Sheree Elizabeth, LLC

Trademark Trial and Appeal Board

Sep 3, 2014

No. 85309228 (T.T.A.B. Sep. 3, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 3, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sheree Elizabeth, LLC
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Serial No. 85309228
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Christine C. Washington,
for Sheree Elizabeth, LLC
Khanh M. Le, Trademark Examining Attorney, Law Office 116,
Michael W. Baird, Managing Attorney.
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Before Kuhlke, Taylor, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Sheree Elizabeth, LLC (“Applicant”) seeks registration on the Principal Register
of the mark SHEREE ELIZABETH (in standard characters) for a variety of goods in
International Classes 3, 14, and 25,1 as detailed infra.
The Trademark Examining Attorney has refused registration of Applicant’s
mark on the grounds that (1) portions of the proposed identification of goods are an
impermissible expansion of the original identification pursuant to Trademark Rule

1 Application Serial No. 85309228 was filed on April 30, 2011 pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), but without any claimed first use date. A consent to
registration by Sheree Elizabeth Fletcher was submitted on January 18, 2012.
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2.71(a), 37 C.F.R. § 2.71(a); (2) a portion of the proposed identification is indefinite
pursuant to Trademark Rule 2.32(a)(6); and (3) portions of the identification of
goods are misclassified pursuant to Trademark Rules 2.6(a)(1), 2.85(a), and 2.86. In
addition, the Examining Attorney has found that Applicant’s specimen of use is not
an acceptable display associated with the goods pursuant to Trademark Act
Sections 1(a)(1) and 45, 15 U.S.C. §§ 1051(a)(1) and 1127, and Trademark Rules
2.34(a)(1)(iv) and 2.56(a).
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed, and Applicant submitted its Appeal Brief
on December 26, 2012.
On March 13, 2013, before filing an appeal brief, the Examining Attorney
requested remand to issue new requirements, and the Board granted the request.
The outstanding issues were not resolved on remand, and the appeal resumed.
Applicant filed a Supplemental Brief and a Reply Brief, and the Examining
Attorney submitted a brief.
We affirm the refusal to register in part and dismiss as moot in part.
I. Identification of Goods
Section 7(c) of the Trademark Act provides, in relevant part, “[c]ontingent on the
registration of a mark on the principal register provided by this chapter, the filing
of the application to register such mark shall constitute constructive use of the
mark, conferring a right of priority, nationwide in effect, on or in connection with
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the goods or services specified in the registration . . . .” Thus, the identification of
goods or services in an application for registration on the Principal Register defines
the scope of the rights established by filing the application. See In re Swen Sonic
Corp., 21 USPQ2d 1794, 1795 (TTAB 1991).
The application was filed under Section 1(a) of the Trademark Act, which states
that, among other requirements, an application “shall include specification of . . .
the goods in connection with which the mark is used.” Trademark Act Section
1(a)(2). Trademark Rule 2.32(a)(6) requires that an application include “[a] list of
the particular goods or services on or in connection with which the applicant uses or
intends to use the mark.” The identification of goods or services must be specific,
definite, clear, accurate, and concise. See In re Petroglyph Games Inc., 91 USPQ2d
1332, 1335 (TTAB 2009). Trademark Rule 2.6(a)(1) requires an application filing fee
for each class in an application. Rule 2.85(a) states that the international system of
classification for goods and services applies to all applications filed on or after
September 1, 1973, and Rule 2.86(a)(1) requires an applicant to specifically identify
the goods or services in each class.
As filed, the subject application identified the following goods and services:
“Cosmetics, skin-care treatments, spa treatments and related products and
services.” Applicant paid a fee for one class of goods or services, but identified
neither the class in which the identified goods and services belonged nor any date of
first use; nor did Applicant submit a specimen of use.
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In response to the Examining Attorney’s requirements, Applicant in the first
Response to Office Action submitted a fee for a second class of goods; amended the
identification to include goods in Classes 3 and 25; and alleged a date of first use
anywhere and in commerce at least as early as January 1, 2006. Further
amendments to the identification of goods followed, and Applicant ultimately
amended the basis of the Class 25 goods to Section 1(b) (intent-to-use).
After remand, the Examining Attorney issued a new Office Action requiring,
among other issues, that Applicant either add International Class 14 to the
application, or delete jewelry items that had been included in Class 25 improperly,
that is, “clothing and apparel articles related to cosmetic application and spa
services and activities, namely, necklaces, earrings, rings.” Applicant did not add a
third class to the application. Instead, Applicant responded by adding these and
other jewelry goods to the Class 3 identification while also leaving them in Class 25.
In the November 18, 2013 Final Office Action – the last before the appeal
resumed – the Examining Attorney stated that “Applicant may adopt all or part of
the following identification of goods, if accurate:”
Cosmetics, cosmetic preparations for skin care, soaps,
bath oils and salts, room and personal fragrances;
clothing and apparel articles related to cosmetics,
cosmetic application and spa services and activities,
namely, toiletry bags sold filled with cosmetics, in
international class 3
Clothing and apparel articles related to cosmetics,
cosmetic application and spa services and activities,
namely, necklaces, earrings, rings, ornamental pins, and
clutch knuckle hand bags worn on the fingers as jewelry,
in international class 14
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. . .
Clothing and apparel articles related to cosmetic
application and spa services and activities, namely,
headbands, ear bands, neck bands, neck wear,
neckerchiefs, sweatbands, turbans, hats, scarves, wrist-
bands, robes, slippers, sandals, aqua shoes, socks,
sneakers, gloves, tee-shirts, shorts, sweat-shirts, sweat-
pants, bathing suits, lingerie, jackets, belts, cover-ups,
blindfolds worn over the eyes, dressing gowns, in
international class 25.
Finally, in its Supplemental Brief, Applicant proposed this identification:
International Class 3: cosmetics, cosmetic preparations
for skin care, soaps, bath oils and salts, room and
personal fragrances; clothing and apparel articles related
to cosmetics, cosmetic application and spa services and
activities, namely, toiletry bags sold filled with cosmetics;
International Class 25: clothing and apparel articles
related to cosmetics, cosmetic application and spa services
and activities, namely, headbands, ear bands, neck bands,
neck wear neckerchiefs, sweatbands, turbans, hats,
scarves, wrist-bands, robes, slippers, sandals, aqua shoes,
socks, sneakers, gloves, tee-shirts, shorts, sweat-shirts,
sweat-pants, bathing suits, lingerie, jackets, belts, cover-
ups, blindfolds worn over the eyes, dressing gowns; and
International Class 14: (Proposed, newly divided or new
application:) rings, necklaces, earrings, ornamental pins,
clutch knuckle handbags.
With the exception of the word “cosmetics” (as opposed to the word “cosmetic”) in
Class 25, Applicant’s proposed identification of goods for Classes 3 and 25 is
identical to that proposed by the Examining Attorney in the November 18, 2013
Final Office Action. The Examining Attorney, however, did not address the
amended identification of goods offered in Applicant’s Supplemental Brief.
Therefore, we accept Applicant’s proposed identification, which complies with the
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Examining Attorney’s requirement, and dismiss as moot the identification
requirements with respect to the goods identified in Applicant’s Supplemental Brief
in Classes 3 and 25 only. See In re Broyhill Furniture Indus. Inc., 60 USPQ2d 1511,
1512 n.2 (TTAB 2001) (treating requirement for translation of mark as moot where
applicant offered translation in appeal brief and examining attorney did not address
the issue). Accordingly, the Class 3 and Class 25 identifications now read as follows:
International Class 3: cosmetics, cosmetic preparations
for skin care, soaps, bath oils and salts, room and
personal fragrances; clothing and apparel articles related
to cosmetics, cosmetic application and spa services and
activities, namely, toiletry bags sold filled with cosmetics.
International Class 25: clothing and apparel articles
related to cosmetics, cosmetic application and spa services
and activities, namely, headbands, ear bands, neck bands,
neck wear neckerchiefs, sweatbands, turbans, hats,
scarves, wrist-bands, robes, slippers, sandals, aqua shoes,
socks, sneakers, gloves, tee-shirts, shorts, sweat-shirts,
sweat-pants, bathing suits, lingerie, jackets, belts, cover-
ups, blindfolds worn over the eyes, dressing gowns.
We turn next to the remaining goods, identified in Class 14 in Applicant’s
Supplemental Brief as “rings, necklaces, earrings, ornamental pins, clutch knuckle
handbags.” Applicant characterizes the goods in this class as “Proposed, newly
divided or new application,” explaining: “It is the Applicant’s intention, subject to
the Board’s decision and advisory in response hereto, that any additional classes
sought to be claimed by the Applicant shall be the subject of either a newly derived
application or a newly filed application.”2 Similarly, Applicant states, in the
conclusion of its Reply Brief, that it “awaits the Board’s decision regarding the

2 Supplemental Brief at 3, 13 TTABVUE at 4.
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relatedness of any enumerated goods that may fall beyond IC 3 and 25 so that the
Applicant will be able to proceed in an efficient and optimal manner – i.e., either in
the same, divided or a newly filed application.”3
We view Applicant’s identification of goods as a concession that, as the
Examining Attorney made clear in the April 19, 2013 Office Action, jewelry items
properly belong in International Class 14. However, Applicant filed neither a
request to divide nor a request for remand so that it could add a third class of goods
to the subject application. See TBMP § 1205.01 (2014) (stating that, if an applicant
wishes to amend its application at the time it files its appeal brief, “the proper
procedure is to file a request for remand and a request to suspend proceedings in
the appeal pending the Board’s decision on the request for remand”). Even if a
request for remand had been filed, at this late juncture it is unlikely that Applicant
would be able to show good cause. See In re Thomas White Int’l Ltd., 106 USPQ2d
1158, 1160 n.2 (TTAB 2013); In re Big Pig Inc., 81 USPQ2d 1436, 1437 (TTAB
2006); TBMP § 1209.04 (stating that, in determining whether good cause has been
shown, the Board will consider both the reason given and the point in the appeal at
which the request for remand is made).
We therefore affirm the refusal to register as to rings, necklaces, earrings,
ornamental pins, and clutch knuckle hand bags pursuant to Trademark Rules
2.6(a)(1), 2.85(a), and 2.86 on the grounds that they were misclassified by Applicant

3 Reply Brief at 15, 17 TTABVUE at 16.
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and Applicant failed to submit an application filing fee for the correct class, which is
International Class 14.4
II. Specimen of Use
We next address the Examining Attorney’s refusal of registration for the Class 3
goods on the ground that Applicant’s specimen of use is not an acceptable display
associated with any of those goods pursuant to Trademark Act Sections 1(a)(1) and
45 and Trademark Rules 2.34(a)(1)(iv) and 2.56(a).
Section 45 of the Trademark Act states in part that:
For purposes of this chapter, a mark shall be deemed to
be in use in commerce—
(1) on goods when—
(A) it is placed in any manner on the goods or
their containers or the displays associated
therewith or on the tags or labels affixed thereto,
or if the nature of the goods makes such
placement impracticable, then on documents
associated with the goods or their sale . . . .
Trademark Rule 2.56 provides in part:
(a) An application under section 1(a) of the Act . . . must
[ ] include one specimen per class showing the mark as
used on or in connection with the goods or services. . . .
(b)(1) A trademark specimen is a label, tag, or container
for the goods, or a display associated with the goods. The
Office may accept another document related to the goods
or the sale of the goods when it is impracticable to place
the mark on the goods, packaging for the goods, or
displays associated with the goods.

4 Although there is no basis on which to add another class of goods to the application before
us on appeal, nothing in this opinion precludes Applicant from filing another application
seeking to register its mark for jewelry goods that it provides or intends to provide.
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With its October 21, 2013 Response to Office Action, Applicant submitted for the
first time the following specimen, described as a: “Screen grab of order page wherein
cosmetic product is featured”:5

The specimen includes Applicant’s mark SHEREE ELIZABETH in large letters on a
banner in the upper part of the page. Below the banner, the following categories are
listed: “WHAT’S NEW Brands Earrings Bracelets Necklaces Handbags Rings
Watches Jackets & Vests Other.” The wording immediately above a picture of the
goods is “Home > Other > Whoop Ash.” The label of the goods includes most
prominently the term WHOOP ASH and design, followed by a registration symbol.
Other wording on the label reads: “WHITE HONEY MANGO & SHEA BUTTER
BODY BUTTER CREAM INTENSE MOISTURIZ[ER].” On the page to the right of
the goods is a space to specify quantity and a button to “Add To Cart.”

5 Applicant stated in its first Response to Office Action that its specimens were not legible
when uploaded but had been submitted by mail. It appears from the record that, before
Applicant’s response to the Office Action that was issued after remand, the specimens
either had never been received or had not been matched with the application.
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In the November 18, 2013 Final Office Action, the Examining Attorney refused
registration because the specimen fails to show the applied-for mark in use in
commerce in connection with the goods identified in International Class 3.
Specifically, the Examining Attorney contends that the specimen consists of a web
page that does not constitute a display associated with the goods because the mark
is not used in a manner in which it is associated with the goods.
As our primary reviewing court has said, “the test for an acceptable website-
based specimen, just as any other specimen, is simply that it must in some way
evince that the mark is ‘associated’ with the goods and services as an indicator of
source.” In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1123 (Fed. Cir. 2009).
However, “there is no per se rule that any use of a mark on a website is trademark
use for all goods sold on that web page.” In re Supply Guys Inc., 86 USPQ2d 1488,
1495 (TTAB 2008). In particular, a retailer that sells the goods of others does not
necessarily have a trademark for those goods. “The mere fact that applicant is a
retailer selling products of others does not by itself establish that applicant’s mark,
which may function as its trade name or service mark, necessarily also functions as
a trademark for the goods applicant sells.” Id. at 1494. See also 2 J. THOMAS
MCCARTHY, MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 16:32.70 (4th ed.
2014); Trademark Manual of Examining Procedure (TMEP) § 904.03(i) (providing
examples of electronic displays) (April 2014).
We agree with the Examining Attorney and find that the specimen of use
displays the mark SHEREE ELIZABETH in association with online retail sale
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services for the pictured product, but not with the goods themselves.6 Thus, we
affirm the refusal.
Finally, we note that we have no authority to reopen the application to amend
the Class 3 filing basis from 1(a) to 1(b) (intent-to-use), as proposed in Applicant’s
Reply Brief.7 See Trademark Rule 2.142(g); TBMP § 1218. If Applicant wished to
preserve its right to substitute Section 1(b) as a basis for this class, it should have
either made this an alternative request during the examination phase or, if it could
have shown good cause, requested remand of the application to the Examining
Attorney during the briefing stage of the appeal. In re Societe D’Exploitation de la
Marque Le Fouquet’s, 67 USPQ2d 1784, 1789 (TTAB 2003).
Decision: The refusal to register Applicant’s mark SHEREE ELIZABETH
under Sections 1 and 45 of the Trademark Act is affirmed as to Class 3 for failure to
submit a specimen showing use in commerce of the mark in association with the
goods. The refusal to register the Class 14 goods pursuant to Trademark Rules
2.6(a)(1), 2.85(a), and 2.86 because they were misclassified and Applicant failed to
submit an application filing fee for the correct class is affirmed. The refusal to
register the goods identified in Classes 3 and 25, as amended, is dismissed as moot.
The application will proceed in due to course as to the Class 25 goods only.

6 Applicant filed a slightly different version of the Internet specimen with its Supplemental
and Reply Briefs, and also attached what it described as a “copy of the label that is affixed
on Applicant’s cosmetic (body cream) products” to its Reply Brief. See 13 TTABVUE at 8
(Exhibit A); 17 TTABVUE at 10, 17 (Exhibit A), 19 (Exhibit C). These exhibits do not
change our decision. Rather, the product label reinforces the perception that the mark
SHEREE ELIZABETH is associated with a distributor, not the source, of the goods in that
it states in small print near the bottom: “Distributed by: Sheree Elizabeth for Whoop Ash.”
7 Reply Brief at 10, 17 TTABVUE at 11.