Coty Germany GmbH
Cosmetics
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK EXAMINING DIVISION
APPLICANT : Coty Germany GmbH )
)
TRADEMARK : MOISTURE RENEW ) Tina Brown
SHEER & SHINE )
) Examining Attorney
SERIAL NO. : 76/719,525 ) Law Office 118
)
FILED : October 20, 2015 )
OFFICE ACTION RESPONSE
Applicant has received and reviewed the Office Action dated July 25, 2016, regarding the
above-referenced application and provides the following response.
I. 2(F) CLAIM OF ACQUIRED DISTINCTIVENESS IN PART
Applicant is the owner of U.S. Registration No. 4893207 for the mark MOISTURE
RENEW for cosmetics for the lips, which was registered on January 26, 2016 with a 2(f) claim
of acquired distinctiveness. Pursuant to T.M.E.P. § 1212.02(f)(i), Applicant therefore asserts a
claim of acquired distinctiveness with regard to the MOISTURE RENEW portion of its mark
based on its ownership of this prior registration, which is active on the Principal Register for
goods that are sufficiently similar to the cosmetics identified in the Application.
II. APPLICANTS MARK IS NOT MERELY DESCRIPTIVE OF
APPLICANTS GOODS
Registration of Applicants mark has been initially refused under Section 2(e)(1) of the
Lanham Act, 15 U.S.C. § 1052(e)(1), on the basis that Applicants mark MOISTURE RENEW
SHEER & SHINE is allegedly merely descriptive of Applicants goods, namely cosmetics. As
stated above, Applicant has entered a claim of acquired distinctiveness in part with regard to the
MOISTURE RENEW portion of its mark. That amendment alone is sufficient to overcome the
1
US2008 11458091 1
2(e)(1) refusal since it renders the mark as a whole as distinctive. In any event, Applicant
respectfully submits that the remaining portion of its mark, SHEER & SHINE, when considered
in its entirety, is not descriptive, but is instead inherently distinctive. Based on the foregoing,
Applicant requests withdrawal of the Section 2(e)(1) refusal.
A. SHEER & SHINE Must be Considered In Its Entirety.
The Examining Attorney contends that Applicants mark is merely descriptive because
[l]ipsticks that are sheer and shine are commonly offered. However, the Supreme Court
mandates that, [t]he commercial impression of a trademark is derived from it as a whole, not
from its elements separated and considered in detail. For this reason it should be considered in
its entirety . . . . Estate of P.D. Beckwith, Inc. v. Commr of Patents, 252 U.S. 538, 545-46
(1920). In this case, the holding of In re Colonial Stores, Inc. is instructive:
While it may be true that each of the individual words in the present applicants mark
are . . . independently unregistrable, . . . their unusual association or arrangement in the
Applicants mark results in a unique and catchy expression which does not, without some
analysis and rearrangement of its components suggest the contents of applicants goods.
394 F.2d 549 (C.C.P.A. 1968) (SUGAR & SPICE not merely descriptive of bakery products).
Under this rule, the combination of allegedly descriptive elements can result in a mark that is
non-descriptive and fully registrable as a whole. See, e.g., In re Chesapeake Corp. of Va., 420
F.2d 754, 75556 (C.C.P.A. 1970) (SUPERWATERFINISH papers not descriptive of paper);
Firestone Tire & Rubber Co. v. Goodyear Tire & Rubber Co., 186 U.S.P.Q. 557, 559 (T.T.A.B.
1975) (BIASTEEL not descriptive of automobile tires), affd, 189 F.2d 348 (C.C.P.A. 1976).
Because the Examining Attorney has not considered the overall meaning of SHEER &
SHINE, but rather dissected the mark into sheer and shine the methodology underlying the
refusal is impermissible. As discussed further below, SHEER & SHINE, when considered in its
2
US2008 11458091 1
entirety and in connection with the goods identified in the Application, is not merely descriptive,
but is instead inherently distinctive.
B. The Meaning of SHEER & SHINE, When Considered in Its Entirety, Is Not
Descriptive.
As the Examining Attorney is aware, [a] mark is suggestive if it requires imagination,
thought and perception to reach a conclusion as to the nature of the goods. Stix Prods. v. United
Mfrs. Inc., 259 F. Supp. 479, 488 (S.D.N.Y. 1968) (holding CONTACT for self-adhesive
decorative plastic suggestive instead of descriptive); see also Estee Lauder, Inc. v. Gap, Inc., 42
U.S.P.Q.2d 1228, 1232 (2d Cir. 1997) (affirming finding that the term 100% was suggestive,
and not descriptive, of moisturizer because consumers would need additional information in
order to perceive the nature of the goods sold by applicant); In re John H. Breck, Inc., 150 USPQ
397, 398 (TTAB 1966) (TINT TONE held suggestive for hair coloring, the Board finding that
the words overlap in significance and their combination is somewhat incongruous or redundant
and does not immediately convey the nature of the product).
In this case, when it is properly considered as a unitary expression, SHEER & SHINE is
distinct. Like the TINT TONE mark for hair coloring discussed in In re John H. Breck, Inc., the
mark SHEER & SHINE overlap in significance and their combination is somewhat incongruous
or redundant when applied to cosmetics. 150 USPQ 397, 398 (TTAB 1966) . The term sheer,
as defined by the Meriam Webster definition cited by the Examining Attorney ,means very thin
or transparent. SHINE means to give off light or to have a smooth surface that reflects
light, again according to the definition cited by the Examining Attorney. As a result, a sheer
and shine have a somewhat incongruous or redundant meaning. Generally, something that is
transparent does not reflect or give off light, because light passes through, rather than reflecting
off, transparent objects. To the extent the light can be thought of as passing through a transparent
3
US2008 11458091 1
surface and reflecting off of the other side, the terms then have a meaning that is redundant with
regard to the feature at issue. In In re John H. Beck, Inc. te Board held that this type of
redundancy is a form of incongruity that indicates that a mark is suggestive. Id.
The Boards decision In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983) is also
instructive. In that case, the Board found inappropriate a requirement for a disclaimer of
LIGHT apart from the mark LIGHT N LIVELY for reduced calorie mayonnaise stating
that the merely descriptive significance of the term LIGHT is lost in the mark as a whole.
Moreover, the expression as a whole has an alliterative lilting cadence which encourages persons
encountering it to perceive it as a whole. Id. Like LIGHT N LIVELY, the terms sheer and
shine lose any descriptive significance with regard to cosmetics when combined into a unitary
mark. The alliterative cadence of SHEER & SHINE contributes to its perception as a unitary
mark, with a unique non-descriptive meaning.
As further support that consumers will view SHEER & SHINE as a mark rather than a
descriptor, Applicant notes that the definitions provided by the Examining Attorney apply
inconsistent parts of speech. Sheer is an adjective while shine is a verb. (Applicant draws
the Examining Attorneys attention to its use of the verb shine, not the adjective shiny).
This incongruity draws consumers attention to the fact that SHEER & SHINE functions as a
mark, not merely two adjectives describing the cosmetics, as asserted by the Examining
Attorney.
As the Examining Attorney is aware, it is well-established that [t]he mark that comprises
the double entendre will not be refused registration as merely descriptive if one of its meanings
is not merely descriptive in relation to the goods or services. TMEP § 1213.05(c); see Blisscraft
of Hollywood v. United Plastics Co., 294 F.2d 694, 699-700 (2d Cir. 1961) (finding that the mark
4
US2008 11458091 1
POLY PITCHER for polyethylene pitchers is both descriptive of the plastic ingredient of the
product and is reminiscent or suggestive of Molly Pitcher of revolutionary times); Am. Historic
Racing Motorcycle Assn, Ltd. v. Team Obsolete Promotions, 33 F. Supp. 2d 1000, 1005 (M.D.
Fla. 1998), affd, 233 F.3d 577 (11th Cir. 2000) (finding that BEARS, an abbreviation for the
descriptive phrase British-European-American Racing Series, is arbitrary, not descriptive,
because of the double entendre of an animal and an abbreviation).
As stated above, the Examining Attorney interprets the terms SHEER and SHINE based
on their definitions as an adjective and a verb, respectively. However, when SHEER and SHINE
are both defined as verbs, the overall phrase has a new meaning. As stated in the definition from
Merriam-Webster provided by the Examining Attorney, sheer as a verb means to turn
suddenly or to deviate from a course. Further, shine as a verb means be[ing] very good
or successful at an activity, as stated in the definition from Merriam-Webster provided by the
Examining Attorney. Therefore, an alternative meaning of SHEER & SHINE is to deviate from
a course and then be very good or successful at an activity. In this play on words, the phrase
SHEER & SHINE can be interpreted to encourage the women who use Applicants cosmetics to
deviate from the standard path (sheer) and succeed on a new path (shine). In view of the
multiple meanings of both terms included in the definition provided by the Examiner, many of
which are plausible (but not descriptive) meanings when used in the context of Applicants
goods, understanding the nature of Applicants goods requires multiple cognitive steps. This is
the hallmark of a suggestive, rather than merely descriptive mark.
Based on all of this information, Applicant asserts that its mark is inherently distinct,
rather than merely descriptive, and is entitled to registration on the Principal Register.
5
US2008 11458091 1
C. Any Doubt Should be Resolved in Favor of Applicant.
[A]n applicant need not conclusively establish distinctiveness but need only establish a
prima facie case to warrant publication of a mark for opposition. In re Capital Formation
Counselors, Inc., 219 U.S.P.Q. 916, 919 (T.T.A.B. 1983) (cited with approval in Yamaha Intl
Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1576 (Fed. Cir. 1988)). Moreover, any doubt with
respect to whether a mark is descriptive or suggestive must be resolved in favor of the applicant,
and borderline cases should pass to publication. See In re Grand Metro. Foodservice Inc., 30
U.S.P.Q.2d 1974, 1976 (T.T.A.B. 1994) (finding MUFFUNS for muffins not merely
descriptive); see also In re Priefert Mfg. Co., Inc., 222 U.S.P.Q. 731, 733 (T.T.A.B. 1984)
(finding HAY DOLLY not merely descriptive of trailer for hauling hay); In re Hormel & Co.,
218 U.S.P.Q. 286, 287 (T.T.A.B. 1983) (finding FASTN EASY not merely descriptive of pre-
cooked meats). As the Board held in In re Gourmet Bakers, Inc.,
The distinction between marks which are merely descriptive and marks which
are suggestive is so nebulous that more often than not it is determined largely
on a subjective basis with any doubt in the matter being resolved in applicants
behalf on the theory that any person who believes that he would be damaged by
the registration will have an opportunity under Section 13 to oppose the
registration of the mark and to present evidence, usually not present in the ex
parte application, to that effect.
173 U.S.P.Q. 565, 565 (T.T.A.B. 1972).
Applicant has established a prima facie case of the suggestive nature of Applicants mark
such that the application should be passed to publication. Any doubts concerning the mark
should be resolved in Applicants favor and the refusal withdrawn.
6
US2008 11458091 1
III. CONCLUSION
Having fully responded to the issues raised in the Office Action, Applicant respectfully
requests that the refusal raised in the Office Action be withdrawn and that its application be
approved for publication.
Date: January 24, 2017 /Tracie Siddiqui/
Jason Vogel
Kilpatrick Townsend & Stockton LLP
The Grace Building
1114 Avenue of the Americas
New York, NY, 10036-7703
Telephone: (212) 775-8723
Facsimile: (212) 775-8823
Tracie Siddiqui
Kilpatrick Townsend & Stockton LLP
607 14th Street NW, Suite 900
Washington, DC 20005
Telephone: (202) 508-5862
Facsimile: (202) 508-0042
Attorneys for Applicant
7
US2008 11458091 1
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK EXAMINING DIVISION
APPLICANT : Coty Germany GmbH )
)
TRADEMARK : MOISTURE RENEW ) Tina Brown
SHEER & SHINE )
) Examining Attorney
SERIAL NO. : 76/719,525 ) Law Office 118
)
FILED : October 20, 2015 )
OFFICE ACTION RESPONSE
Applicant has received and reviewed the Office Action dated July 25, 2016, regarding the
above-referenced application and provides the following response.
I. 2(F) CLAIM OF ACQUIRED DISTINCTIVENESS IN PART
Applicant is the owner of U.S. Registration No. 4893207 for the mark MOISTURE
RENEW for cosmetics for the lips, which was registered on January 26, 2016 with a 2(f) claim
of acquired distinctiveness. Pursuant to T.M.E.P. § 1212.02(f)(i), Applicant therefore asserts a
claim of acquired distinctiveness with regard to the MOISTURE RENEW portion of its mark
based on its ownership of this prior registration, which is active on the Principal Register for
goods that are sufficiently similar to the cosmetics identified in the Application.
II. APPLICANTS MARK IS NOT MERELY DESCRIPTIVE OF
APPLICANTS GOODS
Registration of Applicants mark has been initially refused under Section 2(e)(1) of the
Lanham Act, 15 U.S.C. § 1052(e)(1), on the basis that Applicants mark MOISTURE RENEW
SHEER & SHINE is allegedly merely descriptive of Applicants goods, namely cosmetics. As
stated above, Applicant has entered a claim of acquired distinctiveness in part with regard to the
MOISTURE RENEW portion of its mark. That amendment alone is sufficient to overcome the
1
US2008 11458091 1
2(e)(1) refusal since it renders the mark as a whole as distinctive. In any event, Applicant
respectfully submits that the remaining portion of its mark, SHEER & SHINE, when considered
in its entirety, is not descriptive, but is instead inherently distinctive. Based on the foregoing,
Applicant requests withdrawal of the Section 2(e)(1) refusal.
A. SHEER & SHINE Must be Considered In Its Entirety.
The Examining Attorney contends that Applicants mark is merely descriptive because
[l]ipsticks that are sheer and shine are commonly offered. However, the Supreme Court
mandates that, [t]he commercial impression of a trademark is derived from it as a whole, not
from its elements separated and considered in detail. For this reason it should be considered in
its entirety . . . . Estate of P.D. Beckwith, Inc. v. Commr of Patents, 252 U.S. 538, 545-46
(1920). In this case, the holding of In re Colonial Stores, Inc. is instructive:
While it may be true that each of the individual words in the present applicants mark
are . . . independently unregistrable, . . . their unusual association or arrangement in the
Applicants mark results in a unique and catchy expression which does not, without some
analysis and rearrangement of its components suggest the contents of applicants goods.
394 F.2d 549 (C.C.P.A. 1968) (SUGAR & SPICE not merely descriptive of bakery products).
Under this rule, the combination of allegedly descriptive elements can result in a mark that is
non-descriptive and fully registrable as a whole. See, e.g., In re Chesapeake Corp. of Va., 420
F.2d 754, 75556 (C.C.P.A. 1970) (SUPERWATERFINISH papers not descriptive of paper);
Firestone Tire & Rubber Co. v. Goodyear Tire & Rubber Co., 186 U.S.P.Q. 557, 559 (T.T.A.B.
1975) (BIASTEEL not descriptive of automobile tires), affd, 189 F.2d 348 (C.C.P.A. 1976).
Because the Examining Attorney has not considered the overall meaning of SHEER &
SHINE, but rather dissected the mark into sheer and shine the methodology underlying the
refusal is impermissible. As discussed further below, SHEER & SHINE, when considered in its
2
US2008 11458091 1
entirety and in connection with the goods identified in the Application, is not merely descriptive,
but is instead inherently distinctive.
B. The Meaning of SHEER & SHINE, When Considered in Its Entirety, Is Not
Descriptive.
As the Examining Attorney is aware, [a] mark is suggestive if it requires imagination,
thought and perception to reach a conclusion as to the nature of the goods. Stix Prods. v. United
Mfrs. Inc., 259 F. Supp. 479, 488 (S.D.N.Y. 1968) (holding CONTACT for self-adhesive
decorative plastic suggestive instead of descriptive); see also Estee Lauder, Inc. v. Gap, Inc., 42
U.S.P.Q.2d 1228, 1232 (2d Cir. 1997) (affirming finding that the term 100% was suggestive,
and not descriptive, of moisturizer because consumers would need additional information in
order to perceive the nature of the goods sold by applicant); In re John H. Breck, Inc., 150 USPQ
397, 398 (TTAB 1966) (TINT TONE held suggestive for hair coloring, the Board finding that
the words overlap in significance and their combination is somewhat incongruous or redundant
and does not immediately convey the nature of the product).
In this case, when it is properly considered as a unitary expression, SHEER & SHINE is
distinct. Like the TINT TONE mark for hair coloring discussed in In re John H. Breck, Inc., the
mark SHEER & SHINE overlap in significance and their combination is somewhat incongruous
or redundant when applied to cosmetics. 150 USPQ 397, 398 (TTAB 1966) . The term sheer,
as defined by the Meriam Webster definition cited by the Examining Attorney ,means very thin
or transparent. SHINE means to give off light or to have a smooth surface that reflects
light, again according to the definition cited by the Examining Attorney. As a result, a sheer
and shine have a somewhat incongruous or redundant meaning. Generally, something that is
transparent does not reflect or give off light, because light passes through, rather than reflecting
off, transparent objects. To the extent the light can be thought of as passing through a transparent
3
US2008 11458091 1
surface and reflecting off of the other side, the terms then have a meaning that is redundant with
regard to the feature at issue. In In re John H. Beck, Inc. te Board held that this type of
redundancy is a form of incongruity that indicates that a mark is suggestive. Id.
The Boards decision In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983) is also
instructive. In that case, the Board found inappropriate a requirement for a disclaimer of
LIGHT apart from the mark LIGHT N LIVELY for reduced calorie mayonnaise stating
that the merely descriptive significance of the term LIGHT is lost in the mark as a whole.
Moreover, the expression as a whole has an alliterative lilting cadence which encourages persons
encountering it to perceive it as a whole. Id. Like LIGHT N LIVELY, the terms sheer and
shine lose any descriptive significance with regard to cosmetics when combined into a unitary
mark. The alliterative cadence of SHEER & SHINE contributes to its perception as a unitary
mark, with a unique non-descriptive meaning.
As further support that consumers will view SHEER & SHINE as a mark rather than a
descriptor, Applicant notes that the definitions provided by the Examining Attorney apply
inconsistent parts of speech. Sheer is an adjective while shine is a verb. (Applicant draws
the Examining Attorneys attention to its use of the verb shine, not the adjective shiny).
This incongruity draws consumers attention to the fact that SHEER & SHINE functions as a
mark, not merely two adjectives describing the cosmetics, as asserted by the Examining
Attorney.
As the Examining Attorney is aware, it is well-established that [t]he mark that comprises
the double entendre will not be refused registration as merely descriptive if one of its meanings
is not merely descriptive in relation to the goods or services. TMEP § 1213.05(c); see Blisscraft
of Hollywood v. United Plastics Co., 294 F.2d 694, 699-700 (2d Cir. 1961) (finding that the mark
4
US2008 11458091 1
POLY PITCHER for polyethylene pitchers is both descriptive of the plastic ingredient of the
product and is reminiscent or suggestive of Molly Pitcher of revolutionary times); Am. Historic
Racing Motorcycle Assn, Ltd. v. Team Obsolete Promotions, 33 F. Supp. 2d 1000, 1005 (M.D.
Fla. 1998), affd, 233 F.3d 577 (11th Cir. 2000) (finding that BEARS, an abbreviation for the
descriptive phrase British-European-American Racing Series, is arbitrary, not descriptive,
because of the double entendre of an animal and an abbreviation).
As stated above, the Examining Attorney interprets the terms SHEER and SHINE based
on their definitions as an adjective and a verb, respectively. However, when SHEER and SHINE
are both defined as verbs, the overall phrase has a new meaning. As stated in the definition from
Merriam-Webster provided by the Examining Attorney, sheer as a verb means to turn
suddenly or to deviate from a course. Further, shine as a verb means be[ing] very good
or successful at an activity, as stated in the definition from Merriam-Webster provided by the
Examining Attorney. Therefore, an alternative meaning of SHEER & SHINE is to deviate from
a course and then be very good or successful at an activity. In this play on words, the phrase
SHEER & SHINE can be interpreted to encourage the women who use Applicants cosmetics to
deviate from the standard path (sheer) and succeed on a new path (shine). In view of the
multiple meanings of both terms included in the definition provided by the Examiner, many of
which are plausible (but not descriptive) meanings when used in the context of Applicants
goods, understanding the nature of Applicants goods requires multiple cognitive steps. This is
the hallmark of a suggestive, rather than merely descriptive mark.
Based on all of this information, Applicant asserts that its mark is inherently distinct,
rather than merely descriptive, and is entitled to registration on the Principal Register.
5
US2008 11458091 1
C. Any Doubt Should be Resolved in Favor of Applicant.
[A]n applicant need not conclusively establish distinctiveness but need only establish a
prima facie case to warrant publication of a mark for opposition. In re Capital Formation
Counselors, Inc., 219 U.S.P.Q. 916, 919 (T.T.A.B. 1983) (cited with approval in Yamaha Intl
Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1576 (Fed. Cir. 1988)). Moreover, any doubt with
respect to whether a mark is descriptive or suggestive must be resolved in favor of the applicant,
and borderline cases should pass to publication. See In re Grand Metro. Foodservice Inc., 30
U.S.P.Q.2d 1974, 1976 (T.T.A.B. 1994) (finding MUFFUNS for muffins not merely
descriptive); see also In re Priefert Mfg. Co., Inc., 222 U.S.P.Q. 731, 733 (T.T.A.B. 1984)
(finding HAY DOLLY not merely descriptive of trailer for hauling hay); In re Hormel & Co.,
218 U.S.P.Q. 286, 287 (T.T.A.B. 1983) (finding FASTN EASY not merely descriptive of pre-
cooked meats). As the Board held in In re Gourmet Bakers, Inc.,
The distinction between marks which are merely descriptive and marks which
are suggestive is so nebulous that more often than not it is determined largely
on a subjective basis with any doubt in the matter being resolved in applicants
behalf on the theory that any person who believes that he would be damaged by
the registration will have an opportunity under Section 13 to oppose the
registration of the mark and to present evidence, usually not present in the ex
parte application, to that effect.
173 U.S.P.Q. 565, 565 (T.T.A.B. 1972).
Applicant has established a prima facie case of the suggestive nature of Applicants mark
such that the application should be passed to publication. Any doubts concerning the mark
should be resolved in Applicants favor and the refusal withdrawn.
6
US2008 11458091 1
III. CONCLUSION
Having fully responded to the issues raised in the Office Action, Applicant respectfully
requests that the refusal raised in the Office Action be withdrawn and that its application be
approved for publication.
Date: January 24, 2017 /Tracie Siddiqui/
Jason Vogel
Kilpatrick Townsend & Stockton LLP
The Grace Building
1114 Avenue of the Americas
New York, NY, 10036-7703
Telephone: (212) 775-8723
Facsimile: (212) 775-8823
Tracie Siddiqui
Kilpatrick Townsend & Stockton LLP
607 14th Street NW, Suite 900
Washington, DC 20005
Telephone: (202) 508-5862
Facsimile: (202) 508-0042
Attorneys for Applicant
7
US2008 11458091 1