FALLIEN COSMECEUTICALS, LTD.

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

APPLICANT: Fallien Cosmeceuticals, Ltd.

SERIAL NO.: 76/718,528

TRADEMARK: SKIN FIRM TECHNOLOGY

FILING DATE: October 5, 2015

CLASS: 3

To: Commissioner for Trademarks
P.O. Box 1451
Alexandria, Virginia 22313-1451

Attn: William D. Jackson, Esquire
Trademark Examining Attorney
Law Office 117

RESPONSE TO OFFICE ACTION DATED JANUARY 7, 2016

In an Office Action dated January 7, 2016, the Examining

Attorney preliminarily refused to register Applicant’s mark

because he believes it merely describes Applicant’s goods.

Applicant respectfully submits the following response and

amendment in support of registration.

I. DISCLAIMER OF “SKIN”

Applicant respectfully requests that the Examining Attorney

amend the application to include the following disclaimer:

“No claim is made to the exclusive right to use ‘SKIN’

apart from the mark as shown.”

103223.00101/102920656v.2
II. SKIN FIRM TECHNOLOGY IS NOT MERELY DESCRIPTIVE

The Examining Attorney has preliminarily refused to

register Applicant’s SKIN FIRM TECHNOLOGY mark, because he

believes it to be merely descriptive of Applicant’s goods, i.e.

sun screen and skin creams.

Based on the following analysis and Applicant’s disclaimer

of the “SKIN” portion of its mark, Applicant respectfully

requests the Examining Attorney withdraw his refusal and pass

Applicant’s mark on to publication.

A. Standard for Descriptiveness

Addressing the subject of descriptive wording in the case

In re Gyulay, the Court of Appeals for the Federal Circuit

recognized the language of the Trademark Trial and Appeal Board

establishing that descriptiveness refusals are proper only when

“the mark merely describes a significant characteristic of the

goods.” 820 F.2d 1216, 1217, 3 U.S.P.Q.2d 1009, 1009 (Fed. Cir.

1987). The key word in this language is the word significant.

Indeed, the relevant characteristic in the determination of

descriptiveness must be significant. It cannot logically be a

minor, miniscule, or deeply shrouded characteristic. This is a

fundamental point not to be overlooked.

The Federal Circuit continues as follows: Whether a given

mark is suggestive or merely descriptive depends on whether the

mark ‘immediately conveys . . . knowledge of the ingredients,

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qualities, or characteristics of the goods . . . with which it

is used,’ or whether ‘imagination, thought, or perception is

required to reach a conclusion on the nature of the goods.’ Id.

(quoting In re Qwik-Print Copy Shops, Inc., 616 F.2d 523, 525,

205 U.S.P.Q. 505 , 507 (C.C.P.A. 1980)) (emphasis added;

omission in original). “The categories are in actuality ‘central

tones in a spectrum . . . and are frequently difficult to

apply.’” Id. (quoting Soweco, Inc. v. Shell Oil, Co., 617 F.2d

1178, 1183, 207 U.S.P.Q. 278, 282 (5th Cir. 1980) (omission in

original)).

It is clear, therefore, that a mark or portion thereof,

must immediately convey knowledge of a significant

characteristic to support a descriptiveness refusal. The

commercial impression cannot be a time-consuming, tenuous, or

pensive connection – it must be immediate. Where a mark or a

portion thereof, neither immediately conveys knowledge about a

characteristic of the identified goods and/or services, nor is

that characteristic significant from the relevant consumer’s

point of view, the wording fails to satisfy the legal standard

for descriptiveness and accordingly must be held registrable.

In contrast to descriptive marks, a mark or portion

thereof, is suggestive if it requires a consumer to employ at

least some degree of thought, imagination, and perception to

determine the nature of the goods or services offered in

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connection with such wording. See In re Gyulay, 820 F.2d at

1216, 3 U.S.P.Q.2d at 1009. In other words, if “imagination,

thought or perception is required to reach a conclusion on the

nature of the goods,” then it is a suggestive mark entitled to

protection. Id. (internal quotation marks omitted); see also

Gen. Mills Inc. v. Kellogg Co., 824 F.2d 622, 3 U.S.P.Q.2d 1442

(8th Cir. 1987).

Furthermore, “a designation does not have to be devoid of

all meaning in relation to the goods/services to be

registrable.” T.M.E.P. § 1209.01(a) (Apr. 2014); see, e.g.,

HQ Network Sys. v. Exec. Headquarters, 755 F. Supp. 1110,

18 U.S.P.Q.2d 1897, 1907 (D. Mass. 1991) (“‘HEADQUARTERS

COMPANIES’ is on the cusp between being descriptive and being

suggestive. It is, if you will, a suggestive mark with

descriptive elements.”). Understanding that a suggestive mark

may, too, carry a certain meaning or significance is crucial to

the case at hand.

Emanating from the aforementioned wealth of case law, it is

clear that the standard for descriptiveness requires a basis of

significance and immediacy. Descriptiveness, moreover, is a

hurdle that can be eliminated through the creation of a new and

suggestive whole. While not without its ambiguity, the

descriptiveness standard must be properly applied with all due

deference to Applicant.

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B. “SKIN FIRM TECHNOLOGY” is a Registrable Unitary

Mark.

1. A Descriptiveness Refusal is Improper for a

Unitary Phrase.

At its core, and as explained below, Applicant’s mark SKIN

FIRM TECHNOLOGY is a unitary phrase for which a descriptiveness

refusal is inappropriate. Describing marks that constitute

registrable unitary phrases – and with particular relevance to

unitary marks such as Applicant’s SKIN FIRM TECHNOLOGY – the

T.M.E.P. provides that a phrase is deemed unitary when it

“derives its meaning when viewed as a whole, with the

combination of the components having a distinct commercial

impression that is independent of the constituent elements.”

Id. § 1213.05(b) (Jan. 2015) (citing Dena Corp. v. Belvedere

Int’l, Inc., 950 F.2d 1555, 1561, 21 U.S.P.Q.2d 1047, 1052 (Fed.

Cir. 1991)).

2. “SKIN FIRM TECHNOLOGY” is Unitary.

Applicant respectfully submits that, under the appropriate

standard as set forth above, Applicant’s mark SKIN FIRM

TECHNOLOGY is a unitary and registrable unique source identifier

of Applicant’s goods. Applicant’s mark combines three words that

suggest the sophistication of its creams and preparations that

are cutting-edge or technologically advanced, and uses them to

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identify its goods. Consumers will appreciate that these terms

are used suggestively.

Applicant’s unique mark SKIN FIRM TECHNOLOGY creates an

inherently distinctive commercial impression that surpasses the

respective meanings of the mark’s individual components. The

inextricable combination of the terms “SKIN”, “FIRM”, and

“TECHNOLOGY” for Applicant’s goods converts the individual

components of Applicant’s mark into an inseparable and entirely

integrated, unitary, and suggestive whole that serves only as a

unique source identifier for Applicant. The trademark

significance of SKIN FIRM TECHNOLOGY is thus derived from the

overall suggestive commercial impression engendered by

Applicant’s mark as a whole. Indeed, in the subject case, the

whole is undoubtedly greater than the sum of its parts.

Accordingly, because SKIN FIRM TECHNOLOGY is a distinguishing,

suggestive, and unitary phrase, Applicant’s mark is

unquestionably registrable on the Principal Register. Applicant

therefore respectfully requests that the subject mark be

approved for publication.

3. “SKIN FIRM TECHNOLOGY” is Suggestive, Not Merely

Descriptive.

Even if Applicant’s mark were not unitary, contrary to the

Examining Attorney’s position, Applicant’s mark is not merely

descriptive of the applied-for goods as it by no means

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immediately describes or conveys knowledge of a significant

characteristic of Applicant’s sun screens and creams to relevant

consumers.

Initially, it bears emphasizing that the evidence provided

by the Examining Attorney does not establish that Applicant’s

mark “immediately describes sun screen and skin cream that

employs scientific knowledge to make skin physically solid or

resilient.” While the Examining Attorney has provided dictionary

definitions of the words “skin”, “firm”, and “technology”, under

scrutiny it becomes clear that those definitions do not

demonstrate that Applicant’s mark immediately describes the

intended purpose or audience of Applicant’s goods. In fact, the

Examining Attorney has not provided any evidence, other than

dictionary definitions, that demonstrates the descriptiveness of

Applicant’s mark or that consumers would immediately identify

Applicant’s mark as merely a descriptor of Applicant’s goods.

Absent prior exposure to “SKIN FIRM TECHNOLOGY” in

connection with sun screen and skin creams, it is impossible for

consumers immediately to recognize the Applicant’s mark as a

descriptor of such goods as the phrase is not capable of

immediately conveying knowledge about the goods in connection

with which such an ambiguous and versatile phrase is used. While

consumers of Applicant’s goods may have a general understanding

of the words “SKIN”, “FIRM”, and “TECHNOLOGY” in different

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contexts and ultimately perceive a suggestive association

between the innovative nature of Applicant’s goods, the novel

use of those terms in as the identifier for Applicant’s creams

requires consumers first to engage in at least a minimal amount

of thought and reasoning to develop an understanding of the

meaning of mark in connection with Applicant’s goods. In other

words, SKIN FIRM TECHNOLOGY is suggestive of a feature or

characteristic of Applicant’s goods, but it by no means

immediately conveys knowledge about Applicant’s them; rather,

any link between SKIN FIRM TECHNOLOGY and Applicant’s goods

necessitates more than a minimal degree of imagination, thought,

or perception before achieving the requisite “mental leap.”

This is the hallmark of suggestive marks.

Furthermore, the existence of marks on the Principal

Register that include “FIRM” and “TECHNOLOGY” for nearly

identical goods (including “skin-care preparations”) without

disclaimers of those terms demonstrates the Trademark Office’s

practice of not finding “FIRM” and “TECHNOLOGY” merely

descriptive for Applicant’s goods. Applicant respectfully

submits that in light of the registrations listed below,

Applicant’s mark SKIN FIRM TECHNOLOGY is not merely descriptive

as a whole, and its use of “FIRM” and “TECHNOLOGY” cannot be

deemed descriptive separately.

Mark Reg. No. Class Goods

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BE FIRM 3856163 3 Non-medicated skin care

preparations, namely,

facial serums and

creams.

FIRM 2744629 3 Skin care products,

ESSSENTIALS namely, facial masks,

moisturizers and serums.

TECHNOLOGY 4550355 3 Non-medicated skin

ACCELERATED preparations, namely,

SKIN CARE creams, lotions, gels,

toners, cleaners, and

peels.

AGE-LESS 3551850 3 Cosmetics and non-

TECHNOLOGY medicated skin care

preparations, namely,

skin treatments, creams,

cleansers and

moisturizers.

Registration certificates for the above-referenced marks are

attached hereto as Exhibit A.

As the foregoing demonstrates, the mark fails to meet the

threshold legal standard for mere descriptiveness, rendering the

subject descriptiveness refusal untenable. Applicant’s mark SKIN

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FIRM TECHNOLOGY thus can only be understood as a suggestive,

unitary, and unique source identifier for Applicant’s goods and

is therefore unequivocally registrable on the Principal

Register, especially in light of Applicant’s disclaimer of

“SKIN”. Accordingly, Applicant respectfully requests that its

mark be approved for publication.

III. CONCLUSION

As all the concerns of the Examining Attorney have been

addressed, Applicant respectfully requests that the Examining

Attorney approve its mark for publication.

Respectfully submitted,

FALLIEN COSMECEUTICALS, LTD.

Dated: July 7, 2016 By: /s/ David M. Perry
David M. Perry
Thomas H. Kelly
Its Attorneys

BLANK ROME LLP
One Logan Square
Philadelphia, Pennsylvania 19103
(215) 569-5767

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EXHIBIT A

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