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CPC Properties, Inc. (email@example.com) U.S. TRADEMARK APPLICATION NO. 77751423 - CRAB FRIES 129716-00100 9/2/2009 8:02:57 PM ECOM113@USPTO.GOV
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UNITED STATES PATENT AND TRADEMARK OFFICE
MARK: CRAB FRIES CORRESPONDENT ADDRESS: TIMOTHY D. PECSENYE BLANK ROME LLP 1 LOGAN SQ FL 9 PHILADELPHIA, PA 19103-6998
RESPOND TO THIS ACTION: http://www.uspto.gov/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION:
APPLICANT: CPC Properties, Inc.
CORRESPONDENT’S REFERENCE/DOCKET NO: 129716-00100 CORRESPONDENT E-MAIL ADDRESS: firstname.lastname@example.org
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: 9/2/2009 The assigned trademark examining attorney has reviewed the referenced application and has determined the following: Search The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02. In order to pursue registration, however, the applicant must respond to the following requirements. Requirement for Clarification as to Inconsistencies Between the Drawing and Specimen The applicant has submitted three documents as specimens, the first appears to be an informational web site advertising the applicant’s restaurant services, the second appears to be an advertising flyer for the applicant’s restaurant services and the third is a menu. The only acceptable specimen of record is the menu. The first two specimens are not acceptable because they consist of advertising material for goods. Trademark Act Section 45 requires use “on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.” 15 U.S.C. §1127; see 37 C.F.R. §2.56(b)(1); TMEP §904.04(b), (c). Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, is not acceptable to show trademark use. TMEP §904.04(b). Invoices, business cards, announcements, price lists, listings in trade directories, order forms, bills of lading, leaflets, brochures,
advertising circulars and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods. See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §904.04(b), (c). The mark on the only acceptable specimen of record disagrees with the mark on the drawing. In this case, the specimen displays the mark as CRABFRIES; and the drawing shows the mark as CRAB FRIES. 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 mark on the drawing must be a substantially exact representation of the mark on the specimen. 37 C.F.R. §2.51(a); TMEP §807.12(a); see 37 C.F.R. §2.72(a)(1). In addition, the drawing of the mark can be amended only if the amendment does not materially alter the mark as originally filed. 37 C.F.R. §2.72(a)(2); TMEP §§807.12(a), 807.14 et seq. Therefore, applicant must submit one of the following: (1) A new drawing of the mark that agrees with the mark on the specimen but does not materially alter the original mark. See 37 C.F.R. §2.72(a)(2); TMEP §§807.12(a), 807.14 et seq. Amending the drawing to agree with the specimen would not be considered a material alteration of the mark in this case.; or (2) A substitute specimen showing use in commerce of the mark on the drawing, and 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.” See 37 C.F.R. §2.59(a); TMEP §§807.12(a), 904.05. If submitting a 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. If applicant cannot satisfy one of 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), 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 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). Declaration Required for Amendment to Intent to Use Basis As stated above, if the applicant cannot satisfy the specimen requirement for a Use in Commerce filing basis under Section 1(a), it may choose to amend to an Intent to Use filing basis under Section 1(b). If so, the applicant must also submit the following declaration:
The 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. 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. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any resulting registration, declares that the facts set forth in the application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________ (Signature) _____________________________ (Print or Type Name and Position) _____________________________ (Date)
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. 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). Requirement for the Submission of a Disclaimer Statement The applicant must insert a disclaimer of FRIES in the application because it is descriptive of the type of goods that the applicant produces. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). The following cases further explain the disclaimer requirement: Dena Corp. v. Belvedere Int’l Inc ., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Brown-Forman Corp., 81 USPQ2d 1284 (TTAB 2006); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983). Attached are pages from the Internet website CredoReference.com which contains online versions of the American Heritage, Chamber’s 21 st Century, Collins and Penguin English Dictionaries that define the term FRIES to mean long thin strips of potatoes deep fried in oil. When used in the context of the applicant’s recited “processed potatoes” goods, the term FRIES is merely descriptive of the form of the potatoes, namely, that the applicant’s processed potatoes are cut into strips to be fried in oil or are potato FRIES. Attached are copies of printouts from the USPTO X-Search Database, which show third-party registrations of marks used in connection with the same or similar services as those of the applicant in this case. The wording “FRIES” has been disclaimed for use outside of the mark as a whole in these registrations. The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof. 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. 15 U.S.C. §1052(e). Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily
geographically descriptive, or otherwise unregistrable (e.g., generic). See TMEP §§1213, 1213.03. Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. TMEP §1213.01(b). A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark. TMEP §1213. A disclaimer does not affect the appearance of the applied-for mark. See TMEP §1213.10. A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing. TMEP §§1213, 1213.10. The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office: No claim is made to the exclusive right to use “FRIES” apart from the mark as shown. TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983). Advisory –Correction to Classification of Goods The trademark examining attorney is amending the application as follows. No prior approval or authorization from applicant or applicant’s attorney is required. TMEP §707.02. The application is amended to classify the goods “processed potatoes” goods in International Class 029. TMEP §1401.03(b); see 37 C.F.R. §2.85. If applicant has any questions about its application or needs assistance in responding to this Office Action please telephone the assigned trademark examining attorney directly at the number listed below. /Amy C. Kean/ Trademark Attorney, Law Office 113 U.S. Patent & Trademark Office Phone 571-272-8854 Fax: 571-273-8854
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.
To: Subject: Sent: Sent As: Attachments:
CPC Properties, Inc. (email@example.com) U.S. TRADEMARK APPLICATION NO. 77751423 - CRAB FRIES 129716-00100 9/2/2009 8:03:01 PM ECOM113@USPTO.GOV
IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION
Your trademark application (Serial No. 77751423) has been reviewed. The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 9/2/2009 to which you must respond (unless the Office letter specifically states that no response is required). Please follow these steps:
1. Read the Office letter by clicking on this link http://tmportal.uspto.gov/external/portal/tow?DDA=Y&serial_number=77751423&doc_type=OOA&mail_date= OR go to http://tmportal.uspto.gov/external/portal/tow and enter your serial number to access the Office letter. If you have difficulty accessing the Office letter, contact TDR@uspto.gov. PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.
2. Contact the examining attorney who reviewed your application if you have any questions about the
content of the Office letter (contact information appears at the end thereof). 3. Respond within 6 months, calculated from 9/2/2009 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have
difficulty using TEAS, contact TEAS@uspto.gov.
Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application. Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.
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