Sonya Dakar

Trademark Trial and Appeal Board

Sep 27, 2019

87609180 (T.T.A.B. Sep. 27, 2019)

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
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Serial No. 87609180
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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

1 Application 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).
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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.
Serial No. 87609180
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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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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.
4 Attached 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.
Serial No. 87609180
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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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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

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

10 Id., TSDR pp. 6-7.
Serial No. 87609180
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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.
Serial No. 87609180
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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.
14 Id. 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.
Serial No. 87609180
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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.
Serial No. 87609180
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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
Serial No. 87609180
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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.
Serial No. 87609180
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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)
Serial No. 87609180
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(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.
Serial No. 87609180
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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,
Serial No. 87609180
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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

19 Registration 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).
Serial No. 87609180
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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.