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UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 77/752328

MARK: FOOTLONG
*77752328*
CORRESPONDENT ADDRESS:
VALERIE A. POCHRON RESPOND TO THIS ACTION:
DOCTOR'S ASSOCIATES INC. http://www.uspto.gov/teas/eTEASpageD.htm
325 BIC DR
MILFORD, CT 06461-3072 GENERAL TRADEMARK INFORMATION:
http://www.uspto.gov/main/trademarks.htm

APPLICANT: Doctor's Associates Inc.

CORRESPONDENT’S REFERENCE/DOCKET
NO:
DAIUSTM/077
CORRESPONDENT E-MAIL ADDRESS:

OFFICE ACTION
TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS
OFFICE 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 further
review, the following issue(s) has been raised and must be addressed. The Office apologizes for any
inconvenience 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 function
as a service mark to identify and distinguish applicant’s services from those of others and to indicate the
source 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 USPQ
956 (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 menu
item does not function as a service mark for restaurant services. In re El Torito Rest. Inc., 9 USPQ2d
2002 (TTAB 1988); TMEP §1301.02(a). Attached are additional case laws supporting the determination
that 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. For
example, the specimen of record shows the mark under “Your Menu Choices” along with other menu
items, such as 6” (referring to a 6” sub as opposed to a footlong sub), salad, and flatbread. Another exhibit
submitted on October 16, 2009 is of a banner stating “ALL FOOTLONG SUBS” are $5. And a similar
exhibit shows $5 FOOTLONGS with the phrase A VARIETY OF GREAT SUBS. In the latter cases, the
mark specifically refers to a menu item costing $5.

The specimen of record, along with any other relevant evidence of record, is reviewed to determine
whether an applied-for mark is being used as a service mark. In re Volvo Cars of N. Am., Inc., 46
USPQ2d 1455, 1458 (TTAB 1998). Not every word, design, symbol or slogan used in the advertising or
performance of services functions as a mark, even though it may have been adopted with the intent to do
so. See TMEP §1301.02. A designation cannot be registered unless purchasers would be likely to regard
it as a source-indicator for the services. Id.; see In 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) by
submitting 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 in
the 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 date
of 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 must
also 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 advertisements
that 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 in
commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), and the
refusal will be withdrawn. See TMEP §806.03(c). However, if applicant amends the basis to Section
1(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 refusal
will issue.

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or
signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in
commerce on or in connection with the goods or services listed in the application as of the filing date
of 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 be
reconsidered.

/W. Wendy Jun/


Trademark Examining Attorney
Law Office 103
Phone - 571-272-8810
Fax No. 571-273-8810
wendy.jun@uspto.gov

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the
form at http://www.uspto.gov/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received
notification of the Office action via e-mail. For technical assistance with the form, please e-mail
TEAS@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-mailed
responses.

If responding by paper mail, please include the following information: the application serial number, the
mark, the filing date and the name, title/position, telephone number and e-mail address of the person
signing 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 initial
filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system
at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the
complete TARR screen. If the status of your application has not changed for more than six months, please
contact the assigned examining attorney.
Trademark Snap Shot Amendment & Mail Processing Stylesheet
(Table presents the data on Amendment & Mail Processing Complete)

OVERVIEW
SERIAL NUMBER 77752328 FILING DATE 06/04/2009

REG NUMBER 0000000 REG DATE N/A

REGISTER PRINCIPAL MARK TYPE SERVICE MARK

INTL REG # N/A INTL REG DATE N/A

TM ATTORNEY JUN, WON KYUNG WENDY L.O. ASSIGNED 103

PUB INFORMATION
RUN DATE 01/15/2010

PUB DATE N/A

STATUS 663-RESPONSE AFER FINAL REJECTION - ENTERED

STATUS DATE 01/14/2010

LITERAL MARK ELEMENT FOOTLONG

DATE ABANDONED N/A DATE CANCELLED N/A

SECTION 2F YES SECTION 2F IN PART NO

SECTION 8 NO SECTION 8 IN PART NO

SECTION 15 NO REPUB 12C N/A

RENEWAL FILED NO RENEWAL DATE N/A

DATE AMEND REG N/A

FILING BASIS
FILED BASIS CURRENT BASIS AMENDED BASIS

1 (a) YES 1 (a) YES 1 (a) NO

1 (b) NO 1 (b) NO 1 (b) NO

44D NO 44D NO 44D NO

44E NO 44E NO 44E NO

66A NO 66A NO

NO BASIS NO NO BASIS NO

MARK DATA
STANDARD CHARACTER MARK YES

LITERAL MARK ELEMENT FOOTLONG

MARK DRAWING CODE 4-STANDARD CHARACTER MARK

COLOR DRAWING FLAG NO

CURRENT OWNER INFORMATION


PARTY TYPE 10-ORIGINAL APPLICANT

NAME Doctor's Associates Inc.

ADDRESS Suite 306


300 South Pine Island Road
Plantation, FL 33324

ENTITY 03-CORPORATION

CITIZENSHIP Florida

GOODS AND SERVICES


INTERNATIONAL CLASS 043

DESCRIPTION TEXT Restaurant Services

GOODS AND SERVICES CLASSIFICATION


INTERNATIONAL 043 FIRST USE 08/01/1967 FIRST USE 08/01/1967 CLASS 6-ACTIVE
CLASS DATE IN STATUS
COMMERCE
DATE

MISCELLANEOUS INFORMATION/STATEMENTS
CHANGE IN REGISTRATION NO

PSEUDO MARK FOOT LONG

PROSECUTION HISTORY
DATE ENT CD ENT DESCRIPTION ENT NUM
TYPE

01/14/2010 TEME I TEAS/EMAIL CORRESPONDENCE ENTERED 016

01/14/2010 CRFA I CORRESPONDENCE RECEIVED IN LAW OFFICE 015

01/14/2010 ALIE A ASSIGNED TO LIE 014

01/07/2010 PARI I TEAS VOLUNTARY AMENDMENT RECEIVED 013

11/05/2009 CNFR O FINAL REFUSAL MAILED 012


11/04/2009 CNFR R FINAL REFUSAL WRITTEN 011

10/16/2009 TEME I TEAS/EMAIL CORRESPONDENCE ENTERED 010

10/16/2009 CRFA I CORRESPONDENCE RECEIVED IN LAW OFFICE 009

10/16/2009 TROA I TEAS RESPONSE TO OFFICE ACTION RECEIVED 008

09/04/2009 CNRT F NON-FINAL ACTION MAILED 007

09/03/2009 CNRT R NON-FINAL ACTION WRITTEN 006

09/03/2009 DOCK D ASSIGNED TO EXAMINER 005

08/24/2009 LOPT I LETTER OF PROTEST ACCEPTED 004

06/09/2009 MPMK O NOTICE OF PSEUDO MARK MAILED 003

06/08/2009 NWOS I NEW APPLICATION OFFICE SUPPLIED DATA ENTERED 002


IN TRAM

06/08/2009 NWAP I NEW APPLICATION ENTERED IN TRAM 001

CURRENT CORRESPONDENCE INFORMATION


ATTORNEY Valerie A. Pochron

CORRESPONDENCE ADDRESS VALERIE A. POCHRON


DOCTOR'S ASSOCIATES INC.
325 BIC DR
MILFORD, CT 06461-3072

DOMESTIC REPRESENTATIVE NONE


PTO Form 1966 (Rev 5/2006)
OMB No. 0651-0050 (Exp. 04/2009)

Preliminary Amendment

The table below presents the data as entered.


Input Field Entered
SERIAL NUMBER 77752328
LAW OFFICE ASSIGNED LAW OFFICE 103
MARK SECTION (no change)
OWNER SECTION (current)
NAME Docotr's Associates Inc.
STREET Suite 306 300 South Pine Island Road
CITY Plantation
STATE Florida
ZIP/POSTAL CODE 33324
COUNTRY United States
PHONE 1-800-888-4848
FAX 1-203-876-6690
OWNER SECTION (proposed)
NAME Doctor's Associates Inc.
STREET Suite 306 300 South Pine Island Road
CITY Plantation
STATE Florida
ZIP/POSTAL CODE 33324
COUNTRY United States
PHONE 1-800-888-4848
FAX 1-203-876-6690
EMAIL pochron_v@subway.com
LEGAL ENTITY SECTION (current)
TYPE corporation
STATE/COUNTRY OF INCORPORATION Florida
LEGAL ENTITY SECTION (proposed)
TYPE corporation
STATE/COUNTRY OF INCORPORATION Florida
SIGNATURE SECTION
RESPONSE SIGNATURE /Valerie A. Pochron/
SIGNATORY'S NAME Valerie A. Pochron
SIGNATORY'S POSITION Attorney
DATE SIGNED 01/07/2010
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Thu Jan 07 09:13:55 EST 2010
USPTO/PRA-65.51.39.212-20
100107091355372554-777523
TEAS STAMP 28-460f81256d14fd35e6222b
5c9256d418db-N/A-N/A-2010
0107090949485244

PTO Form 1966 (Rev 5/2006)


OMB No. 0651-0050 (Exp. 04/2009)

Preliminary Amendment
To the Commissioner for Trademarks:
Application serial no. 77752328 has been amended as follows:

APPLICANT AND/OR ENTITY INFORMATION


Applicant proposes to amend the following:
Current: Docotr's Associates Inc., a corporation of Florida, having an address of
Suite 306 300 South Pine Island Road
Plantation, Florida 33324
United States

1-800-888-4848
1-203-876-6690
Proposed: Doctor's Associates Inc., a corporation of Florida, having an address of
Suite 306 300 South Pine Island Road
Plantation, Florida 33324
United States
pochron_v@subway.com
1-800-888-4848
1-203-876-6690

SIGNATURE(S)
Preliminary Amendment Signature
Signature: /Valerie A. Pochron/ Date: 01/07/2010
Signatory's Name: Valerie A. Pochron
Signatory's Position: Attorney

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the
highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal
territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to
the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian
attorney/agent not currently associated with his/her company/firm previously represented the applicant in
this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power
of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the
applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing
him/her as an associate attorney in this matter.

Serial Number: 77752328


Internet Transmission Date: Thu Jan 07 09:13:55 EST 2010
TEAS Stamp: USPTO/PRA-65.51.39.212-20100107091355372
554-77752328-460f81256d14fd35e6222b5c925
6d418db-N/A-N/A-20100107090949485244
NOTE TO THE FILE

SERIAL NUMBER: 77752328

DATE: 11/04/2009

NAME: wjun

NOTE:

Searched: Discussed with:


Google X Senior Atty re: specimen & 2f
Lexis/Nexis Managing Atty
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:

Checked: Discussed Geo. Sig. with:


Geographic significance Senior Atty
Surname Managing Atty
Translation
ID with ID/CLASS mailbox

Discussed file with


Attorney/Applicant via:
phone Left message with
email Attorney/Applicant

Requested Law Library search Issued Examiner’s Amendment


for: and entered changes in TRADEUPS

PRINT DO NOT PRINT Added design code in TRADEUPS


Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:

OTHER:
UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 77/752328

MARK: FOOTLONG
*77752328*
CORRESPONDENT ADDRESS:
VALERIE A. POCHRON RESPOND TO THIS ACTION:
DOCTOR'S ASSOCIATES INC. http://www.uspto.gov/teas/eTEASpageD.htm
325 BIC DR
MILFORD, CT 06461-3072 GENERAL TRADEMARK INFORMATION:
http://www.uspto.gov/main/trademarks.htm

APPLICANT: Docotr's Associates Inc.

CORRESPONDENT’S REFERENCE/DOCKET
NO:
DAIUSTM/077
CORRESPONDENT E-MAIL ADDRESS:

OFFICE ACTION
TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS
OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

ISSUE/MAILING DATE:

THIS IS A FINAL ACTION.

This letter responds to applicant’s communication filed on October 16, 2009, responding to the Examining
Attorney’s initial Office Action regarding the following issue(s): 2e1 descriptiveness and specimen.
After review of applicant’s response, applicant’s request for registration under Section 2f based on
acquired distinctiveness is accepted. Thus, the following requirement(s) has/have been satisfied and is/are
now withdrawn: 2e1 descriptiveness.

However, after careful consideration of applicant’s response, the following requirement(s) is/are now
made FINAL for the reasons set forth below.

Specimen

The specimen is not acceptable because it does not show the applied-for mark used in connection with any
of the goods and/or services specified in the application. An application based on Trademark Act Section
1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods
and/or services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv),
2.56(a); TMEP §§904, 904.07(a).

The specimens of record show the mark FOOTLONG used in connection with a menu item, specifically
sub sandwiches. The mark is not used in connection with restaurant services in that it is not the name of a
restaurant or a slogan/mark for restaurant services. The specimens are clear that the mark FOOTLONG is
a type of sandwich for the Subway restaurant. Thus, the advertisements in the specimens are promoting a
type of sandwich or menu item.

Therefore, applicant must submit the following:

(1) A substitute specimen showing the mark in use in commerce for each class of services
specified in the application; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R.
§§2.20, 2.33: “The substitute specimen was in use in commerce at least as early as the filing
date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05. If submitting a substitute specimen
requires an amendment to the dates of use, applicant must also 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 advertisements
that show the mark used in the actual 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 in
commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is
required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(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.

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or
signed declaration under 37 C.F.R. §§2.20, 2.33: “Applicant has had a bona fide intention to use the
mark in commerce on or in connection with the services listed in the application as of the filing date
of 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).

Pending receipt of a proper response, registration is refused because the specimen does not show the
applied-for mark in use in commerce as a service mark. Trademark Act Sections 1 and 45, 15 U.S.C.
§§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

Declaration

To submit a verified substitute specimen online via the Trademark Electronic Application System (TEAS),
applicant should do the following: (1) answer “yes” to the TEAS response form wizard questions to
“submit a new or substitute specimen” and for a “signed declaration,” respectively; (2) attach a jpg or pdf
file of the substitute specimen; (3) select the statement that “The substitute specimen(s) was in use in
commerce at least as early as the filing date of the application.”; and (4) properly sign the declaration
appearing towards the end of the TEAS response form.

To sign the declaration at the end of the TEAS response form, applicant can do one of the following: (1)
enter in the signature block any combination of letters, numbers, spaces and/or punctuation marks that the
filer has adopted as a signature, placed between two forward slash (/) symbols (e.g., /john doe/); (2) e-mail
the completed form from within TEAS to a second party for his/her electronic signature, which will then
be automatically returned to the original preparer for submission with the response form; or (3) attach a
jpg or pdf image of a declaration under 37 C.F.R. §2.20 together with a pen-and-ink signature. See 37
C.F.R. §§2.33(d), 2.59(a), 2.193(c)(1)(iii); TMEP §804.05. When signing the declaration, applicant must
either personally sign or manually enter his/her electronic signature and provide the date of “signing.”
TMEP §804.05; see TMEP §804.01(b). Applicant should also set forth the signatory’s name and position
beneath the signature. See TMEP §§712 et seq., 804.05.

If applicant experiences difficulty in submitting the required substitute specimen, supporting statement
and/or declaration, please e-mail TEAS@uspto.gov for technical assistance regarding the TEAS response
form.

Responding to This Action

If applicant fails to respond to this final action within six months of the mailing date, the application will
be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final action by:

(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R.
§2.64(a)); and/or

(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class
(37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to
procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP
§1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters. The petition fee is $100.
37 C.F.R. §2.6(a)(15).

/W. Wendy Jun/


Trademark Examining Attorney
Law Office 103
Phone - 571-272-8810
Fax No. 571-273-8810
wendy.jun@uspto.gov

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the
form at http://www.uspto.gov/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received
notification of the Office action via e-mail. For technical assistance with the form, please e-mail
TEAS@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-mailed
responses.

If responding by paper mail, please include the following information: the application serial number, the
mark, the filing date and the name, title/position, telephone number and e-mail address of the person
signing 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 initial
filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system
at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the
complete TARR screen. If the status of your application has not changed for more than six months, please
contact the assigned examining attorney.
Trademark Snap Shot Amendment & Mail Processing Stylesheet
(Table presents the data on Amendment & Mail Processing Complete)

OVERVIEW
SERIAL NUMBER 77752328 FILING DATE 06/04/2009

REG NUMBER 0000000 REG DATE N/A

REGISTER PRINCIPAL MARK TYPE SERVICE MARK

INTL REG # N/A INTL REG DATE N/A

TM ATTORNEY JUN, WON KYUNG WENDY L.O. ASSIGNED 103

PUB INFORMATION
RUN DATE 10/17/2009

PUB DATE N/A

STATUS 661-RESPONSE AFTER NON-FINAL-ACTION-ENTERED

STATUS DATE 10/16/2009

LITERAL MARK ELEMENT FOOTLONG

DATE ABANDONED N/A DATE CANCELLED N/A

SECTION 2F YES SECTION 2F IN PART NO

SECTION 8 NO SECTION 8 IN PART NO

SECTION 15 NO REPUB 12C N/A

RENEWAL FILED NO RENEWAL DATE N/A

DATE AMEND REG N/A

FILING BASIS
FILED BASIS CURRENT BASIS AMENDED BASIS

1 (a) YES 1 (a) YES 1 (a) NO

1 (b) NO 1 (b) NO 1 (b) NO

44D NO 44D NO 44D NO

44E NO 44E NO 44E NO

66A NO 66A NO

NO BASIS NO NO BASIS NO

MARK DATA
STANDARD CHARACTER MARK YES

LITERAL MARK ELEMENT FOOTLONG

MARK DRAWING CODE 4-STANDARD CHARACTER MARK

COLOR DRAWING FLAG NO

CURRENT OWNER INFORMATION


PARTY TYPE 10-ORIGINAL APPLICANT

NAME Docotr's Associates Inc.

ADDRESS Suite 306


300 South Pine Island Road
Plantation, FL 33324

ENTITY 03-CORPORATION

CITIZENSHIP Florida

GOODS AND SERVICES


INTERNATIONAL CLASS 043

DESCRIPTION TEXT Restaurant Services

GOODS AND SERVICES CLASSIFICATION


INTERNATIONAL 043 FIRST USE 08/01/1967 FIRST USE 08/01/1967 CLASS 6-ACTIVE
CLASS DATE IN STATUS
COMMERCE
DATE

MISCELLANEOUS INFORMATION/STATEMENTS
CHANGE IN REGISTRATION NO

PSEUDO MARK FOOT LONG

PROSECUTION HISTORY
DATE ENT CD ENT DESCRIPTION ENT NUM
TYPE

10/16/2009 TEME I TEAS/EMAIL CORRESPONDENCE ENTERED 010

10/16/2009 CRFA I CORRESPONDENCE RECEIVED IN LAW OFFICE 009

10/16/2009 TROA I TEAS RESPONSE TO OFFICE ACTION RECEIVED 008

09/04/2009 CNRT F NON-FINAL ACTION MAILED 007

09/03/2009 CNRT R NON-FINAL ACTION WRITTEN 006


09/03/2009 DOCK D ASSIGNED TO EXAMINER 005

08/24/2009 LOPT I LETTER OF PROTEST ACCEPTED 004

06/09/2009 MPMK O NOTICE OF PSEUDO MARK MAILED 003

06/08/2009 NWOS I NEW APPLICATION OFFICE SUPPLIED DATA ENTERED 002


IN TRAM

06/08/2009 NWAP I NEW APPLICATION ENTERED IN TRAM 001

CURRENT CORRESPONDENCE INFORMATION


ATTORNEY Valerie A. Pochron

CORRESPONDENCE ADDRESS VALERIE A. POCHRON


DOCTOR'S ASSOCIATES INC.
325 BIC DR
MILFORD, CT 06461-3072

DOMESTIC REPRESENTATIVE NONE


PTO Form 1957 (Rev 9/2005)
OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

The table below presents the data as entered.


Input Field Entered
SERIAL NUMBER 77752328
LAW OFFICE
LAW OFFICE 103
ASSIGNED
MARK SECTION (no change)
ARGUMENT(S)
Descriptiveness Refusal

1. Traversed
In the Office Action, the Examining Attorney refused registration based on 15 U.S.C. §1052(e)(1)
alleging that Applicant's FOOTLONG mark merely describes a feature of Applicant's services. This
ground of rejection is respectfully traversed.
A determination of whether or not a mark is merely descriptive must be made in relation to the goods or
services for which registration is sought, not in the abstract. TMEP §1209.01(b). Therefore, the proper
inquiry is not whether FOOTLONG is descriptive of a food item, but whether when applying the mark
FOOTLONG to restaurant services it would require imagination, thought or perception to reach a
conclusion as to the nature of those services. The expression FOOTLONG does not immediately
describe restaurant services, since services cannot be measured. Moreover, FOOTLONG does not
immediately describe any aspect of the Applicant's services, including any food product offered as part
of the restaurant services, because the meaning of FOOTLONG is a measure of distance, which is an
abstract concept that can only be associated with a product through a process of imagination, thought or
perception. A further thought process would then be required to reach restaurant services from the word
FOOTLONG. Thus the Applicant's mark is not merely descriptive, but arbitrary or, perhaps,
suggestive. Applicant, therefore, respectfully requests reconsideration and withdrawal of the §2(e)(1)
refusal.
2. Acquired Distinctiveness
In addition to the argument presented above, Applicant claims that the FOOTLONG mark has acquired
distinctiveness within the meaning of §2(f) of the Trademark Act. Applicant's claim of acquired
distinctiveness is supported in a § 2(f) Affidavit appended hereto. Applicant makes this claim of
acquired distinctiveness in the alternative consistent with TMEP §1212.02(c) and, as such, Applicant
does not concede that the Examining Attorney's refusals under §2(e)(1) of the Trademark Act are
proper. Applicant's § 2(f) Affidavit includes the following statements and evidence:
a) Extensive sales of sandwiches and other items associated with providing restaurant services in the
United States in association with the FOOTLONG service mark. The following table, reproduced from
the accompanying § 2(f) Affidavit , lists the number of sandwiches sold in each of the years 2000 to
2008 in rendering restaurant services in association with the mark:
Year Number of Sandwiches Sold (approximate)
2008 935,900,000
2007 540,800,000
2006 540,800,000
2005 542,580,000
2004 478,930,000
2003 485,900,000
2002 474,290,000
2001 432,090,000
2000 371,880,000

b) Advertising including a published ad and an on-site restaurant banner which make use of the mark in
association with offering restaurant services.

Specimen
The Examining Attorney has objected to the specimen, which is a menu from a restaurant where
services are offered under the Applicant's mark, as allegedly failing to show the mark in association
with the services recited in the application. In particular, the Examiner asserts that in the menu,
FOOTLONGT refers to a sandwich rather than to restaurant services. However, the Applicant
respectfully points out that the mark FOOTLONGT appears directly beneath the phrase "Your Menu
Choices," which summarizes the services. Such a juxtaposition of the Applicant's mark with the phrase
"Your Menu Choices" clearly creates an association in the mind of the customer between the mark and
the restaurant services being offered. Accordingly, the Applicant maintains that the submitted
specimen does show the mark in association with an offer for the services. The Examining Attorney is
therefore respectfully requested to withdraw the stated objection.
EVIDENCE SECTION
EVIDENCE FILE NAME(S)

ORIGINAL PDF FILE evi_173951241-151746070_._1151-0001_Sect_2f_Affidavit.pdf


CONVERTED PDF
FILE(S) \\TICRS\EXPORT8\IMAGEOUT8\777\523\77752328\xml1\ROA0002.JPG
(8 pages)

\\TICRS\EXPORT8\IMAGEOUT8\777\523\77752328\xml1\ROA0003.JPG
\\TICRS\EXPORT8\IMAGEOUT8\777\523\77752328\xml1\ROA0004.JPG
\\TICRS\EXPORT8\IMAGEOUT8\777\523\77752328\xml1\ROA0005.JPG
\\TICRS\EXPORT8\IMAGEOUT8\777\523\77752328\xml1\ROA0006.JPG
\\TICRS\EXPORT8\IMAGEOUT8\777\523\77752328\xml1\ROA0007.JPG
\\TICRS\EXPORT8\IMAGEOUT8\777\523\77752328\xml1\ROA0008.JPG
\\TICRS\EXPORT8\IMAGEOUT8\777\523\77752328\xml1\ROA0009.JPG
DESCRIPTION OF a scanned image of an Affidavit Claiming Section 2(f) Acquired
EVIDENCE FILE Distinctiveness
ADDITIONAL STATEMENTS SECTION
The mark has become distinctive of the goods/services through the
SECTION 2(f) applicant's substantially exclusive and continuous use in commerce for at
least the five years immediately before the date of this statement.
SIGNATURE SECTION
DECLARATION
SIGNATURE
/Richard R. Michaud/

SIGNATORY'S NAME Richard R. Michaud


SIGNATORY'S POSITION Attorney for Applicant
DATE SIGNED 10/16/2009
RESPONSE SIGNATURE /Richard R. Michaud/
SIGNATORY'S NAME Richard R. Michaud
SIGNATORY'S POSITION Attorney for Applicant
DATE SIGNED 10/16/2009
AUTHORIZED
SIGNATORY
YES

FILING INFORMATION SECTION


SUBMIT DATE Fri Oct 16 15:22:57 EDT 2009
USPTO/ROA-173.9.51.241-20
091016152257819740-777523
TEAS STAMP 28-460bb62b0532bd12298b68
3d69bbba765dc-N/A-N/A-200
91016151746070257

PTO Form 1957 (Rev 9/2005)


OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action


To the Commissioner for Trademarks:
Application serial no. 77752328 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Descriptiveness Refusal

1. Traversed
In the Office Action, the Examining Attorney refused registration based on 15 U.S.C. §1052(e)(1) alleging
that Applicant's FOOTLONG mark merely describes a feature of Applicant's services. This ground of
rejection is respectfully traversed.
A determination of whether or not a mark is merely descriptive must be made in relation to the goods or
services for which registration is sought, not in the abstract. TMEP §1209.01(b). Therefore, the proper
inquiry is not whether FOOTLONG is descriptive of a food item, but whether when applying the mark
FOOTLONG to restaurant services it would require imagination, thought or perception to reach a
conclusion as to the nature of those services. The expression FOOTLONG does not immediately describe
restaurant services, since services cannot be measured. Moreover, FOOTLONG does not immediately
describe any aspect of the Applicant's services, including any food product offered as part of the
restaurant services, because the meaning of FOOTLONG is a measure of distance, which is an abstract
concept that can only be associated with a product through a process of imagination, thought or
perception. A further thought process would then be required to reach restaurant services from the word
FOOTLONG. Thus the Applicant's mark is not merely descriptive, but arbitrary or, perhaps, suggestive.
Applicant, therefore, respectfully requests reconsideration and withdrawal of the §2(e)(1) refusal.
2. Acquired Distinctiveness
In addition to the argument presented above, Applicant claims that the FOOTLONG mark has acquired
distinctiveness within the meaning of §2(f) of the Trademark Act. Applicant's claim of acquired
distinctiveness is supported in a § 2(f) Affidavit appended hereto. Applicant makes this claim of acquired
distinctiveness in the alternative consistent with TMEP §1212.02(c) and, as such, Applicant does not
concede that the Examining Attorney's refusals under §2(e)(1) of the Trademark Act are proper.
Applicant's § 2(f) Affidavit includes the following statements and evidence:

a) Extensive sales of sandwiches and other items associated with providing restaurant services in the
United States in association with the FOOTLONG service mark. The following table, reproduced from
the accompanying § 2(f) Affidavit , lists the number of sandwiches sold in each of the years 2000 to 2008
in rendering restaurant services in association with the mark:
Year Number of Sandwiches Sold (approximate)
2008 935,900,000
2007 540,800,000
2006 540,800,000
2005 542,580,000
2004 478,930,000
2003 485,900,000
2002 474,290,000
2001 432,090,000
2000 371,880,000

b) Advertising including a published ad and an on-site restaurant banner which make use of the mark in
association with offering restaurant services.
Specimen
The Examining Attorney has objected to the specimen, which is a menu from a restaurant where services
are offered under the Applicant's mark, as allegedly failing to show the mark in association with the
services recited in the application. In particular, the Examiner asserts that in the menu, FOOTLONGT
refers to a sandwich rather than to restaurant services. However, the Applicant respectfully points out that
the mark FOOTLONGT appears directly beneath the phrase "Your Menu Choices," which summarizes the
services. Such a juxtaposition of the Applicant's mark with the phrase "Your Menu Choices" clearly
creates an association in the mind of the customer between the mark and the restaurant services being
offered. Accordingly, the Applicant maintains that the submitted specimen does show the mark in
association with an offer for the services. The Examining Attorney is therefore respectfully requested to
withdraw the stated objection.

EVIDENCE
Evidence in the nature of a scanned image of an Affidavit Claiming Section 2(f) Acquired Distinctiveness
has been attached.
Original PDF file:
evi_173951241-151746070_._1151-0001_Sect_2f_Affidavit.pdf
Converted PDF file(s) (8 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8

ADDITIONAL STATEMENTS
Section 2(f), based on Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and
continuous use in commerce for at least the five years immediately before the date of this statement.

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the
applicant has had a bona fide intention to use or use through the applicant's related company or licensee
the mark in commerce on or in connection with the identified goods and/or services as of the filing date of
the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has
had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its
members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark
Act, the mark was in use in commerce on or in connection with the goods and/or services listed in the
application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R.
Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in
commerce by its members. 37 C.F.R. Sec. 244. The undersigned, being hereby warned that willful false
statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C.
Section1001, and that such willful false statements may jeopardize the validity of the application or any
resulting registration, declares that he/she is properly authorized to execute this application on behalf of
the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be
registered, or, if the application is being filed under 15 U.S.C. Section1051(b), he/she believes applicant to
be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person,
firm, corporation, or association has the right to use the mark in commerce, either in the identical form
thereof or in such near resemblance thereto as to be likely, when used on or in connection with the
goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the
original application was submitted unsigned, that all statements in the original application and this
submission made of the declaration signer's knowledge are true; and all statements in the original
application and this submission made on information and belief are believed to be true.

Signature: /Richard R. Michaud/ Date: 10/16/2009


Signatory's Name: Richard R. Michaud
Signatory's Position: Attorney for Applicant

Response Signature
Signature: /Richard R. Michaud/ Date: 10/16/2009
Signatory's Name: Richard R. Michaud
Signatory's Position: Attorney for Applicant

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the
highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal
territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to
the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian
attorney/agent not currently associated with his/her company/firm previously represented the applicant in
this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power
of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the
applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing
him/her as an associate attorney in this matter.

Serial Number: 77752328


Internet Transmission Date: Fri Oct 16 15:22:57 EDT 2009
TEAS Stamp: USPTO/ROA-173.9.51.241-20091016152257819
740-77752328-460bb62b0532bd12298b683d69b
bba765dc-N/A-N/A-20091016151746070257
UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 77/752328

MARK: FOOTLONG
*77752328*
CORRESPONDENT ADDRESS:
VALERIE A. POCHRON RESPOND TO THIS ACTION:
DOCTOR'S ASSOCIATES INC. http://www.uspto.gov/teas/eTEASpageD.htm
325 BIC DR
MILFORD, CT 06461-3072 GENERAL TRADEMARK INFORMATION:
http://www.uspto.gov/main/trademarks.htm

APPLICANT: Docotr's Associates Inc.

CORRESPONDENT’S REFERENCE/DOCKET
NO:
DAIUSTM/077
CORRESPONDENT E-MAIL ADDRESS:

OFFICE ACTION
TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS
OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

ISSUE/MAILING DATE:

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant
must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a),
2.65(a); TMEP §§711, 718.03.

Search for Conflicting Marks

The trademark examining attorney has searched the Office’s database of registered and pending marks
and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP
§704.02; see 15 U.S.C. §1052(d).

2e1—Descriptiveness Refusal

Registration is refused because the applied-for mark merely describes a feature of applicant’s goods and/or
services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
Applicant provides restaurant services featuring subs. The mark is descriptive of the type of food
applicant’s restaurants serves, namely subs, because it describes the length/size of the subs, as most subs
sold are either 6 inches or 12 inches (1 foot). Additionally, the term “foot long” is a well known term for
subs and hot dogs. See attached. As shown in the attached evidence, the mark is used not only to describe
the size of a sub (e.g. a foot long sub) but also as a noun to refer to the sub itself (e.g. a $5 footlong), and
thus potentially be generic wording for subs.

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose
or use of the specified goods and/or services. TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d
1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d
1009, 1010 (Fed. Cir. 1987). Moreover, a mark that identifies a group of users to whom an applicant
directs its goods and/or services is also merely descriptive. TMEP §1209.03(i); see In re Planalytics, Inc.,
70 USPQ2d 1453, 1454 (TTAB 2004).

The determination of whether a mark is merely descriptive is considered in relation to the identified goods
and/or services, not in the abstract. In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218
(C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999)
(finding DOC in DOC-CONTROL would be understood to refer to the “documents” managed by
applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4
USPQ2d 1242 (TTAB 1987) (finding CONCURRENT PC-DOS merely descriptive of “computer
programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a
particular type of operating system). “Whether consumers could guess what the product is from
consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB
1985).

“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the
applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370,
1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d
1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if the term describes only one significant
function, attribute or property. In re Oppedahl, 373 F.3d at 1173, 71 USPQ2d at 1371; TMEP
§1209.01(b).

Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark
from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits
brought by the trademark or service mark owner. In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ
215, 217 (C.C.P.A. 1978); TMEP §1209. Businesses and competitors should be free to use descriptive
language when describing their own goods and/or services to the public in advertising and marketing
materials. See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by
submitting evidence and arguments in support of registration.

Specimen

The specimen is not acceptable because it does not show the applied-for mark used in connection with any
of the goods and/or services specified in the application. An application based on Trademark Act Section
1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods
and/or services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv),
2.56(a); TMEP §§904, 904.07(a).

In this case, the specimen is a menu, which is generally acceptable to show restaurant services. However,
the menu must show the mark being used in connection with the restaurant services. In this case, the mark
is shown in the menu specifically as the name of a type of sub. Thus, the mark is used in connection with
a particular type of food in Class 030 than a type of service in Class 043.

Therefore, applicant must submit the following:

(1) A substitute specimen showing the mark in use in commerce for each class of goods and/or
services specified in the application; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R.
§§2.20, 2.33: “The substitute specimen was in use in commerce at least as early as the filing
date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05. If submitting a substitute specimen
requires an amendment to the dates of use, applicant must also verify the amended dates. 37
C.F.R. §2.71(c); TMEP §904.05.

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show
the mark on the actual goods or packaging, or displays associated with the actual goods at their point of
sale. See TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures,
website printouts or advertisements that show the mark used in the actual 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 in
commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is
required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(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.

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or
signed declaration under 37 C.F.R. §§2.20, 2.33: “Applicant has had a bona fide intention to use the
mark in commerce on or in connection with the goods and/or services listed in the application as of
the filing date of 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).

Pending receipt of a proper response, registration is refused because the specimen does not show the
applied-for mark in use in commerce as a trademark and/or service mark for the identified goods and/or
services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a);
TMEP §§904, 904.07(a).

Declaration
To submit a verified substitute specimen online via the Trademark Electronic Application System (TEAS),
applicant should do the following: (1) answer “yes” to the TEAS response form wizard questions to
“submit a new or substitute specimen” and for a “signed declaration,” respectively; (2) attach a jpg or pdf
file of the substitute specimen; (3) select the statement that “The substitute specimen(s) was in use in
commerce at least as early as the filing date of the application.”; and (4) properly sign the declaration
appearing towards the end of the TEAS response form.

To sign the declaration at the end of the TEAS response form, applicant can do one of the following: (1)
enter in the signature block any combination of letters, numbers, spaces and/or punctuation marks that the
filer has adopted as a signature, placed between two forward slash (/) symbols (e.g., /john doe/); (2) e-mail
the completed form from within TEAS to a second party for his/her electronic signature, which will then
be automatically returned to the original preparer for submission with the response form; or (3) attach a
jpg or pdf image of a declaration under 37 C.F.R. §2.20 together with a pen-and-ink signature. See 37
C.F.R. §§2.33(d), 2.59(a), 2.193(c)(1)(iii); TMEP §804.05. When signing the declaration, applicant must
either personally sign or manually enter his/her electronic signature and provide the date of “signing.”
TMEP §804.05; see TMEP §804.01(b). Applicant should also set forth the signatory’s name and position
beneath the signature. See TMEP §§712 et seq., 804.05.

If applicant experiences difficulty in submitting the required substitute specimen, supporting statement
and/or declaration, please e-mail TEAS@uspto.gov for technical assistance regarding the TEAS response
form.

/W. Wendy Jun/


Trademark Examining Attorney
Law Office 103
Phone - 571-272-8810
Fax No. 571-273-8810
wendy.jun@uspto.gov

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the
form at http://www.uspto.gov/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received
notification of the Office action via e-mail. For technical assistance with the form, please e-mail
TEAS@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-mailed
responses.

If responding by paper mail, please include the following information: the application serial number, the
mark, the filing date and the name, title/position, telephone number and e-mail address of the person
signing 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 initial
filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system
at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the
complete TARR screen. If the status of your application has not changed for more than six months, please
contact the assigned examining attorney.
*** User:wjun ***
# Total Dead Live Live Status/ Search
Marks Marks Viewed Viewed Search
Docs Images Duration
01 7625 N/A 0 0 0:01 *{"fh"}oot*[bi,ti]
02 48401 N/A 0 0 0:03 *l{v}ng*[bi,ti]
03 70 51 19 16 0:01 1 and 2

Session started 9/3/2009 8:36:06 PM


Session finished 9/3/2009 8:41:13 PM
Total search duration 0 minutes 5 seconds
Session duration 5 minutes 7 seconds
Defaut NEAR limit=1ADJ limit=1

Sent to TICRS as Serial Number: 77752328


UNITED STATES PATENT AND TRADEMARK OFFICE

Commissioner for Trademarks


P.O. Box 1451
Alexandria, VA 22313-1451
www.uspto.gov

Jun 9, 2009

NOTICE OF PSEUDO MARK

VALERIE A. POCHRON
DOCTOR'S ASSOCIATES INC.
325 BIC DR
MILFORD, CT 06461-3072

ATTORNEY REFERENCE NUMBER: DAIUSTM/077

SERIAL NUMBER: 77/752328


MARK: FOOTLONG
OWNER: Docotr's Associates Inc.

The USPTO may assign pseudo marks, as appropriate, to new applications to assist in searching the USPTO database for
conflicting marks. They have no legal significance and will not appear on the registration certificate.A pseudo mark may
be assigned to marks that include words, numbers, compound words, symbols or acronyms that can have
alternative spellings or meanings. For example, if the mark comprises the words "YOU ARE"
surrounded by a design of a box, the pseudo mark field in the USPTO database would display the mark
as "YOU ARE SQUARE." A mark filed as "URGR8" would receive a pseudo mark of "YOU ARE
GREAT." Response to this notice is not required; however, to suggest additions or changes to the pseudo
mark assigned to your mark, please e-mail TMDesignCodeComments@USPTO.GOV. You must
reference your application serial number within your request. The USPTO will review the proposal and
update the record, if appropriate. For questions, please call 1-800-786-9199 to speak to a Customer
Service representative. Pseudo marks assigned to the referenced serial number are listed below.

PSEUDO MARK:
FOOT LONG
PTO Form 1478 (Rev 9/2006)
OMB No. 0651-0009 (Exp 12/31/2008)

Trademark/Service Mark Application, Principal Register


Serial Number: 77752328
Filing Date: 06/04/2009

The table below presents the data as entered.


Input Field Entered
SERIAL
77752328
NUMBER
MARK INFORMATION
*MARK FOOTLONG
STANDARD
CHARACTERS
YES

USPTO-
GENERATED YES
IMAGE

LITERAL
ELEMENT
FOOTLONG

MARK The mark consists of standard characters, without claim to any particular
STATEMENT font, style, size, or color.
REGISTER Principal
APPLICANT INFORMATION
*OWNER OF
MARK
Docotr's Associates Inc.

*STREET 300 South Pine Island Road


INTERNAL
ADDRESS
Suite 306

*CITY Plantation
*STATE
(Required for U.S. Florida
applicants)

*COUNTRY United States


*ZIP/POSTAL
CODE
33324
(Required for U.S.
applicants only)

PHONE 1-800-888-4848
FAX 1-203-876-6690
EMAIL ADDRESS pochron_v@subway.com
LEGAL ENTITY INFORMATION
TYPE corporation
STATE/COUNTRY
OF Florida
INCORPORATION

GOODS AND/OR SERVICES AND BASIS INFORMATION


*
INTERNATIONAL 043
CLASS

*
IDENTIFICATION
Restaurant Services

FILING BASIS SECTION 1(a)


FIRST USE
ANYWHERE At least as early as 08/01/1967
DATE

FIRST USE IN
COMMERCE At least as early as 08/01/1967
DATE

SPECIMEN FILE NAME(S)

ORIGINAL
PDF FILE
spec-1-655139212-161542280_._USA_Menu.pdf

CONVERTED
PDF FILE(S) \\TICRS\EXPORT7\IMAGEOUT7\777\523\77752328\xml1\APP0003.JPG
(2 pages)

\\TICRS\EXPORT7\IMAGEOUT7\777\523\77752328\xml1\APP0004.JPG
SPECIMEN
DESCRIPTION
Specimen is menu used in SUBWAY restaurants

ATTORNEY INFORMATION
NAME Valerie A. Pochron
ATTORNEY
DOCKET DAIUSTM/077
NUMBER

FIRM NAME Doctor's Associates Inc.


STREET 325 Bic Drive
CITY Milford
STATE Connecticut
COUNTRY United States
ZIP/POSTAL
CODE
06461

PHONE 1-800-888-4848
FAX 1-203-876-6690
EMAIL ADDRESS pochron_v@subway.com
AUTHORIZED TO
COMMUNICATE No
VIA EMAIL

CORRESPONDENCE INFORMATION
NAME Valerie A. Pochron
FIRM NAME Doctor's Associates Inc.
STREET 325 Bic Drive
CITY Milford
STATE Connecticut
COUNTRY United States
ZIP/POSTAL
CODE
06461

PHONE 1-800-888-4848
FAX 1-203-876-6690
EMAIL ADDRESS pochron_v@subway.com
AUTHORIZED TO
COMMUNICATE No
VIA EMAIL

FEE INFORMATION
NUMBER OF
CLASSES
1

FEE PER CLASS 325


*TOTAL FEE DUE 325
*TOTAL FEE
PAID
325

SIGNATURE INFORMATION
SIGNATURE /Valerie A. Pochron/
SIGNATORY'S
NAME
Valerie A. Pochron

SIGNATORY'S
Attorney
POSITION

DATE SIGNED 06/04/2009

PTO Form 1478 (Rev 9/2006)


OMB No. 0651-0009 (Exp 12/31/2008)

Trademark/Service Mark Application, Principal Register

Serial Number: 77752328


Filing Date: 06/04/2009
To the Commissioner for Trademarks:
MARK: FOOTLONG (Standard Characters, see mark)
The literal element of the mark consists of FOOTLONG.
The mark consists of standard characters, without claim to any particular font, style, size, or color.

The applicant, Docotr's Associates Inc., a corporation of Florida, having an address of


Suite 306,
300 South Pine Island Road
Plantation, Florida 33324
United States
requests registration of the trademark/service mark identified above in the United States Patent and
Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051
et seq.), as amended, for the following:

International Class 043: Restaurant Services

In International Class 043, the mark was first used at least as early as 08/01/1967, and first used in
commerce at least as early as 08/01/1967, and is now in use in such commerce. The applicant is
submitting one specimen(s) showing the mark as used in commerce on or in connection with any item in
the class of listed goods and/or services, consisting of a(n) Specimen is menu used in SUBWAY
restaurants.
Original PDF file:
spec-1-655139212-161542280_._USA_Menu.pdf
Converted PDF file(s) (2 pages)
Specimen File1
Specimen File2

The applicant hereby appoints Valerie A. Pochron of Doctor's Associates Inc.


325 Bic Drive
Milford, Connecticut 06461
United States
to submit this application on behalf of the applicant. The attorney docket/reference number is
DAIUSTM/077.
Correspondence Information: Valerie A. Pochron
Doctor's Associates Inc.
325 Bic Drive
Milford, Connecticut 06461
1-800-888-4848(phone)
1-203-876-6690(fax)
pochron_v@subway.com (not authorized)

A fee payment in the amount of $325 has been submitted with the application, representing payment for 1
class(es).

Declaration

The undersigned, being hereby warned that willful false statements and the like so made are punishable by
fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and
the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is
properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to
be the owner of the trademark/service mark sought to be registered, or, if the application is being filed
under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce;
to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right
to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to
be likely, when used on or in connection with the goods/services of such other person, to cause confusion,
or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and
that all statements made on information and belief are believed to be true.

Signature: /Valerie A. Pochron/ Date Signed: 06/04/2009


Signatory's Name: Valerie A. Pochron
Signatory's Position: Attorney
RAM Sale Number: 2815
RAM Accounting Date: 06/05/2009

Serial Number: 77752328


Internet Transmission Date: Thu Jun 04 16:35:10 EDT 2009
TEAS Stamp: USPTO/BAS-65.51.39.212-20090604163510591
271-77752328-4003491aac444b438bfd813b416
8adb122f-CC-2815-20090604161542280163