UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/500551
APPLICANT: FL Food Lion, Inc.
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CORRESPONDENT ADDRESS: KAROL A. KEPCHAR AKIN, GUMP, STRAUSS, HAUER & FELD, LLP 1676 INTERNATIONAL DRIVE PENTHOUSE SUITE MCLEAN, VA 22102 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom114@uspto.gov
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MARK: FOOD LION
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CORRESPONDENT’S REFERENCE/DOCKET NO: 080996.0002
CORRESPONDENT EMAIL ADDRESS:
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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.
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Serial Number 76/500551
The assigned examining attorney has reviewed the referenced application and determined the following.
Identification of Goods
The wording “septic tank treatment additive” and “medicated chest rub” in the identification of goods is unacceptable as indefinite. The exact nature of the goods is not indicated with enough specificity. In addition, the applicant should indicate the material composition of the bags. The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.
For 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/.
The applicant may adopt the following identification of goods, if accurate:
Septic tank treatment additive, namely, a bacteria based septic tank treatment used to promote bacterial degradation of waste in septic systems, International Class 1; and/or
Glass cleaners, International Class 3; and/or
Analgesic preparations, namely, medicated chest rub, International Class 5; and/or
Plastic lawn and leaf bags, International Class 16; and/or
Household brooms, cotton mops and replacement parts therefore, and reusable plastic food containers, International Class 21; and/or
Vegetable oil spreads, International Class 29; and/or
Cornbread mix, cookie mix and garlic toast, International Class 30.
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.
If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:
(1) The applicant must specifically identify the goods in each class and list the goods by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
(3) The applicant must submit:
(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a). The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or
(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.
(4) The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above. 37 C.F.R. §§2.59(a) and 2.71(c).
Claim of Prior Registrations
If the applicant is the owner of Registration Nos. 1427887, 1554929, 1557579 and 1558705 the applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812. A properly worded claim would read as follows:
The applicant is owner of U.S. Registration Nos. 1427887, 1554929, 1557579 and others.
Trademark Act Section 6(a), 15 U.S.C. §1056(a), permits the Office to require a disclaimer of an unregistrable component of a mark. Trademark Act Section 2(e), 15 U.S.C. §1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the examining attorney may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive. If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark. TMEP §1213.01(b).
The applicant must insert a disclaimer of FOOD in the application. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i). The term must be disclaimed because the term is generic for the applicant’s food items.
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use FOOD apart from the mark as shown.
Search of Office Records
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
PLEASE NOTE: All of the issues raised can be resolved by telephone. The applicant may telephone the examining attorney, instead of submitting a written response, to expedite the application.
/Brendan D. McCauley/
Brendan D. McCauley
Examining Attorney
Law Office 114
703-308-9114 X165
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 and follow the instructions.
To respond formally via E-mail, visit 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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
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.