Welcome to Scribd. Sign in or start your free trial to enjoy unlimited e-books, audiobooks & documents.Find out more
Download
Standard view
Full view
of .
Look up keyword
Like this
1Activity
0 of .
Results for:
No results containing your search query
P. 1
77752328

77752328

Ratings: (0)|Views: 132|Likes:
Published by woodypollack

More info:

Published by: woodypollack on May 29, 2010
Copyright:Attribution Non-commercial

Availability:

Read on Scribd mobile: iPhone, iPad and Android.
download as PDF, TXT or read online from Scribd
See more
See less

05/28/2010

pdf

text

original

 
UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO
: 77/752328
MARK
: FOOTLONG
*77752328*

CORRESPONDENT ADDRESS
: VALERIE A. POCHRON DOCTOR'S ASSOCIATES INC. 325 BIC DR MILFORD, CT 06461-3072 
RESPOND TO THIS ACTION:http://www.uspto.gov/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION:
http://www.uspto.gov/main/trademarks.htm

APPLICANT
:  Doctor's Associates Inc.

CORRESPONDENT’S REFERENCE/DOCKETNO
: DAIUSTM/077
CORRESPONDENT E-MAIL ADDRESS
:
OFFICE ACTION
TO AVOID ABANDONMENT,THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THISOFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE
:
Introduction
This Office action supplements any previous Office actions issued in this application. Upon furtherreview, the following issue(s) has been raised and must be addressed. The Office apologizes for anyinconvenience this may cause. Applicant must respond to all issues within six months from the date of this new Office action in order to avoid abandonment of the application. TMEP §1104.09(h).
Failure to Function
Registration is refused because the applied-for mark, as used on the specimen of record, does not functionas a service mark to identify and distinguish applicant’s services from those of others and to indicate thesource of applicant’s services. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053, 1127;
see In re Moody’s Investors Serv., Inc.
, 13 USPQ2d 2043 (TTAB 1989);
 In re The Signal Cos.
, 228 USPQ956 (TTAB 1986);
 In re Hughes Aircraft Co.
, 222 USPQ 263 (TTAB 1984); TMEP §§904.07(b), 1301.02
et seq.
 
The applied-for mark, as shown on the specimen, does not function as a service mark because the mark refers specifically to sandwiches, which are Class 030 goods. A term that serves only to identify a menuitem does not function as a service mark for restaurant services.
 In re El Torito Rest. Inc.
, 9 USPQ2d2002 (TTAB 1988); TMEP §1301.02(a). Attached are additional case laws supporting the determinationthat a mark for a menu item does not function as a service mark for restaurant services. See attached.Applicant has submitted numerous specimens and exhibits showing use of the mark in commerce. All of the evidence shows the mark being used to refer to a type of sandwich, not restaurant services. Forexample, the specimen of record shows the mark under “Your Menu Choices” along with other menuitems, such as 6” (referring to a 6” sub as opposed to a footlong sub), salad, and flatbread. Another exhibitsubmitted on October 16, 2009 is of a banner stating “ALL FOOTLONG SUBS” are $5. And a similarexhibit shows $5 FOOTLONGS with the phrase A VARIETY OF GREAT SUBS. In the latter cases, themark specifically refers to a menu item costing $5.The specimen of record, along with any other relevant evidence of record, is reviewed to determinewhether an applied-for mark is being used as a service mark.
 In re Volvo Cars of N. Am., Inc.
, 46USPQ2d 1455, 1458 (TTAB 1998). Not every word, design, symbol or slogan used in the advertising orperformance of services functions as a mark, even though it may have been adopted with the intent to doso.
See
TMEP §1301.02. A designation cannot be registered unless purchasers would be likely to regardit as a source-indicator for the services.
 Id.
;
seeIn re Moody’s Investors Serv. Inc.
, 13 USPQ2d 2043,2047-49 (TTAB 1989).
Response Options
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) bysubmitting evidence and arguments in support of registration.Applicant may also respond to this refusal by submitting the following:(1) A substitute specimen showing the mark in use in commerce for the services specified inthe application; and(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R.§2.20:
The substitute specimen was in use in commerce at least as early as the filing dateof the application.”
 37 C.F.R. §2.59(a); TMEP §904.05;
see
37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires an amendment to the dates of use, applicant mustalso verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.Examples of specimens for services are signs, photographs, brochures, website printouts or advertisementsthat show the mark used in the sale or advertising of the services. 
See
TMEP §§1301.04
et seq.
If applicant cannot satisfy the above requirements, applicant may amend the application from a use incommerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), and therefusal will be withdrawn.
See
TMEP §806.03(c). However, if applicant amends the basis to Section1(b), registration will not be granted until applicant later amends the application back to use in commerce
 
by filing an acceptable allegation of use with a proper specimen.
See
15 U.S.C. §1051(c), (d); 37 C.F.R.§§2.76, 2.88; TMEP §1103. If the same specimen is submitted with an allegation of use, the same refusalwill issue.To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit orsigned declaration under 37 C.F.R. §2.20:
Applicant has had a bona fide intention to use the mark incommerce on or in connection with the goods or services listed in the application as of the filing dateof the application.”
 37 C.F.R. §2.34(a)(2); TMEP §806.01(b);
see
15 U.S.C. §1051(b); 37 C.F.R.§§2.35(b)(1), 2.193(e)(1).Please note that if applicant amends the application to 1(b) basis, applicant’s Section 2(f) claim may bereconsidered. /W. Wendy Jun/ Trademark Examining AttorneyLaw Office 103Phone - 571-272-8810Fax No. 571-273-8810wendy.jun@uspto.gov
RESPOND TO THIS ACTION:
Applicant should file a response to this Office actiononline using theform athttp://www.uspto.gov/teas/eTEASpageD.htm, waiting 48-72 hours if applicant receivednotification of the Office action via e-mail.For
technical
assistance with the form, please e-mailTEAS@uspto.gov.Forquestions about the Office action itself, please contact the assigned examining attorney.
Do not respond to this Office action by e-mail;the USPTO does not accept e-mailedresponses
.
 
If responding by paper mail, please include the following information: the application serial number, themark, the filing date and the name, title/position, telephone number and e-mail address of the personsigning the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451,Alexandria, VA 22313-1451.
STATUS CHECK:
Check the status of the application at least once every six months from the initialfiling date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online systemathttp://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of thecomplete TARR screen. If the status of your application has not changed for more than six months, pleasecontact the assigned examining attorney.

You're Reading a Free Preview

Download
scribd
/*********** DO NOT ALTER ANYTHING BELOW THIS LINE ! ************/ var s_code=s.t();if(s_code)document.write(s_code)//-->