PTO Form 1957 (Rev 8/2005) |
OMB Control #0651-0050 (Exp. 04/30/2006) |
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SERIAL NUMBER | 76584605 |
MARK SECTION (current) | |
STANDARD CHARACTERS | NO |
USPTO-GENERATED IMAGE | NO |
LITERAL ELEMENT | INTERNATIONAL |
COLOR MARK | YES |
MARK SECTION (proposed) | |
MARK FILE NAME | \\TICRS\EXPORT7\IMAGEOUT7 \769\780\76978009\LM2Copy \76584605\1\DRW22\DRW1.JP G |
STANDARD CHARACTERS | NO |
USPTO-GENERATED IMAGE | NO |
COLOR MARK | NO |
PIXEL COUNT ACCEPTABLE | YES |
PIXEL COUNT | 464 x 284 |
ARGUMENT(S) | |
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 |
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GOODS AND/OR SERVICES SECTION (1st class)(no change) | |
GOODS AND/OR SERVICES SECTION (2nd class)(current) | |
INTERNATIONAL CLASS | 030 |
DESCRIPTION | |
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 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 | |
FILING BASIS | Section 1(a) |
FIRST USE ANYWHERE DATE | 03/00/1985 |
FIRST USE IN COMMERCE DATE | 02/00/1988 |
FILING BASIS | Section 44(e) |
FOREIGN REGISTRATION NUMBER | 102266 |
FOREIGN REGISTRATION COUNTRY NAME | PK |
FOREIGN REGISTRATION DATE | 04/16/1989 |
FOREIGN RENEWAL DATE | 04/16/2011 |
GOODS AND/OR SERVICES SECTION (2nd class)(proposed) | |
INTERNATIONAL CLASS | 030 |
DESCRIPTION | |
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 | |
FILING BASIS | Section 1(a) |
FIRST USE ANYWHERE DATE | 03/00/1985 |
FIRST USE IN COMMERCE DATE | 02/00/1988 |
FILING BASIS | Section 44(e) |
FOREIGN REGISTRATION NUMBER | 102266 |
FOREIGN REGISTRATION COUNTRY NAME | Pakistan |
FOREIGN REGISTRATION DATE | 04/16/1989 |
FOREIGN RENEWAL DATE | 04/16/2011 |
SIGNATURE SECTION | |
RESPONSE SIGNATURE | /David E. Weslow/ |
SIGNATORY NAME | David E. Weslow |
SIGNATORY POSITION | Attorney for Applicant |
SIGNATURE DATE | 11/02/2005 |
FILING INFORMATION SECTION | |
SUBMIT DATE | Wed Nov 02 18:29:16 EST 2005 |
TEAS STAMP | USPTO/OA-XXXXXXXXX-200511 02182916450328-76584605-2 00a2ecbcdbc4cda95fc3cd98b 3f641b43-N-N-200511021827 52889849 |
PTO Form 1957 (Rev 8/2005) |
OMB Control #0651-0050 (Exp. 04/30/2006) |
Application serial no. 76584605 is amended as follows: | |
Mark | |
Applicant proposes to amend the mark as follows: | |
Original:
INTERNATIONAL (Stylized and/or with Design) |
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Proposed: (Stylized and/or with Design, see mark) |
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Argument(s) | |
In response to the substantive refusal(s), please note the following: | |
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 |
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Classification and Listing of Goods/Services | |
Applicant hereby amends the following class of goods/services in the application as follows: | |
Current: Class 030 for 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 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 | |
Original Filing Basis: 1(a); and/or 44(e). | |
Proposed: Class 030 for 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 | |
Section 44(e) Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ Pakistan registration number 102266 registered 04/16/1989 with a renewal date of 04/16/2011 and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended. | |
Response Signature | |
Signature: /David E. Weslow/ Date: 11/02/2005 | |
Signatory's Name: David E. Weslow | |
Signatory's Position: Attorney for Applicant | |
Serial Number: 76584605 | |
Internet Transmission Date: Wed Nov 02 18:29:16 EST 2005 | |
TEAS Stamp:
USPTO/OA-XXXXXXXXX-20051102182916450328- 76584605-200a2ecbcdbc4cda95fc3cd98b3f641 b43-N-N-20051102182752889849 |