FALLIEN COSMECEUTICALS, LTD.
SUN SCREEN; SKIN CREAM
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
APPLICANT: Fallien Cosmeceuticals, Ltd.
SERIAL NO.: 76/718,528
TRADEMARK: SKIN FIRM TECHNOLOGY
FILING DATE: October 5, 2015
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 Applicants mark
because he believes it merely describes Applicants 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.
II. SKIN FIRM TECHNOLOGY IS NOT MERELY DESCRIPTIVE
The Examining Attorney has preliminarily refused to
register Applicants SKIN FIRM TECHNOLOGY mark, because he
believes it to be merely descriptive of Applicants goods, i.e.
sun screen and skin creams.
Based on the following analysis and Applicants disclaimer
of the SKIN portion of its mark, Applicant respectfully
requests the Examining Attorney withdraw his refusal and pass
Applicants 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,
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
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 consumers
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
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.
B. SKIN FIRM TECHNOLOGY is a Registrable Unitary
1. A Descriptiveness Refusal is Improper for a
At its core, and as explained below, Applicants 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 Applicants 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
Intl, Inc., 950 F.2d 1555, 1561, 21 U.S.P.Q.2d 1047, 1052 (Fed.
2. SKIN FIRM TECHNOLOGY is Unitary.
Applicant respectfully submits that, under the appropriate
standard as set forth above, Applicants mark SKIN FIRM
TECHNOLOGY is a unitary and registrable unique source identifier
of Applicants goods. Applicants mark combines three words that
suggest the sophistication of its creams and preparations that
are cutting-edge or technologically advanced, and uses them to
identify its goods. Consumers will appreciate that these terms
are used suggestively.
Applicants unique mark SKIN FIRM TECHNOLOGY creates an
inherently distinctive commercial impression that surpasses the
respective meanings of the marks individual components. The
inextricable combination of the terms SKIN, FIRM, and
TECHNOLOGY for Applicants goods converts the individual
components of Applicants 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
Applicants 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, Applicants 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
Even if Applicants mark were not unitary, contrary to the
Examining Attorneys position, Applicants mark is not merely
descriptive of the applied-for goods as it by no means
immediately describes or conveys knowledge of a significant
characteristic of Applicants sun screens and creams to relevant
Initially, it bears emphasizing that the evidence provided
by the Examining Attorney does not establish that Applicants
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 Applicants mark immediately describes the
intended purpose or audience of Applicants goods. In fact, the
Examining Attorney has not provided any evidence, other than
dictionary definitions, that demonstrates the descriptiveness of
Applicants mark or that consumers would immediately identify
Applicants mark as merely a descriptor of Applicants 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 Applicants 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 Applicants goods may have a general understanding
of the words SKIN, FIRM, and TECHNOLOGY in different
contexts and ultimately perceive a suggestive association
between the innovative nature of Applicants goods, the novel
use of those terms in as the identifier for Applicants 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 Applicants goods. In other
words, SKIN FIRM TECHNOLOGY is suggestive of a feature or
characteristic of Applicants goods, but it by no means
immediately conveys knowledge about Applicants them; rather,
any link between SKIN FIRM TECHNOLOGY and Applicants 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 Offices
practice of not finding FIRM and TECHNOLOGY merely
descriptive for Applicants goods. Applicant respectfully
submits that in light of the registrations listed below,
Applicants 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
BE FIRM 3856163 3 Non-medicated skin care
facial serums and
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
AGE-LESS 3551850 3 Cosmetics and non-
TECHNOLOGY medicated skin care
skin treatments, creams,
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. Applicants mark SKIN
FIRM TECHNOLOGY thus can only be understood as a suggestive,
unitary, and unique source identifier for Applicants goods and
is therefore unequivocally registrable on the Principal
Register, especially in light of Applicants disclaimer of
SKIN. Accordingly, Applicant respectfully requests that its
mark be approved for publication.
As all the concerns of the Examining Attorney have been
addressed, Applicant respectfully requests that the Examining
Attorney approve its mark for publication.
FALLIEN COSMECEUTICALS, LTD.
Dated: July 7, 2016 By: /s/ David M. Perry
David M. Perry
Thomas H. Kelly
BLANK ROME LLP
One Logan Square
Philadelphia, Pennsylvania 19103