Dockside Foods, LLC Subject: U.S. TRADEMARK APPLICATION NO SAUCE MELTS /6/2009 8:29:35 AM

Transcription

1 To: Dockside Foods, LLC Subject: U.S. TRADEMARK APPLICATION NO SAUCE MELTS Sent: Sent As: 7/6/2009 8:29:35 AM ECOM110@USPTO.GOV Attachments: Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 SERIAL NO: 77/ UNITED STATES PATENT AND TRADEMARK OFFICE MARK: SAUCE MELTS CORRESPONDENT ADDRESS: MARK D. BOWEN, ESQ. MALIN HALEY DIMAGGIO BOWEN & LHOTA, P.A SOUTH ANDREWS AVENUE FORT LAUDERDALE, FL * * RESPOND TO THIS ACTION: GENERAL TRADEMARK INFORMATION: APPLICANT: Dockside Foods, LLC CORRESPONDENT S REFERENCE/DOCKET NO : CORRESPONDENT ADDRESS: info@mhdpatents.com 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: 7/6/2009 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, Merely Descriptive The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods/services. Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1); see TMEP (b), et seq. 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 (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, , 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 (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.

2 In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978); TMEP (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 (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 (b). Here, sauce melts is descriptive matter as applicant provides meltable food flavorings in the form of a sauce (once melted). Sauce describes the goods as the goods are to be consumed in the form of a sauce. Melts is commonly used, descriptive matter, in the foods industry to describe goods which melt during preparation/consumption. See attached third party registrations. Thus, the wording is merely descriptive and must be denied registration. Voluntary Disclaimer of Entire Mark Applicant has disclaimed the entire applied-for mark. However, an entire mark may not be disclaimed. TMEP ; see 15 U.S.C. 1056(a); In re Dena Corp. v. Belvedere Int l Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re JT Tobacconists, 59 USPQ2d 1080, 1081 n.1 (TTAB 2001); In re Anchor Hocking Corp., 223 USPQ 85 (TTAB 1984). If the applied-for mark is not registrable as a whole, a disclaimer will not make it registrable. TMEP Supplemental Register A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R has been filed. 37 C.F.R. 2.47(d), 2.75(b); TMEP , When a Section 1(b) application is successfully amended to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. 2.76(e) for the amendment to allege use. 37 C.F.R. 2.75(b); TMEP , If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below. /Daniel Capshaw/ Trademark Attorney Law Office RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at waiting hours if applicant received notification of the Office action via . For technical assistance with the form, please TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by ; the USPTO does not accept ed 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 address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 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 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.

3

4

5

6

7

8

9

10

11

12 To: Dockside Foods, LLC Subject: U.S. TRADEMARK APPLICATION NO SAUCE MELTS Sent: 7/6/2009 8:29:38 AM Sent As: ECOM110@USPTO.GOV Attachments: IMPORTANT NOTICE USPTO OFFICE ACTION HAS ISSUED ON 7/6/2009 FOR APPLICATION SERIAL NO Please follow the instructions below to continue the prosecution of your application: VIEW OFFICE ACTION: Click on this link (or copy and paste this URL into the address field of your browser), or visit and enter the application serial number to access the Office action. PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification. RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 7/6/2009. Do NOT hit Reply to this notification, or otherwise attempt to your response, as the USPTO does NOT accept ed responses. Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at HELP: For technical assistance in accessing the Office action, please TDR@uspto.gov. Please contact the assigned examining attorney with questions about the Office action. WARNING 1. The USPTO will NOT send a separate with the Office action attached. 2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.