UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

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  76/526620

 

The assigned examining attorney has reviewed the referenced application and determined the following:

 

Office Records Searched

 

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. Section 1052(d).  TMEP section 1105.01.

 

However, the applicant should note the following informality:

 

Disclaimer of Descriptive Wording

 

The applicant must disclaim the descriptive wording “DELICIOUS” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a).  The wording is merely descriptive because “delicious” refers to “Highly pleasing or agreeable to the senses, especially of taste or smell,[1] which means “delicious” is a laudatory term. Laudatory terms, those which attribute quality or excellence to goods or services, are merely descriptive under §2(e)(1).  That is, laudatory terms are non-distinctive and unregistrable without proof of acquired distinctiveness.  See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (THE ULTIMATE BIKE RACK found to be merely descriptive and therefore subject to disclaimer); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness); In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) (the words BEST and PREMIER in mark BEST! SUPPORTPLUS PREMIER held merely descriptive of computer consultation and support services and thus subject to disclaimer); In re Dos Padres Inc., 49 USPQ2d 1860 (TTAB 1998) (QUESO QUESADILLA SUPREME merely descriptive of cheese);  In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995) (SUPER BUY held merely descriptive of tobacco products); General Foods Corp. v. Ralston Purina Co., 220 USPQ 990 (TTAB 1984) (ORIGINAL BLEND held merely descriptive of cat food); Exquisite Form Industries, Inc. v. Exquisite Fabrics of London, 378 F. Supp. 403, 183 USPQ 666, 671 (S.D.N.Y. 1974) (finding EXQUISITE, as a laudatory word, entitled to no trademark protection). TMEP§ 1209.03(k).

 

A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use “DELICIOUS” apart from the mark as shown.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney. For your convenience, current status and status date information is available, via push button telephone, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system.  The information may be accessed by calling (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday, and entering a seven‑digit registration number or eight‑digit application number, followed by the "#" symbol, after the welcoming message and tone.  Callers may request information for up to five registration number or application number records per call. Those with Internet access may also obtain status information by accessing the USPTO web site at: http://tarr.gov.uspto.report/.

 

__________________________________________

/Ronald E. Aikens/

Trademark Office

Law Office 103

Tel: (703) 308-9103, ext. 128

Fax: (703) 746-6422

Ron.Aikens@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 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.

 

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/

 

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

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.