Sonya Dakar

This Opinion is Not a
Precedent of the TTAB

Mailed: September 27, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Dakar
_____

Serial No. 87609180
_____

Pejman Yedidsion of Brooks Acordia IP Law, P.C. for
Sonya Dakar.

Lauren E. Burke, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.

_____

Before Zervas, Wellington, and Adlin,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Sonya Dakar (an individual and hereinafter referred to as “Applicant”) seeks

registration of the standard character mark FLASH FACIAL on the Principal

Register for “non-medicated skin care preparations” in International Class 3.1

The Examining Attorney has issued a final refusal of registration under Sections

1, 2 and 45 of the Trademark Act, 15 U.S.C. § 1051-52, 1127, on the ground that the

1Application Serial No. 87609180 was filed on September 14, 2017, and is based on
Applicant’s claim of a first use of the mark anywhere and in commerce on June 1, 2010, under
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
Serial No. 87609180

proposed FLASH FACIAL mark is generic and, in the alternative, under Section

2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that FLASH

FACIAL is merely descriptive of Applicant’s goods and that Applicant’s evidence is

insufficient to prove her alternative claim of acquired distinctiveness of the mark

under Section 2(f), 15 U.S.C. 1052(f).

When the refusal was made final, Applicant requested reconsideration and

appealed to this Board. Reconsideration was denied by the Examining Attorney, the

proceeding was resumed, and the appeal has been briefed. For the following reasons,

we reverse the refusal on the ground that the mark is generic, but affirm the

alternative refusal on the ground that the mark is merely descriptive of the goods and

without a sufficient showing that the mark has acquired distinctiveness.

I. Initial Evidentiary Matter – Website Evidence No Longer Available

Applicant argues for the first time in her brief that evidence submitted by the

Examining Attorney consisting of Internet printouts “should be eliminated from

consideration” because the website pages are “no longer in existence.”2 To be clear,

Applicant does not contend that the screenshots from those websites never existed or

that she was not able to access them at the time she received the evidence with the

Office Actions. Moreover, the timing of Applicant’s objection and lack of evidentiary

support for this objection are troublesome. That is, the objection comes after the time

for completion of the record, see Rule 2.142(d), and Applicant did not submit evidence

2 10 TTABVUE 7.

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to support her assertion that the websites are no longer in existence, nor did

Applicant file a request for remand to submit any such evidence.

In any event, the Board has long acknowledged the transitory nature of Internet

websites and that addresses or hyperlinks may be modified or deleted at a later date

without notification. See Safer Inc. v. OMS Invs. Inc., 94 USPQ2d 1031, 1039 (TTAB

2010). This is precisely the reason why Examining Attorneys, and parties seeking to

introduce these materials, are required to provide complete information as to the date

the evidence was published or accessed from the Internet, and its source (e.g., the

complete URL address of the website), and attach this evidence to the Office action.

See In re Mueller Sports Medicine, Inc., 126 USPQ2d 1584, 1587 (TTAB 2018); see

also TRADEMARK MANUAL OF PROCEDURE (TMEP) § 710.01(b) (October 2018).

Thus, without any evidence to the contrary, the Internet printouts submitted by the

Examining Attorney demonstrate that the submitted website pages were in existence

at the time they were accessed and contained the information shown in the printouts.

Cf., In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1594-1595 (TTAB 2018)

(Cached website materials determined “not probative” in view of evidence “indicating

that the cached site [is] no longer active.”)

Accordingly, Applicant’s request that Board “eliminate” the aforementioned

evidence from our consideration in this appeal is denied.

II. Genericness

“A generic mark, being the ‘ultimate in descriptiveness,’ cannot acquire

distinctiveness, and is not entitled to registration on either the Principal or

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Supplemental Register under any circumstances.” In re La. Fish Fry Prods., Ltd., 797

F.3d 1332, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (quoting H. Marvin Ginn Corp.

v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986)).

A designation is generic if it refers to the class or category of goods or services on or

in connection with which it is used. In re Dial-A-Mattress Operating Corp., 240 F.3d

1341, 57 USPQ2d 1807 (Fed. Cir. 2001) (citing Marvin Ginn, 228 USPQ 528). “[A]

term [also] is generic if the relevant public understands the term to refer to part of

the claimed genus of goods or services, even if the public does not understand the

term to refer to the broad genus as a whole.” In re Cordua Rests., Inc., 823 F.3d 594,

118 USPQ2d 1632, 1638 (Fed. Cir. 2016) (“the term ‘pizzeria’ would be generic for

restaurant services, even though the public understands the term to refer to a

particular sub-group or type of restaurant rather than to all restaurants”). “The test

is not only whether the relevant public would itself use the term to describe the genus,

but also whether the relevant public would understand the term to be generic.” In re

1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009).

The test for determining whether a proposed mark is generic is its primary

significance to the relevant public. Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19

USPQ2d 1551, 1553-54 (Fed. Cir. 1991); Marvin Ginn, 228 USPQ at 530. Making this

determination “involves a two-step inquiry: First, what is the genus of goods or

services at issue? Second, is the term sought to be registered … understood by the

relevant public primarily to refer to that genus of goods or services?” Marvin Ginn,

228 USPQ at 530.

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Serial No. 87609180

As to the first part of the genericness inquiry, the genus of goods is adequately

described in Applicant’s identification of goods in the application – non-medicated

skin care preparations. See Magic Wand, 19 USPQ2d at 1552 (“[A] proper genericness

inquiry focuses on the description of [goods or] services set forth in the [application

or] certificate of registration.”).

We next proceed to the second part of the Marvin Ginn inquiry and look to whether

the term FLASH FACIAL is understood by the relevant public primarily to refer to

non-medicated skin care preparations. In this case, the relevant public consists of

members of the general public who use or purchase the skin care preparations.

Further, and particularly pertinent to this case, “[a]ny term that the relevant public

uses or understands to refer to the genus of goods, or a key aspect or subcategory of

the genus, is generic.” In re Twenty-Two Desserts, LLC, 2019 USPQ2d 292782 (TTAB

2019) (holding that MALAI, the Hindi word for high fat cream, is a reference to a key

aspect or a type of goods including ice cream) (citing Royal Crown, 127 USPQ2d at

1047 (“The Board … must consider whether ZERO is generic because it refers to a

key aspect of at least a sub-group or type of the claimed beverage goods.”)). “[A] term

is generic if the relevant public understands the term to refer to part of the claimed

genus of goods or services, even if the public does not understand the term to refer to

the broad genus as a whole.” In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d

1632, 1636 (Fed. Cir. 2016); (holding CHURRASCOS, meaning a type of grilled meat,

to be generic for restaurant services because it referred to a key aspect of those

services).

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In this ex parte appeal, it is the Examining Attorney that has the burden of

establishing by clear evidence that a proposed mark is understood by these persons

to primarily refer to skin care preparations. In re Merrill Lynch, Pierce, Fenner &

Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987). “Evidence of the public’s

understanding of the term may be obtained from any competent source, such as

purchaser testimony, consumer surveys, listings in dictionaries, trade journals,

newspapers, and other publications.” In re Merrill Lynch, 4 USPQ2d at 1143.

Competitor use may be evidence of genericness. See Royal Crown Co., Inc. v. Coca-

Cola Co., 892 F.3d 1358, 1370, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018) (“evidence of

competitive use” cited as supportive of genericness finding); In re Nordic Naturals,

Inc., 755 F.3d 1340, 1344, 111 USPQ2d 1495, 1498 (Fed. Cir. 2014) (evidence of third-

party competing products described as “Children’s DHA” supported finding that the

term was generic); BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 35 USPQ2d

1554, 1558 (Fed. Cir. 1995) (“The cases have recognized that competitor use is

evidence of genericness.”) (citing Remington Prods., Inc. v. N. Am. Philips Corp., 892

F.2d 1576, 13 USPQ2d 1444, 1446 (Fed. Cir. 1990)); Continental Airlines, Inc. v.

United Air Lines, Inc., 53 USPQ2d 1385, 1395 (TTAB 1999) (use of term “e-ticket” by

media and competitors indicates term is generic for electronic tickets); Philip Morris

Inc. v. Brown & Williamson Tobacco Corp., 230 USPQ 172, 176 (1986) (evidence that

competitors have used a particular word as the name of their goods is persuasive

evidence of genericness).

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The Examining Attorney argues that the proposed mark is generic because it “is

used to refer to a type and use of non-medicated skin care preparations.”3 In support

of the genericness refusal, the Examining Attorney submitted printouts from various

third-party websites containing articles regarding or advertisements for products

described as “flash facial(s).”4 For example,

1. Advertisement on the New Beauty website (www.newbeauty.com):5

2. Advertisment on Navy Exchange website (www.mynavyexchange.com):6

3 9 TTABVUE 10.
4Attached to Office Actions issued on December 18, 2017, March 23, 2018, June 14, 2018,
and January 30, 2019 (denying request for reconsideration).
5 Attached to June 14, 2018 Office Action, TSDR p. 2.
6 Id., TSDR p. 3.

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Serial No. 87609180

3. Discussion regarding “THE FLASH FACIAL” on the Honey Silk website
(www.honeysilk.com) regarding a personal routine:7

7 Id., TSDR pp. 4-5.

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Serial No. 87609180

4. Article “Flash Facials: The Skin-Care Secret Every Lazy Girl Needs To
Know”
(from website www.refinery29.com) with the following information:8

5. Article “5 Flash Facials in a Bottle – For Better Skin in 10 Minutes or Less”
(from Vogue website www.vogue.com) with the following information:9

8Attached to December 18, 2017 Office Action, TSDR p. 2 (yellow highlighting provided in
Office Action printouts).
9 Id., TSDR p. 3.

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Serial No. 87609180

6. An “Avon Anew Flash Facial” advertised on Amazon (www.amazon.com) as
follows:10

10 Id., TSDR pp. 6-7.

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7. Article from TotalBeauty website (www.totalbeauty.com) with a picture of
Applicant’s product:11

8. Advertisement on the Botaniko Skin website (www.botanikoskin.com):12

11 Attached to March 23, 2018 Office Action, TSDR p. 2.
12 Id., TSDR p. 3.

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Serial No. 87609180

Applicant disputes the significance of the aforementioned evidence and asserts

that the printouts are “mainly comments made by random bloggers on the internet

or left by a user who is merely commenting on the product where the product or the

product webpages themselves do not display anything related to the terms of the

mark.”13 Applicant also takes issue with the term “flash facial” being used once “in

passing,” without being mentioned again.14 Ultimately, Applicant contends that the

Examining Attorney has not presented “clear evidence” that the proposed mark is

generic.

In addition to Applicant’s arguments, we have also considered evidence submitted

by Applicant in her responses to the Office Actions and with her request for

13 7 TTABVUE 8.
14Id. at 7, referring to an article from the Coveteur website (www.coveteur.com) “How to
Give Yourself A Facial In 60 Seconds – A flash facial in the comfort of your own bathroom.”
Printout attached to December 18, 2017 Office Action, TSDR p. 3.

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Serial No. 87609180

reconsideration, including materials showing Applicant’s use of the proposed mark

and media attention it has received. We have also carefully reviewed the declaration,

with curriculum vitae, of Melanie Cummings, who states that she is “unaware of any

skin care products that use the name ‘Flash Facial’ that are not offered by” Applicant

nor is she aware of anyone in the field of skin care “thinking that ‘Flash Facial’ is a

generic or descriptive term for non-medicated skin care preparations.”15

Ultimately, we find that the Examining Attorney has not met the burden of proof

by showing with clear evidence that the term “flash facial” refers to the genus or a

subcategory of “non-medicated skin care preparations.” While there are two examples

of the term “flash facial” used by competitors on the product itself and a couple more

showing the term in advertisements, this limited evidence does not persuade us that

consumers will perceive the wording “flash facial” as primarily referring to a

subcategory of skin care preparation. The articles and advertisements are from

competent sources, see In re Merrill Lynch, 4 USPQ2d at 1143, but they leave some

doubt whether the relevant public will immediately understand the proposed mark

in connection with the product as a referring to the genus or a subcategory of skin

care preparations. For example, the Refinery 29 website article uses the wording

“flash facial” to describe a method of using skin care preparation products – “we spied

the technique used on models at resort collections.” Likewise, the Honeysilk website

describes a “flash facial” as a concept and “something that can easily become part of

your everyday morning routine.”

15 4 TTABVUE 20-22.

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Serial No. 87609180

Distinguishing between what is highly descriptive or generic is not always an easy

task. The Office bears the burden of establishing by clear evidence that a mark is

generic and we must make our finding with confidence as to which side of the line

Applicant’s proposed mark sits. In this case, that high standard of proof has not been

met and we do not find the proposed mark to be generic. “[D]oubt on the issue of

genericness is resolved in favor of the applicant.” In re DNI Holdings Ltd., 77

USPQ2d 1435, 1437 (TTAB 2005).

III. Alternative Ground For Refusal: Merely Descriptive and Failure to
Show Acquired Distinctiveness

We now address the alternative refusal that FLASH FACIAL is merely descriptive

and has not acquired distinctiveness.

A term is “merely descriptive” within the meaning of Section 2(e)(1) if it

“immediately conveys knowledge of a quality, feature, function, or characteristic of

the goods or services with which it is used.” In re Chamber of Commerce of the U.S.,

675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488

F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “On the other hand, if one must

exercise mature thought or follow a multi-stage reasoning process in order to

determine what product or service characteristics the term indicates, the term is

suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ

496, 498 (TTAB 1978); see also In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983); In

re Universal Water Sys., Inc., 209 USPQ 165, 166 (TTAB 1980).

Whether a mark is merely descriptive is determined in relation to the goods or

services for which registration is sought, not in the abstract or on the basis of

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Serial No. 87609180

guesswork. Descriptiveness must be evaluated “in relation to the particular goods [or

services] for which registration is sought, the context in which it is being used, and

the possible significance that the term would have to the average purchaser of the

goods [or services] because of the manner of its use or intended use.” In re Chamber

of Commerce of the U.S., 102 USPQ2d at 1219 (quoting In re Bayer AG, 82 USPQ2d

at 1831). In other words, we evaluate whether someone who knows what the goods

and services are will understand the mark to convey information about them.

DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d

1753, 1757 (Fed. Cir. 2012); In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB

2002).

Although we have found the evidence insufficient for purposes of demonstrating

genericness, we have no problem finding on this record that the mark is very highly

descriptive of the goods. That is, the evidence clearly and convincingly shows FLASH

FACIAL being used to merely describe a feature or function of goods. Specifically,

“flash facial” immediately conveys to the consumer that the goods are intended to

provide the user with an instant or quick (“flash”) treatment for the facial skin (a

“facial”). As described in the Vogue article, a “flash facial” is an “instant skin pick-

me-up in a bottle – can rejuvenate your face in mere minutes.”16 Or, as the Vogue

website makes clear, the skin care preparation products listed in the article can

provide you with a “flash facial” that “rejuvenate[s] your face in mere minutes.”

16 December 18, 2017 Office Action, TSDR p. 3.

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Serial No. 87609180

Turning now to Applicant’s claim of acquired distinctivenss under Section 2(f),

because the proposed mark is highly descriptive, Applicant bears a greater burden in

proving acquired distinctiveness. See, e.g., Royal Crown, 127 USP2d at 1048

(“[H]igher levels of descriptiveness require a more substantial showing of acquired

distinctiveness.”); Real Foods, 128 USPQ2d at 1378 (same); In re Steelbuilding.com,

75 USPQ2d at 1424 (“[A]pplicant’s burden of showing acquired distinctiveness

increases with the level of descriptiveness; a more descriptive term requires more

evidence of secondary meaning.”); In re Bongrain Int’l Corp., 894 F.2d 1316, 13

USPQ2d 1727, 1727 n.4 (Fed. Cir. 1990) (quoting Yamaha Int’l, 6 USPQ2d at

1008) (“the greater the degree of descriptiveness the term has, the heavier the burden

to prove it has attained secondary meaning”)); In re Tires, Tires, Tires Inc., 94

USPQ2d at 1157 (highly descriptive terms are less likely to be perceived as

trademarks, and therefore more persuasive evidence of secondary meaning will

ordinarily be required to establish their distinctiveness).

In determining whether Applicant has demonstrated acquired distinctiveness of

the proposed mark for her goods, we examine the evidence of record as it relates to:

(1) association of the mark with a particular source by actual purchasers (typically

measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount

and manner of advertising; (4) amount of sales and number of customers; (5)

intentional copying; and (6) unsolicited media coverage of the product embodying the

mark. Converse, Inc. v. ITC, 909 F.3d 1110, 128 USPQ2d 1538, 1546 (Fed. Cir.

2018); In re SnoWizard, Inc., 129 USPQ2d 1001, 1005 & n.8 (TTAB 2018)

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Serial No. 87609180

(holding Converse applicable to Board proceedings). No single factor is

determinative. Converse, 128 USPQ2d at 1548 (citing In re Steelbuilding, 75 USPQ2d

at 1424); In re Tires, Tires, Tires Inc., 94 USPQ2d 1153, 1157 (TTAB 2009); see also In

re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1283 (TTAB 2000) (“Direct evidence [of

acquired distinctiveness] includes actual testimony, declarations or surveys of

consumers as to their state of mind. Circumstantial evidence, on the other hand, is

evidence from which consumer association might be inferred, such as years of use,

extensive amount of sales and advertising, and any similar evidence showing wide

exposure of the mark to consumers.”).

There is little evidence of record to support Applicant’s claim, made in the

alternative, that the proposed mark has acquired distinctiveness as a source-

indicator for Applicant’s non-medicated skin care preparations. Indeed, Applicant

made little argument in this regard in her appeal brief, but asserts that the merely

descriptive refusal “was obviated, removed, or overcome” and Applicant “asserts that

this rejection is erroneously included with the subsequent refusals and should be

removed.”17 Applicant argues in circular fashion that “for sake of completeness …

[she] continues to assert and argue against the ‘potential’ future merely descriptive

rejection by having asserted evidence to support the acquired distinctiveness of the

Mark from the prior responses.”18

17 7 TTABVUE 5.
18 Id.

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Serial No. 87609180

Applicant refers to the Office Action issued on March 23, 2018, wherein the

Examining Attorney stated that the “[t]he following refusal(s) have also been

obviated: Section 2(e)(1) Refusal – Merely Descriptive.” However, on the next page in

the same Office Action, and all uppercase, underlined letters, the Examining

Attorney made it known that a “REFUSAL IN THE ALTERNATIVE – APPLIED-

FOR MARK IS MERELY DESCRIPTIVE” was being asserted and further explained

that “APPLICANT’S EVIDENCE OF ACQUIRED DISTINCTIVENESS IS

INSUFFICIENT.” This alternative refusal was continued in the subsequent “final”

Office Action, issued on June 14, 2018, and the Office Action denying the request for

reconsideration. Thus, while the initial statement in the March 23, 2018 Office Action

may have been confusing, any such confusion should have been very short-lived and

any notion that the alternative refusal was withdrawn quickly dispelled.

We nonetheless have considered all evidence of record and, taken in its entirety,

looked to see if it shows that the proposed mark has acquired distinctiveness as a

source-indicator for Applicant’s non-medicated skin care preparations. Particularly,

we reviewed all evidence of Applicant’s use of her mark as well as evidence of media

attention given to Applicant’s goods. We have also taken into consideration

Applicant’s allegation of use of her mark since 2010, the declaration of Ms.

Cummings, and the fact that Applicant owns a Principal Register registration for the

same mark in connection with “aesthetician services; beauty spa services, namely,

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Serial No. 87609180

cosmetic body care; cosmetic skin care services; cosmetic skin treatments, namely,

skin exfoliation services, skin washing services.”19

Ultimately, we find that Applicant has failed to establish that FLASH FACIAL

has acquired distinctiveness. Given the minimal amount of evidence of third-party

recognition, number of sales and products sold, and then weighing the highly

descriptive nature of FLASH FACIAL, much more persuasive evidence than

Applicant has submitted would be necessary to show it has become distinctive as a

source indicator for Applicant’s skin care preparations. Cf. In re Boston Beer Co. L.P.,

198 F.3d 1370, 1371 (Fed. Cir. 1999) (despite considerable and impressive advertising

expenditures and annual sales, Court held that, “considering the highly descriptive

nature of the proposed mark, [the applicant] has not met its burden to show that the

proposed mark has acquired secondary meaning”). With respect to Applicant’s

ownership of the prior registration for the applied-for mark, the services covered in

the registration, including “skin exfoliation services,” are intuitively related to skin

care preparations. Thus, this registration may be accepted under Trademark Rule

2.41(a)(1), 37 C.F.R. § 2.41(a)(1), as prima facie evidence of acquired distinctiveness.

However, the Rule is permissive, and also states that additional evidence of

distinctiveness may be required “in appropriate cases.” In cases where the mark

sought to be registered is deemed to be highly descriptive of the goods, and that is the

19Registration No. 4600598 for the mark FLASH FACIAL (in standard characters, FACIAL
disclaimed) issued on September 9, 2014. Applicant did not make a formal claim of ownership
in the involved application file, but asserted ownership in her responses and the Examining
Attorney acknowledged Applicant’s ownership of the registration (9 TTABVUE 6).

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Serial No. 87609180

case here, additional evidence of acquired distinctiveness may be necessary. See In re

Loew’s Theatres, Inc., 769 F.2d 764, 769, 226 USPQ 865, 869 (Fed. Cir. 1985). Put

simply, the proposed mark is too descriptive and the evidence of acquired

distinctiveness is too meager for us to find that it has become a distinctive source-

identifier for Applicant’s goods.

Decision: The refusal to register Applicant’s proposed mark FLASH FACIAL is

reversed as to genericness, and affirmed on the basis that the mark is merely

descriptive and Applicant has not demonstrated the mark has acquired

distinctiveness.

Opinion by Adlin, Administrative Trademark Judge, dissenting in part:

I join the majority in affirming the refusal of registration because the mark is

merely descriptive and without acquired distinctiveness. I dissent, however, from the

majority’s reversal of the genericness refusal. In my view, the quality and quantity of

the evidence of genericness is more than sufficient to clearly establish and leave no

doubt that FLASH FACIAL is generic for a subcategory of non-medicated skin care

preparations.

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