Offc Action Outgoing

DEWAR'S FINEST SCOTCH WHISKY SIGNATURE

BACARDI & COMPANY LIMITED

Offc Action Outgoing

UNITED STATES DEPARTMENT OF COMMERCE

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 76/539539

APPLICANT: BACARDI & COMPANY LIMITED

CORRESPONDENT ADDRESS:

MARIA A. SCUNGIO

PENNIE & EDMONDS LLP

1155 AVENUE OF THE AMERICAS

NEW YORK, NEW YORK 10036

RETURN ADDRESS:

Commissioner for Trademarks

2900 Crystal Drive

Arlington, VA 22202-3514

MARK: DEWAR'S FINEST SCOTCH WHISKY SIGNATURE

CORRESPONDENT’S REFERENCE/DOCKET NO: 9642-102-999

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.

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 76/539539

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

DISCLAIMER

The applicant must insert a disclaimer of FINEST SCOTCH WHISKY and SIGNATURE in the application. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i). The wording is descriptive of the goods which are signature scotch whisky. Finest is laudatory and merely descriptive.

A properly worded disclaimer should read as follows:

No claim is made to the exclusive right to use FINEST SCOTCH WHISKY and SIGNATURE apart from the mark as shown.

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.

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

/Anne Madden/

Trademark Examining Attorney

Law Office 103

(703) 308-9103 ext. 130

(703) 746-8103 fax

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.

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.