To: | Black Girl Sunscreen LLC (trademarks@cooley.com) |
Subject: | U.S. Trademark Application Serial No. 88942410 - BLACK GIRL SUNSCREEN - 340559-20000 |
Sent: | March 11, 2021 10:15:22 AM |
Sent As: | ecom104@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88942410
Mark: BLACK GIRL SUNSCREEN
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Correspondence Address: 1299 PENNSYLVANIA AVENUE, NW, SUITE 700
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Applicant: Black Girl Sunscreen LLC
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Reference/Docket No. 340559-20000
Correspondence Email Address: |
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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 11, 2021
Applicant’s response of March 2, 2021 has been received and reviewed by the assigned examining attorney. Applicant’s disclaimer of SUNSCREEN has been accepted and made of record. Applicant’s arguments against the refusal of record were carefully considered but were not found to be persuasive. Accordingly, the refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below. See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).
Registration is refused because the applied-for mark merely describes the intended users of applicant’s services and the goods sold through the services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods. TMEP §1209.01(b); see, e.g., DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (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)).
“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark describes only one significant function, attribute, or property. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371
Applicant has applied for registration of the mark BLACK GIRL SUNSCREEN for “Sunscreen preparations” in Class 3. Applicant’s proposed mark is merely a combination of descriptive words that together merely describe applicant’s goods. The term BLACK GIRL describes the intended user of the applicant’s goods, and the term SUNSCREEN describes the purpose and use of applicant’s goods. The term “BLACK” is defined as “of or relating to African American people or their culture” (See previously attached evidence at http://www.merriam-webster.com/dictionary/black ). The term “GIRL” is defined as “a young woman” or “a single or married woman of any age”. (See previously attached definitions found at http://www.merriam-webster.com/dictionary/girl ). Together, these words describe the intended users of the goods as African American girls or young black women.
A mark that describes an intended user or group of users of a product or service is merely descriptive. E.g., In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (holding GASBUYER merely descriptive of intended user of risk management services in the field of pricing and purchasing natural gas); In re Camel Mfg. Co., 222 USPQ 1031 (TTAB 1984) (holding MOUNTAIN CAMPER merely descriptive of intended users of retail and mail order services in the field of outdoor equipment and apparel); see TMEP §1209.03(i).
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).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services. Specifically, sunscreen for black girls or young women.
Applicant contends that the combination of words creates an incongruity or non-descriptive meaning. However, applicant’s argument that some people think people with dark skin do not need sunscreen does not create an unexpected or incongruous meaning in the mark itself. Attached is evidence that skincare and sunscreen products are commonly marketed to black women and girls. See http://www.pinterest.com/pin/323837029433476398/ Applicant also argues that the words BLACK GIRL have been registered in combination with other words for various other products. However, the examples provided by applicant are marks that include additional distinctive wording, and the goods and services are dissimilar to the services in the present case. In any event, prior decisions and actions of other trademark examining attorneys in applications for other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (citing In re Shinnecock Smoke Shop, 571 F.3d 1171, 1174, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009); In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)).
Accordingly, since the proposed mark merely describes the intended users of applicant’s services, and the goods sold in the stores, registration must be refused under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
Supplemental Register Suggested
The applied-for mark has been refused registration on the Principal Register. Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816. Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal. TMEP §816.04.
Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:
The registrant may use the registration symbol ®;
The registration is protected against registration of a confusingly similar mark under Trademark Act Section 2(d);
The registrant may bring suit for infringement in federal court; and
The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.
See 15 U.S.C. §§1052(d), 1091, 1094; TMEP §815.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
Questions
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the requirements in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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).
/John M. Wilke/
Attorney Examiner
Law Office 104
571-272-5871
john.wilke@uspto.gov
RESPONSE GUIDANCE