Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA868901
`01/03/2018
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`Granted to Date
`of previous ex-
`tension
`Address
`
`Attorney informa-
`tion
`
`Dennis F. Gross
`01/03/2018
`
`444 Madison AvenueSuite 500
`New York, NY 10022
`UNITED STATES
`
`Christine M. Baker
`Mintz Levin Cohn Ferris Glovsky & Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`UNITED STATES
`Email: IPDocketingBos@mintz.com, cbaker@mintz.com, ahan@mintz.com
`Phone: 6175426000
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`87202675
`01/03/2018
`
`Publication date
`Opposition Peri-
`od Ends
`
`09/05/2017
`01/03/2018
`
`SESDERMA, S.L.
`Massamagrell, 3 - Rafelbuñol
`PolÃ-gono Industrial Rafelbuñol
`Valencia, E-46138
`SPAIN
`
`Goods/Services Affected by Opposition
`
`Class 003. First Use: 2010/05/30 First Use In Commerce: 2010/05/30
`All goods and services in the class are opposed, namely: Non-medicated exfoliating preparations for
`skin; Skin care preparations, namely, chemical peels for skin; all of the foregoing containing ferulic
`acid
`Class 005. First Use: 2010/05/30 First Use In Commerce: 2010/05/30
`All goods and services in the class are opposed, namely: medicated skin care preparations, namely,
`chemical peels for skin; all of the foregoing containing ferulic acid
`
`Grounds for Opposition
`
`The mark is merely descriptive
`The mark is generic
`
`Trademark Act Section 2(e)(1)
`Trademark Act Sections 1, 2 and 45
`
`Attachments
`
`NOTICEOFOPPOSITIONFORFERULACPEEL.pdf(101526 bytes )
`
`

`

`EXHIBITAREGISTRATION.pdf(25393 bytes )
`EXHIBITSABC.pdf(1837474 bytes )
`EXHIBITDRESPONSETOOFFICEACTIONFORFERULACPEEL.pdf(843295
`bytes )
`EXHIBITHJUN28RESPONSE.pdf(11025 bytes )
`EXHIBITI.pdf(4900439 bytes )
`EXHIBITJ.pdf(1593389 bytes )
`EXHIBITSEFG.pdf(702912 bytes )
`
`Signature
`Name
`Date
`
`/cmbaker/
`Christine M. Baker
`01/03/2018
`
`

`

`Attorney Docket: 049966-407-059
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 87/202675
`
`for FERULAC PEEL
`
`Published in the Official Gazette on September 5, 2017
`
`Dennis F. Gross
`
`Opposer,
`
`v.
`
`Sesderma S.L.
`
`Applicant.
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`Sir/Madam:
`
`APPLICATION NO. 87/202675
`
`OPPOSITION NO.: TBA
`
`NOTICE OF OPPOSITION
`
`Dennis F. Gross ("Opposer"), a United States citizen, with a business address at 444
`
`Madison Avenue, Suite 500 New York, NY 10022 believes he will be damaged by the registration
`
`of U.S. Application Serial No. 87/202675 for the mark FERULAC PEEL for the following goods:
`
`Non-medicated exfoliating preparations for skin; Skin care preparations, namely,
`
`chemical peels for skin; all of the foregoing containing ferulic acid, in International
`
`Class 3; and
`
`

`

`Medicated skin care preparations, namely, chemical peels for skin; all of the foregoing
`
`containing ferulic acid, in International Class 5,
`
`which was filed by Sesderma, S.L. ("Applicant") and published for opposition in the Official
`
`Gazette on September 5, 2017 and hereby opposes the same.
`
`Pursuant to Trademark Act Sections 1, 2 and 45 and Trademark Act Section 2(e)(1) and
`
`predicated upon the following grounds, Opposer alleges the following:
`
`1. Opposer is the creator of the award winning and global skin care brand DR DENNIS
`
`GROSS®. For several years, Opposer has been engaged in the manufacture and sale of
`
`skin care peels containing ferulic acid.
`
`2. Opposer has regularly appeared on television shows such as Dr. OZ, The Today Show,
`
`The Doctors, CBS: The Early Show and on CNN to discuss skin health and has been
`
`lauded for his innovative approach to skin care and skin care peels containing ferulic acid
`
`by major magazines, including but not limited to, Vogue, Elle, Harper's Bazaar, and The
`
`New York Times Magazine.
`
`3. Opposer owns Registration No. 5,283,495 for the mark FERULIC + RETINOL WRINKLE
`
`RECOVERY PEEL for non-medicated skin care preparations containing ferulic acid and
`
`retinol. As the attached Registration Certificate indicates, the Trademark Office required
`
`2
`
`

`

`Opposer to disclaim the terms FERULIC and PEEL apart from Opposer's mark
`
`FERULIC + RETINOL WRINKLE RECOVERY PEEL. See Exhibit A.
`
`4. Upon information and belief, the Applicant is a limited liability company organized under
`
`the laws of Spain with an address of Massamagrell, 3 — Rafelbaol, Poligono Industrial
`
`Rafelbutiol, Valencia, Spain E-46138.
`
`5. On information and belief, Applicant is involved in the manufacture and sale of skin care
`
`products, including a ferulic peel.
`
`6. On information and belief, Applicant sells a ferulic peel and uses the term ferulac peel in
`
`connection with its ferulic peel.
`
`7. Applicant filed an application to register the mark FERULAC PEEL for non-medicated
`
`exfoliating preparations for skin; skin care preparations, namely, chemical peels for skin;
`
`all of the foregoing containing ferulic acid, in Class 003 and for medicated skin care
`
`preparations, namely, chemical peels for skin; all of the foregoing containing ferulic acid,
`
`in Class 005 on October 13, 2016 and the application was assigned Serial No. 87/202675.
`
`See Exhibit B.
`
`8. In an Office Action dated December 17, 2016, the Examining Attorney denied
`
`registration of the mark FERULAC PEEL on that ground that it merely describes a
`
`feature, ingredient, characteristic, purpose, function and/or use of applicant's goods under
`
`3
`
`

`

`Trademark Act Section 2(e)(1) and appears to be generic in connection with the
`
`identified goods and, therefore, incapable of functioning as a source-identifier for
`
`applicant's goods. See Exhibit C.
`
`9. In the refusal dated December 17, 2016, the Examining Attorney states that the term
`
`"ferulac" is the phonetic equivalent of "ferulic" and that, according to The American
`
`Heritage Dictionary of the English Language Dictionary, the word "PEEL" is "a
`
`chemical peel," which is the removal of skin blemishes or wrinkles by applying a caustic
`
`chemical, such as an acid, that produces a mild, superficial burn. The examining attorney
`
`concludes that the wording FERULAC PEEL merely describes an ingredient, quality,
`
`characteristic, or feature of applicant's goods, namely, the applicant's goods comprise
`
`chemical peels or treatments for the removal of problematic skin with ferulic acid as an
`
`ingredient. See Exhibit C.
`
`10. In the Applicant's response to the Section 2(e)(1) refusal dated May 23, 2017, the
`
`applicant acknowledges that FERULAC PEEL is a slight and intentional misspelling of
`
`the generic term FERULIC PEEL and that the Applicant intentionally misspells generic
`
`terms which are active ingredients in its products. See Exhibit D.
`
`11. In its response dated May 23, 2017, Applicant states that a search on Google.com for
`
`FERULAC did not pick up the misspelling of FERULIC and suggest the correct spelling.
`
`4
`
`

`

`12. On information and belief, a search on Google.com for "what is ferulac acid" uncovered
`
`the misspelling of FERULAC and suggested "what is ferulic acid." The search uncovered
`
`over 924,000 records with this term pertaining to skin care and skin care products. These
`
`results indicate that FERULAC is a misspelling of a generic term that is widely used as
`
`the name of an active ingredient in skin care preparations, which include chemical peels
`
`for skin. See Exhibit E.
`
`13. In Applicant's response dated May 23, 2017, Applicant stated that consumers will be able
`
`to identify the difference between Applicant's distinctive mark(s) and the generic terms
`
`for the ingredients therein. On information and belief beauty and medical spas, who are
`
`sophisticated consumers, refer to ferulic acid as "ferulac acid" and offer skin peels that
`
`include "ferulac acid" as an ingredient. Even sophisticated consumers will perceive
`
`"ferulac peel" as generic wording for a chemical peel containing ferulic acid. See Exhibit
`
`F.
`
`14. In an Office Action dated June 16, 2017, the Examining Attorney required a disclaimer of
`
`the generic wording PEEL. See Exhibit G.
`
`15. On June 28, 2017, the Applicant filed a response to the Office Action dated June 16,
`
`2017 disclaiming the word PEEL and claiming that the mark FERULAC PEEL has
`
`become distinctive of the Applicant's goods under Trademark Act Section 2(f) based on
`
`Applicant alleged use of FERULAC PEEL for at least (5) five years. See Exhibit H.
`
`5
`
`

`

`16. On information and belief, FERULAC is the phonetic equivalent of the word FERULIC
`
`and refers to a type of acid that is found in plant cell wall components and is the main
`
`ingredient in the Applicant's peels, as evidenced by Applicant's description of goods.
`
`Ferulic acid is a favorite ingredient of dermatologists and skin care companies and is used
`
`in many skin care products including the Opposer's FERULIC + RETINOL WRINKLE
`
`RECOVERY PEEL. See EXHIBIT I.
`
`17. On information and belief, the term "Ferulic" is commonly used in connection with skin
`
`care products. Because of this, consumers will immediately perceive FERULAC PEEL
`
`as an intentional misspelling of the generic term FERULIC PEEL or simply believe that
`
`FERULAC PEEL is a FERULIC PEEL.
`
`18. On information and belief, the wording FERULIC PEEL and FERULIC PEELS are
`
`generic terms that are widely used in connection with skin care products and the skin care
`
`industry. See the attached Google search results, identified as Exhibit J, for the wording
`
`FERULIC PEEL and FERULIC PEELS which uncovered over 484,000 and 350,000
`
`results respectively and mention ferulic peels by Opposer and other well know skin care
`
`companies.
`
`19. On information and belief, the term FERULAC PEEL is a generic term incapable of
`
`functioning as a trademark because it is a slight misspelling of the term FERULIC PEEL,
`
`which is a standard term in the skin care industry designating a type of skin care peel that
`
`6
`
`

`

`includes ferulic acid. The term FERULAC PEEL cannot be exclusively appropriated by
`
`Applicant as a trademark for a ferulic peel because it is incapable of identifying
`
`Applicant as a source of origin.
`
`20. FERULAC PEEL is a slight and intentional misspelling of the generic term FERULIC
`
`PEEL, which is the common commercial name for the applicant's goods, namely, peels
`
`containing ferulic acid as an ingredient.
`
`21. Registration for the mark FERULAC PEEL on the Principal Register will inhibit the
`
`Opposer and applicant's competitors from using the wording FERULIC PEEL and
`
`FERULIC PEELS to describe peels containing ferulic acid and using the words
`
`FERULIC and PEEL or PEELS in marks for skin care peels. In essence, a registration for
`
`the mark FERULAC PEEL will give the applicant a monopoly over the generic term
`
`FERULIC PEEL for skin peels and skin care preparations and enable the applicant to
`
`bring harassing infringement suits and oppositions.
`
`22. Opposer will be damaged by Applicant's registration of FERULAC PEEL as the prima
`
`facie effect of such registration will interfere with use by Opposer and others in the skin
`
`care industry in the exercise of their right to use the term FERULIC PEEL and
`
`FERULIC PEELS in connection with (a) skin care peels comprising ferulic acid.
`
`Registration of FERULAC PEEL will inhibit the Opposer's right to compete with the
`
`Applicant.
`
`7
`
`

`

`23. In view of the generic nature of the term FERULAC PEEL and the widespread use of its
`
`correct spelling, FERULIC PEEL, by third parties, the Applicant is not entitled to
`
`registration of the term FERULAC PEEL.
`
`24. Applicant's alleged mark is also merely descriptive within the meaning of Trademark Act
`
`Section 2(e)(1) because it merely describes an ingredient, quality, characteristic or feature
`
`of Applicant's goods. The Applicant has not established and is unable to establish that
`
`FERULAC PEEL has become distinctive of Applicant's goods. Applicant also will not
`
`be able to establish that FERULAC PEEL has acquired secondary meaning as a source of
`
`origin.
`
`WHEREFORE, Opposer believes that he will be damaged by the registration of U.S.
`
`Application Serial No. 87/202675 for the mark FERULAC PEEL and, therefore, respectfully
`
`requests that this opposition be sustained in favor of Opposer.
`
`Respectfully submitted,
`
`Christine M. Baker, Esq.
`MINTZ, LEVIN, COHN, FERRIS
`GLOVSKY and POPEO, PC
`One Financial Center
`Boston, MA 02111
`(617) 542-6000
`(617) 542-2241
`
`Attorneys for Opposer,
`Dennis F. Gross
`
`By:
`
`8
`
`Dated: January 3, 2018
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing NOTICE OF OPPOSITION has
`been served on Applicant's counsel of record by mailing said copy on January 3, 2018 via First
`Class Mail to: Christian Sanchelima, Esq., Sanchelima & Associates, P.A., 235 SW Le Jeune
`Road, Miami, FL 33134 and via email to: chris@sanchelima.com; tm q,sanchelima.com;
`legal@sanchelima.com; jesus@sanchelima.com
`
`9
`
`

`

`tate55 of amerit„
`
`iYtteb !ptateo Patent anb Trabonarti office
`
`FERULIC + REIM OL WRINKLE
`RECOVERY PE1'.'..L
`
`Reg. No. 5,283,495
`
`Registered Sep. 12, 2017
`
`Dennis F. Gross (UNITED STATES INDIVIDUAL)
`444 Madison Avenue, Suite 802
`New York, NY 10022
`
`Int. Cl.: 3
`
`Trademark
`
`CLASS 3: Non-medicated skin care preparation containing ferulic acid and retinol; skin care
`preparations, namely, skin peels containing ferulic acid and retinol
`
`FIRST USE 11-28-2015; IN COMMERCE 11-30-2015
`
`Principal Register
`
`TIIE MARK CONSISTS OF STANDARD CHARACTERS WITIIOUT CLAIM TO ANY
`PARTICULAR FONT STYLE, SIZE OR COLOR
`
`No claim is made to the exclusive right to use the• following apart from the mark as shown:
`"FFRULIC + RETINOL", "WRINKLE" AND "PEEL"
`
`SER. NO. 86-852,803, FILED 12-17-2015
`MARIA VICTORIA SUAREZ, EXAMINING ATTORNEY
`
`Perfornim9 the Functions and Duties of the
`Under Secretary of Commerce for
`Intellectual Property and Director of the
`United States Patent and Trademark Office
`
`

`

`FAA/4/A
`
`tate5 of am
`niteti.tateq Vateitt mitt Treibentath office
`
`tC
`
`FERULIC + RETINOL
`RECOVERY PEEL
`
`Reg. No. 5,283,495
`Registered Sep. 12, 2017
`
`Int. Cl.: 3
`
`Trademark
`
`Principal Register
`
`Dennis F, Gross (UNITED STATES INDIVIDUAL)
`444 Madison Avenue, Suite 802
`New York, NY 10022
`CLASS 3: Non-medicated skin care preparation containing ferulic acid and retinol; skin care
`preparations, namely, skin peels containing ferulic acid and retinol
`FIRST USE 11-28-2015; IN COMMERCE 11-30-2015
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
`PARTICULAR FONT STYLE, SIZE OR COLOR
`No claim is made to the exclusive right to use the• following apart from the mark as shown:
`"FERULIC + RETINOL", "WRINKLE" AND "PEEL"
`
`SER. NO. 86-852,803, FILED 12-17-2015
`MARIA VICTORIA SUAREZ, EXAMINING ATTORNEY
`
`e, .eie (-hi
`N.1'10(111.19 the 1- ttrtotons and Duties ol the
`Under Secretary ol CornmerCe for
`tolellectital Property And Otrector ol the
`United StateS Patent and 'trademark Office
`
`

`

`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`
`Trademark/Service Mark Application, Principal Register
`
`.43
`
`Serial Number: 87202675
`Filing Date: 10/13/2016
`
`The table below presents the data as entered.
`
`; 872(12675
`
`FERULAC, PEEL
`
`YES
`
`YES
`
`FERULAC PEEL
`The mark consists of standard characters, without claim to any particular font,
`style, size, or color.
`
`Principal
`
`SESDERMA, S.L.
`
`Massamagrell, 3 - Rafelbunol
`
`Poligono Industrial Rafelbunol
`
`Valencia
`
`Spain
`
`E-46138
`
`305-447-1617
`
`305-445-8484
`
`tm@sanchelima.corn
`
`SERIAL NUMBER
`
`MARK INFORMATION
`
`*MARK
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`LITERAL ELEMENT
`
`MARK STATEMENT
`
`REGISTER
`
`APPLICANT INFORMATION
`
`OWNER OF MARK
`
`INTERNAL ADDRESS
`
`"STREET
`
`• *CITY
`
`*COUNTRY
`
`'ZIP/POSTAL CODE
`• (Required for U.S. applicants)
`
`PHONE
`
`FAX
`
`EMAIL ADDRESS
`
`LEGAL ENTITY INFORMATION
`
`TYPE
`
`limited liability company
`
`• STATE/COUNTRY WHERE LEGALLY
`ORGANIZED
`
`Spain
`
`GOODS AND/OR SERVICES AND BASIS INFORMATION
`
`INTERNATIONAL CLASS
`
`* IDENTIFICATION
`
`FILING BASIS
`
`FIRST USE ANYWHERE, DATE
`
`FIRST USE IN COMMERCE DATE
`
`003
`non-medicated exfoliating preparations Ibr skin: Skin care preparations,
`namely, chemical peels for skin; all of the .foregoing containing ferulac acid.
`
`SECTION 1(a)
`
`At least as early as 05/30/2010
`
`At least as early as 05/30/2010
`
`

`

`SPECIMEN FILE NAME(S)
`
`SPECIMEN DESCRIPTION
`
`INTERNATIONAL CLASS
`
`*IDENTIFICATION
`
`FILING BASIS
`
`FIRST USE ANYWHERE DATE
`
`FIRST USE IN COMMERCE DATE
`
`: \\TICRS\EXPORT17\IN4AGEOUT l 7\872\026\87202675\ xml \
`RFA0003.JPG
`
`Image of the mark as used in commerce as found affixed to the goods.
`
`005
`medicated skin care preparations, namely. chemical peels lbr skin; all of the
`foregoing containing ferulic acid
`
`SECTION 1(a)
`
`At least as early as 05/30/2010
`
`, At least as early as 05/30/2010
`wnots\ExpoRTI7\imAGEou.t. 1.7\872\026\87202675\xmii\
`
`SPECIMEN FILE NAME(S)
`
`• RFA0004.JPG
`
`SPECIMEN DESCRIPTION
`
`ATTORNEY INFORMATION
`
`NAME
`
`Image of the mark as used in commerce as found affixed to the goods.
`
`Christian Sanchelima, Esq.
`
`ATTORNEY DOCKET NUMBER
`
`360453.1
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`COUNTRY
`
`ZIP/POSTAL CODE
`
`PHONE
`
`'FAY
`
`; EMAIL ADDRESS
`
`Sanchelima & Associates, P.A.
`
`235 SW Le Jeune Road
`
`Miami
`
`Florida
`
`United States
`
`33134
`
`305-447-1617
`
`305-445-8484
`
`tm@sanchelima.com
`
`, AUTHORIZED TO COMMUNICATE VIA EMAIL
`
`Yes
`
`OTHER APPOINTED ATTORNEY
`
`Jesus Sanchelima, Esq.
`
`CORRESPONDENCE INFORMATION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`. STATE
`
`COUNTRY
`
`ZIP/POSTAL CODE
`
`PHONE
`
`FAX
`
`'EMAIL ADDRESS
`
`, Christian Sanchelima, Esq.
`
`Sanchelima & Associates, P.A.
`
`235 SW Le Jeune Road
`
`Miami
`
`Florida
`
`• United States
`
`33134
`
`305-447-1617
`
`305-445-8484
`tm@sanchelima.eom;legal@sanchelima.com; ehris@sanchelima.com;
`jesus@sanchelima.eom
`
`*AUTHORIZED TO COMMUNICATE VIA EMAIL
`
`Yes
`
`

`

`FEE INFORMATION
`
`APPLICATION FILING OPTION
`
` TEAS RF
`
`NUMBER OF CLASSES
`
`FEE PER CLASS
`
`*TOTAL FEE DUE
`
`*TOTAL FEE PAID
`
`SIGNATURE INFORMATION
`
`ORIGINAL PDF FILE
`
`CONVERTED PDF FILE(S)
`(1 page)
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
` 2
`
`275
`
`550
`
`550
`
`• hw 502405030-173505343 . 161004vp.Signed TM App1.360453.1 3.pdf7
`
`\\TICRS\EXPORT17\IMAGEOUIl 7\872\026\87202675\xm l l \RFA0005.JPG
`
`Gabriel Serrano
`
`Managing Member
`
`• 305-447-1617
`
`

`

`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`
`Trademark/Service Mark Application, Principal Register
`
`Serial Number: 87202675
`Filing Date: 10/13/2016
`
`To the Commissioner for Trademarks:
`
`MARK: FERULAC PEEL (Standard Characters, see below )
`
`The literal element of the mark consists of FERULAC PEEL.
`The mark consists of standard characters, without claim to any particular font, style, size, or color.
`
`The applicant, SESDERMA, S.L., a limited liability company legally organized under the laws of Spain, having an address of
`Massamagrell, 3 - Rafelbufiol
`Poligono Industrial Rafelbunol
`Valencia E-46138
`Spain
`305-447-1617(phone)
`305-445-8484(fax)
`tmgsanchelima.com (not authorized)
`requests registration of the trademark service mark identified above in the United States Patent and Trademark Office on the Principal Register
`established by the Act of.luly 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:
`International Class 003: non-medicated exfoliating preparations for skin; Skin care preparations, namely, chemical peels for skin; all of the
`foregoing containing ferulac acid.
`In International Class 003, the mark was first used by the applicant or the applicant's related company or licensee or predecessor in interest at
`least as early as 05/30/2010, and first used in commerce at least as early as 05/30/2010, and is now in use in such commerce. The applicant is
`submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed
`goods/services, consisting of a(n) Image of the mark as used in commerce as found affixed to the goods..
`Specimen Filel
`
`International Class 005: medicated skin care preparations, namely, chemical peels for skin; all of the foregoing containing ferulic acid
`In International Class 005, the mark was first used by the applicant or the applicant's related company or licensee or predecessor in interest at
`least as early as 05/30/2010, and first used in commerce at least as early as 05/30/2010, and is now in use in such commerce. The applicant is
`submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed
`goods/services, consisting of a(n) Image of the mark as used in commerce as found affixed to the goods..
`Specimen Filel
`
`The applicant's current Attorney Information:
`Christian Sanchelima, Esq. and Jesus Sanchelima, Esq. of Sanchelima & Associates, P.A. 235 SW Le Jeune Road
`Miami, Florida 33134
`United States
`305-447-1617(phone)
`305-445-8484(fax)
`tm a sanchelima.com (authorized)
`The attorney docket/reference number is 360453.1.
`The applicant's current Correspondence Information:
`Christian Sanchelima, Esq.
`Sanchelima & Associates, P.A.
`
`235 SW Le Jeune Road
`
`Miami, Florida 33134
`
`

`

`305-447-1617(phone)
`
`305-445-8484(fax)
`tm@sanchelitna.comdegal@sanchelima.corn; chris@sancheliina.com; jesus@sanchelima.com (authorized)
`E-inail Authorization: I authorize the USPTO to send e-mail correspondence concerning the application to the applicant or applicant's attorney
`at the e-mail address provided above. I understand that a valid e-mail address must be maintained and that the applicant or the applicant's
`attorney must file the relevant subsequent application-related submissions via the Trademark Electronic Application System (TEAS). Failure to
`do so will result in an additional processing fee of $50 per international class of goods/services.
`
`A lee payment in the amount of $550 has been submitted with the application, representing payment for 2 class(es).
`
`Declaration
`
`The signatory believes that: if the applicant is tiling the application under 15 U.S.C. § 1051(a), the applicant is the owner of the
`trademark/service mark sought to be registered; the applicant is using the mark in commerce on or in connection with the goods/services in the
`application; the specimen(s) shows the mark as used on or in connection with the goods/services in the application; and/or if the applicant tiled
`an application under 15 U.S.C. § 1051(b), § 1126(d), and/or § 1126(e), the applicant is entitled to use the mark in commerce; the applicant has a
`bona fide intention, and is entitled, to use the mark in commerce on or in connection with the goods/services in the application. The signatory
`believes that to the best of the signatory's knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the
`mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services
`of such other persons, to cause confusion or mistake, or to deceive. The signatory being warned that willful false statements and the like are
`punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the
`validity of the application or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all
`statements made on information and belief are believed to be true.
`
`Declaration Signature
`
`Signature: Not Provided Date: Not Provided
`Signatory's Name: Gabriel Serrano
`Signatory's Position: Managing Member
`RAM Sale Number: 87202675
`RAM Accounting Date: 10/14/2016
`
`Serial Number: 87202675
`Internet Transmission Date: Thu Oct 13 17:43:35 EDT 2016
`TEAS Stamp: USPTO/BAS-XX.XXX.XX. XX-20161013I74335048
`119-87202675-5705e4d9194f95b2fc50d0adf13
`fl edeat2ddab7492643ca92f9d26aa0fa72a6-CC
`-4860-20161013173505343230
`
`

`

`FERULAC PEEL
`
`

`

`FERULAC PEEL
`CLASSIC
`Chemical exfoliating/ Exfoliante quimico
`
`pH 4.0 - 5.0
`4...
`
`NANOTECH
`
`Step 1
`
`60 mlO2.03fl.oz
`
`sesmed derma
`
`

`

`()act?Sign Envelope ID: 7D33A476-F 16E-4 I 66-13705-A07AAC17E3C D
`traaomanc/6ervice man( Appricatron, Frincipat Hogislor
`
`8/23/16, 5:24 PM
`
`Declaration
`
`The signatory believes that: if the applicant is filing the application under 15 U.S.C. § 1051(a), the applicant
`is the owner of the trademark/service mark sought to be registered; the applicant is using the mark in
`commerce on or in connection with the goods/services in the application; the specimen(s) shows the mark as
`used on or in connection with the goods/services in the application; and/or if the applicant filed an application
`under 15 U.S.C. § 105I(b), § 1 126(d), and/or § 1.126(e), the applicant is entitled to use the mark in
`commerce; the applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in
`connection with the goods/services in the application. The signatory believes that to the best of the signatory's
`knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark
`in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in
`connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive. The
`signatory being, warned that willful false statements and the like are punishable by fine or imprisonment, or
`both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity
`of the application or any registration resulting therefrom, declares that all statements made of his/her own
`knowledge are true and all statements made on information and belief are believed to be true.
`
`Signature Section:
`
`Signature:
`sigilatOlyi§"N<MT-Gli lia-STI:F' 110 /
`Signatory's Position: ~~~~~~~~~~Men 'her
`Signatory's Phone NuMber: 305-447-1617
`
`Date Signed: 0215.,/ -2D
`
`NOTE TO APPLICANT: When filed as part of the electronic form (i.e., scanned and attached as an image
`file), the signature page must include both the signature Information and the boilerplate declaration language.
`Do not include the entire application, but do ensure that the boilerplate declaration language actually appears;
`a signature by itself will not be acceptable. If, due to browser limitations, the boilerplate declaration language
`appears on a previous page when printed, you must "merge" the declaration and signature block onto a single
`page prior to signing, so that the one complete page can_be scanned to create an acceptable image file. It is
`recommended that you copy-and-paste the entire text form into another document, manipulate the spacing
`there to move the declaration and signature section to a separate page, and then print this new version of the
`text form to send to the signatory.
`
`hti p://teas.usplo.gov/forms/xelt.servIce?xs1=hsign & stain p=t1SPT0/...6195edf leba62030136a094bOae415acd647c76608b6613a635d6118(03436
`
`Page 3 of 6
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`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`SESDERMA, S.L. (tm@sanchelima.com)
`U.S. TRADEMARK APPLICATION NO. 87202675 - FERULAC PEEL - 360453.1
`
`12/17/2016 8:32:51 PM
`
`ECOM119@USPTO.GOV
`
`Attachment - 1
`Attachment - 2
`Attachment - 3
`Attachment - 4
`Attachment - 5
`Attachment - 6
`Attachment - 7
`Attachment - 8
`Attachment - 9
`Attachment - 10
`Attachment - 11
`Attachment - 12
`Attachment - 13
`Attachment - 14
`Attachment - 15
`Attachment - 16
`Attachment - 17
`Attachment - 18
`Attachment - 19
`Attachment - 20
`Attachment - 21
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`Attachment - 28
`Attachment - 29
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`Attachment - 31
`Attachment - 32
`Attachment - 33
`Attachment - 34
`Attachment - 35
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT'S TRADEMARK APPLICATION
`
`U.S. APPLICATION SERIAL NO. 87202675
`
`MARK: FERULAC PEEL
`
`*87202675*
`
`

`

`CORRESPONDENT ADDRESS:
`CHRISTIAN SANCHELIMA,
`SANCHELIMA & ASSOCIATES, P.A.
`235 SW LE JEUNE ROAD
`MIAMI, FL 33134
`
`APPLICANT: SESDERMA,
`
`CORRESPONDENT'S REFERENCE/DOCKET NO :
`360453,1
`CORRESPONDENT E-MAIL ADDRESS:
`tm a sanchelima.com
`
`CLICK HERETO RESPOND TO THIS LETTER:
`http://www.uspto.v,ov/trademarksheas/response forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`OFFICE ACTION
`
`STRICT DEADLINE TO RESPOND TO THIS LETTER
`TO AVOID ABANDONMENT OF APPLICANT'S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT'S
`COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
`
`ISSUE/MAILING DATE: 12/1 7/2016
`
`The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to
`the issue(s) below. 15 U.S.C. §1062(6); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
`
`SEARCH OF OFFICE'S DATABASE OF MARKS
`The trademark examining attorney has searched the Office's database of registered and pending marks and has found no conflicting marks that
`would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
`
`SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
`Registration is refused because the applied-for mark merely describes a feature, ingredient, characteristic, purpose, function and/or use of
`applicant's goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(6), 1209.03 et seq.
`
`In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods and, therefore,
`incapable of functioning as a source-identifier for applicant's goods. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987);
`hi re Pennzoil Prods. Co., 20 USPQ2d 1753 (TTAB 1991); see TMEP §§ 1209.01(c) et seq., 1209.02(a). Under these circumstances, neither an
`amendment to proceed under Trademark Act Section 2(1) nor an amendment to the Supplemental Register can be recommended. See TMEP
`§1209.01(c).
`
`A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant's goods
`and/or services. TMEP §1209.01(b); see, e.g., DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753,
`1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re
`Steelbuilding.00172, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Mc. v. COM171'r of Patents ,
`252 U.S. 538, 543 (1920)).
`
`The determination of whether a mark is merely descriptive is made in relation to an applicant's goods and/or services, not in the abstract.
`DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of
`Commerce oldie US., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(6); see, e.g., In re Polo Int'l Inc. , 51
`USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the "documents" managed by applicant's software
`rather than the term "doctor" shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding
`CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of "computer programs recorded on disk" where the relevant trade
`used the denomination "concurrent" as a descriptor of a particular type of operating system).
`
`Applicant seeks registration of" FERULAC PEEL" for "non-medicated exfoliating preparations for skin; Skin care preparations, namely,
`chemical peels for skin; all of the foregoing containing ferulac acid, in International Class 3; and medicated skin care preparations, namely,
`chemical peels for skin; all of the foregoing containing ferulic acid, in International Class 5."
`
`The term "ferulac" is the phonetic equivalent of "ferulic."
`
`The attached excerpts from the website of ScienceDirect provides the following regarding ferulic acid:
`
`Ferulic acid (FA), a ubiquitous natural phenolic phytochemical present in seeds, leaves, bothin its free form and covalent(); conjugated to the
`
`

`

`plant cell wall polysaccharides, glycoproteins,polyamines, lignin and hydroxylany acids. FA plays a vital role in providing the rigidity to the
`cell wall and formation of other important organic compounds like coniferyl alcohol, vanillin, .sinapic, diferulic acid and curcumin. FA exhibits
`wide variety of biological activities such as antioxidant, antiinflammatory, antimicrobial, antiallergic, hepatoprotective, anticarcinogenic,
`antithrombotic, increase sperm v