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`ESTTA1401827
`
`Filing date:
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`12/13/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Ex Parte Appeal -
`Serial No.
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`98054433
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`Appellant
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`Blaine Laboratories, Inc.
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`Applied for mark
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`HEELS
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`Correspondence
`address
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`Submission
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`Attachments
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`Appealed class
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`KIRK M HARTUNG
`MCKEE VOORHEES & SEASE PLC
`801 GRAND AVE STE 3200
`DES MOINES, IA 50309-2721
`UNITED STATES
`Primary email: patatty@ipmvs.com
`515-288-3667
`
`Appeal brief
`
`HEELS Appeal Brief.pdf(555336 bytes )
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`Class 005. First Use: Dec 3, 2022 First Use In Commerce: Dec 3, 2022
`All goods and services in the class are appealed, namely: MEDICATED SKIN
`CARE CREAM
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Andrew J. Morgan
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`patatty@ipmvs.com
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`/andrew j. morgan/
`
`12/13/2024
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Trademark Application of Blaine Laboratories, Inc.
`Serial No.: 98054433
`Filing Date: June 22, 2023
`Mark: HEELS
`Intl. Class: 5
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`APPLICANT’S APPEAL BRIEF
`
`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................................................. 1
`I.
`II. DESCRIPTION OF THE RECORD ................................................................................ 1
`III. STATEMENT OF THE ISSUES ....................................................................................... 1
`IV. BACKGROUND FACTS ................................................................................................... 2
`V.
`THE EXAMINING ATTORNEY’S TEST FOR GENERICNESS IS INOPPOSITE
`TO THE MEANING PRESCRIBED BY THE LANHAM ACT ................................... 5
`VI. THE EXAMINING ATTORNEY’S EVIDENCE IS INSUFFICIENT TO SATISFY
`THE HEAVY BURDEN REQUIRED TO FIND GENERICNESS ............................... 7
`VII. CONCLUSION ..................................................................................................................11
`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`Clairol, Inc. v. Roux Distributing Co., Inc., 47 C.C.P.A. 1165, 280 F.2d 863,
`126 U.S.P.Q. 397 (1960) ............................................................................................................. 9
`H. Marvin Ginn Corp. v. Int 'l Ass 'n of Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir. 1986) .............. 4
`In re Am. Fertility Soc., 188 F.3d 1341 (Fed. Cir. 1999) ................................................................ 4
`In re Country Music Ass 'n, Inc., 100 U.S.P.Q.2d 1824 (T.T.A.B. 2011).................................... 4, 9
`In re MBNA America Bank, N.A., 340 F.3d 1328, 67 U.S.P.Q.2d 1778 (Fed. Cir. 2003) ............... 6
`
`
`
`i
`
`
`
`In re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 4 U.S.P.Q.2d (BNA)
`1141 (Fed. Cir. 1987) ................................................................................................................ 10
`In re Rodale Inc., 80 U.S.P.Q.2d 1696, 2006 WL 2091269 (T.T.A.B. 2006) ................................. 7
`In re Tennis Indus. Assn., 102 U.S.P.Q.2d 1671 (T.T.A.B. 2012) ......................................... 4, 8, 10
`In re Texas Meat Brokerage, Inc., 199 U.S.P.Q. 40, 1978 WL 21220 (T.T.A.B. 1978) .................. 9
`In re Women's Publishing Co. Inc., 23 U.S.P.Q.2d (BNA) 1876, 1992 WL 224555
`(T.T.A.B. 1992) ......................................................................................................................... 10
`Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638 (Fed. Cir. 1991) ...................................................... 4
`Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 105 S. Ct. 658,
`83 L. Ed. 2d 582, 224 U.S.P.Q. 327 (1985) ................................................................................ 6
`Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960 (Fed. Cir. 2015) ...................... 4
`Statutes
`15 U.S.C.A. § 1064 ......................................................................................................................... 6
`Other Authorities
`2 McCarthy on Trademarks and Unfair Competition § 12:1 (5th ed.) ........................................... 6
`3 Callmann on Unfair Comp., Tr. & Mono. § 18:14 (4th ed.) ........................................................ 9
`Rules
`TBMP § 1203.02 ............................................................................................................................. 2
`TMEP § 1209.0l .......................................................................................................................... 7, 8
`
`
`
`
`ii
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`
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`I.
`
`INTRODUCTION
`Blaine Laboratories, Inc. (“Applicant”) applied to register the mark, HEELS, on June 22,
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`2023, giving rise to Application Serial No. 98/054,433 (the “Application”). The trademark
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`examining attorney assigned to the Application (hereinafter, “Examining Attorney”) refuses
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`registration of Applicant’s mark on the basis that HEELS is generic. Applicant respectfully
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`submits that the applied-for mark is not generic within the meaning contemplated by the Lanham
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`Act or as espoused in the relevant caselaw and should thus be entitled to registration on the
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`Supplemental Register.
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`II.
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`DESCRIPTION OF THE RECORD
`The evidence properly on record in this ex parte appeal comprises of the follow evidence
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`listed below:
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`A.
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`The Registrations enumerated in the Evidence Appendix attached to Applicant’s
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`February 14, 2024 Response to Non-Final Office Action.
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`B.
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`The Pending Applications enumerated in the Evidence Appendix attached to
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`Applicant’s February 14, 2024 Response to Non-Final Office Action.
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`C.
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`D.
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`The Merriam-Webster Dictionary definition for the word “Heel”.
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`Third-party webpages submitted by the Examining Attorney.
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`STATEMENT OF THE ISSUES
`III.
`Whether Applicant’s HEELS trademark is generic where (1) there is no record evidence
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`that it is the name for the applied-for goods, namely, medicated skin care cream, (2) dictionary
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`evidence does not define the applied-for mark, or the word “heel” as medicated skin care cream
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`or a related good, (3) and third-party use of the “heel” and “heels” is used descriptively?
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`1
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`
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`BACKGROUND FACTS
`IV.
`On June 22, 2023, Applicant filed the Application at issue in order to register the mark,
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`HEELS, for use with the identified goods, namely, medicated skin care cream.
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`Thereafter, a non-final office action was issued against the Application on November 14,
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`2023 (“First Office Action”). (November 14, 2024 Office Action).1 The First Office Action raised
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`objections to registration on the basis of: (1) likelihood of confusion with U.S. Registration No.
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`1,462,471 covering “-HEEL” for use with homeopathic pharmaceutical preparations, namely,
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`anti-inflammatory, analgesic preparations and (2) that the applied-for mark merely describes the
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`associated goods. The First Office Action also contained a request for information related to
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`Applicant’s goods and an advisory that the mark may be generic.
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`After Applicant submitted its February 14, 2024 response, a final office action was issued
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`on February 29, 2024 (“First Final Office Action”). (February 29, 2024 Office Action). The First
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`Final Office Action withdrew the likelihood of confusion objection and maintained refusal with
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`respect to descriptiveness and request for information. The First Final Office Action further
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`contained a continued advisory of genericness.
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`On April 4, 2024, Applicant filed a request for reconsideration which included an
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`amendment to seek registration on the Supplemental Register. (April 4, 2024 Request for
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`Reconsideration after Final Action). The amendment was accepted2 and a new, non-final office
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`1 Pursuant to TBMP § 1203.02 (e), Applicant is not herein submitting any supporting materials to the Appeal Brief.
`All citations refer to the documents submitted in connection with the filings in Application Serial No. 87647045 in
`the online database of the United States Patent and Trademark Office’s (“USPTO’s”) Trademark Status & Document
`Retrieval (“TSDR”) system.
`2 (April 6, 2024 Amendment).
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`
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`2
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`
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`action was issued on May 29, 2024 (“Second Non-Final Office Action”). (May 29, 2024 Non-
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`Final Office Action).
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`The Second Non-Final Office Action refused registration of the applied-for mark as
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`generic under Section 23(c) and is the sole ground for refusal. In making the genericness
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`rejection, the Examining Attorney asserted that Applicant’s goods as identified in the
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`Application, being medicated skin care cream, adequately defined the genus for the purposes of
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`their analysis.
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`
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`Applicant’s mark was found to be generic on the assertion that internet evidence
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`purportedly showed that HEELS “means skin care creams that help to repair dry and cracked
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`heels and thus the relevant public would understand this designation to refer primarily to that
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`genus of goods because heel cream is commonly used by others to refer to these type [sic] of
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`goods.” Id. The referenced internet evidence comprised solely of webpages selling foot creams
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`which made use of the word “heel” and was likewise offered as evidence to support the
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`descriptiveness objection issued in the First Final Office Action. (February 29, 2024 Office
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`Action).
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`
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`Applicant responded to the Second Non-Final Office Action challenging the Examining
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`Attorney’s application of the second step of the primary significance test by identifying that only
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`one of the products sighted by the internet evidence included the word “heels” and that all
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`instances included the use of multiple other words. (April 4, 2024 Request for Reconsideration
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`after Final Action). Applicant also submitted that the purported internet evidence does not
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`analyze the public’s understanding of the term and merely conflates descriptiveness with
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`genericness.
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`3
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`
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`Applicant’s response also referred to relevant case law in support of its contention that
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`the evidence offered by the Examining Attorney, which comprised only product webpages and
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`not other evidence such as dictionaries or studies, was insufficient to support the heavy burden of
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`finding a mark to be generic and that the record evidence instead supports a finding that the
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`relevant public does not understand the applied-for mark to identify or refer to the genus of
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`Applicant’s goods. In re Country Music Ass 'n, Inc., 100 U.S.P.Q.2d 1824, *4-5 (T.T.A.B. 2011)
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`(28 examples of third-party use insufficient to find “Country Music Association” generic); In re
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`Tennis Indus. Assn., 102 U.S.P.Q.2d 1671, *3, * 12 (T.T.A.B. 2012) (Dictionary definition, 10
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`examples of third party use and 4 trademark registrations in sufficient); Princeton Vanguard,
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`LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 965 (Fed. Cir. 2015); H. Marvin Ginn Corp. v. Int 'l
`
`Ass 'n of Fire Chiefs, Inc., 782 F.2d 987, 989- 90 (Fed. Cir. 1986); Magic Wand, Inc. v. RDB,
`
`Inc., 940 F.2d 638, 640 (Fed. Cir. 1991); In re Am. Fertility Soc., 188 F.3d 1341, 1347 (Fed. Cir.
`
`1999).
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`
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`Nevertheless, on July 19, 2024, the Examining Attorney maintained the genericness
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`objection on identical grounds and reasoning issuing a second final office action (“Second Final
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`Office Action”). (July 19, 2024 Subsequent Final Office Action). In further support of their
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`position, the Examining Attorney offered a dictionary reference for the word “HEEL” and the
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`previously offered internet evidence; both of which were first offered to support their
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`descriptiveness objection and before genericness was made a formal rejection. In response to
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`Applicant’s assertion that the internet evidence was insufficient, the Examining Attorney merely
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`included more of the exact same nature. The majority of the substantive analysis included in the
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`Second Final Office Action was devoted to whether the term “heels” is descriptive—Applicant
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`4
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`
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`was already seeking registration to the Supplemental Register at this point—and appears to be
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`recycled from the First Office Action and First Final Office Action.
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`Relying solely on the aforementioned evidence and analysis, the Examining Attorney
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`summarily concluded that “consumers who encounter or will encounter the applicant’s mark in
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`commerce in the context of the identified goods would immediately perceive the wording ‘heels’
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`to pertain to a type of skin care remedy.” (July 19, 2024 Subsequent Final Office Action).
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`
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`Thereafter, Applicant filed a request for reconsideration in response to the Second Final
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`Office Action. (September 24, 2024 Request for Reconsideration After Final Action). Applicant
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`asserted that the Examining Attorney continued to conflate descriptiveness with genericness and
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`maintained that the evidence relied upon by the Examining Attorney could not demonstrate that
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`consumers understand the term “Heels” to refer to medicated skin care cream and was thus
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`insufficient. The Examining Attorney denied Applicant’s request for reconsideration giving way
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`to the present appeal where the only ground for refusal is the contention that the applied-for
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`mark, HEELS, is generic.
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`V.
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`THE EXAMINING ATTORNEY’S TEST FOR GENERICNESS IS
`INOPPOSITE TO THE MEANING PRESCRIBED BY THE LANHAM ACT
`The Examining Attorney’s continued refusal and underlying rationale conflate the
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`concept of genericness with the concept of descriptiveness. The misapplication of the test for
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`genericness is made abundantly clear in the various bases for refusal within the prosecution
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`history, and by the Examining Attorney’s conclusion that “consumers who encounter or will
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`encounter the applicant’s mark in commerce … would immediately perceive the wording “heels”
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`to pertain to a type of skin care remedy.” (July 19, 2024 Subsequent Final Office Action)
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`(emphasis added). It is plain that the language used by the Examining Attorney pertains to
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`5
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`
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`descriptiveness, not genericness. In re MBNA America Bank, N.A., 340 F.3d 1328, 1332, 67
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`U.S.P.Q.2d 1778 (Fed. Cir. 2003) (“A mark is descriptive if it immediately conveys information
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`concerning a quality or characteristic of the product”).
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`Prior to 1989, the Lanham Act utilized the term “common descriptive name” rather than
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`“generic”. The Supreme Court of the United States once, in dictum, stated that a generic term
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`was one that “refers to the genus of which the particular product is a species.” Park 'N Fly, Inc.
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`v. Dollar Park and Fly, Inc., 469 U.S. 189, 194, 105 S. Ct. 658, 83 L. Ed. 2d 582, 224 U.S.P.Q.
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`327 (1985). However, “refers to” is a vague and improper way of making a determination of
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`genericness because it obfuscates the line between a generic name and a descriptive word. 2
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`McCarthy on Trademarks and Unfair Competition § 12:1 (5th ed.). Recognizing the need for
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`clarity, Congress revised “common descriptive name” to “generic name” by enacting the
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`Trademark Law Revision Act of 1989. Pub. L. 100-667, 102 Stat. 3935 (Effective Nov. 16,
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`1989).
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`Accordingly, the proper question here is whether the applied-for mark, HEELS is the
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`name of medicated skin care cream. 2 McCarthy on Trademarks and Unfair Competition § 12:1
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`(5th ed.) (internal citations omitted). Whether consumers would understand the term to pertain to
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`Applicant’s good is not the test, they must believe it is the identity, or name, of those goods
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`themselves.
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`To find otherwise is to stand in direct contravention of the statutory text of the Lanham
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`Act which explicitly recites the requirement as being a “generic name for goods or services.” 15
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`U.S.C.A. § 1064(3) (Cancellation); 15 U.S.C.A. § 1127 (Defining “abandonment”); 15 U.S.C.A.
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`§ 1065(4) (Exception to incontestable status).
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`6
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`
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`Importantly, the Examining Attorney does not assert that the applied-for mark is the
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`name of Applicant’s products, or those belonging to the same genus, in any of the Office Actions
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`issued. In fact, the word “name” does not appear at all. All that is submitted is that the mark
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`“pertains to”, “refers to” or “identifies a type” of medicated skin care cream. The Examining
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`Attorney’s statements merely assert that HEELS describes the product, not that it is the name of
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`a genus of products.
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`As such, the Examining Attorney’s application of the concept of genericness is contrary
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`to law and Applicant respectfully requests that the Board reverse the Examining Attorney’s final
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`refusal of Applicant’s mark.
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`VI.
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`THE EXAMINING ATTORNEY’S EVIDENCE IS INSUFFICIENT TO
`SATISFY THE HEAVY BURDEN REQUIRED TO FIND GENERICNESS
`To the extent the Examining Attorney conducted a genericness analysis, the evidence
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`used was insufficient to conclude that “HEELS” is generic. The burden is on the Examining
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`Attorney “to establish a prima facie case that a term is generic by providing a reasonable
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`predicate (or basis) that the relevant purchasing public would primarily use or understand the
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`matter sought to be registered to refer to the genus of goods or services in question.” See TMEP
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`§ 1209.0l(c)(i).
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`This Board has held that the burden of establishing a rejection based on genericness can
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`only be met by “clear evidence of generic use”. In re Rodale Inc., 80 U.S.P.Q.2d 1696, 2006 WL
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`2091269 (T.T.A.B. 2006). The evidence presented by the Examining Attorney, consisting only of
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`a single dictionary entry and a smattering of webpages selling various creams and lotions, is
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`neither clear evidence, nor evidence of generic use.
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`
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`7
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`
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`The test of whether a designation is generic comprises two questions. First, what is the
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`genus of goods at issue; and second, whether the relevant public understands the designation to
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`primarily be the name of that genus of goods. In re Tennis Indus. Assn., 102 U.S.P.Q.2d 1671 at
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`*3; TMEP § 1209.0l(c)(i). In the instant case, neither party contests that the genus of goods are
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`those identified in the instant application, namely, medicated skin care cream. (May 29, 2024
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`Non-Final Office Action).
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`While third party usage is indeed a permissible source in assessing genericness, so too is
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`any other competent source of evidence “bearing on how consumers perceive a term’s meaning,”
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`including dictionaries, research databases, magazines, newspapers, or other publications. See
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`TMEP § 1209.0l(c)(i).
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`In the instant case, the Examining Attorney makes reference to one dictionary entry. (July
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`19, 2024 Subsequent Final Office Action) (citing November 14, 2023 Non-Final Office Action).
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`While the cited Merriam-Webster definition of “heel” does include references to the human foot,
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`amongst others, absent from the definition are medicated skin care creams. As such, the
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`Examining Attorney’s dictionary entry does not support that the applied-for mark HEELS is the
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`generic name of Applicant’s goods; instead, it indicates that Applicant’s mark is descriptive and
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`thus registrable on the Supplemental Register.
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`Furthermore, the internet evidence, to the extent they have any relevance whatsoever,
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`supports the conclusion “HEELS” is not generic. That said, a number of these webpages are
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`clearly not relevant as, on their face, they do not comprise goods of the genus, i.e. medicated skin
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`care cream. Numerous entries are clearly non-medicated lotions while others leave doubt.
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`Further, several examples, such as “Heel Rescue® Foot Cream”, use the disputed term as a part
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`of a registered mark. (February 29, 2024 Final Office Action). Without exception, all third-party
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`8
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`
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`uses proffered by the Examining Attorney use the term “heel(s)” as an adjective to modify one or
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`more nouns to describe the product.
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`In general, “A generic term categorizes; while a descriptive term, on the other hand,
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`characterizes; that is, it identifies the characteristics and qualities of the article, such as its color,
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`odor, functions, dimensions or ingredients.” 3 Callmann on Unfair Comp., Tr. & Mono. § 18:14
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`(4th ed.) (citing Clairol, Inc. v. Roux Distributing Co., Inc., 47 C.C.P.A. 1165, 280 F.2d 863, 126
`
`U.S.P.Q. 397 (1960); In re Texas Meat Brokerage, Inc., 199 U.S.P.Q. 40, 1978 WL 21220
`
`(T.T.A.B. 1978). “The typical descriptive term is an adjective, rather than a noun. Instead of
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`naming a product or service, it attributes some characteristic to it.” 3 Callmann on Unfair Comp.,
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`Tr. & Mono. § 18:14 (4th ed.).
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`Here, the vast majority of third party uses cited by the Examining Attorney comprise
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`some formative of “heel cream”. In such examples, the term “heel” is modifying, or describing,
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`the term “cream” to indicate that such creams are meant to be used on ones’ heel. Such use is not
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`generic but instead undoubtedly descriptive. Therefore, the use cited by the Examining Attorney
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`is not evidence of generic use by third parties.
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`Accordingly, none of the evidence demonstrates that Applicant’s mark is an unregistrable,
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`generic designation; rather, it demonstrates that the mark is, at worst, descriptive, and capable of
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`registration on the Supplemental Register.
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` Yet even if the websites were relevant and somehow supported the Examining Attorney’s
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`position, the Examining Attorney’s sole reliance on this evidence is nevertheless insufficient.
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`For example, in In re Country Music Ass 'n, Inc. , 100 U.S.P.Q.2d 1824, *4-5 (T.T.A.B.
`
`2011), the Board referenced 28 examples of third party usages cited by the examining attorney as
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`
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`9
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`
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`not “clearly establish[ing] genericness,” stating in part: “[W]e are not convinced that the
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`examining attorney’s evidence of use of the phrase ‘Country Music Association’ suffices as clear
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`evidence that the relevant purchasers perceive the phrase as naming the genus of the services at
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`issue.”
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`Similarly, the examining attorney in In Re Tennis Indus. Assn., 102 U.S.P.Q.2d at *4- 8
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`cited not only dictionary definitions for each of the proposed trademark’s terms, but also at least
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`five examples of generic use of the proposed mark in its entirety, at least eight examples of
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`generic use of a portion of the proposed mark, at least five relevant websites, and at least four
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`trademark registrations, yet the Board nevertheless found that the examiner had “not met its
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`difficult burden of establishing by clear evidence that the designation . .. , as a whole, [was]
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`generic [for the relevant genus of services.]” 102 U.S.P.Q.2d at *4- 8.
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`Again, the internet evidence, even if relevant, does not show generic use. Such is made
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`clear from the fact that the evidence was recycled from that put forth to support the Examining
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`Attorney’s contention that Applicant’s mark was merely descriptive prior to the amendment to
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`seek registration on the Principal Register. Accordingly, the Examining Attorney has failed to
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`present any evidence that the applied-for mark is generic and has not met its burden, and nor is
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`there any evidence available to demonstrate, that “HEELS” is generic of Applicant’s goods. As
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`such, and especially in view of this Board’s precedent in resolving reasonable doubt in favor of
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`registration3, Applicant respectfully requests that the Examining Attorney’s final refusal of
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`Applicant’s mark be reversed.
`
`
`
`
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`3 In re Women's Publishing Co. Inc., 23 U.S.P.Q.2d (BNA) 1876, 1992 WL 224555 (T.T.A.B. 1992); In re Merrill
`Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 4 U.S.P.Q.2d (BNA) 1141, 1144 (Fed. Cir. 1987).
`
`
`
`10
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`
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`VII. CONCLUSION
`Because the Examining Attorney’s application of the test and concept of genericness is
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`contrary to law, and because the evidence of record does not demonstrate that the applied-for
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`mark, HEELS, is the generic name of the applied-for goods, medicated skin care cream, the
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`Examining Attorney has failed to satisfy its heavy burden to demonstrate a prima face case that
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`the subject mark is generic. Accordingly, Applicant respectfully requests that the Board reverse
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`the Examining Attorney’s final refusal of Applicant’s mark.
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`Respectfully submitted,
`
`
`/s/ Andrew J. Morgan
`Andrew J. Morgan
`McKEE, VOORHEES & SEASE, P.L.C.
`801 Grand Avenue, Suite 3200
`Des Moines, IA 50309-2721
`Phone: 515-288-3667
`Fax: 515-288-1338
`Email: andrew.morgan@ipmvs.com
`Email: patatty@ipmvs.com
`
`ATTORNEYS FOR APPLICANT
`
`CERTIFICATE OF FILING
`I hereby declare that the foregoing document has been filed via the Electronic
`System for Trademark Trials and Appeals (ESTTA) this 13th day of December 2024.
`/s/ Andrew J. Morgan
`
`
`
`11
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`