IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Application: Law Of?ce: 117

Mark: CELIABRATE Examining Attorney: Ronald L. Fairbanks

Serial No: 77/807,042 RESPONSE TO OFFICE ACTION MAILED
MAY 4, 2013
Applicant: Kristin Harris

Classes: 016; 025; 030; 044

I. INTRODUCTION

In an Of?ce action issued May 4, 2013 (“Of?ce Action”), registration of applicant Kristin
Harris’ (“Applicant”) CELIABRATE mark was preliminarily refused on the ground that the “mark on
the specimen disagrees with the mark on the drawing” such that “the specimen does not show the
applied-for mark in use in commerce as a trademark and/or service mark.” See Of?ce Action.
Additionally, the Of?ce Action also alleges that “amending the mark in the drawing to conform to the
mark on the specimen would be a material alteration in this case because the mark on the specimen
creates a different commercial impression from the mark on the drawing. Speci?cally, the addition of a
term to CELIABRATE [e.g., LOVE, LIFE and/or BLISS] creates a different commercial impression
than just the term CELIABRATE by itself.” See Of?ce Action.

Applicant alleges that the CELIABRATE mark is in use in commerce on and in connection with
goods and services in each applied—for class, and has been since prior to both the ?ling of the statement
of use and expiration of the deadline for ?ling the statement of use, as follows:

11. ARGUMENT

A. Applicant has submitted additional specimens pursuant to Trademark Rule 2.56(a)

Applicant has submitted additional specimens along with this response. These additional
specimens consist of screen captures of the same web pages originally submitted as specimens, plus a
screen capture and printout of one additional web page showing additional use of the CELIABRATE
mark.

These specimens are submitted pursuant to 37 C.F.R. § 2.56(a) as additional specimens, and are
intended to supplement rather than replace the specimens already submitted, because during
preparation of this response it came to Applicant’s attention that the specimens originally submitted do
not contain all material visible when accessing Applicant’s related—company’s website using an internet
browser, as customers normally do. In particular, the instances of the CELIABRATE mark standing
alone that appear in the upper middle of each page on the website do not appear on the original
specimens but do appear on the additional specimens. However, because the additional specimens are
screen captures they cut off some content toward the bottom of each web page that does appear on the
original specimens. Applicant believes that taken together the original specimens and the additional
specimens provide a substantially complete and accurate representation of these web pages as they are
ordinarily encountered by customers visiting Applicant’s related-company’s website using an internet
browser, although she notes that no method of reproduction could ever precisely replicate the web
pages as they appear when viewed using a web browser (see In re Dell Inc., 71 USPQ2d 1725, 1729
(TTAB 2004) (“it must be remembered that the specimen is a webpage, and that when it is actually
viewed it will ?ll the consumer’s monitor screen. Thus, the mark will appear larger than it does in the
specimen contained in the ?le, or as reproduced in this opinion.”)) and that in general web pages can
vary in overall appearance depending upon the device and brand of web browser being used.

Alternately, in the event it is ever ?nally determined that these specimens cannot properly be
submitted as additional specimens pursuant to 37 C.F.R. § 2.56(a) or any other applicable authority,
Applicant hereby reserves the right to submit each as a substitute specimen pursuant to 37 C.F.R. §
2.59(b)(l) as originally requested in the Of?ce Action.

B. The “material alteration” standard cited in the Of?ce Action is not ripe for consideration
because applicant has not attempted to amend the drawing

“The drawing in a trademark application may not be amended if the amendment constitutes a
‘material alteration’ of the drawing in the application. Trademark Rule 2.72. However, the ‘material
alteration’ standard is not the issue in this case because applicant has not attempted to amend its
drawing [Footnote omitted.] We look instead to the requirement set out in Trademark Rule 2.51(b), that
‘the drawing of the mark must be a substantially exact representation of the mark as used on the
goods….’” In re Yale Sportswear Corp., 88 USPQ2d 1121, 1123 (TTAB 2008).

“The purpose of such an advisory is to indicate the USPTO’s preliminary opinion that such an
amendment would be futile, thus saving the time and resources of both the Of?ce and the applicant.
But if applicant wished to proffer such an amendment, so as to preserve the issue for possible appeal, it
was not prevented from doing so.” In re Yale Sportswear Corp, 88 USPQ2d at fn. 3.

Here, just as in the Yale Sportswear case, Applicant heretofore has not attempted to amend the
drawing. As a result the “material alteration” standard is similarly not at—issue in this case, at this time,
and as such is not addressed further in this response. However, applicant hereby reserves the right to
pursue any amendment of the drawing that she determines is necessary or advisable in the future,
including but not limited to the submission, assertion and/or advancement of any and all evidence,
arguments and/or defenses pertaining thereto.

C. The CELIABRATE mark appears on the specimens exactly as it appears in the drawing

“The mark on the drawing must be a substantially exact representation of the mark as used on
the specimen. 37 C.F.R.§2.51(b); TMEP §807.12(a); see 37 C.F.R. §2.72(b)(l).” See Of?ce Action.

The Of?ce Action correctly makes no allegation that the literal term “CELIABRATE” does not
appear on the specimens. It is clear that it does, in multiple different locations and separate instances.
Instead, the Of?ce Action alleges only that, although the CELIABRATE mark appears on each
specimen in all instances unobstructed, set apart and in a literal form identical to its appearance in the
drawing, it nevertheless “disagrees with the mark on the drawing” ostensibly because it appears in
close proximity to other material, including several other words in various locations.

The Of?ce Action states: “In this case, the specimens display the mark as ‘CELIABRATE
LOVE!,’ ‘CELIABRATE LIFE!,’ ‘CELIBRATE BLISS!’ on the logo decal, t—shirt and gift box
specimens, and ‘CELIABRATE LIFE!‘ appears at the top of each webpage, while the drawing shows
the mark as ‘CELIABRATE.’”

In fact, viewing the original specimens as a whole reveals that they contain the CELIABRATE
mark as a precise literal element in no fewer than six (6) different locations (main site slogan, product
description (2 locations) and badge logos (3 locations» and seventeen (17) separate instances, followed
variously by the words “Life”, “Love”, “Bliss”, “Inspiration” and “everything” depending on the
location and/or instance. The additional specimens submitted by Applicant along with this response
contain many additional instances of the CELIABRATE mark, including in no fewer than two (2)
different locations and six (6) separate instances where it stands alone. (Page title on “Celiabrate!” page
and upper middle on “Celiabratel”, “Celiac Disease”, “KristAnn’s Badge Decal”, “KristAnn’s Badge T—
Shirt” and “Truf?es” pages.)

D. The specimens are website pages that must be viewed as a Whole, and as such they show
the CELIABRATE mark in use both standing alone and preceding additional words

“[T]he specimen webpage will be viewed as a whole [by viewers], and [the mark] will be
perceived as a trademark for the goods.” In re Dell Inc., 71 USPQ2d at 1729.

When Applicant’s web page specimens are viewed as a whole, as they must be because that is
how customers who visit and view the website will encounter them, it is clear that there are many
instances of the CELIABRATE mark on the specimens, some standing alone and some before and/or
after additional words. Both types of presentation show the CELIABRATE mark in use in commerce as
a trademark and service mark on and in connection with goods and services in all applied-for classes.

1. The instances of the CELIABRATE mark standing alone show it in use in
commerce in connection with goods and services in all applied-for classes

a. The CELIABRATE mark is shown on the specimens standing alone and not
part of any composite mark

As the specimens clearly disclose, Applicant prominently and repeatedly uses the
CELIABRATE mark standing alone in commerce as both a trademark and a service mark. These
standalone uses of the CELIABRATE mark appear front and center at the top middle of each additional
specimen in connection with each applied-for class of goods and services, including in close proximity
to pictures and/or descriptions of the goods and services and on web pages that contain a means to
purchase goods via an “add to cart” button. As a result the additional specimens clearly establish use of
the CELIABRATE mark in commerce on and in connection with each of the classes of goods and
services for which Applicant has applied for registration.

Additional standalone uses of the CELIABRATE mark are shown in the product descriptions on
both the original and additional specimens depicting the “KristAnn’s Badge Decal” (for Class 16),
“KristAnn’s Badge T—Shirt” (for Class 25) and “Truf?es” (for Class 30) web pages. In each of these
instances, the CELIABRATE mark appears in bold type immediately followed by a superscript “TM”
designation. “This use of the designation ‘TM’ next to [the mark] lends a degree of visual prominence
to the term” (In re Dell Inc. , 71 USPQ2d at 1729) and serves to physically isolate it from the word that
follows. In fact, in each instance this superscript TM forms a physical and conceptual barrier,
separating the CELIABRATE mark from the word that follows. Perhaps mo st importantly, anybody
viewing these instances of the CELIABRATE mark, which are prominently displayed on the specimens
for each class of goods, will have no doubt that it alone is claimed as a trademark to the exclusion of
the words that follow.

Applicant also has a page on her website speci?cally dedicated to highlighting and clarifying
the CELIABRATE mark standing alone, a copy of which has also been submitted as an additional
specimen (in both screen capture and printout format to ensure completeness). (See generally In re
Raychem Corp, 12 USPQ2d 1399 (TTAB 1989) (advertising materials showing use of the mark
standing alone were one factor in establishing separate and distinct commercial impression).) These
specimens show that the “Celiabrate!” web page not only uses the CELIABRATE mark standing alone,
it also uses it before and after many different additional words, both with and without emphasis by way
of a different type style (italics). Moreover, this web page directly addresses the inquiries Applicant
routinely receives from customers about the origin, nature and meaning of the CELIABRATE mark as
a result of its novel, fanciful nature. Applicant included this web page when she launched her related-
company’s website because she had already received inquiries about the CELIABRATE mark from
customers encountering it on her food product labels. These inquiries have continued following the
website launch, but have always focused exclusively on the literal CELIABRATE mark with no
mention of any additional elements present on the products, product labels and/or website pages.
Although Applicant recognizes that this evidence is far from dispositive, she believes that it
nevertheless tends to indicate that the CELIABRATE mark does what one would expect any coined,
fanciful and thus very strong inherently distinctive word mark to do: it draws customers’ attention,
creates a substantial impression on their minds with its novelty, and presents its own separate and
distinct commercial impression.

b. Exclamation points following some standalone instances of the inherently
distinctive and very strong CELIABRATE mark do not alter its commercial
impression

“Generally, extraneous, non—distinctive punctuation marks that appear on the specimen may be
omitted from the drawing, if the matter on the drawing makes an impression separate and apart from
the punctuation marks that appear on the specimen. However, in rare instances, the punctuation
marks on the specimen result in a mark with a different commercial impression than the mark shown
on the drawing.” TMEP § 807.12(a)(iii). (Emphasis supplied.)

For example, the Board recently held that the “literal element of ‘GOT STRAPS’ cannot be
‘severed’ from the question mark without altering the commercial impression or meaning of the mark”
because “addition of the question mark not only ‘adds to the meaning’ of the phrase ‘GOT STRAPS’ but
indeed transforms the significance of the phrase from a declaratory statement to a direct question.” In
re Guitar Straps Online LLC, 103 USPQ2d 1745, 1752 (TTAB 2012).

This is not a similarly rare instance. Here, the CELIABRATE mark, by virtue of its fanciful
nature, makes a very strong commercial impression of its own separate and apart from any punctuation.
Further, Applicant has used an exclamation point rather than a question mark following the
CELIABRATE mark. Exclamation points serve a very different grammatical purpose compared to
question marks: Where question marks transform a word or phrase from a statement to a question,
exclamation points emphasize the existing meaning of a word or phrase to “indicate forceful utterance
or strong feeling.” (See Merriam Webster’s online dictionary at http://www.merriam—
webster.com/dictionary/exclamation%20point) There is no transformation to any different meaning
with an exclamation point; only enhancement of core meaning and emphasis of signi?cance occurs.
Recognizing these grammatical and connotational facts, exclamation points have consistently been held
n_ot to alter commercial impression. (See generally In re Burlington Industries, Inc., 196 USPQ 718
(TTAB 1977); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978); In re Brock Residence Inns, Inc.,
222 USPQ 920 (TTAB 1984); In re Best Software Inc., 63 USPQ2d 1109 (TTAB 2002); In re Litehouse
Inc., 82 USPQ2d 1471 (TTAB 2007).)

Moreover, the coined CELIABRATE mark is highly evocative of the word “celebrate,” which
itself has an strong, forceful connotation of “praise” and “importan[ce].” (See Webster’s at
http://www.merriam—webster. com/dictionary/celebrate) As a transitive verb, “celebrate” means “to
observe a holiday, perform a religious ceremony, or take part in a festival” or “to observe a notable
occasion with festivities.” Id. All of these de?nitions connote strong feelings ?owing from the
importance of an event or occasion, and it is well known that celebrations often involve jubilant,
passionate, forceful and heartfelt speech coupled with and arising from strong emotion and feeling. As
unlikely as it would be in any event given the strength of the inherent distinctiveness of the
CELIABRATE mark due to its fanciful nature, the similarity in connotation shared by the two makes it
even less likely that an exclamation point could “transform” the commercial impression of
CELIABRATE than might otherwise be possible for another term with less closely aligned connotation.

Finally, not all standalone uses of the CELIABRATE mark on the specimens are followed by
exclamation points (or any other punctuation). As discussed above, several prominent uses are followed
immediately by a superscript “TM” designation. It is signi?cant, however, that all of these many
different instances are presented to and encountered by consumers on the web pages with the only
constant being the literal CELIABRATE mark itself. This has the significant effect of further
highlighting and reinforcing to consumers the separate and distinct commercial impression of the
already inherently distinctive and very strong CELIABRATE mark.

2. Where the CELIABRATE mark is followed by other words, even if such use results
in several different composite marks it may still properly be independently
registered because it presents a separate and distinct commercial impression apart
from all other matter on the specimens

In an application under §1 of the Trademark Act, the mark on the drawing must be a
complete mark, as evidenced by the specimen. When the representation on a drawing
does not constitute a complete mark, it is sometimes referred to as a ‘mutilation’ of the
mark. This term indicates that essential and integral subject matter is missing from the
drawing. An incomplete mark may not be registered. See In re Chemical Dynamics Inc.,
839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988); In re Miller Sports Inc., 51 USPQ2d
1059 (TTAB 1999); In re Boyd Coffee Co., 25 USPQ2d 2052 (TTAB 1993); In re
Semans, 193 USPQ 727 (TTAB 1976).

However, in a §l application, an applicant has some latitude in selecting the mark it
wants to register. The mere fact that two or more elements form a composite mark does
not necessarily mean that those elements are inseparable for registration purposes. A_n
applicant may apply to register any element of a composite mark if that element_presents,_
or will present, a separate and distinct commercial impression apart from any other_
matter with which the mark is or will be used on the specimen.

TMEP § 807 .12(d). (Emphasis supplied.)

“’An applicant may seek to register any portion of a composite mark if that portion presents a
separate and distinct commercial impression.‘ In re Lorillard Licensing Co., 99 USPQ2d 1312 (TTAB
2011), citing In re 1175854 Ontario Ltd., 81 USPQ2d 1446 (TTAB 2006). In other words, ‘the mark as
actually used must not be so entwined (physically or conceptually) with other material that it is not
separable from it in the mind of the consumer.’ In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB
2008), quoting In re Chem. Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828, 1830 (Fed. Cir. 1988).” In
re Guitar Straps Online LLC, 103 USPQ2d 1745, 1751 (TTAB 2012).

“In deciding whether [an element] of a [composite] word mark may be separately registered,
‘the essential question is whether or not the [element] is or is not inherently distinctive… If the
[element] is inherently distinctive, no proof of secondary meaning need be introduced; if not, such
proofis essential.” In re Chemical Dynamics Inc, 839 F.2d 1569, 5 USPQ2d 1828, 1829 (Fed. Cir.
1988). (Emphasis in original.)

In Yale Sportswear, the Board articulated the test of “separate and distinct commercial
impression” as being a question of the level to which the element sought to be independently registered
is physically and/or conceptually “entwined” with other matter appearing on the specimen(s). Later, in
Guitar Straps Online, the Board attributed this “entwined” analysis to Chemical Dynamics. However,
Chemical Dynamics does not mention the word “entwined” or expressly use it as a test to determine if
an element presents a separate and distinct commercial impression. Instead, Chemical Dynamics
instructs that distinctiveness—inherent or acquired—is the key.

In essence, the “physically or conceptually entwined” test of separate and distinct commercial
impression asks two things: First, does the mark in the drawing appear on the specimen(s) physically
separate from all other matter? Second, does the mark in the drawing—as it is used on the specimen(s)
—stand out distinctly on its own as a source—indicator to consumers, or does it rely on combining with
additional matter to serve that purpose. If the mark in the drawing stands out enough (both in physical
appearance and conceptual distinctiveness) to indicate source, then it may properly be registered
regardless of what other material also appears on the specimen(s) and where that material appears in
relation to the mark. Importantly, inherently distinctive elements by de?nition present a distinct
commercial impression. As a result, inherently distinctive elements such as the CELIABRATE mark
need only to appear on the specimen in such a way as to be identi?ed by consumers as a physically
separate element in order to present a separate and distinct commercial impression. (See generally In re
Chemical Dynamics, supra; In re The Library Restaurant, Inc, 194 USPQ 446 (TTAB 1977) (“There is
no doubt that the design depicted in applicant’s drawing is arbitrary for restaurant services. Hence, if
the design functions as a separate mark creating an independent commercial impression, the applicant
is entitled to have the application published for opposition.” (refusal affirmed because words on
specimen formed integral, physically inseparable parts of design mark in drawing)); In re Lorillara’
Licensing Co., 99 USPQ2d 1312 (TTAB 2011) (color marks are not inherently distinctive and where no
adequate showing of acquired distinctiveness could be made, applied-for color mark did not present a
separate and distinct commercial impression).)

As the Of?ce Action correctly acknowledges, “the addition of a term to CELIABRATE [e.g.,
LOVE, LIFE and/or BLISS] creates a different commercial impression than just the term
CELIABRATE by itself.” In fact, analysis of “separate and distinct commercial impression” under the
“physically or conceptually entwined” test reveals that the CELIABRATE mark as used on the
specimens presents not only a “different” commercial impression, but clearly its own “separate and
distinct commercial impression.” As such it may be properly registered independent of any and all
other matter that also appears on the specimens, including but not limited to the words “Love”, “Life”
and “Bliss” that appear immediately following it in some, but not all, instances.
a. The CELIABRATE mark is physically separate from all other matter on the
specimens

First and foremost, there can be no dispute that the literal term CELIABRATE appears multiple
times on each specimen submitted by Applicant. (Compare: In re Pharmavite LLC, 91 USPQ2d 1778
(TTAB 2009) (outline design of two bottles shown in drawing did not “strictly speaking” appear on
specimen).)

Second, there is no doubt that each instance of the literal term CELIABRATE that appears on
the specimens appears as a separate word. It is never linked to another word by the absence of normal
spacing or by forming part of another word. It is never obscured, intersected or overlapped by, or
superimposed or overlapping upon, any line, shading or other similar graphical or design element. It
does not form any integrated part of any picture or design. Nothing alters its pronunciation or
appearance. In fact, in several prominent instances it is immediately followed by a superscript “TM”
designation that divides and separates it from the words that follow. (Compare: In re Miller Sports Inc.,
51 USPQ2d 1059 (TTAB 1999) (stylized “M and skater” design depicted in drawing served as first
letter in word “Miller” shown on specimen); In re Chemical Dynamics, supra (“eyedropper intersects
with the handle of the watering can and the drop of water [sic] is shown going into the watering can”);
In re Boyd Coffee Co., 25 USPQ2d 2052 (TTAB 1993) (“applicant always uses the cup and saucer
design with the sunburst design [such] that the sun’s rays appear to be emanating from the cup.”); In re
Sperouleas, 227 USPQ 166 (TTAB 1985) (“words are not only prominent but are also physically
placed over the more signi?cant part of the design” sought to be independently registered); In re
Volante International Holdings, 196 USPQ 188 (TTAB 1977) (“design produced by the exaggerated
tail of the letter ‘G’ obscure the midriff of the dragon, but it is also readily observable that the word
‘VIRGIN’ covers most of the ground surrounded by the feet of the seated ?gure and the loops of the
dragon”); In re Mango Records, 189 USPQ 126 (TTAB 1975) (“1etters… partially obscured by a strand
of long grass or palms, the letters ‘M’ and ‘0’ being cut off at their lower outside corners by the black
and blue circular border which circumscribes the word and the tropical scene which provides its
backgroun ”); In re The Library Restaurant, Inc., supra (“letters of the words are printed in scroll-like
letters which resemble the designs in the upper and lower shelves. The word ‘THE’, itself, is positioned
to look like a book and adds symmetry to the picture. The left hand part of the cross-bar of the letter ‘T’
overlaps the quill extending from the inkpot. Most importantly, the word ‘LIBRARY’ is the support for
the word ‘THE’, the inkpot and the books, without which these elements of the design are ?oating
freely above a space in which a word is obviously meant to be placed”); In re Yale Sportswear Corp.,
supra (“UPPER 90 does not form a ‘separate and distinct’ commercial impression [because] [i]t cannot
be severed from the degree symbol without altering the meaning, pronunciation, and, to some extent,
the appearance of the mark”). And see In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004) (“[U]se of the
designation ‘TM’ next to [the mark] lends a degree of visual prominence to the term.”).)

b. The CELIABRATE mark is clearly conceptually separate from all other
matter on the specimens because as a fanciful mark its inherent
distinctiveness is very strong

“Fanciful…marks are regarded as being ‘inherently distinctive.’ A fanciful mark is a word that is
coined for the express purpose of functioning as a trademark.” J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition § 11:4 (4th Ed.; Rel. 67, 9/2013). “Fanciful…marks are protectable
and registrable immediately upon use, without the need for secondary meaning.” Id. On the spectrum of
distinctiveness of marks, fanciful marks are unrivaled in strength: “Fanciful marks are referred to as the
‘strongest’ of all marks, in that their novelty creates a substantial impact on the buyer’s mind…” Id.
Examples of well-known fanciful marks include CLOROX (for chlorine bleach), CUTEX (for
cuticle-removing liquid) and POLAROID (for optical devices and cameras made using synthetic
polarizers). (See McCarthy at § 11:8; www2.rowland.harvard.edu/book/polaroid ;
www.polaroid.com/75—years )There is no rule that a fanciful mark cannot contain a portion of or allude
to a preexisting word; to be fanciful a single-word mark simply must not—as a whole—have
preexisting meaning or usage: “If…a seller sits down and invents a totally new and unique combination
of letters or symbols that results in a mark that has no prior use in the language, then the result is a
‘coined’ or ‘fanciful’ mark.” McCarthy at § 11:5.

Just like the CLOROX, CUTEX and POLAROID marks did years ago, the CELIABRATE
mark coins a new term that has no prior usage or meaning for the express purpose of functioning as a
trademark. As such, it is inherently distinctive, very strong, and possesses novelty that creates a
substantial impact on the buyer’s mind. Based on this extremely strong inherent distinctiveness, it is not
possible for the CELIABRATE mark to be conceptually entwined with any other word or other element
with which it may appear as a composite mark on the specimens.

c. The existence of additional material on the specimens, even in close
proximity to the CELIABRATE mark, is not dispositive to preclude the
CELIABRATE mark from proper independent registration

The Trademark Rule 2.51(b) “principle raises an obvious question: what mark is applicant
actually using? The answer is sometimes not clear, because it is not at all unusual for specimens to
comprise multiple trademarks, artwork, and other matter, whether registrable or not. Needless to say, it
is up to the applicant to choose what it seeks to register. But what applicant seeks to register must not
only be in use, it must make a distinct commercial impression as used.” In re Yale Sportswear Corp, 88
USPQ2d at 1123.

“While proximity is a consideration, it is the overall commercial impression of the mark that is
controlling.” In re 1175856 Ontario Ltd., 81 USPQ2d 1446, 1448 (TTAB 2006).

Applicant’s specimens are printed reproductions of several pages from her related—company’s
website. As such, they contain a significant amount of matter in addition to the CELIABRATE mark,
including several instances in which the CELIABRATE mark is immediately followed by multiple
different words. Nevertheless, the website specimens must be viewed as a whole and Applicant has not
chosen to register those additional words at this time. Their mere presence cannot serve to preclude the
CELIABRATE mark, standing alone, from proper registration. On the contrary, it is the commercial
impression presented by the literal CELIABRATE mark itself that controls whether or not it can
properly be registered independent of any other matter appearing on the specimens. As the Of?ce
Action correctly recognizes, the CELIABRATE mark clearly presents its own commercial impression.
However, rather than serving to bar it from registration as the Of?ce Action alleges, the separate and
distinct commercial impression imparted by the fanciful, inherently distinctive, and very strong
CELIABRATE mark is precisely what allows it to stand out from all other matter on the specimens and
makes it properly entitled to independent registration.

E. Several ways in which the CELIABRATE mark is used on the specimens further
strengthen its already very strong separate and distinct commercial impression

In short, because it is neither physically nor conceptually entwined with any other matter on the
specimens, any compo site mark that may appear on the specimens of which the CELIABRATE mark is
a part passes the “separate and distinct commercial impression” test with ?ying colors. Standalone uses
on the specimens also support independent registration. While either standalone use or physical
separation coupled with inherent distinctiveness—particularly where the mark is fanciful and thus
considered very strong—as part of composite use is certainly enough to present a separate and distinct
commercial impression, here that fact is enhanced even further by the ways in which the
CELIABRATE mark is used on the specimens:

1. The CELIABRATE mark is prominently displayed in bold type as the ?rst term in
?rst line of the product descriptions on the Class 16, 25 and 30 specimens, and in
each instance it is immediately followed by a superscript “TM” designation and
positioned directly across from pictures of the only goods sold on each page

“The alleged trademark…appears prominently in large bold lettering on the display…in
the…specimen in a manner which closely associates the term with the [goods].” Lands’ End Inc. v.
Manbeck, 797 F.Supp. 511, 24 USPQ2d 1314, 1315 (ED. Va. 1992). “[T]he mark appears at the
beginning of a line and is followed by the ‘TM’ trademark indicator. This use of the designation ‘TM’
next to [the mark] lends a degree of visual prominence to the term.” In re Dell Inc., 71 USPQ2d at
1729. “The current applicant’s webpage specimen shows that the proposed mark is prominently
displayed (and followed by a ‘TM’ designation) directly above pictures of [its] products.” In re
Quantum Foods, Inc., 94 USPQ2d 1375, 1378 (TTAB 2010) (refusal af?rmed only because specimen
“does not contain any information normally associated with ordering products via the Internet or the
telephone” Id. at 1379). “[T]he particular [product] is the only product on the webpage. Thus, it is clear
that this is the product to which the trademark…refers.” In re Dell Inc., 71 USPQ2d at 1729.

The specimens showing the web pages titled “KristAnn’s Badge Decal” (for Class 16),
“KristAnn’s Badge T—Shirt” (for Class 25) and “Truf?es” (for Class 30) all include uses of the
CELIABRATE mark in bold type as the very ?rst term on the very ?rst line in the product description,
which in each instance is directly adjacent to and horizontally across from a large picture of the product
and two smaller “thumbnail” pictures of the same product that allow visitors to select a different view
to enlarge. Signi?cantly, these pictures show the only product on the webpage, making it clear that this
is the product to which the trademark refers. Moreover, in each of these instances the CELIABRATE
mark is immediately followed by a superscript “TM” designation, before any additional matter. In fact,
in each instance this superscript TM forms a physical and conceptual barrier, separating the
CELIABRATE mark from the word that follows.

Here, just like in the Dell case: “In the context of the specimen webpage, [CELIABRATE] is
suf?ciently prominent that consumers will recognize it as a trademark for the [goods] shown on the
webpage.” Id. In fact, the CELIABRATE mark is used far more prominently on the specimens here
than was the allowed mark in Dell because there the mark appeared only once, was depicted in a
smaller but otherwise identical font to all other surrounding words, and was buried as the seventh term
in the seventh bullet point of the product description—which itself appeared well below the product
picture with several lines of intervening material between the two. It cannot reasonably be disputed that
web pages typically function by scrolling from top to bottom, meaning that placing a mark down the
page vertically, below the product image, presents a much greater likelihood it will not be possible for
consumers using an internet browser to view the two simultaneously than does placing them at
relatively the same position horizontally on the page. It is entirely possible that some or all visitors to
the web page shown in the Dell specimen could see the product image but not the mark before scrolling
to see the product description, and that once they had scrolled down to the mark they could no longer
see the product image. That is simply not possible here with respect to Applicant’s related-company’s
website, as evidenced by the screen capture versions of the specimens. St_ill the Dell mark was allowed
to register, in part because—like here—only one product was shown on the page, so it was clear that
the mark was referring to it. Applicant’s specimens are even more clear, and the CELIABRATE mark
should also be allowed to register.

2. The CELIABRATE mark appears repeatedly throughout the specimens, but not
exclusively preceding any other single element

The CELIABRATE mark is not always used in combination with any other single, speci?c
element. To the contrary, it is used in multiple instances throughout the specimens including in no
fewer than nine (9) different locations where it precedes no fewer than ?ve (5) different words (“Life”,
“Love”, “Bliss”, “Inspiration” and “everything”), none of which is also fanciful and thus as strong. On
all but the “Celiac Disease” (for Class 44) web page specimen, the CELIABRATE mark precedes
multiple different words on the same specimen. Thus, viewed as a whole as website specimens must be,
this repetitive use of the already fanciful and very strong CELIABRATE mark further reinforces its
signi?cance and distinctiveness in comparison to the alternating, far less distinctive words that
variously follow it. (Compare: In re Jane P. Semans, 193 USPQ 727 (TTAB 1977) (word element
denied registration was used repetitively throughout specimens but never immediately followed by a
“TM” designation, instead always immediately followed by the same additional word element to form
the same composite mark in all instances); In re Boyd Coffee Co., supra (design element denied
registration used repetitively but always in combination with same additional design element to form
same composite in every instance).)

3. The CELIABRATE mark is the only coined, fanciful term in the composite marks
alleged by the Of?ce Action

None of the other words alleged by the Of?ce Action to combine with the CELIABRATE mark
to form a composite mark are also coined or fanciful. Instead, each and every one of those words is a
word with existing usage and meaning in the English language. As a result, none of those words
possesses anywhere near the same strength of distinctiveness as CELIABRATE does. Each either
possesses no inherent distinctiveness at all because it is merely descriptive, or possesses inherent
distinctiveness that is signi?cantly weaker because it is arbitrary or suggestive. In each instance the
dominant strength of the coined, fanciful CELIABRATE mark’s inherent distinctiveness overpowers
the much weaker, less distinctive word that follows it.

The bottom-line is that in trademark law all words are not created equal. Instead, they exist on a
spectrum of distinctiveness. See Fig. 1121A, McCarthy at § 1124. CELIABRATE is a member of the
strongest subset of the class of marks that are inherently distinctive and by their very nature impart a
distinct commercial impression. As a result it is extremely effective in conveying its own separate and
distinct commercial impression to consumers, so much so that it is able to dominate all other matter on
the specimens (with the possible exception of the “KristAnn’s” house mark), including any words that
appear next to it, because its novelty overpowers their ordinary descriptiveness, suggestive, or even
arbitrary, usage to create a substantial impact on the buyer’s mind.

4. The CELIABRATE mark appears in different type style in some instances where it
appears next to other words, further emphasizing its distinctiveness

As the specimens disclose, the CELIABRATE mark appears emphasized by italic and/or bold
type in several instances. Potentially the most notable and signi?cant of these instances occur in the
Class 16, 25 and 30 product descriptions. Other instances occur on the “Celiabrate!” page, where the
CELIABRATE mark appears before and/or after additional word matter highlighted by italicized type.
(See generally In re Big Pig, Inc., 81 USPQ2d 1436 (TTAB 2006) (use of different “type style” is one
factor tending to indicate separate and distinct commercial impression); LandS’End Inc. v. Manbeck,
supra (“trademark…appears prominently in large bold lettering…in…specimen.”).)

F. The CELIABRATE mark was coined by Applicant, and her related-company is the only
person that has ever used it, so there can be no harm to anyone else if it registers

“There can be no doubt that the word…here involved clearly distinguishes [the product] from
others of the same class; and that no person will be injured or deceived by its registration….. In View of
that conclusion, it is deemed unnecessary to discuss the numerous cases which have been cited…” In
re SERVEL, INC, 85 USPQ 257, 261 (CCPA 1950).

Last but certainly not least, there can be no doubt that the CELIABRATE mark identi?es only
Applicant’s related-company’s goods and services. Applicant herself coined the term, and running a
TESS basic word search for both live and dead instances of the literal term “CELIABRATE” results in
only one mark: Applicant’s. The CELIABRATE mark is Applicant’s own invention; it did not exist in
any language before she conceived it. It does not appear in the dictionary. (See Webster’s at
http://www.merriam—webster.com/dictionary/celiabrate) As a result the CELIABRATE mark possesses
very strong inherent distinctiveness and there can be no doubt that it presents its own separate and
distinct commercial impression indicating source as to Applicant’s related company’s goods and
services. No person could possibly be injured or deceived by Applicant’s registration of the
CELIABRATE mark, because no person other than Applicant is currently using it, nor has anyone else
ever used it.

III. CONCLUSION

While the specimens for each class need only show a single use of the CELIABRATE mark as a
trademark or service mark to support registration, in fact each specimen contains multiple such uses.
Whether standing alone or as an element of any composite mark, the CELIABRATE mark presents its
own separate and distinct commercial impression. It is not physically entwined with any word or other
matter on any specimen and is a fanciful, coined term possessing its own very strong inherent
distinctiveness that prevents conceptual entwinement. It is used repetitively in different locations
throughout the specimens, and where it appears in immediately before or after other words, those
words are different in many instances and none are similarly coined and fanciful.

Accordingly, Applicant submits that the CELIABRATE mark is shown on the specimens in use
as both a trademark and a service mark exactly as it appears in the drawing, and that as such it may
properly be registered. Based on the foregoing, Applicant submits that the CELIABRATE mark is, and
has been since prior to both the ?ling of the statement of use and the expiration of the deadline for
?ling the statement of use, in use in commerce in connection with goods and services in each of the
applied-for classes, and respectfully requests that it be allowed to register in Classes 16, 25, 30 and 44.