TEAS Request Reconsideration after FOA

PTO Form (Rev 4/2000)

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

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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. 77968077 has been amended as follows:

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

In the final office action of November 19, 2010, the examining attorney has rejected the Applicant’s mark BROWN COW based on likelihood of confusion with Registration Nos. 0294715, 2036725, and 3205083.

Identification and Classification of Goods

The Applicant proposes that the examining attorney amend the goods in Class 30 as follow:

International Class 30: chocolate syrup intended to be used as the basic flavor for malted milks, processed cereal-derived food to be used as breakfast cereal; cereal-based snack foods; pancakes; grain based snack foods; preparations made from cereal, namely, corn flakes; processed cereal based food to be used as a breakfast food; waffles; corn flake crumbs; flaked breakfast cereal.

Applicant has amended Class 30 as the Examiner has suggested except for the inclusion of --chocolate syrup intended to be used as the basic flavor for malted milks--.

Applicant wishes to remind the Examining Attorney that Registration No. 0256207 for BROWN COW owned by Societe Des Produits Nestle S.A. co-existed on the register for years without evidence of actual confusion with Registration Nos. 2036725 and 3205083 both for BROWN COW.  Thus, Applicant’s present identification of goods, i.e., chocolate syrup intended to be used as the basic flavor for malted milks, should be registrable because it is identical to the 0256207 registration.   The other goods have been indicated as registrable by the Examining attorney, namely, processed cereal-derived food to be used as breakfast cereal; cereal-based snack foods; pancakes; grain based snack foods; preparations made from cereal, namely, corn flakes; processed cereal based food to be used as a breakfast food; waffles; corn flake crumbs; flaked breakfast cereal.

 

Applicant's attorney urges the Examining Attorney to contact him to resolve any further issues at (518) 220-1850.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 030 for Flavorings, other than essential oils, for beverages; Confectioneries, namely, snack foods, namely, chocolate; Confectionery made of sugar; Chocolate; Chocolate-based beverages; Chocolate-based beverages with milk; Chocolate powder; Coffee beverages with milk; Coffee based beverages; Processed cereal-derived food product, to be used as breakfast cereal; Cereal-based snack foods; Pancakes; Grain based snack foods; Preparations made from cereal, namely corn flakes; Processed cereal based food to be used as a breakfast food; Snack food or ingredient for making other foods; Cookies; Biscuits; Toaster pastries; Waffles; Table syrup; Corn Flake Crumbs; Flaked breakfast cereal; Candies; Chocolate candy; Milk-shakes and powder for the preparation of milk-shakes, except frozen confections and yogurt and yogurt 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)).

Proposed:
Tracked Text Description: Flavorings, other than essential oils, for beverages; Chocolate syrup intended to be used as the basic flavor for malted milks, processed cereal-derived food to be used as breakfast cereal; Confectioneries, namely, snack foods, namely, chocolate; cereal-based snack foods; Confectionery made of sugar; pancakes; Chocolate; grain based snack foods; Chocolate-based beverages; preparations made from cereal, namely, corn flakes; Chocolate-based beverages with milk; processed cereal based food to be used as a breakfast food; Chocolate powder; waffles; Coffee beverages with milk; corn flake crumbs; Coffee based beverages; flaked breakfast cereal.; Processed cereal-derived food product, to be used as breakfast cereal; Preparations made from cereal, namely corn flakes; Snack food or ingredient for making other foods; Cookies; Biscuits; Toaster pastries; Table syrup; Flaked breakfast cereal; Candies; Chocolate candy; Milk-shakes and powder for the preparation of milk-shakes, except frozen confections and yogurt and yogurt beveragesClass 030 for Chocolate syrup intended to be used as the basic flavor for malted milks, processed cereal-derived food to be used as breakfast cereal; cereal-based snack foods; pancakes; grain based snack foods; preparations made from cereal, namely, corn flakes; processed cereal based food to be used as a breakfast food; waffles; corn flake crumbs; flaked breakfast cereal.
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)).

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Arlen L. Olsen/     Date: 03/09/2011
Signatory's Name: Arlen L. Olsen
Signatory's Position: Attorney of record, NY Bar Member

The signatory has confirmed that he/she is a Canadian attorney/agent, or an associate thereof, who represents an applicant located in Canada; and he/she is either registered with the USPTO and in good standing as as patent agent under 37 C.F.R. §11.6(c) or has been granted reciprocal recognition under 37 C.F.R. §11.14(c) by the USPTO's Office of Enrollment and Discipline; and that to the best of his/her knowledge, if prior to his/her appointment another Canadian attorney/agent or a U.S. attorney 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 Canadian attorney/agent or U.S. attorney 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: 77968077
Internet Transmission Date: Wed Mar 09 14:51:04 EST 2011
TEAS Stamp: USPTO/RFR-XX.XX.XXX.XXX-2011030914510446
8598-77968077-480fad9c61dd6233e5df4f6a96
1cc523f93-N/A-N/A-20110309144338807266