Lancome Parfums et Beaute & Cie

Trademark Trial and Appeal Board

Mar 13, 2008

No. 78621768 (T.T.A.B. Mar. 13, 2008)

Mailed:
March 13, 2008
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Lancôme Parfums et Beaute & Cie
________

Serial Nos. 78560833 and 78621768
_______

Robert L. Sherman and Margarita Wallach of Paul Hastings
Janofsky & Walker LLP for Lancôme Parfums et Beaute & Cie.

Anne Gustason, Trademark Examining Attorney, Law Office 117
(Loretta C. Beck, Managing Attorney).
_______

Before Quinn, Bucher and Cataldo, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Lancôme Parfums et Beaute & Cie seeks registration on
the Principal Register of the mark RESURFACE C-DERMABRASION
for goods identified in the applications as follows:
“cosmetics, namely, creams, gels, milks,
lotions and powders for the body” in
International Class 3; 1 and
“cosmetics, namely, creams, gels, milks,
lotions and powders for the face, the body and
the hands” in International Class 3.2

1 Application Serial No. 78560833 was filed on February 4, 2005
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.

2 Application Serial No. 78621768 was filed on May 3, 2005
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 78560833 and 78621768
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These cases are now before the Board on appeal from the
final refusals of the Trademark Examining Attorney to
register this designation based upon applicant’s failure to
comply with the requirements of the Trademark Examining
Attorney for disclaimers of the term “Resurface” apart from
the mark as shown pursuant to Section 6 of the Act, 15 U.S.C.
§ 1056, on the ground that it is merely descriptive as
applied to applicant’s goods under Section 2(e)(1) of the
Act. 15 U.S.C. § 1052(e).
The marks, the legal issues, the procedural histories,
the overall records and the appeal briefs are nearly
identical in these two appeals. Accordingly, these cases are
considered together and determined in a single opinion. We
affirm both refusals to register.
Is term merely descriptive?
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it
immediately conveys “knowledge of a quality, feature,
function, or characteristics of the goods or services.” In
re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828,
1831 (Fed. Cir. 2007) [ASPIRINA is merely descriptive of
analgesic product]. See also In re Gyulay, 820 F.2d 1216,
Serial Nos. 78560833 and 78621768
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3 USPQ2d 1009, 1009 (Fed. Cir. 1987) [APPLE PIE merely
descriptive of potpourri mixture]; and In re Quik-Print Copy
Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980)
[QUIK-PRINT is merely descriptive of “same day” services of
printing, photocopying, collating, binding, cutting,
drilling, folding, padding, stapling, and perforating]. To
be “merely descriptive,” a term need only describe a single
significant quality or property of the goods. Gyulay,
3 USPQ2d at 1009. Descriptiveness of a mark is not
considered in the abstract, but in relation to the particular
goods or services for which registration is sought. That is,
when we analyze the evidence of record, we must keep in mind
that the test is not whether prospective purchasers can guess
what applicant’s goods are after seeing applicant’s mark
alone. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978) [GASBADGE merely descriptive of a “gas
monitoring badge”; “Appellant’s abstract test is deficient –
not only in denying consideration of evidence of the
advertising materials directed to its goods, but in failing
to require consideration of its mark ‘when applied to the
goods’ as required by statute”].
The proper test in determining whether a term is merely
descriptive is to consider the applied-for mark in relation
to the goods or services for which registration is sought,
Serial Nos. 78560833 and 78621768
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the context in which the mark is used, and the significance
that the mark is likely to have on the average purchaser
encountering the goods or services in the marketplace. See
In re Omaha National Corp.,
819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987) [the term

“first tier” describes a class of banks]; In re Intelligent
Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996) [the term
VISUAL DESIGNER is merely descriptive of “computer programs for
controlling the acquisition of data from measurement
devices”]; In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB
1991) [MULTI-VIS is merely descriptive of “multiple viscosity
motor oil”]; In re Engineering Systems Corp., 2 USPQ2d 1075
(TTAB 1986) [DESIGN GRAPHIX merely descriptive of computer
graphics programs]; and In re Bright-Crest, Ltd., 204 USPQ
591 (TTAB 1979) [COASTER-CARDS merely descriptive of a coaster
suitable for direct mailing]. Hence, the ultimate question
before us is whether the term RESURFACE conveys information
about a significant feature or characteristic of applicant’s
goods with the immediacy and particularity required by the
Trademark Act.
A mark is suggestive, and therefore registrable on the
Principal Register without a showing of acquired
distinctiveness, if imagination, thought or perception is
Serial Nos. 78560833 and 78621768
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required to reach a conclusion on the nature of the goods or
services. “Whether a given mark is suggestive or merely
descriptive depends on whether the mark ‘immediately conveys
… knowledge of the ingredients, qualities, or characteristics
of the goods … with which it is used,’ or whether
‘imagination, thought, or perception is required to reach a
conclusion on the nature of the goods.’” (citation omitted)
In re Gyulay, 3 USPQ2d at 1009]; In re Home Builders
Association of Greenville, 18
USPQ2d 1313 (TTAB 1990) [NEW
HOME BUYER’S GUIDE merely descriptive of “real estate
advertisement services”]; and In re American Greetings Corp.,
226 USPQ 365, 366 (TTAB 1985) [APRICOT is merely descriptive
of apricot-scented dolls].
In arguing for registrability, applicant contends that
the “Resurface” portion of this mark is not merely
descriptive inasmuch as the Trademark Office has already
determined that the term “Re-surface” is not merely
descriptive of applicant’s goods; that the term “Resurface”
does not immediately or directly describe applicant’s goods;
that the term “Resurface” is not merely descriptive because
it connotes different things to different people while
creating one or more of several different commercial
impressions; that the authorities cited by the Trademark
Serial Nos. 78560833 and 78621768
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Examining Attorney do not support a disclaimer requirement;
and that the Trademark Examining Attorney has failed to
accord substantial weight to the legal effect of applicant’s
incontestable registration for RE-SURFACE.
On the contrary, the Examining Attorney argues that the
term “resurface” describes the purpose of the creams, gels,
milks, lotions and powders; that various website entries
demonstrate that the term “resurface” is being used in a
merely descriptive manner by cosmetic companies to describe
skin care products and techniques that change the surface of
the body part to which they are applied and/or the effect
that the cosmetic products will have on the skin.
The Record
We first turn to take a closer look at the evidentiary
record. Applicant itself appears to use the word “Resurface”
in a merely descriptive manner:
RESURFACE PEEL
Resurfacing and Soothing System
8% Glycolic Acid & 5% Physio-Peel
Enhancerâ„¢
Experience Resurface Peel, a safe and
effective at-home peel with 8% Glycolic
Acid & 5% Physio-Peel Enhancerâ„¢.

The Trademark Examining Attorney also placed into the
record a variety of third-party uses of the terms “resurface”
and “resurfacing” in the context of skin care treatments and
Serial Nos. 78560833 and 78621768
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creams. These are drawn from websites directed to providing
medical information and to marketing cosmetic products:
Dermabrasion

Dermabrasion removes the top layers of skin to resurface the texture of your skin. A rapidly
rotating instrument is used to “sand” the outer layers… 3

Dermabrasion and Microdermabrasion

Everyone would like the fresh-faced look of youthful glowing skin, and one of the many
dermatological techniques used to resurface and revitalize the skin is dermabrasion. By scuffing
or abrading the skin with tiny particles, the old layer of skin is removed to reveal new skin
underneath. Less harsh than chemical peels and laser skin treatment, microdermabrasion is used
to reduce wrinkles, lines, blemishes, uneven skin tone, and to improve acne, facial scars and to
remove pre-cancerous growths. Dermabrasion is favored over chemical peels in the treatment of
acne.
Microdermabrasion is a lighter form of dermabrasion known as the “lunchtime facial,” and removes
only the topmost layer of skin to reveal fresh skin underneath. While microdermabrasion may not
produce the dramatic results of laser resurfacing, there is no recovery time after the
microdermabrasion procedure. There may be redness after the treatment; however, most patients
are able to return to work immediately. Before you come to a decision about skin resurfacing,
think carefully about your options and discuss your questions during a consultation with a qualified
professional.

Procedure
The dermabrasion and microdermabrasion procedures can both be conducted in an outpatient
facility like a doctor’s or dermatologist’s office. Both procedures usually take from 15 minutes to
one hour depending on the extent of the procedure and area to be covered. The doctor will
progress by covering your hair and eyes and numbing the skin with spray or injected anesthetic.
You may receive an oral sedative for more in-depth treatments. For dermabrasion, the deeper
abrasive treatment, a doctor will use a hand held rough wire brush or a sanding wheel containing
diamond particles to scrape away the affected portion of the skin surface. The effects of
dermabrasion are more dramatic that those of microdermabrasion because the hand held tool does
touch the skin. The microdermabrasion procedure is milder and less invasive than total
dermabrasion because the skin is essentially sprayed away using micro particles. Your doctor will
use a hand held device to spray tiny aluminum oxide crystals against your skin as debris is
suctioned away. The results are subtler and recovery time is greatly reduced.
…. 4

SHORT-PULSED CARBON DIOXIDE LASER RESURFACING OR
THE WRINKLE LASER

3 http://www.mayoclinic.org/plasticsurgery-
sct/dermabrasion.html

4 http://www.cosmeticsurgeryinsider.net/

Serial Nos. 78560833 and 78621768
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Introduction:
The lay press and popular news has been devoting an inordinate amount of attention to a new
medical device which reportedly is the latest surgical "fountain of youth." The rapidly-pulsed
carbon dioxide lasers, of which there are a number of competing brands, work by burning or
vaporizing the skin very quickly minimizing damage to skin or tissue that is not specifically being
targeted. These devices, particularly in combination with computerized pattern generators, allow
very precise delivery of the laser light in geometric patterns and are being used in the place of older
methods to rejuvenate or resurface the skin, such as dermabrasion or chemical peels. They do
offer distinct advantages and, as we are finding out, some distinct disadvantages over the old
methods.
The use of such lasers to resurface the skin was originally conceived of and implemented by a
dermatologist who had used older generation carbon dioxide lasers for various cosmetic and
noncosmetic procedures. At the annual meeting of the American Society for Dermatologic Surgery
(ASDS) held in May 1996 numerous papers were presented concerning the various uses for this
truly remarkable device as well as its potential misuses. …. 5

Don't be skinned alive - choose professional skin treatments
If you're thinking about cosmetic or dermatological procedures, be careful. What you see isn't
always what you get. A number of people have harmed, disfigured or scarred from what should
have been relatively risk-free dermatological work.
…
A guide to skin treatments
Although treatment for skin cancer remains the most requested procedure, the following treatments
are also among the most popular:
• Dermabrasion: This involves the use of an abrasive instrument to mechanically "sand"
or resurface the skin, achieving a rejuvenated, more youthful appearance. It is often used to treat
substantial scarring, sun damage and pigmentation problems. .. 6

Laser Skin Resurfacing
Skin resurfacing can produce some of the most wonderful changes for skin problems including
wrinkles, scars, pigment irregularities, sun damage and poor complexion. Unfortunately, there is a
lot of confusion among patients as to what type of resurfacing procedure is necessary to
accomplish the desired improvement. There are a lot new procedures being advertised and many
are promising the world with no downtime. In some situations, these claims are valid, in others
they are not. When it comes to wrinkles, scars, and advanced sun damage, only true resurfacing
procedures will accomplish the goals of most people.
To simplify matters, skin resurfacing is best categorized by depth of resurfacing: ultra-superficial,
superficial, medium, and deep. There are three basic means to resurface skin: laser,
dermabrasion, and peel with each capable of resurfacing at any depth. The degree of
improvement is directly related to the depth of resurfacing, as is the time of recovery. 7

5 http://www.medquestltd.com/articles/article28.html

6 http://www.health24.com/antiageing/Quinmax/3685-3690.asp

7 http://www.dr-apo.com/laser_skin.php

Serial Nos. 78560833 and 78621768
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Skin resurfacing
Skin resurfacing employs a variety of techniques to change the surface texture and appearance
of the skin. Common skin resurfacing techniques include chemical peels, dermabrasion, and laser
resurfacing.
Skin resurfacing procedures may be performed for cosmetic reasons, such as diminishing the
appearance of wrinkles around the mouth or eyes. They may also be used as a medical treatment,
such as removing large numbers of certain precancerous lesions called actinic keratoses. Physicians
sometimes combine techniques, using dermabrasion or laser resurfacing on some areas of the
face, while performing a chemical peel on other areas.
Laser resurfacing is the most recently developed technique for skin resurfacing. Specially
designed, pulsed CO2 lasers can vaporize skin layer-by-layer, causing minimal damage to other skin
tissue. Special scanning devices move the laser light across the skin in predetermined patterns,
ensuring proper exposure. Wrinkling around the eyes, mouth, and cheeks are the primary uses for
laser resurfacing. Smile lines or those associated with other facial muscles tend to reappear after
laser resurfacing. Laser resurfacing appears to achieve its best results as a spot treatment;
patients expecting complete elimination of their wrinkles will not be satisfied.
Antiviral medications should be started several days before the procedure. Laser resurfacing is
performed under local anesthesia. An oral sedative may also be taken. The patient's eyes must be
shielded, and the area surrounding the face should be shielded with wet drapes ….8

Why choose Medical Diamond Dermabrasionâ„¢ (Turbo) over conventional
microdermabrasion?
Medical Diamond Dermabrasion (Turbo) has the ability in one treatment to correct and improve the
skin to a level that it would take four conventional microdermabrasion treatments. Simply put, why
pay more money when in reality you get less. The Medical Diamond Dermabrasion (Turbo) has the
ability to resurface many skin conditions …

WHAT we're accomplishing with microdermabrasion is not only removing some of the damaged skin
but stimulating new cell growth as well.
Research has shown that repetitive, superficial abrasions can create significant new cell growth.
Microdermabrasion [allows] patients to gradually resurface their skin without the downtime and
risk of more aggressive procedures.
Mark Rubin, MD 9

8 http://skin-care.health-cares.net/skin-resurfacing.php

Serial Nos. 78560833 and 78621768
- 10 -

Dermabrasion Information and Background
Background Information
Dermabrasion, Dermasanding or Dermaplaning is a surgical procedure that has been performed
since the late 1950’s. It is another example of a treatment, which aims to “resurface” the skin. It
is similar in its aim to lasers or chemical peels, but uses a machine to remove the outer layer of the
skin or epidermis and then the top third part of the dermis of the skin.
In recent years, the use of this particular form of skin treatment has declined as chemical peels and
lasers have become more popular. A milder form of dermabrasion, known as
microdermabrasion, has become very popular recently.….10

Exuviance Skin Healthy Home Resurfacing Peel System
Description Exuviance Skin Healthy Home Resurfacing Peel System - Easy to use 4 step
(cleanse, peel, neutralize, moisturize) home regimen system that will improve the appearance of
dull, lifeless, sun-damaged skin. This system brings back your skin’s healthy appearance by
exfoliating (or resurfacing) the dead, dull surface layers of the skin and stimulating the process
of cell renewal to bring new, fresh skin cells to the surface. Simply resurface your skin with the
peel once or twice a week and follow-up daily with the skincare regimen for optimal "skin healthy"
benefits. Ideal for face, chest and back of hands where exposure to the environment usually shows
the signs of aging… 11

Organic Skin Resurfacing Cream

Skin resurfacing! Organic resurfacing skin cream, a natural alternative to laser resurfacing
skin. A unique blend of ancient Indian skin resurfacing, organic medicinal herbs and organic herb
and fruit acids. Resurface your skin as an anti-aging skin care treatment … 12

Las Colinas Vitamin C Infusion Cream 10% Anti Aging Skin Care
Las Colinas Vitamin C Infusionâ„¢ 10% contains 10% bio-available L-Ascorbic Acid suspended in a
co-polymer matrix. This vitamin C infusion formula is a super intensive treatment for your deeper
lines and wrinkles that do not respond to other anti-aging products on the market. This crème is
concentrated and it does not require refrigeration and will not discolor.
A wonderful and powerful antioxidant. L-Ascorbic Acid is efficiently delivered to your problem
areas. This is what your skin needs to fight and also helps reverse the damaging and aging effects
of free radicals that you get from sun exposure, environmental toxins, stress and other daily
activities. It is oil free. Vitamin C Infusionâ„¢ helps to tremendously improve dermal re-
collagenation and to resurface skin with accelerated cellular turnover… 13

9 www.drknighton.com/diamond_questions.htm

10 http://www.consultingroom.com/Treatment%5FFAQs/Display.asp
?Treatment_Faqs_ID=33&Treatment_Name=Dermabrasion

11 http://www.skinelite.com/exuv-037.html

12 http://www.productskincare.com/

13 http://www.stuff4beauty.com/catalog.php?category=Las%20
Colinas%20Vitamin%20C%20Infusion%20Cream%20%20Anti%20Aging%20Skin%2
0Care
Serial Nos. 78560833 and 78621768
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La Prairie Night Care - Cellular -
Microdermabrasion Cream (Intensive Resurfacing Treatment Face & Body) 125ml/4.2oz14

Youthful Essence Resurfacing Tool and Sponge Kit by Susan Lucci 15

Rapid Resurface
Rapid Resurface Micro-dermabrasion at its best? Featuring a totally aluminum-free formula, gently,
yet effectively, polish skin to perfection in minutes… 16

Epidermal Re-Texturizing Micro-Dermabrasion
The formula contains two highly effective skin-sloughing ingredients: a skin-polishing silica (micronized shells
– referred to scientifically as “Diatomatious Earth” and micro-dermabrasion crystals.”). The two particles
compliment one another, enhancing their ability to thoroughly, yet safely eliminate the dead cells located in
the epidermis – or upper layer of the skin. Our formula resurfaces these superficial layers of skin and further
enhances cell renewal at the skin-surface level. The two particles compliment one another, enhancing their
ability to thoroughly, but safely eliminate the dead cells located in the upper layer of the skin. Combined, they
work to resurface these superficial layers of skin and further enhance cell renewal at the skin surface level. 17

Crystal Peel, $35.00
Crystal Peel is state of the art technology in skin care. It is the first and only Clinical Microdermabrasion
Program designed for home use. Crystal Peel is an intensive process that can be an adjunct to the
Microdermabrasion treatment in the skin care specialist’s office, or simply by itself. Will gently and
progressively resurface the skin to reduce fine lines, erase skin discoloration and freckles, and to refine
enlarged pores. Excellent to use before applying anti-wrinkle products or Vitamin C for deeper penetration.
The treatment also controls acne by gently removing the restrictive top layers of skin that traps dirt. Crystal
Peel, by creating a controlled abrasion, stimulates the production of new collagen, which is key to maintaining
skin’s elasticity and tone. 18

14 http://www.bizrate.com/skincareproducts/products__keyword--
resurfacing.html

15 Id.

16 http://www.leafandrusher.com/browseproducts/Rapid-
Resurface.html

17 http://www.kiehls.com/_us/_en/face/epidermal-re-texturizing-
micro-dermabrasion.htm

18 http://www.makemeheal.com/mmh/product/microdermabrasion/
index.vm?procid=34
Serial Nos. 78560833 and 78621768
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In response to this Internet evidence, applicant argues
that the term “Resurface” falls short of describing
applicant’s goods with the requisite degree of particularity.
In re TMS Corporation of the Americas, 200 USPQ 57, 58 (TTAB
1978) [THE MONEY SERVICE not descriptive of “financial
services”]. After reviewing this record thoroughly, we
disagree.
Rather, consistent with the various dictionary
definitions of “resurface” argued by applicant, it seems from
the above uses on the Internet that this term is clearly used
by the dermatology and cosmetology industries to describe the
purpose of skin care treatments and cosmetic products, and
that this is precisely the way in which the relevant public
understands the term. The close linkage of the terms
RESURFACE and DERMABRASION, in this composite mark as well as
in the literature, only reinforces this strong connection.
Applicant is especially vehement in its reply brief that
the Trademark Examining Attorney is collaterally estopped
from attacking applicant’s incontestable registration for the
mark RE-SURFACE for “creams for the care and beauty of the
face.”19

19 Registration No. 2311855 issued on January 25, 2000; Section
8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.
Serial Nos. 78560833 and 78621768
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We agree with the premise of applicant’s contention that
if the involved RESURFACE portion of applicant’s mark it seeks
to register is identical to subject matter of applicant’s
incontestable registration, the word “Resurface” need not be
disclaimed, provided the goods are identical. Park ‘N Fly,
Inc. v. Dollar Park and Fly, Inc. 105 S.Ct. 658, 224 USPQ 327
(1985), and In re The American Sail Training Association, 230
USPQ 879 (TTAB 1986). On the other hand, each application
for registration of a mark for certain goods must be
separately evaluated and “ … [n]othing in the statute
provides a right ipso facto to register a mark for additional
goods when items are added to a company’s line or substituted
for other goods covered by a registration ….” In re Loew’s
Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 869 (Fed. Cir.
1985); see also, In re Merrill Lynch, Pierce, Fenner, &
Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987)
[applicant’s incontestable registration of a service mark did
not automatically entitle applicant to registration of that
mark for broader financial services]; In re Best Software
Inc., 58 USPQ2d 1314 (TTAB 2001); In re Sunmarks Inc.,
32 USPQ2d 1470, 1472-73 (TTAB 1994); and In re BankAmerica
Corp., 231 USPQ 873, 876 (TTAB 1986). That is, the United
States Patent and Trademark Office should not be barred from
examining the registrability of a mark when an applicant
Serial Nos. 78560833 and 78621768
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seeks to register it for additional goods or services, as it
does here, even when the additional goods or services are
closely related to those goods and/or services listed in a
prior incontestable registration.
With respect to the goods, we note that the only overlap
between the goods of the claimed registration and these
applications involves facial creams. Otherwise, the
identifications of goods in both of the involved applications
are broader in formulations (viz., including “gels, milks,
lotions and powders”) and where they are applied (e.g., in
the claimed registration for the “face” only, but the first
application is to be used on the “body” generally while the
second application enumerates skin-care products for the
“face, the body and the hands”). Accordingly, the goods
identified in the present applications involve additional and
different goods.
Decision: These two refusals to register absent
applicant’s compliance with the Trademark Examining
Attorney’s requirement to disclaim the word “Resurface” (on
the ground that this term is merely descriptive in connection
with the identified goods) are hereby affirmed. Nonetheless,
in accordance with Trademark Rule 2.142(g), this decision
will be set aside with respect to both applications and the
Serial Nos. 78560833 and 78621768
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applications will be returned to the Trademark Examining
Attorney to place in condition for publication for
opposition, if applicant, no more than thirty days from the
mailing date of this decision, submits an appropriately
worded disclaimer for each application, namely:
No claim is made to the exclusive right to use
the word “Resurface” apart from the mark as
shown.

* * *