UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/519844
APPLICANT: Classic Foods International Corporation
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: CLASSICS
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CORRESPONDENT’S REFERENCE/DOCKET NO: 1006.202
CORRESPONDENT EMAIL ADDRESS: |
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 76/519844
This letter is written in response to the applicant’s correspondence dated 6/28/04 in which the applicant 1) amended its identification of goods to overcome the likelihood of confusion registration; and 2) argued against the refusal as to the mark being descriptive. Item 1 is acceptable and the refusal under section 2(d) as to registration no. 1173483 is withdrawn. The refusal under section 2(e)(1) as the mark being descriptive is continued and made FINAL.
The examining attorney continues and makes FINAL the refusal on the Principal Register because the proposed mark is merely descriptive of the identified goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209.01(c) et seq.
A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).
It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods to be merely descriptive. It is enough if the term describes one attribute of the goods. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). TMEP §1209.01(b).
The applicant applied to register the mark CLASSICS for "potato-based snack foods, namely, potato chips and potato crisps" and “corn-based snack foods, namely, tortilla chips.” "Classic" is defined as “a typical or traditional example.”[1][1] “Classics” is merely the plural form of classic and the addition of the ‘s’ confers no additional trademark significance. As shown by the excerpts from Nexis® and various web sites showing competitors use of either ‘classic’ or ‘classics’ for the identical goods, “classic” potato chips and tortilla chips are understood to mean those that are typical or traditional. The stories in Nexis® discuss “classic potato chips” and “classic tortilla chips” as a genus of such goods, with an established and understood meaning. Thus, since the applicant's goods are corn chips and potato chips, the proposed designation CLASSICS merely describes that the goods are traditional or typical.
As shown by the previously attached registrations and pending applications from various parties, ‘classic’ chips are understood within the snack food industry to mean traditional style or typical chips. There is a strong competitive need for others in the industry to be able to use the word “classics” to describe these goods. Among the applicant’s competitors using ‘classic’ or ‘classics’ for potato chips are Lay’s, Cape Cod, Grandma’s, Lance, Topco and Utz; and for tortilla chips, Topco. Consumers exposed to such widespread use of the term for the same goods by so many entities will immediately recognize that the applicant’s goods are merely held out as an example of the typical or traditional chip.
The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract. In re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999) (Board found that 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) (CONCURRENT PC-DOS found merely descriptive of “computer programs recorded on disk;” it is unnecessary that programs actually run “concurrently,” as long as relevant trade clearly uses the denomination “concurrent” as a descriptor of this particular type of operating system); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985) (“Whether consumers could guess what the product is from consideration of the mark alone is not the test”); TMEP §1209.01(b). The applicant’s attorney’s inclusion or alternate definitions for the word ‘classics’ is thus virtually meaningless since the term already has a clear meaning in the industry.
Applicant’s attorney has asserted that “use of the term as a source indicator is persuasive evidence of non-genericness.” For the record, the examining attorney has not refused the mark as being generic but only as being descriptive. A warning that the mark may be generic was made part of the Office Action but no such refusal has as yet been made. Notwithstanding the prematurity of the applicant’s attorney’s arguments, the fact that many entities all use ‘classic’ or ‘classics’ as part of the name of the same goods clearly establishes that it is NOT a source indicator.
Finally, while the applicant’s attorney has indeed attached many examples of third party registrations for various food products that feature CLASSIC or CLASSICS as part of the mark, some of them have been canceled or abandoned and thus prove nothing; one of them is from the applicant and only establish its use of that portion of the mark for similar goods; and, most important of all, ONLY ONE of them is for potato chips from another party, registration no. 2097735. The rest are for totally unrelated goods, goods for which CLASSIC or CLASSICS apparently has no established meaning in the industry.
Accordingly the mark is refused registration on the Principal Register under Section 2(e)(1).
Moreover, as noted previously, the proposed mark appears to be generic as applied to the goods and, therefore, incapable of identifying the applicant’s goods and distinguishing them from those of others. In re Management Recruiters International, Inc., 1 USPQ2d 1079 (TTAB 1986). Under these circumstances, the examining attorney cannot recommend an amendment to proceed under Trademark Act Section 2(f), 15 U.S.C. §1052(f), or an amendment to the Supplemental Register, should the applicant file an Allegation of Use at any time.
Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The USPTO Trademark Operations will be moving to the new Alexandria, Virginia campus in October and November 2004. During that time, you are strongly encouraged to communicate with the USPTO through the Trademark Electronic Application System (TEAS) which can be found at www.uspto.gov .
Effective October 4, 2004, all Trademark-related paper mail must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
My Law Office will move on October 28, 2004. To reach me by phone after that date call (571) 272-9297.
/Chris Doninger/
Senior Supervisory Attorney
Law Office 105
(703) 308-9105 ext. 171
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 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.
MAIL-IT REQUESTED: AUGUST 23, 2004 10083K
CLIENT:
LIBRARY: NEWS
FILE: US
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
"CLASSIC POTATO CHIP!" OR "CLASSIC TORTILLA CHIP!" OR "CLASSIC CORN CHIP!"
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 75
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
4,16,24,32,45,47,50,55-56,59,61-62,69,72
DISPLAY FORMAT: 30 VAR KWIC
SEND TO: DONINGER, CHRIS
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
**********************************09008**********************************
Copyright 2004 The Omaha World-Herald Company
Omaha World Herald (Nebraska)
June 18, 2004, Friday IOWA EDITION
SECTION: NEWS; Pg. 01A;
LENGTH: 1016 words
HEADLINE: New owners to stress the basics 10 Omaha Albertsons stores sold to low-cost grocery chains Supermarket prices In Business
BYLINE: Mark Kawar
SOURCE: WORLD-HERALD STAFF WRITER
BODY:
... creamy
peanut butter $1.88 $1.87 $2.19
20 oz. Cheerios $4.39 $4.27 $4.69
1 fresh pineapple $4.55 $3.99 $4.99
24-pack Pepsi $4.87 $5.97 $7.69 PCP/$7.99 REG
12 oz. Lays Classic potato chips 2/$4 2/$4 2/$5 PCP/$2.99 REG
40-count Huggies diapers $9.79 $9.92 $9.77
Campbells condensed tomato
soup 63 cents 63 cents 79 cents
Tombstone original pepperoni
pizza ...
Copyright 2003 News World Communications, Inc.
The Washington Times
May 30, 2003, Friday, Final Edition
SECTION: PAGE ONE; Pg. A01
LENGTH: 903 words
HEADLINE: Up against gastronomical odds Airline food worth paying for more than a pie-in-the-sky idea
BYLINE: By Tom Ramstack, THE WASHINGTON TIMES
BODY:
... inflight services, said yesterday.
The chicken caesar sandwich meal is a rosemary chicken breast, shredded asiago cheese and romaine lettuce on a hoagie roll and Caesar sun-dried tomato dressing, a bowl of fruit, Kettle Classic potato chips, a chocolate chunk cookie and a bottle of water.
A "Blueberry Madness" breakfast is a blueberry-walnut muffin, a honeydew melon and mandarin orange salad, yogurt with low-fat granola on the side and a bottle of water. ...
Copyright 2003 The Detroit News
All Rights Reserved
The Detroit News
March 27, 2003 Thursday No dot Edition
SECTION: FOOD; Pg. 7E
LENGTH: 519 words
HEADLINE: Like 'em crisp? These spuds are for you
BYLINE: Judith Harris Solomon
BODY:
... A little greasier than the others. Dark color.
5. Shearer's Kettle Style Potato Chips (Costco Wholesale)
Average score: 3.1
Price: $1.95 per 18-ounce bag
Comments: Not as crunchy as others. Tastes like a classic potato chip. Lighter in flavor and texture. Needs salt. Greasy.
Copyright 2002 PR Newswire Association, Inc.
PR Newswire
August 30, 2002, Friday
SECTION: FINANCIAL NEWS
DISTRIBUTION: TO BUSINESS AND FOOD EDITORS
LENGTH: 521 words
HEADLINE: Cape Cod Potato Chips Breaks Record Today with 5 Millionth Visitor to its Chip Factory
DATELINE: HYANNIS, Mass., Aug. 30
BODY:
... mid-morning today. Employees held hand-counters to tabulate the precise winner and, at 11:10am, Frank Maturo and his family entered the factory. At the conclusion of the factory tour, horns and confetti erupted as the winner burst through an oversized bag of Classic Potato Chips. Production manager Martha Baker greeted the winner with a lei of potato chips, then invited Maturo, his wife, Laura, and their 9-year old twin sons, Peter and David, into the factory, for a never-before-allowed private tour to see the ...
... factory while we were on vacation on the Cape," said Maturo. "Our family loves potato chips, but being the 5 millionth winner was definitely a real surprise!"
All visitors to the chip factory this week also received an ample-sized Classic Potato Chips to celebrate the occasion.
"We're thrilled to commemorate this milestone in our company's history," said Myrbeck Duda. "It's our way of saying thank you for making Cape Cod Potato Chips the best-selling kettle-cooked chips in America."
Since ...
Copyright 2000 Grand Forks Herald
All Rights Reserved
Grand Forks Herald
March 4, 2000 Saturday FINAL EDITION
SECTION: C-LOCAL; Pg. 01
LENGTH: 658 words
HEADLINE: SOMETIMES THE DAVIDS NEED A LITTLE EXTRA SUPPORT TO FIGHT THE GOLIATHS
BYLINE: Ryan Bakken
BODY:
... it worked. We left there thinking we weren't in their league, so we changed.
The Campbell boys didn't like being bullied. But they figured that new printing plates for labeling were less expensive than lawyer fees, so they changed the name to Grandma's Classic Potato Chips.
And even if they had called Campbell Soup's bluff and won in court, it would have been a short-lived victory. That's because, two years later, another big corporation flexed its biceps.
Campbells also supplied potatoes to Frito-Lay and they didn't like buying from a ...
Copyright 1999 The Atlanta Constitution
The Atlanta Journal and Constitution
September 16, 1999, Thursday, Home Edition
SECTION: Buyer's Edge; Pg. 7BE
LENGTH: 753 words
HEADLINE: Where can I find it?
BYLINE: Marylin Johnson, Staff
DATELINE: AJC
GRAPHIC: Photo
UTZ kettle Classics potato chips.
Photo
Scott's Liquid Gold " Touch of Scent."
Photo
Sir Thomas Lipton tea bags.
Photo
A 4-by-2-inch nylon "shoe wallet."
Photo
Pencil clips
Copyright 1999 The New York Times Company
The New York Times
August 11, 1999, Wednesday, Late Edition - Final
SECTION: Section F; Page 2; Column 1; Dining In, Dining Out/Style Desk
LENGTH: 530 words
HEADLINE: FOOD STUFF
BYLINE: By Florence Fabricant
BODY:
At Likitsakos, 1174 Lexington Avenue (80th Street), a new artichoke dip with calamata olives tastes more of the earthy olives than the artichokes but can handle a classic potato chip. The shop's feta dips, with the unlikely addition of jalapenos or poblanos ($3.99), deliver quite a kick and are best served with soothing cucumber spears for dipping. The artichoke and feta dips are $3.99 for eight ounces.
Then there is Soymmos, developed as a low- ...
Copyright 1998 St. Louis Post-Dispatch, Inc.
St. Louis Post-Dispatch (Missouri)
May 16, 1998, Saturday, FIVE STAR LIFT EDITION
SECTION: LIFESTYLE, Pg. 27, FOOD STUFF COLUMN
LENGTH: 51 words
HEADLINE: CHIP AWAY THE FAT
BYLINE: Ann Lemons; Special To The Post-Dispatch
GRAPHIC:
... 130 calories and 6 grams of fat per 1-ounce serving. $1.99 for 5 ounces at Wild Oats Market, 8823 Ladue Road.
(2) Photo - Organic reduced-fat corn chips from Little Bear have almost the classic corn-chip taste, calling out for a jalapeno cheese dip or maybe chili con queso. 140 calories and 7 grams of fat per 1-ounce serving. 10 ounces for 99 cents at Wild Oats.
(3) ...
Copyright 1998 The State Journal-Register
The State Journal-Register (Springfield, IL)
April 29, 1998, Monday, EARLY AND CITY EDITIONS
SECTION: FOOD, Pg. 19
LENGTH: 806 words
HEADLINE: OLESTRA: Too good to be true? / Here they are! Fat-free snacks with half the calories - but not without controversy
BYLINE: KATHRYN REM STAFF WRITER
BODY:
... sampled bags of the new chips in the newsroom.
The new chips carry a warning that the fat substitute "inhibits the absorption of some vitamins and other nutrients. Vitamins A, D, E and K have been added."
A 1-ounce serving of Wow! classic potato chips (about 21 chips) has zero fat and 75 calories (about the number of calories in a slice of bread), compared to 10 grams of fat and 150 calories for the full-fat variety.
Similarly, an ounce of olestra Doritos (about ...
Copyright 1998 The Atlanta Constitution
The Atlanta Journal and Constitution
March 13, 1998, Friday, ALL EDITIONS
SECTION: FEATURES; Pg. 03H; Pg. 03H
LENGTH: 729 words
SERIES: Metro Final Today's News
HEADLINE: Health Watch;
DIET AND NUTRITION
BYLINE: Reagan Walker
BODY:
... It has very little taste, but provides the rich texture fat adds to food.
In an informal, blind taste test of chips by some Atlanta Journal-Constitution staffers, one product made with olestra fared well. For the classic potato chip, tasters were evenly split between the regular Lay's and the baked Lay's potato chip, with only one preferring the taste of the Wow Lay's. And regular Ruffles won out by far over Reduced-fat Ruffles and the Wow Ruffles.
But when it ...
Copyright 1996 The Patriot Ledger
The Patriot Ledger (Quincy, MA)
January 31, 1996 Wednesday ROP Edition
SECTION: FEATURES; Pg. 19
LENGTH: 852 words
HEADLINE: Thought for food ;
Fresh fish at good prices close to home
BYLINE: Vicki Fitzgerald, The Patriot Ledger staff
SOURCE: The Patriot Ledger staff
BODY:
... one envelope of soup. Subsequently, California dip was promoted around the country by the dairy industry as well as Lipton
Today, health-conscious partygivers sometimes substitute light sour cream or yogurt for the sour cream and raw vegetables for the classic potato chips. The original dip still tastes best if mixed a couple of hours ahead of time and chilled, but it's quite satisfactory after just a few minutes.
---
LEFTOVER LIFETIMES -- How long to keep leftovers is a perennial question ...
Copyright 1995 PR Newswire Association, Inc.
PR Newswire
October 17, 1995, Tuesday
SECTION: Financial News
DISTRIBUTION: TO BUSINESS EDITOR
LENGTH: 162 words
HEADLINE: PACIFIC SNAX CORP. CONSUMMATES $500,000 CONVERTIBLE DEBT ARRANGEMENT
BODY:
... provides the company with the necessary funds to continue the geographic expansion of its reduced fat and calorie Pacific Lite line," said Richard R. Damion, chairman for Pacific Snax Corp.
Since 1994, Pacific Snax Corp. has been a producer of gourmet classic potato chips and reduced fat and calorie rice and potato-based snacks such as Kettle Classics and Pacific Lites. Pacific Snax brand products can be found in major grocery, retail and convenience chains, arenas and hotels.
Copyright 1994 Globe Newspaper Company
The Boston Globe
September 28, 1994, Wednesday, City Edition
SECTION: ECONOMY; Pg. 46
LENGTH: 358 words
HEADLINE: Dad-daughter team looks to go nationwide with fat-free chip;
EMERGING BUSINESS / FAST TRACK
BODY:
... 140 milligrams of sodium. FitFoods' suggested retail price is $1.89 for a four-ounce bag.
Zussman admits that since his product tastes more like a baked potato, it may not appeal to consumers looking for the classic potato chip taste.
The chips are made for FitFoods by Nibble With Gibble's Inc. of Chambersburg, Pa., using FitFoods' patented equipment and process.
After starting product shipments in June, Zussman expects sales of $15 million in the first year. He's ...
Copyright 1993 The Times Mirror Company; Los Angeles Times
All Rights Reserved
Los Angeles Times
July 15, 1993, Thursday, Orange County Edition
SECTION: OC Live; Page 35; OC Live
LENGTH: 992 words
HEADLINE: HERE, THE WHOLE ENCHILADA;
LA SALSA DEBUTS A FULL-SERVICE SPOT
BYLINE: By MAX JACOBSON, Max Jacobson is a free-lance writer who reviews restaurants weekly for The Times Orange County Edition.
BODY:
... fresh pineapple and watermelon. (The margaritas, for the record, scarcely miss a beat, apart from one bizarre fresh peach model.)
You'll need a small army to finish off a dish such as nachos manchacamisa, a variation on the classic corn chip snack. Eight of us attempted to scale this two-foot mountain of chips buried under an avalanche of chicken chili beans, gooey melted cheese, salsa, guacamole and sour cream. We had to turn back halfway.
One can't-miss appetizer is the ...