| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 76218362 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
In the Office Action issued in connection with the Statement of Use filed for the instant application, the Examining Attorney refused the specimen on the basis the specimen was only a menu copy in essence, an advertisement for the goods, and required a substitute specimen. For the following reasons, this requirement is respectfully traversed and reconsideration is requested in view of the following comments. TMEP § 904.06 sets forth the standards for displays as specimens to show use of trademarks, and states: A display must be associated directly with the goods offered for sale. It must bear the trademark prominently. However, it is not necessary that the display be in close proximity to the goods. Displays associated with the goods essentially comprise point-of-sale material, such as banners, shelf-talkers, window displays, menus and similar devices. These items must be designed to catch the attention of purchasers and prospective purchasers as an inducement to make a sale. Further, the display must predominantly display the trademark in question and associate it with, or relate it to, the goods. The display must be related to the sale of the goods so that an association of the two is inevitable. (emphasis added) (citations omitted).
Menus have been specifically found to be acceptable displays associated with goods. For example, in In re Marriott, 173 U.S.P.Q. 799, 800 (CCPA 1972), the court reversed the refusal to register the mark "TEEN TWIST", finding that the menu submitted in connection with the application was a display associated with the sale of the goods. The court found significant the point-of-sale nature of the menus. Both case law and the TMEP have found menus to be quintessential examples of displays associated with goods, sufficient to show use of a mark for goods. In the instant case, the menu submitted with the Statement of Use shows the mark, immediately followed by a description of the goods, followed by the price (ordering information). Therefore, the menu is a display that is "associated directly with the goods offered for sale" and an association of the mark and the goods is inevitable. Accordingly, the Examining Attorney should find that the specimen submitted with the Statement of Use is an appropriate specimen sufficient to evidence use of the mark, and should withdraw the requirement for a substitute specimen. |
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| SIGNATURE SECTION | |
| SIGNATURE | /Michelle L. Visser/ |
| SIGNATORY NAME | Michelle L. Visser |
| SIGNATORY POSITION | Attorney |
| SIGNATORY DATE | 04/01/2004 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Apr 01 18:14:48 EST 2004 |
| TEAS STAMP | USPTO/OA-XXXXXXXXX-200404 01181448862031-76218362-2 0071b267cac5bf11672cf826b ff4466f6d-N-N-20040401181 410117180 |
| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 76218362 is amended as follows: | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
|
In the Office Action issued in connection with the Statement of Use filed for the instant application, the Examining Attorney refused the specimen on the basis the specimen was only a menu copy in essence, an advertisement for the goods, and required a substitute specimen. For the following reasons, this requirement is respectfully traversed and reconsideration is requested in view of the following comments. TMEP § 904.06 sets forth the standards for displays as specimens to show use of trademarks, and states: A display must be associated directly with the goods offered for sale. It must bear the trademark prominently. However, it is not necessary that the display be in close proximity to the goods. Displays associated with the goods essentially comprise point-of-sale material, such as banners, shelf-talkers, window displays, menus and similar devices. These items must be designed to catch the attention of purchasers and prospective purchasers as an inducement to make a sale. Further, the display must predominantly display the trademark in question and associate it with, or relate it to, the goods. The display must be related to the sale of the goods so that an association of the two is inevitable. (emphasis added) (citations omitted).
Menus have been specifically found to be acceptable displays associated with goods. For example, in In re Marriott, 173 U.S.P.Q. 799, 800 (CCPA 1972), the court reversed the refusal to register the mark "TEEN TWIST", finding that the menu submitted in connection with the application was a display associated with the sale of the goods. The court found significant the point-of-sale nature of the menus. Both case law and the TMEP have found menus to be quintessential examples of displays associated with goods, sufficient to show use of a mark for goods. In the instant case, the menu submitted with the Statement of Use shows the mark, immediately followed by a description of the goods, followed by the price (ordering information). Therefore, the menu is a display that is "associated directly with the goods offered for sale" and an association of the mark and the goods is inevitable. Accordingly, the Examining Attorney should find that the specimen submitted with the Statement of Use is an appropriate specimen sufficient to evidence use of the mark, and should withdraw the requirement for a substitute specimen. |
|
| Response Signature | |
| Signature: /Michelle L. Visser/ Date: 04/01/2004 | |
| Signatory's Name: Michelle L. Visser | |
| Signatory's Position: Attorney | |
| Serial Number: 76218362 | |
| Internet Transmission Date: Thu Apr 01 18:14:48 EST 2004 | |
| TEAS Stamp: USPTO/OA-XXXXXXXXX-20040401181448862031- 76218362-20071b267cac5bf11672cf826bff446 6f6d-N-N-20040401181410117180 |