Mr. Brown,
THIS IS NOT A RESPONSE TO OFFICE ACTION BUT ONLY A REQUEST FOR CLARIFICATION OF YOUR COMMENTS.
In the below you stated "As the attached articles reveal, the applicant has launched a series of "supper club dinners" in various cities. In addition, it also appears that the applicant is engaged in
"organizing and conducting supper clubs dedicated to the preparation, serving and enjoyment of food and beverages." See attached trademark application (serial no. 76414672) and articles from the
Lexis/NexisÒ database." However, no articles were attached. Please resend this with all attachments at your earliest convenience.
Thank you.
-----Original Message-----
From: ecom105@USPTO.GOV [mailto:ecom105@USPTO.GOV]
Sent: Wednesday, July 16, 2003 2:13 PM
To: Reilly, Sally - Corporate Admin - Admin <sally_reilly@timeinc.com>
Subject: TRADEMARK APPLICATION NO. 76414671 - COOKING LIGHT SUPPER CLUBS - N/A
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/414671
APPLICANT: Southern Living, Inc.
CORRESPONDENT ADDRESS:
SALLY S. REILLY
SOUTHERN PROGRESS CORPORATION
2100 LAKESHORE DRIVE
BIRMINGHAM AL 35209
RETURN ADDRESS:
Commissioner for Trademarks
2900 Crystal Drive
Arlington, VA 22202-3514
ecom105@uspto.gov
MARK: COOKING LIGHT SUPPER CLUBS
CORRESPONDENT'S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
Sally_Reilly@Timeinc.com
Please provide in all correspondence:
1. Filing date, serial number, mark and
applicant's name.
2. Date of this Office Action.
3. Examining Attorney's name and
Law Office number.
4. Your telephone number and e-mail address.
OFFICE ACTION
TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.
Serial Number 76/414671
This Office action addresses the applicant's response letter dated 06/13/03. First, please note that the applicant has only addressed the refusal to register and not the drawing, disclaimer and
recitation of services requirements. As such, these requirements are now maintained and made FINAL.
With respect to the refusal to register, the examining attorney has considered the applicant's arguments carefully and has found them unpersuasive. Therefore, the refusal to register is hereby
maintained and now made FINAL as well. For further explanation, please see below.
ACTIVITIES RECITED DO NOT CONSTITUTE SERVICES:
The examining attorney refuses registration because the activities, as recited in the application do not constitute services as contemplated by the Trademark Act. Trademark Act Sections 1, 2, 3 and
45, 15 U.S.C. §§1051, 1052, 1053 and 1127; TMEP §§1301.01 et seq. The following criteria have evolved for determining what constitutes a service, in connection with which a mark may be registered:
(1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) a service cannot be merely an ancillary
activity or one which is necessary to the applicant's larger business. In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Moore Business Forms, Inc., 24 USPQ2d 1638 (TTAB
1992); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983); In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979).
Here, the activities provided by the applicant appear to be ancillary and are not provided for the benefit of others. As articulated in In re Reichold Chemicals, Inc., 167 USPQ 376 (TTAB 1970), an
entity that promotes the sale of its own goods or services is doing so for its own benefit and is not rendering a service for others.
As the attached articles reveal, the applicant has launched a series of "supper club dinners" in various cities. In addition, it also appears that the applicant is engaged in "organizing and
conducting supper clubs dedicated to the preparation, serving and enjoyment of food and beverages." See attached trademark application (serial no. 76414672) and articles from the Lexis/NexisÒ
database.
Moreover, the applicant is not an advertising agency or any other entity that routinely promotes the goods or services of a client. Furthermore, the evidence of record does not show that the
applicant is promoting the services of any individual clubs nor does the record reflect that the clubs, apparently affiliated with the applicant, actually advertise or promote their "services." As
such, the services are not a distinct activity that is separate from the activity of organizing and conducting the applicant's supper clubs or supper clubs that are affiliated with the applicant. In
re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985). Instead, the services are simply necessary for the applicant's larger business at issue and not the applicant's "magazine
publishing business."
Under these circumstances, registration of the applicant's mark is therefore not permitted. The refusal to register is therefore maintained and made FINAL.
DRAWING:
Again, the drawing is not acceptable because it will not reproduce satisfactorily. Specifically, the drawing contains gray shading and some of the material in the drawing is not totally clear. The
applicant therefore must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. §2.52. TMEP §807.07(a). As a reminder, the requirements for a special-form drawing are as
follows:
(1) The drawing must appear in black and white; no color is permitted.
(2) Every line and letter must be black and clear.
(3) The use of gray to indicate shading is unacceptable.
(4) The lining must not be too fine or too close together.
(5) The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide. It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3
cm.) wide.
(6) If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.
37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a). The Office will enforce these drawing requirements strictly.
The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a
heading listing, on separate lines, the applicant's complete name; the applicant's address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of
the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application. 37
C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).
DISCLAIMER:
Estate of P.D. Beckwith v. Comm'r of Pats., 252 U.S. 538, 1920 C.D. 471 (1920), and other disclaimer decisions before the Trademark Act of 1946 dealt with disclaiming descriptive or generic matter.
Section 6 of the Act referred initially to "unregistrable matter" and, since the 1962 amendment, now refers to "an unregistrable component." Typically an unregistrable component of a registrable mark
is the name of the goods or services, other matter that does not indicate source, or matter that is merely descriptive or deceptively misdescriptive of the goods or services, or primarily
geographically descriptive of them. If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark. TMEP §§1213.03(a) Here, the
wording "COOKINGLIGHT" and "SUPPER CLUBS" are merely descriptive in relation to the applicant's services. First, it appears that the applicant is engaged in services related to the establishment of
"supper clubs." Moreover, the examining attorney has attached articles from the from the Lexis/NexisÒ database evidencing the descriptive use of "supper clubs" in relation to the applicant and it
services.
In addition, the combination of "cooking' and "light," whose definitions are attached, immediately refers to preparing foods in "relatively moderate
amounts" or foods that are low in calories.
Moreover, several of the applicant's marks that contain "cooking light" and identify related goods and services are only registered on the Principal Register pursuant to Section 2(f). See
attachments. And as the applicant is aware, section 2(f) is reserved for marks that are merely descriptive but through use or other means, have asserted and established a claim of acquired
distinctiveness.
Therefore, the applicant must insert a disclaimer of "COOKINGLIGHT" and "SUPPER CLUBS" in the application. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP §§1213.03(a).
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use COOKINGLIGHT and SUPPER CLUBS apart from the mark as shown.
RECITATION OF SERVICES:
The wording in the recitation of services is unacceptable as indefinite. Moreover, Office policy requires that the service be a tangible activity provided for the benefit of others. Again,
advertising one's own services is not a service for which registration of a mark can occur. In addition, the applicant must be careful with the use of the term "sale" and is reminded that for retail
services, the term should not be used.
When a description is indefinite, the applicant must amend the recitation to specify the common commercial name of the services. If there is no common commercial name for the services, the applicant
must describe the services and indicate their nature. TMEP §1402.11. As a suggestion therefore, the applicant may adopt the following description, if accurate: Direct marketing advertising for
others; promoting the sale of goods and services of others through the distribution of printed material and promotional contests, in International Class 035
TMEP §1402.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the
applicant may not amend to include any services that are not within the scope of the services recited in the present identification. For further assistance regarding an acceptable listing of goods
and/or services, please see the on-line searchable Manual of Acceptable Identifications of Goods and Services, at <http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/>
http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/BM__Hlt496082188.
In closing, the refusal to register as well as the above noted requirements are maintained and now made FINAL. Please note that the only appropriate responses to a final action are (1) compliance
with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37
C.F.R. §2.64(a); TMEP §715.01. Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700. If the applicant fails to respond within six months of the mailing date of this
refusal, this Office will declare the application abandoned. 37 C.F.R. §2.65(a).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
BBrown
/Brian D. Brown/
Trademark Attorney
Law Office 105
(703) 308-9105 ext. 178
(703) 746-9597fax
ecom105@uspto.gov
How to respond to this Office Action:
To respond formally using the Office's Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html
<http://www.gov.uspto.report/teas/index.html> and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm
<http://www.gov.uspto.report/web/trademarks/tmelecresp.htm> and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney's name on the upper
right corner of each page of your response.
To check the status of your application at any time, visit the Office's Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/ <http://tarr.gov.uspto.report/>
For general and other useful information about trademarks, you are encouraged to visit the Office's web site at http://www.gov.uspto.report/main/trademarks.htm
<http://www.gov.uspto.report/main/trademarks.htm>
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
FEE INCREASE:
Fee increase effective January 1, 2003
Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class. The USPTO will not accord a filing date to applications
that are filed on or after that date that are not accompanied by a minimum of $335.00.
Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.
cook
cook (k¢k) verb
cooked, cook·ing, cooks verb, transitive
1. To prepare (food) for eating by applying heat.
2. To prepare or treat by heating: slowly cooked the medicinal mixture.
3. Slang. To alter or falsify so as to make a
more favorable impression; doctor: disreputable accountants who were paid to cook the firm's books. [1]
light (lìt) adjective
light·er, light·est
1. a. Of relatively little weight; not heavy: a light load. b. Of
relatively little weight for its size or bulk: Balsa is a light wood. c. Of less than the correct, standard, or legal weight: a light pound.
2. Exerting little force or impact; gentle: a light pat.
3. a. Of little quantity; scanty: light snow. b. Consuming or using
relatively moderate amounts; abstemious: a light eater; a light smoker. c. Not harsh or severe: gave the offender a light sentence.
4. Demanding little exertion or effort; not burdensome: light household
tasks. See synonyms at easy.
5. Having little importance; insignificant: light, idle chatter.
6. Intended primarily as entertainment; not serious or profound: a light
comedy.
7. Free from worries or troubles; blithe: a light heart.
8. Characterized by frivolity; silly or trivial.
9. Liable to change; fickle. [2]
DATE: JULY 15, 2003
CLIENT: BNICE
LIBRARY: NEWS
FILE: ALLNWS
YOUR SEARCH REQUEST IS:
"COOKING LIGHT SUPPER CLUBS"
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 9
Copyright 2002 Crain Communications Inc.
Advertising Age
December 16, 2002, Monday
SECTION: Pg. 21
LENGTH: 470 words
HEADLINE: Building loyalty: Food titles join the club ; Culinary mags use suppers to connect via 'tribal marketing'
BYLINE: KATE FITZGERALD
BODY:
Seeking new ways to eke out growth in tough times, epicurean magazines are expected to invite a record number of readers to food festivals and intimate gatherings with chefs in 2003 while also
sweetening deals for advertisers.
Conde Nast's Bon Appetit is introducing its first-ever Culinary Classic & Celebrity Chef Ski Race in Colorado in February and will lure thousands of consumers to culinary fairs in seven cities
with ticket prices as high as $500 for some events. Gourmet and American Express Publishing's Food & Wine are also targeting readers with high-end galas throughout the year.
Time Inc.'s Cooking Light is going a step further, tapping into one of marketing's new tools by harnessing ''tribal marketing'' for its network of nationwide cooking clubs. Defined as the art of
targeting like-minded consumers who spontaneously connect around a product or service, tribal marketing explains how several dozen cooking clubs have sprung up around the U.S. The title has nudged
the concept along through its Web site
(cookinglight.com) and by featuring clubs in its pages beginning in 2000.
200 served
This year Cooking Light launched a series of Cooking Light Supper Club dinners in Manhattan to entertain readers and demonstrate advertisers' wares. About 200 people attended four such events, each
backed by more than a dozen sponsors.
Now the magazine is expanding the concept to San Francisco and Chicago, bringing the total number of dinners planned for 2003 to eight, including those in New York. Readers and previous attendees
will be invited, with tickets priced at about $50 each for a $100 or more value. ''The supper club idea began with readers, and now we're celebrating the phenomenon and giving advertisers a chance to
be part of it,'' said Chris Allen, the magazine's VP-associate publisher.
Cooking Light provides a way ''to deliver our message in an environment that is relevant and meaningful to a very specific audience,'' said Caryl Hahn, VP-global media and new channels for MasterCard
International, a backer of the Supper Clubs events.
Companies seeking tribal marketing dynamics must listen closely to consumers before beating the drums, experts suggest.
Tribal marketing-best illuminated by the annual gathering of Harley-Davidson motorcyclists in Sturgis, S.D.-demands '' a deep understanding of your audience,'' and not being too heavy-handed with the
commercial message, said Sam Hill, president of Chicago-based Helios Consulting.
Mr. Hill discussed tribal marketing at the Advertising Research Foundation's Business Intelligence Forum earlier this month in Manhattan, and predicts it will play a big role in successful marketing
throughout this decade. ''The key is enhancing the way consumers connect with one another around your product'' he said.
GRAPHIC: Soup's on: 'Cooking Light' is trying to make a connection with its Supper Club dinners in San Francisco, Chicago and New York.
LOAD-DATE: December 20, 2002
Copyright 2002 Plain Dealer Publishing Co.
Plain Dealer (Cleveland, Ohio)
April 14, 2002 Sunday, Final / All
SECTION: SUNDAY MAG; Pg. 21
LENGTH: 1251 words
HEADLINE: The (Supper) Club Scene;
Meet, greet, eat.
BYLINE: Stephanie Ricca, SPECIAL TO THE PLAIN DEALER
BODY:
The dinner party. Is it a relic of the Seventies? Only for people like Oprah with live-in cooks?
Not anymore. Entertaining is returning to the home. But relax - the days of one harried hostess preparing elaborate feasts for guests who don't even stay to wash up are gone. In their place is a
simpler, fun alternative - the supper club.
Supper clubs in their many variations are popping up as people try to re-create the camaraderie associated with cooking and eating together. These clubs are loosely defined. They can be 20-something
roommates who watch cooking shows together and wow their friends with culinary delights eaten off paper plates. They can be couples who have met for years at a different home each month to garnish
the good china with time-tested favorite recipes.
They can even be groups of people who met on Internet chat boards devoted to food.
Peggy Collins, from Euclid, posted a message last fall on Cooking Light magazine's online forum after an article about cooking clubs was published in the magazine. She was looking for people from
Greater Cleveland who would like to indulge their tastes for lighter, yet delicious, food together. "I thought this would be a lot of fun to do with people who love food and like cooking," she
says.
Collins started a windfall of postings from fellow foodies interested in forming a supper club.
Stacey Hancock, of North Royalton, responded right away. "I love cooking, and I had moved here from California three years ago and didn't have too many friends," she says. "I did it to make
friends."
Cleveland's Cooking Light supper club first met in September and the response was so good - 15 people showed up, and more replied daily to the message board - that members had to break into three
smaller groups. Each group operates independently, but group organizers communicate to share tips and ideas. Members of all three groups range from young professionals to retired couples. They were
strangers before joining, but sharing food is a good way to form friendships, they say.
"We're still getting to know each other," says Collins of her 10-member East Side group, which has met four times on its own and once with all the groups for a holiday party. "It's kind of
overwhelming, but it's really fun."
"We all talk about food the whole time," says Peggy Cawley, organizer of the North West club, which includes seven members from Lakewood, Rocky River, Fairview Park and Cleveland.
Well, not the whole time. The last time that Cawley's group met in early March - only their third dinner as a group - it was hard to believe members hadn't been swapping culinary creations and
conversation forever. Talk ranged from food, of course, to movies, books and gossip about local restaurants. This group's members range in age from 25 to 39 and they share one important
characteristic - enjoying the results of their hard work in the kitchen.
"Cooking is just a means to an end," says that night's host, Michael Dunn, of Fairview Park, with a laugh.
Over their French-inspired feast of coq au vin and Mediterranean-style side dishes including a Provencale potato gratin and artichoke-and-spinach tian, this group made it clear that cooking for
entertainment is definitely on the comeback.
And with time-saving conveniences such as e-mail and online recipe archives, these groups have more time to spend on trying challenging dishes. Members rotate as hosts for their particular group, and
they schedule supper dates and plan menu ideas via e-mail.
"Having someone in charge to communicate over e-mail is helpful," says Hancock, organizer of the eight-member South West group. Also, don't forget to pay attention to costs (See "Supper Specifics,"
Page 21) and members' food allergies or sensitivities when planning menus. For example, if a side dish has a cheese topping, the cook would leave the cheese off one portion so a lactose-intolerant
member could enjoy it.
Logistics aside, enjoying food and company is the bottom line.
"The point is just to get together for the cooking," Collins says, "and try foods and recipes that you never would have looked at twice."
Stephanie Ricca wants to let supper clubs all over Cleveland know that she will fill in as a substitute any time. She may be reached through magmail£
plaind.com.
Recipes:
Crab-Cheese Appetizers
This is a favorite recipe of Trudi James-Parks, a member of the South West supper club.
1 5-oz. jar Kraft Old English Cheddar Cheese spread
1 Tbsp. mayonnaise
1 stick butter or margarine
1 6-oz. can crab meat
Dash garlic powder
Dash cayenne pepper
20 mini bagels
1. Combine first six ingredients and mix until smooth.
2. Spread on bagels. Place bagels on baking sheet and broil until brown and bubbly. Serve immediately.
Yield: 20 appetizer servings.
Second recipe:
Greek Spinach Triangles With Yogurt-Cucumber Sauce
This is a favorite recipe of Peggy Collins, coordinator of the East Side supper club.
Triangles:
4 cloves garlic, minced
2 10-oz. packages frozen chopped spinach, defrosted and squeezed dry
Cooking spray
1 tsp. dried oregano
1/4 tsp. salt
1/4 tsp. freshly ground pepper
3 Tbsps. lemon juice
3 oz. crumbled feta cheese
4 Tbsps. toasted pine nuts
1 Tbsp. cornstarch
1 Tbsp. cold water
36 won ton wrappers
Sauce:
2 cups plain yogurt
1/2 cup chopped cucumber
3 cloves garlic, minced
3 oz. crumbled feta cheese
1/2 tsp. salt
1/4 tsp. freshly ground pepper
1. Saut garlic in skillet coated with cooking spray for 2 to 3 minutes or until lightly browned. Add spinach, oregano, salt, pepper and lemon juice. Stir until combined and warmed. Remove from heat;
add feta and pine nuts.
2. Heat oven to 400 degrees. Warm 2 baking sheets in oven.
3. Combine cornstarch and water in a small bowl.
4. Spoon 1 tablespoon spinach mixture into the center of a won ton wrapper. (Cover remaining wrappers to keep from drying.) Moisten edges of wrapper with cornstarch mixture. Bring 2 opposite corners
together. Pinch points to seal, forming a triangle. Place filled wrapper on wire rack. Repeat procedure with remaining spinach mixture, wrappers and cornstarch mixture.
5. Remove baking sheets from oven and coat with cooking spray. Arrange triangles in a single layer. Coat triangles with cooking spray. Bake at 400 degrees for 8 minutes, or until golden. Turn
once.
6. Combine sauce ingredients in blender or food processor until smooth. Serve triangles with sauce on the side.
Yield: 12 servings (3 triangles each).
Recipes featured in The Back Burner have been tested in The Plain Dealer's Test Kitchen.
Supper Specifics
Whether you are a paper-plate potluck group or a china-and-wineglasses group, these tips from Cleveland supper club organizers will ensure you won't end up with three roasts and no side dishes:
l "Be flexible," advises Peggy Cawley, organizer of the North West supper club. Attempting a dish you might not have tried before is part of the fun. "Appreciate the work of others and learn from
each other," she says.
l "Discuss logistics, like money, before you begin," says Stacey Hancock, organizer of the South West group. Deciding how to finance suppers early on can avoid problems later. Two of the Cleveland
groups keep track of their expenses and split everything; members of the third group pay for their own dishes.
l "Have fun," says Peggy Collins, East Side group organizer. "It's just cooking. If you show up with a dish that flops, no one's going to be embarrassed. Just have fun."
LOAD-DATE: April 20, 2002
_____
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and
distribution restricted in accordance with the Copyright Law of the United States. All rights reserved. [2]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by
Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights
reserved.
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