Response to Office Action

Sir or Madam:

In response to the Office Action emailed May 18, 2005, Applicant submits the following amendments and remarks in support of registration of the mark.

I.            IDENTIFICATION OF GOODS

The Examining Attorney has indicated that the identification of goods in international class 29 is acceptable, but the identification of goods in international class 30 is unacceptable as indefinite.  Accordingly, Applicant has followed the Examining Attorney's guidelines and has amended the identification of goods accordingly.  The application should now recite:

"Pickles in oil namely, mango pickle, mixed pickle, chili pickle and other pickles; lentils and pulses being edible seeds, namely, chana daal being gram lentils, moong daal being whole yellow gram lentils, kabuli chana being chick peas, and other lentils" in International Class 29; and

"Chutney and pastes namely, mango chutney, plum chutney, mint chutney and other chutneys; cooking pastes, namely curry paste, biryani paste, namely a spice paste for use with rice with meat, qorma paste, namely a spice paste of curry for use with meat and yogurt curry; sweet dessert mixes namely, kheer mix namely rice pudding mix, firni khas namely rice pudding mix, ras malai mix being mix for milk balls in milk syrup, gulab jamun mix being mix for milk balls in sugar syrup, kulfa shahi mix being traditional ice cream mix, kulfi mix being traditional ice cream mix, gajar halwa mix being sweet carrots mix, custard powder, and jelly crystals; spice mixes namely qorma masala being a spice mix for use with meat and yogurt curry, biryani masala being a spice mix for use with rice with meat, tandoori barbeque masala being a spice mix for oven baked and grilled meat, nehari masala being a spice mix for use in making a hot spicy sauce for lamb or beef, sabzi masala and bhujia masala being spice mixes for vegetarian dishes; spices namely red chili powder, coriander powder, and curry powder; basmati rice and vermicelli" in International Class 30.

II.            DRAWING

Applicant has filed herewith a substitute drawing showing the mark in black and white.  The Examining Attorney previously confirmed the acceptability of substituting a black and white drawing.

III.            COLOR CLAIM STATEMENT

Applicant respectfully requests that the previously entered color claim statement be deleted.

IV.            DESCRIPTION OF COLOR PLACEMENT

Applicant respectfully requests that the previously entered description of color placement statement be deleted.

V.            LINING AND STIPPLING

Applicant respectfully requests that the previously entered lining and stippling statement be deleted.

VI.            FOREIGN CERTIFICATES OF REGISTRATION

Applicant previously requested amendment of the application to add a Section 44(e), 15 U.S.C. § 1126(e), basis for registration in addition to the perfected Section 1(a), 15 U.S.C. § 1051(a), basis for registration.  See TMEP § 806.03(a) (stating that an applicant may add a basis for registration at any time prior to publication).  The Examining Attorney responded to the requested amendment by noting that the drawing on foreign registrations differs from the drawing on the present application.

The undersigned has been informed that the foreign registrations are directed to a "series of marks," including both English and Urdu language versions of Applicant's mark.  See Trademarks Throughout the World § 122.9 (4th ed. 2005) (noting that, where appropriate, the government of Pakistan will issue a single trademark registration covering a series of associated marks).  In accordance with TMEP § 1011.02, the application at issue herein is properly directed to a single mark notwithstanding Applicant's proper claim under Section 44(e) based upon its registrations from Pakistan.

VII.            LIKELIHOOD OF CONFUSION

Applicant advises that it is currently preparing a petition for cancellation of the cited registrations and will file the petition with the Trademark Trial and Appeal Board in the immediate future. 

VIII.            CONCLUSION

Applicant has addressed the identification of goods refusal, addressed the foreign registration refusal, and has amended the identification of goods as requested by the Examining Attorney.  In light of the impending cancellation proceeding involving the cited registrations, Applicant respectfully requests suspension of prosecution of the present application. 

If any further questions remain, Applicant respectfully requests that the Examining Attorney contact the undersigned via telephone or email. 

Respectfully submitted,

Convenience Food Industries (Pvt) Ltd.

By:

David E. Weslow

SUTHERLAND ASBILL & BRENNAN LLP

1275 Pennsylvania Avenue, N.W.

Washington, D.C. 20004-2415

Telephone:  202.383.0100

Facsimile:  202.637.3593

Email:  eteas@sablaw.com