| 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 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87670916 |
| LAW OFFICE ASSIGNED | LAW OFFICE 121 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87670916/mark.png |
| LITERAL ELEMENT | SCHRAFFT'S |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
Section 2(d) Refusal – Likelihood of Confusion
An assignment of cited U.S. Registration Nos. 4415120, 4392606, and 4384135 to Applicant was recorded with the USPTO on January 16, 2019 at Reel/Frame 6526/0789. Therefore, Applicant requests that the likelihood of confusion refusal be withdrawn.
Section 2(e)(4) Refusal – Primarily Merely a Surname
Applicant submits that the mark SCHRAFFT’S has acquired distinctiveness under Section 2(f) of the Trademark Act based on (i) Applicant’s ownership of one or more prior active registrations on the Principal Register for the same mark for sufficiently similar goods and/or services; and (ii) Applicant’s substantially exclusive and continuous use of the mark in commerce for at least the five years immediately preceding the date of this response. For these reasons, Applicant requests that the Section 2(e)(4) refusal be withdrawn.
Information About Applicant
In response to the Examining Attorney’s questions listed in the office action, Applicant responds that it has acquired the well-known business operating under the name and registered mark SCHRAFFT’S. Accordingly, upon information and belief, the person or institution named by the mark is connected with the activities performed by Applicant under the applied-for mark.
Conclusion For the reasons set forth above, Applicant respectfully requests that the Examining Attorney approve Applicant’s mark for publication. |
|
| ADDITIONAL STATEMENTS SECTION | |
| SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Five or More Years' Use | SCHRAFFT'S has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement. |
| SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s) | SCHRAFFT'S has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 4415120, 4392606, and 4384135 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /James E. Byrne/ |
| SIGNATORY'S NAME | James E. Byrne |
| SIGNATORY'S POSITION | President |
| DATE SIGNED | 03/19/2019 |
| RESPONSE SIGNATURE | /Kyle J. Glover/ |
| SIGNATORY'S NAME | Kyle J. Glover |
| SIGNATORY'S POSITION | Attorney of Record, Maine Bar Member |
| SIGNATORY'S PHONE NUMBER | 207-791-1100 |
| DATE SIGNED | 03/20/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Mar 20 11:07:28 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0190320110728071337-87670 916-620ffc3415543b74bbf15 3f71a479af60102fcbcaafbab f9e67e0c0ecd36358c72-N/A- N/A-20190319101057720698 |
| 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 09/20/2020) |
Section 2(d) Refusal – Likelihood of Confusion
An assignment of cited U.S. Registration Nos. 4415120, 4392606, and 4384135 to Applicant was recorded with the USPTO on January 16, 2019 at Reel/Frame 6526/0789. Therefore, Applicant requests that the likelihood of confusion refusal be withdrawn.
Section 2(e)(4) Refusal – Primarily Merely a Surname
Applicant submits that the mark SCHRAFFT’S has acquired distinctiveness under Section 2(f) of the Trademark Act based on (i) Applicant’s ownership of one or more prior active registrations on the Principal Register for the same mark for sufficiently similar goods and/or services; and (ii) Applicant’s substantially exclusive and continuous use of the mark in commerce for at least the five years immediately preceding the date of this response. For these reasons, Applicant requests that the Section 2(e)(4) refusal be withdrawn.
Information About Applicant
In response to the Examining Attorney’s questions listed in the office action, Applicant responds that it has acquired the well-known business operating under the name and registered mark SCHRAFFT’S. Accordingly, upon information and belief, the person or institution named by the mark is connected with the activities performed by Applicant under the applied-for mark.
Conclusion
For the reasons set forth above, Applicant respectfully requests that the Examining Attorney approve Applicant’s mark for publication.
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.