Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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PTO Form 1957 (Rev 9/2005)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86337336 ARTISANAL KITCHEN SUPPLY(Standard Characters, see http://tsdr.gov.uspto.report/img/86337336/large) has been amended as follows:

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

This is in response to the Office Action dated October 16, 2014.

 

AMENDMENT

Please amend the identification of goods by deleting the present recitation, and replacing it with the following in International Class 20:

PLASTIC CLIPS FOR SEALING BAGS; STORAGE RACKS; WINE RACKS; SINK MATS; DRAWER ORGANIZERS; CHAIR PADS; NON-METALLIC BOTTLE STOPPERS

 

Please amend the identification of goods by deleting the present recitation, and replacing it with the following in International Class 21:

BEVERAGE GLASSWARE; PORTABLE COOLERS; HOUSEHOLD UTENSILS, NAMELY, SPATULAS; COCKTAIL SHAKERS; SHOT GLASSES; COOKING GRATERS; PANS; MUFFIN TINS; ICE CUBE TRAYS; BAKEWARE; PIZZA STONES; CUTTING BOARDS; KITCHEN UTENSIL CROCKS; SPOON RESTS; MIXING BOWLS; COLANDERS; COOKING STRAINERS; COUNTERTOP HOLDERS FOR PAPER TOWELS; NAPKIN HOLDERS; BOTTLES, SOLD EMPTY; SPICE RACKS; COASTERS, NOT OF PAPER AND OTHER THAN TABLE LINEN; TRIVETS; SALAD BOWLS; TRASH CONTAINERS FOR HOUSEHOLD USE; NON-METAL RECYCLING BINS FOR HOUSEHOLD USE; SALT AND PEPPER SHAKERS; DISH DRYING RACKS; SOAP DISPENSERS; HOUSEHOLD CONTAINERS FOR FOODS; CANISTER SETS; TEA KETTLES; PANS; POTS; SERVING PLATTERS AND BOWLS; DINNERWARE, NAMELY, PLATES, BOWLS, CUPS AND SAUCERS; MUGS; WINE GLASSES; PITCHERS; DECANTERS; PORTABLE BEVERAGE DISPENSERS; NAPKIN RINGS; MOPS; WIRE BRUSHES, NOT BEING MACHINE PARTS; COOKING UTENSILS, NAMELY GRILLS

 

Please amend the identification of goods by deleting the present recitation, and replacing it with the following in International Class 24:

TABLE CLOTHS NOT OF PAPER; TABLE LINEN, NAMELY, COASTERS, NAPKINS, PLACE MATS; DISH CLOTHS

 

REMARKS

Section 2(e)(1) Refusal – Merely Descriptive

The Examining Attorney has refused registration under Section 2(e)(1), 15 U.S.C. § 1052(e)(1) alleging that the mark merely describes a feature of Applicant's goods.  Specifically, the Examining Attorney states that the mark ARTISANAL KITCHEN SUPPLY merely describes the "kitchen related equipment, tools and utensils that have been crafted and designed using traditional skills" which Applicant is providing.  Applicant respectfully disagrees.

Applicant asserts that the ARTISANAL KITCHEN SUPPLY mark is at least a suggestive mark and should not be refused registration on the Principal Register.  Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services.  TMEP § 1209.01(a).  Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services.  Id.  For example, in In re Pennwalt Corp., 173 USPQ 317 (TTAB 1972), DRI-FOOT was held to be suggestive of anti-perspirant deodorant for feet in part because, in the singular, it is not the usual or normal manner in which the purpose of an anti-perspirant and deodorant for the feet would be described.  Also, in In re The Noble Co., 225 USPQ 749 (TTAB 1985), NOBURST was found to be a suggestive mark for liquid antifreeze and rust inhibitor for hot-water-heating systems because it suggested a desired result of using the product rather than immediately informing the purchasing public of a characteristic, feature, function, or attribute. 

In the present case, Applicant's ARTISANAL KITCHEN SUPPLY mark is suggestive because "artisanal" is not a usual or normal manner in which to describe a kitchen or kitchen supply.  The word "artisanal" is defined by the Examining Attorney as "traditional; made using traditional skills."  However, the term "artisanal" is not typically applied to describe kitchens or kitchen supplies.  As shown in Exhibit A, the Oxford University Press defines "artisanal" in the Oxford Dictionaries as either "relating to or characteristic of an artisan" or "(of a product, especially food or drink) made in a traditional or non-mechanized way."  The example phrase Oxford Dictionaries provides for the latter definition is "artisanal cheeses."  In contrast, the goods provided by Applicant are not items which have a "traditional" way of being made; such as ice cube trays, countertop holders for paper towels, trash containers, recycling bins, portable beverage dispensers, etc. to name a few.  Additionally, consumers would not interpret ARTISANAL KITCHEN SUPPLY to mean a traditional or traditionally made kitchen or kitchen supply because "artisanal" simply is not used to describe kitchen or kitchen supply in ordinary parlance.  Therefore, like the DRI-FOOT mark in Pennwalt, ARTISANAL KITCHEN SUPPLY is suggestive because "artisanal" is not normally used to describe "kitchen" or "kitchen supply"; therefore a mental leap is required to reach a conclusion as to the nature of Applicant's goods.

Furthermore, Applicant's mark is suggestive because "artisanal" is also not a normal or usual manner in which to describe the goods listed in the application.  A quick Internet search of "artisanal plastic clips," "artisanal storage racks," "artisanal wine racks," "artisanal spatulas," "artisanal cocktail shakers," and others yields little to no results.  The goods in the application are simply not usually described as artisanal.  The ARTISANAL KITCHEN SUPPLY mark is therefore suggestive as applied to the goods claimed by Applicant in this application. 

ARTISANAL KITCHEN SUPPLY does not merely describe, but rather suggests a desired result of using Applicant's products.  As mentioned above, the term "artisanal" is not being used to describe "kitchen" or "kitchen supply."  Instead, "artisanal" may describe a type of person (i.e., an artisan) or a food or drink (e.g., artisanal cheese).  See Exhibit A.  Therefore, "artisanal," used in the context of this mark and the recited goods, suggests a type of lifestyle (that of an artisan) and/or a type of product that may result from use of the Applicant's products.  Like the NOBURST mark in Noble, ARTISANAL KITCHEN SUPPLY does not merely describe Applicant's products, but requires further thought to understand the suggested result of using Applicant's products.

 

Request for Information-Goods

Because this application is based on intent to use, the claimed products have not yet been manufactured or sold.  The products will all be of typical design for each identified good.  If there are particular products with which the Examining Attorney is concerned, Applicant respectfully requests that they be listed so that Applicant may respond to the specific concerns.

 

Identification of Goods

Given the amendment adopting most of the Examining Attorney's suggestions, Applicant submits that the identification of goods is now in acceptable form.

 

For the above mentioned reasons, Applicant respectfully requests reconsideration of the refusal under § 2(e)(1) and allowance of the application.

*                                  *                                  *

It is believed that the arguments presented herein sufficiently address all bases for refusing registration and that the present Application is now in condition to proceed to registration.  Favorable consideration is therefore respectfully requested.  If the Examining Attorney has any questions concerning this matter, he is encouraged to contact Applicant's counsel by telephone at (908) 654-5000.

No fee is deemed necessary for this response.  However, if the Examining Attorney believes a fee is appropriate, he is authorized to charge Deposit Account No. 12-1095.

EVIDENCE
Evidence in the nature of Oxford University Press definition of "artisanal" has been attached.
Original PDF file:
evi_2079991-20150416141213931385_._artisanal_-_oxford_dictionaries_definition.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for PLASTIC CLIPS FOR SEALING BAGS; STORAGE RACKS; WINE RACKS; SINK MATS; DRAWER ORGANIZERS; CHAIR PADS
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: PLASTIC CLIPS FOR SEALING BAGS; STORAGE RACKS; WINE RACKS; SINK MATS; DRAWER ORGANIZERS; CHAIR PADS; NON-METALLIC BOTTLE STOPPERSClass 020 for PLASTIC CLIPS FOR SEALING BAGS; STORAGE RACKS; WINE RACKS; SINK MATS; DRAWER ORGANIZERS; CHAIR PADS; NON-METALLIC BOTTLE STOPPERS
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 021 for BEVERAGE GLASSWARE; PORTABLE COOLERS; HOUSEHOLD UTENSILS, NAMELY, SPATULAS; COCKTAIL SHAKERS; SHOT GLASSES; BOTTLE STOPPERS; COOKING GRATERS; PANS; MUFFIN TINS; ICE CUBE TRAYS; BAKEWARE (NOT TOYS); PIZZA STONES; CUTTING BOARDS; KITCHEN UTENSIL CROCKS; SPOON RESTS; MIXING BOWLS; COLANDERS; STRAINERS; COUNTERTOP HOLDERS FOR PAPER TOWELS; NAPKIN HOLDERS; BOTTLES, SOLD EMPTY; SPICE RACKS; COASTERS, NOT OF PAPER AND OTHER THAN TABLE LINEN; TRIVETS; SALAD BOWLS; TRASH CONTAINERS FOR HOUSEHOLD USE; NON-METAL RECYCLING BINS FOR HOUSEHOLD USE; SALT AND PEPPER SHAKERS; DISH DRYING RACKS; SOAP DISPENSERS; HOUSEHOLD CONTAINERS FOR FOODS; CANISTER SETS; TEA KETTLES; PANS; POTS; SERVING PLATTERS AND BOWLS; DINNERWARE, NAMELY, PLATES, BOWLS, CUPS AND SAUCERS; MUGS; WINE GLASSES; PITCHERS; DECANTERS; PORTABLE BEVERAGE DISPENSERS; NAPKIN RINGS; MOPS; WIRE BRUSHES, NOT BEING MACHINE PARTS; COOKING UTENSILS, NAMELY, GRILLS
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: BEVERAGE GLASSWARE; PORTABLE COOLERS; HOUSEHOLD UTENSILS, NAMELY, SPATULAS; COCKTAIL SHAKERS; SHOT GLASSES; BOTTLE STOPPERS; COOKING GRATERS; PANS; MUFFIN TINS; ICE CUBE TRAYS; BAKEWARE; BAKEWARE (NOT TOYS); PIZZA STONES; CUTTING BOARDS; KITCHEN UTENSIL CROCKS; SPOON RESTS; MIXING BOWLS; COLANDERS; COOKING STRAINERS; STRAINERS; COUNTERTOP HOLDERS FOR PAPER TOWELS; NAPKIN HOLDERS; BOTTLES, SOLD EMPTY; SPICE RACKS; COASTERS, NOT OF PAPER AND OTHER THAN TABLE LINEN; TRIVETS; SALAD BOWLS; TRASH CONTAINERS FOR HOUSEHOLD USE; NON-METAL RECYCLING BINS FOR HOUSEHOLD USE; SALT AND PEPPER SHAKERS; DISH DRYING RACKS; SOAP DISPENSERS; HOUSEHOLD CONTAINERS FOR FOODS; CANISTER SETS; TEA KETTLES; PANS; POTS; SERVING PLATTERS AND BOWLS; DINNERWARE, NAMELY, PLATES, BOWLS, CUPS AND SAUCERS; MUGS; WINE GLASSES; PITCHERS; DECANTERS; PORTABLE BEVERAGE DISPENSERS; NAPKIN RINGS; MOPS; WIRE BRUSHES, NOT BEING MACHINE PARTS; COOKING UTENSILS, NAMELY GRILLS; COOKING UTENSILS, NAMELY, GRILLSClass 021 for BEVERAGE GLASSWARE; PORTABLE COOLERS; HOUSEHOLD UTENSILS, NAMELY, SPATULAS; COCKTAIL SHAKERS; SHOT GLASSES; COOKING GRATERS; PANS; MUFFIN TINS; ICE CUBE TRAYS; BAKEWARE; PIZZA STONES; CUTTING BOARDS; KITCHEN UTENSIL CROCKS; SPOON RESTS; MIXING BOWLS; COLANDERS; COOKING STRAINERS; COUNTERTOP HOLDERS FOR PAPER TOWELS; NAPKIN HOLDERS; BOTTLES, SOLD EMPTY; SPICE RACKS; COASTERS, NOT OF PAPER AND OTHER THAN TABLE LINEN; TRIVETS; SALAD BOWLS; TRASH CONTAINERS FOR HOUSEHOLD USE; NON-METAL RECYCLING BINS FOR HOUSEHOLD USE; SALT AND PEPPER SHAKERS; DISH DRYING RACKS; SOAP DISPENSERS; HOUSEHOLD CONTAINERS FOR FOODS; CANISTER SETS; TEA KETTLES; PANS; POTS; SERVING PLATTERS AND BOWLS; DINNERWARE, NAMELY, PLATES, BOWLS, CUPS AND SAUCERS; MUGS; WINE GLASSES; PITCHERS; DECANTERS; PORTABLE BEVERAGE DISPENSERS; NAPKIN RINGS; MOPS; WIRE BRUSHES, NOT BEING MACHINE PARTS; COOKING UTENSILS, NAMELY GRILLS
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 024 for TABLE CLOTHS NOT OF PAPER; TABLE LINEN, NAMELY, COASTERS, NAPKINS, PLACE MATS; DISH CLOTH
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: TABLE CLOTHS NOT OF PAPER; TABLE LINEN, NAMELY, COASTERS, NAPKINS, PLACE MATS; DISH CLOTH; DISH CLOTHSClass 024 for TABLE CLOTHS NOT OF PAPER; TABLE LINEN, NAMELY, COASTERS, NAPKINS, PLACE MATS; DISH CLOTHS
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /Gregg A. Paradise/     Date: 04/16/2015
Signatory's Name: GREGG A. PARADISE
Signatory's Position: ATTORNEY OF RECORD, NJ BAR MEMBER

Signatory's Phone Number: 908.654.5000

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.

        
Serial Number: 86337336
Internet Transmission Date: Thu Apr 16 15:20:49 EDT 2015
TEAS Stamp: USPTO/ROA-XXX.XX.X.X-2015041615204913490
6-86337336-5304ffe8ce687be11368f88145d1b
41b369fa844a834bd5231693b8403e6fe28e-N/A
-N/A-20150416145650401589