TEAS Request Reconsideration after FOA

PTO Form (Rev 4/2000)

OMB No. 0651-.... (Exp. 08/31/2004)

---

PTO Form (Rev 4/2000)

OMB No. 0651-.... (Exp. 08/31/2004)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 77114350 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

AMENDMENT

This amendment is being filed in response to the Office Action dated June 26, 2008.  The Examining Attorney has required clarification of the identification of services.  Please amend the above identified Application as follows:

Please amend the identification of services to read as follows:

Containers for household use; kitchen utensils, namely, strainers, sieves, tea and coffee filters not of paper being part of non-electric coffee makers, cocoa shakers, non-electric milk frothers, manually operated milk frothers, non-electric coffee grinders, tea infusers, tea strainers and caddy spoons, food covers in the nature of dish, plate and pan covers; beverage glassware; crockery not being of precious metals, namely, mugs, cups, tea cups and saucers, ice cream bowls, bowls, plates, dishes, sugar bowls, cream jugs, milk jugs, filter mugs, dishes and trays, tea tidies; porcelain, ceramic and earthenware mugs, cups, tea cups and saucers, plates, dishes, bowls, filter mugs, tea tidies, namely, bowls and plates, teapots and coffee pots, sugar bowls, cream jugs, milk jugs and trays, in Class 021.

With regard to the wording “caddy spoons,” the Examining Attorney has indicated that this term is indefinite and more specificity is required.  The Applicant submits that the term “caddy” is commonly understood to mean “a small box, can, or chest used especially to keep tea in; a container or device for storing or holding objects when they are not in use.”  See Exhibit A (merriam-webseter.com definition).  A “caddy spoon,” as the term is used by applicant, is commonly understood and used to mean a spoon which is generally kept in or used with a caddy, such as a tea caddy.  See Exhibit A (search materials showing usage of the term “caddy spoons”).  Accordingly, Applicant submits that “caddy spoons” is the common commercial name of such utensils and they properly belong in Class 21.

ADDITIONAL REQUIREMENTS

In response to the requirement of a copy of the foreign registration, Applicant submits the attached copy of the CTM Registration Certificate for WHITTARD OF CHELSEA, No. 003305364, registered on 17/12/2004.

EVIDENCE
Evidence in the nature of Definition of "caddy" from merriam-webster.com; printout from Applicant's website showing use of the term "caddy spoon" and additional internet searches showing common usage of the term "caddy spoon." has been attached.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 008 for (Based on Intent to Use) Tableware not being of precious metals, namely, knives, forks and spoons
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: 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 submits a copy of [ European Community registration number 003305364 registered 12/17/2004 with a renewal date of __________ and an expiration date of 08/11/2013 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 008 for (Based on Intent to Use) Tableware not being of precious metals, namely, knives, forks and spoons
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: 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 submits a copy of [ European Community registration number 003305364 registered 12/17/2004 with a renewal date of __________ and an expiration date of 08/11/2013 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU0-63146184126-153504998_._Whittard_of_Chelsea_Certificate.pdf
Converted PDF file(s) (5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 021 for (Based on 44(e)) Containers for household use; kitchen utensils, namely, tampas, strainers, sieves, tea and coffee filter baskets, cocoa shakers, milk frothers, non-electric coffee grinders, tea infusers, tea strainers and caddy spoons, food covers; beverage glassware; crockery not being of precious metals, namely, mugs, cups, tea cups and saucers, ice cream bowls, bowls, plates, dishes, sugar bowls, cream jugs, milk jugs, filter mugs, dishes and trays, tea tidies; porcelain, ceramic and earthenware mugs, cups, tea cups and saucers, plates, dishes, bowls, filter mugs, tea tidies, teapots and coffee pots, sugar bowls, cream jugs, milk jugs and trays
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: 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 submits a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 021 for (Based on 44(e)) Containers for household use; kitchen utensils, namely, strainers, sieves, tea and coffee filters not of paper being part of non-electric coffee makers, cocoa shakers, non-electric milk frothers, manually operated milk frothers, non-electric coffee grinders, tea infusers, tea strainers and caddy spoons, food covers in the nature of dish, plate and pan covers; beverage glassware; crockery not being of precious metals, namely, mugs, cups, tea cups and saucers, ice cream bowls, bowls, plates, dishes, sugar bowls, cream jugs, milk jugs, filter mugs, dishes and trays, tea tidies; porcelain, ceramic and earthenware mugs, cups, tea cups and saucers, plates, dishes, bowls, filter mugs, tea tidies, namely, bowls and plates, teapots and coffee pots, sugar bowls, cream jugs, milk jugs and trays, in Class 021.
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: 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 submits a copy of [ European Community registration number 003305364 registered 12/17/2004 with a renewal date of __________ and an expiration date of 08/11/2013 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU1-63146184126-153504998_._Whittard_of_Chelsea_Certificate.pdf
Converted PDF file(s) (5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 030 for (Based on 44(e)) Tea, cocoa, coffee, coffee substitutes, instant tea, tea-based beverages, cocoa-based beverages, coffee-based beverages; chocolate; products containing chocolate, namely, hot drinking chocolate, chocolate-based beverages, chocolate flavored coffee and coffee beans, chocolate cappuccino, chocolate chai, chocolate flavored tea, chocolate flavored black tea, chocolate honey bush tea; chocolate and confectionary sprinkles and toppings for hot beverages
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: 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 submits a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 030 for (Based on 44(e)) Tea, cocoa, coffee, coffee substitutes, instant tea, tea-based beverages, cocoa-based beverages, coffee-based beverages; chocolate; products containing chocolate, namely, hot drinking chocolate, chocolate-based beverages, chocolate flavored coffee and coffee beans, chocolate cappuccino, chocolate chai, chocolate flavored tea, chocolate flavored black tea, chocolate honey bush tea; chocolate and confectionary sprinkles and toppings for hot beverages
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: 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 submits a copy of [ European Community registration number 003305364 registered 12/17/2004 with a renewal date of __________ and an expiration date of 08/11/2013 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU2-63146184126-153504998_._Whittard_of_Chelsea_Certificate.pdf
Converted PDF file(s) (5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for (Based on 44(e)) Retail store services, online retail store services and mail order catalogue services in the fields of food, beverages, household items, cookware, tableware and crockery, glassware, ceramics, coffee machines; product and service information to others
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: 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 submits a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 035 for (Based on 44(e)) Retail store services, online retail store services and mail order catalogue services in the fields of food, beverages, household items, cookware, tableware and crockery, glassware, ceramics, coffee machines; product and service information to others
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: 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 submits a copy of [ European Community registration number 003305364 registered 12/17/2004 with a renewal date of __________ and an expiration date of 08/11/2013 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU3-63146184126-153504998_._Whittard_of_Chelsea_Certificate.pdf
Converted PDF file(s) (5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5


SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Daniel K. Hampton/      Date: 12/22/2008
Signatory's Name: Daniel K. Hampton
Signatory's Position: Attorney of Record

Request for Reconsideration Signature
Signature: /Daniel K. Hampton/     Date: 12/22/2008
Signatory's Name: Daniel K. Hampton
Signatory's Position: Attorney of record, MA bar member

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 77114350
Internet Transmission Date: Mon Dec 22 15:45:25 EST 2008
TEAS Stamp: USPTO/RFR-XX.XXX.XXX.XXX-200812221545251
57828-77114350-4306e815779d4693be736a8a8
ad389bf43-N/A-N/A-20081222153504998610