Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86860062 YUMMIES (Stylized and/or with Design, see http://uspto.report/TM/86860062/mark.png) has been amended as follows:

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

This communication is in response to the Office Action issued by the United States Patent and Trademark Office (USPTO) on February 14, 2017, maintaining a Section 2(d) refusal. The Examiner erroneously concludes that the pending application for YUMMIES AND DESIGN (Serial No. 86860062) (the ?Mark?) is confusingly similar with the following trademarks: YUMMIES with a heart design (Reg. No. 1458548); SUPER YUMMYS (Reg. No. 4957659); and YUMMY?S CHOICE (Reg. No. 4025559). Based on the below discussion, Applicant submits that there is no likelihood of confusion, and as such, registration is warranted for YUMMIES and Design in Classes 29 and 30. THERE IS NO LIKELIHOOD OF CONFUSION The only similar element between the Mark and those cited by the Trademark Examiner is the word YUMMIES/YUMMY. The term YUMMY may be deemed as descriptive of the goods identified by the Mark. As a descriptive term, it is not inherently distinctive and as such is considered a weak term. ?Whether a mark is classified as ?strong? or ?weak? is a very important element in deciding likelihood of confusion. If the common element of conflicting marks is a word that is ?weak? then this reduces the likelihood of confusion.? J. Thomas McCarthy, 4McCarthy on Trademarks and Unfair Competition ?23:48 (4th ed.) (emphasis added). In this case, the term YUMMIES may be deemed as descriptive of the product the marks identify. As such, this reduces the likelihood of confusion. Moreover, the following marks were found to be not confusingly similar although both have the same term for the same products: BLACK LEAF v. GREEN LEAF, both for plant sprays Smith v. Tobacco By-Products and Chemical Corp., 44 C.C.P.A. 880, 188?190, 243 F.2d 188, 113 U.S.P.Q. 339 (1957)(?[T]he word ?Leaf,? as applied to a plant spray is not arbitrary, but is definitely suggestive of the use of which the product is to be put ? . It has frequently been held that trademarks, comprising two words or a compound word, are not confusingly similar even though they have in common one word or part which is descriptive or suggestive of the nature of the goods to which the marks are applied, or of the use to which such goods are to be put.?). FREEZOMINT v. FRAPPEMINT, both for creme de menthe cordials Societe Anonyme De La Grande Distillerie E. Cusenier Fils Aine & Cie. v. Julius Wile Sons & Co., 161 F. Supp. 545, 547, 117 U.S.P.Q. 257 (S.D. N.Y. 1958) (?In the instant case the term ?mint? which is common to both marks, is concededly descriptive and common to the trade and even when joined with a more fanciful prefix is not likely to provide the source of confusion.?). MAGAFLUX instrument for magnetic testing v. SONOFLUX magnetic inspection instrument Magnaflux Corp. v. Sonoflux Corp., 43 C.C.P.A. 868, 231 F.2d 669, 670?671, 109 U.S.P.Q. 313 (1956) (?Clearly appellant's registration and use of a trade-mark including the syllable ?flux,? for an apparatus whose operation depends upon magnetic flux, should not preclude others who market the same type of device from employing that syllable as a portion of their marks.?). MAGNA DOODLE drawing toy v. DOODLE PRO drawing toy Pilot Corp. of America v. Fisher-Price, Inc., 501 F. Supp. 2d 292, 83 U.S.P.Q.2d 1784 (D. Conn. 2007) (Summary dismissal of trademark infringement claim: ?[T]he term ?Doodle? is largely descriptive ? .?). Clearly, the courts and the United States Patent and Trademark Office have adopted and put in use this legal theory. It is Applicant?s belief that the same should be done in this case. Moreover, there are currently more than 100 trademarks before the USPTO in Classes 29 and 30 containing the term YUMMY/YUMMIES, many of which have been rightfully registered. Evidence of similar marks used by third parties on similar goods and/or services ?is admissible and relevant to show that the mark is relatively weak and entitled to only a narrow scope of protection.? 2McCarthy on Trademarks and Unfair Competition ?11:88 (4th ed.) Such third party uses show that ?customers have become so conditioned by a plethora of such similar marks that customers ?have been educated to distinguish between different [such] marks on the basis of minute distinctions.? Id. ?A mark that is hemmed in on all sides by similar marks on similar goods or services cannot be very ?distinctive?. It is merely one of a crowd of similar marks. In such a crowd, customers will not likely be confused between any two of the crowd and may have learned to carefully pick out one from the other.? 2McCarthy on Trademarks and Unfair Competition ?11:85 (4th ed.) Evidently, more than one hundred trademarks before the USPTO constitutes a crowd of similar marks. ?In a ?crowded? field of look-alike marks, each member of the crowd is relatively ?weak? in its ability to prevent use by others in the crowd?. 2McCarthy on Trademarks and Unfair Competition ?11:85 (4th ed.) In such a case, ?competitors in this field may come closer to such weak marks without violating the owner?s rights therein that would be the case with a stronger mark.? In re the Lucky Company, 209 U.S.P.Q. 422, 423, 1980 WL 39048 (T.T.A.B. 1980) The other elements included in Applicant?s Mark, such as the styling of the font and the face and crown design, are sufficient to distinguish the Mark from any other trademark containing the term YUMMY/YUMMIES, including those cited by the Trademark Examiner in the Office Action. As such, YUMMIES and Design (Serial No. 86860062) should be registered in the USPTO.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 029 for Latin American style food products, namely, processed flavored plantains, processed flavored yucca ("cassava"), fried pork with salt and chili, potato flakes of different flavors
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/01/2011 and first used in commerce at least as early as 06/01/2011 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Latin American style food products, namely, processed flavored plantains, processed flavored yucca ("cassava"), fried pork with salt and chili, potato flakes of different flavors; Latin American style food products, namely, processed flavored plantains slices, processed flavored yucca chips, fried pork with salt and chili, potato flakes of different flavors, Latin American style food products, namely, fired flavored peanuts and baked flavored peanutsClass 029 for Latin American style food products, namely, processed flavored plantains slices, processed flavored yucca chips, fried pork with salt and chili, potato flakes of different flavors, Latin American style food products, namely, fired flavored peanuts and baked flavored peanuts
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/01/2011 and first used in commerce at least as early as 06/01/2011 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 030 for Latin American style food products, namely fried flavored peanuts and baked flavored peanuts; fried corn-based tortilla snack foods with different flavors; corn-based snack foods, namely, extruded corn with different flavors; popcorn of different flavors
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/01/2011 and first used in commerce at least as early as 06/01/2011 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Latin American style food products, namely fried flavored peanuts and baked flavored peanuts; Fried corn tortilla snack foods with different flavors; fried corn-based tortilla snack foods with different flavors; corn-based snack foods, namely, extruded corn with different flavors; popcorn of different flavors.; popcorn of different flavorsClass 030 for Fried corn tortilla snack foods with different flavors; corn-based snack foods, namely, extruded corn with different flavors; popcorn of different flavors.
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/01/2011 and first used in commerce at least as early as 06/01/2011 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /CAS/     Date: 04/04/2017
Signatory's Name: Cristina Arenas Solis
Signatory's Position: Attorney of Record, Puerto Rico bar member

Signatory's Phone Number: 787-766-7000

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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.

        
Serial Number: 86860062
Internet Transmission Date: Tue Apr 04 15:42:21 EDT 2017
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2017040415422149
4126-86860062-580f23acedd46ddf732f9ec459
ad865e83839763be6a20f1181a2b15716545eda8
-N/A-N/A-20170404152551454572