To: | Biotherm (dfinguerra-ducharme@pryorcashman.com) |
Subject: | U.S. Trademark Application Serial No. 88644160 - FRENCH BIOSCIENCE SKINCARE SINCE - 20321.01035 |
Sent: | January 18, 2020 11:42:15 AM |
Sent As: | ecom121@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88644160
Mark: FRENCH BIOSCIENCE SKINCARE SINCE
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Correspondence Address:
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Applicant: Biotherm
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Reference/Docket No. 20321.01035
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: January 18, 2020
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
I. SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
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/or 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).
Applicant has applied to register the mark FRENCH BIOSCIENCE SKINCARE SINCE 1952 for use in connection with “Perfume, eau de toilette; gels, non-medicated salts for the bath and the shower; toilet soaps, body deodorants; cosmetics, namely, creams, milks, lotions, gels and powders for the face, the body and the hands; non-medicated sun care preparations; make-up preparations; non-medicated shampoos, gels, sprays, mousses and balms for hair styling and hair care; hair lacquers; hair colouring and hair decolorant preparations; permanent hair waving and hair curling preparations; essential oils for personal use; all the foregoing goods made in France or made from products made in France,” in International Class 003.
In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. The applicant has disclaimed the words “FRENCH” and “SKINCARE” thereby acknowledging that these terms are descriptive. E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006). Additionally, the attached evidence shows that the term “BIOSCIENCE” refers to the application of any of the life sciences, and the attached industry websites like Celage Bioscience, VF Bioscience, HSN (Beauty Bioscience), Medex Bio Science Cosmetics, Marine Essence Biosciences, and Clever Bioscience demonstrate that the wording “BIOSCIENCE” is commonly used to describe personal care products as featuring the application of life science dealing with the biological aspects of living organisms in the products provided. The wording “SINCE 1952” is also informational wording which merely describes the year of applicant’s business origins. See dictionary entries for “since”; see also applicant’s website. Determining whether a term functions as a trademark or service mark depends on how such matter would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d at 1862; TMEP §1202.04. “The more commonly a [term] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].” In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04. The wording “SINCE” along with a year is commonly used across various industries to convey information about the user’s year of business origins or establishment, as in this case, shown by the applicant’s website. As such, the wording FRENCH BIOSCIENCE SKINCARE SINCE 1952 merely describes a feature and characteristic of applicant’s goods in that they include skin care products from France applying life science, and provided by a company whose origins date back to 1952.
Accordingly, the proposed mark is merely descriptive, and registration is refused on the Principal Register under Section 2(e)(1) of the Trademark Act.
II. SUPPLEMENTAL REGISTER NOT AVAILABLE ADVISORY
If applicant files an acceptable allegation of use and also amends 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 an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
(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).
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action.
/Amer Raja/
Amer Raja
Examining Attorney
Law Office 121
(571) 270 5936
amer.raja@uspto.gov
RESPONSE GUIDANCE