77751423 office action
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To: CPC Properties, Inc. (pecsenye@blankrome.com)
Subject: U.S. TRADEMARK APPLICATION NO. 77751423 - CRAB FRIES -
129716-00100
Sent: 9/2/2009 8:02:57 PM
Sent As: ECOM113@USPTO.GOV
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UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/751423
MARK: CRAB FRIES
*77751423* 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:
http://www.uspto.gov/main/trademarks.htm
APPLICANT: CPC Properties, Inc.
CORRESPONDENTS REFERENCE/DOCKET
NO:
129716-00100
CORRESPONDENT E-MAIL ADDRESS:
pecsenye@blankrome.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: 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 applicants restaurant services, the second appears to be an advertising flyer for theapplicants 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, rice lists, listin s in trade directories, order forms, bills of ladin , leaflets, brochures,
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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 thedrawing 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:
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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 Intl 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, Chambers 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
applicants recited processed potatoes goods, the term FRIES is merely descriptive of the form of the
potatoes, namely, that the applicants 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 theseregistrations.
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
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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 Offices 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 (Commr 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 applicants 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 actiononline 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-mailTEAS@uspto.gov. Forquestions 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.
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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.
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To: CPC Properties, Inc. (pecsenye@blankrome.com)
Subject: U.S. TRADEMARK APPLICATION NO. 77751423 - CRAB FRIES -
129716-00100
Sent: 9/2/2009 8:03:01 PM
Sent As: ECOM113@USPTO.GOV
Attachments:
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&
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: TheOffice letter may not beimmediately available but will beviewable within24
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.
ALERT: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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