “one that is very light in weight.” See attached. This is a feature of eyelash extensions, as shown in the attached evidence from Amazon, listing “Eye Shape Lashes – Thin, Flexible and Lightweight” and in the product description, describing “these easy to apply, incredibly featherweight lashes” that “feel as light as feathers.” See attached.  Further, the attached evidence from Pinterest shows a listing for “featherweight reusable false eyelashes.” See attached. Finally, the attached evidence from Foxy Lashes features “Featherweight Hybrid Eyelash Extensions.” See attached.

 

The term “CLASSIC” is descriptive of a characteristic of trait of applicant’s goods. The attached evidence from Dash of Lash compares “Classic vs. Volume Lashes” as two types of lashes, and explains that “classic lashes” is a type of lashes in which “1 lash extension is glued to 1 natural lash” and thus “classic lashes look more natural.” See attached. Likewise, the attached evidence from LashBee compares “classic lashes” to “volume lashes” and explains, “Classic Lashing is a technique in which a single extension is applied to one, isolated natural lash.” See attached. Also, the attached evidence from EyeLash Exntesions By Rea offers a service menu categorized by “Mega Volume” and “Classic” and “Russian Volume”, offering “classic full set” and other “classic” eyelash services. See attached.

 

The term “LASHES” is the generic term for applicant’s “Artificial eyelashes” and also descriptive of a feature or purpose of applicant’s eyelash services. The attached evidence from Merriam Webster Dictionary defines “LASHES” as an “eyelash”. See attached. As the identification of goods shows, the applicant uses the term lash or eyelash to describe the goods, such as “artificial eyelashes with a broad spread of lashes designed to give an appearance of thicker, fuller lashes,” while the attached screenshot from the applicant’s website shows the applicant using the terms in the mark to describe its eyelash products which are featured in its services: “Lash extensions are synthetic fibers individually attached to each of your natural lashes.” “This, paired with custom-blended tint that will add long-lasting color and definition to your lashes.” “LASH LIFT AND TINTING elevates and curls and colors your natural lashes.” See attached.

 

Furthermore, the attached screenshots from third parties in the applicant’s industry show that it is common to use the terms in the mark to describe a feature and the very nature of applicant’s goods, as well as to describe the goods featured in applicant’s services. (See attached). For example:

 

·         http://eyelashextensionsbyrea.schedulista.com/ (“8-12 featherweight lashes per lash fan are used to give our fullest, most dramatic look!”);

·         http://www.dashoflashmiami.com/classicvsvolume (“Classic lashes are perfect for clients who already have a lot of lashes, but want to add more length. Classic lashes look more natural.”); and

·         http://eyelashexcellence.com/eyelash-extensions-kent/classic-vs-volume-extensions/ (“There are a two main types of eyelash extensions available to the client: Classic or Russian Volume… Classic lashes are one extension applied to one natural lash only”).

·         http://www.thebeautymage.com/service-menu-new (Offering “A Fill of Classic Individual lash extensions.”)

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and services is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).

 

In this case, both the individual components and the composite result are descriptive of applicant’s goods and services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and services.  Specifically, applicant is offering “LASHES” that are both “FEATHERWEIGHT” (or “light weight”) and in the “CLASSIC” style or method, as defined above. Thus, applicant is offering “FEATHERWEIGHT CLASSIC LASHES.” The applied for mark merely describes that applicant provides eyelashes that are simple and light in weight and features said type of eyelashes in its services. Therefore, registration is refused under Trademark Act Section 2(e)(1).

 

Applicant may amend to Section 2(f) or the Supplemental Register. In response to the refusal, applicant may assert a claim that the applied-for mark has acquired distinctiveness under Trademark Act Section 2(f).  Applicant may respond by (1) requesting to amend the application to assert a claim of acquired distinctiveness under Section 2(f) and (2) providing sufficient evidence to support this claim (such as verified statements of long term use, advertising and sales expenditures, examples of typical advertisements, affidavits and declarations of consumers, customer surveys).  See 15 U.S.C. §1052(f); 37 C.F.R. §2.41; TMEP §§1212.06 et seq.  This evidence must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of applicant’s product or service rather than identifying the product or service itself.  In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005). 

 

When determining whether the evidence shows the mark has acquired distinctiveness, the trademark examining attorney will consider the following six factors:  (1) association of the mark with a particular source by actual purchasers (typically measured by customer surveys linking the name to the source); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage.  See Converse, Inc. v. ITC, 909 F.3d 1110, 1120, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018) (“the Converse factors”).  “[N]o single factor is determinative.”  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq.  Rather, all factors are weighed together in light of all the circumstances to determine whether the mark has acquired distinctiveness.  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424. 

 

Applicant must first submit specimen (Amendment of Use). A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed.  37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.  When a Section 1(b) application is successfully amended to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for the amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).

 

Benefits of the Supplemental Register. Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

 

(1)        Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.

 

(2)        Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.

 

(3)        Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.

 

(4)        Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.

 

(5)        Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.

 

See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).

 

NOTE: Applicant’s disclaimer of the term “LASHES” will remain, and is required, even if applicant moves the Supplemental Register.

 

Considering all of the above, the refusal under Trademark Act Section 2(e)1 is hereby made FINAL.

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

Becker, Joseph (Trademark)

/Joseph Becker/

Trademark Examining Attorney, Law Office 117

United States PTO

(571) 270-5493

Joseph.Becker1@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 12, 2020 for

U.S. Trademark Application Serial No. 88417474

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Becker, Joseph (Trademark)

/Joseph Becker/

Trademark Examining Attorney, Law Office 117

United States PTO

(571) 270-5493

Joseph.Becker1@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from March 12, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”