TEAS Request Reconsideration after FOA

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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

---

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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88123618 TASTY (Stylized and/or with Design, see http://uspto.report/TM/88123618/mark.png) has been amended as follows:

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

IN THE UNITED STATES PATENT & TRADEMARK OFFICE

 

 

In re Application of                                                    :

            :

BuzzFeed, Inc.                                                            :           Examining Attorney: 

:           Jenny Park

Serial No.:  88123618                                                 :

            :           Law Office 104

Filed:  September 19, 2018                                         :

            :

Mark: TASTY Stylized                                             :

                                                                                    :

Class: 30                                                                     :    

RESPONSE AND REQUEST FOR RECONSIDERATION

 

This is in response to the Office Action dated July 31, 2019, in which the Examining Attorney made FINAL the refusal to register Applicant’s TASTY Stylized mark (“Applicant’s Mark”) on the ground that the mark merely describes a characteristic of the goods, under Trademark Act Section 2(e)(1).  Applicant respectfully submits that the subject mark is suggestive and not merely descriptive of the goods provided.

In the FINAL Office Action the Examining Attorney has cited additional instances of third-party registrations in Class 30 where the term “TASTY” is disclaimed, or the marks are registered on the Supplemental Register, or under Section 2(f).  The Examining Attorney goes on to argue these third-party registrations are probative evidence on the issue of descriptiveness.  E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).  Under the same legal standard, Applicant will present very recently allowed applications and registrations for TASTY-formative marks for food, and food-related goods that have achieved registration on the Principal Register—without a disclaimer, 2(f) claims, or placement on the Supplemental Register—as probative evidence of the inherent distinctiveness of Applicant’s mark.

             While the question to be answered is whether the subject mark functions as a trademark on its own merits, it is nonetheless instructive to note that the Office has accepted dozens of “TASTY” marks in Class 30 on the Principal Register, without a disclaimer, 2(f) claims, or placement on the Supplemental Register.  Although Applicant acknowledges those third-party registrations presented by the Examining Attorney, here we present seven (7) additional recently allowed or registered marks in Class 30, all of which were examined and approved by the Office in the past year (third-party registrations attached). 

Ref. / Mark / Owner	Filing Details	Classes: Goods
US-1   HELLA TASTY   OUTSTANDING FOODS, INC.	App 88500404 App 03-JUL-2019	Class 30: RICE-BASED SNACK FOODS
US-2   TASTY AS HELL   OUTSTANDING FOODS, INC.	App 88494268 App 28-JUN-2019	Class 30: RICE-BASED SNACK FOODS
US-3   TASTY TYKES   LAKES VENTURE, LLC	App 88341597 App 15-MAR-2019 Reg 5862798 Reg 17-SEP-2019	Class 30: CHEESE FLAVORED PUFFED CORN SNACKS; CORN-BASED SNACK FOODS; MULTIGRAIN-BASED SNACK FOODS; RICE-BASED SNACK FOOD
US-4   RICE & TASTY   VEETEE RICE LIMITED	App 88282101 App 30-JAN-2019 Reg 5834105 Reg 13-AUG-2019	Class 30: RICE
US-5   THAT'S TASTY & Design   SHENANDOAH GROWERS, INC.	App 88224251 App 11-DEC-2018	Class 30: ORGANIC HERB PUREES; DRIED ORGANIC HERBS
US-6   THAT'S TASTY   SHENANDOAH GROWERS, INC.	App 88224260 App 11-DEC-2018	Class 30: HERB PUREES; DRIED HERBS
US-7   TASTY CHEFS   CORFU - TASTY GYROS, INC.	App 88166313 App 23-OCT-2018	INT. CL. 30 COOKIES; CRACKERS; BISCOTTIS; GYROS IN THE NATURE OF SANDWICHES CONTAINING THINLY-SLICED LAMB;

 

With regard to the Examining Attorney’s evidence, Applicant cannot account for why those third-parties elected not to challenge the disclaimer requirement put to them by the Office, or their placement on the Supplemental Register.  However, it must be acknowledged that many third-parties do not have the resources or capacity to challenge these refusals, and instead take the path of least resistance.  The third-party registrations presented by Applicant and the Examining Attorney—viewed in their totality—indicates Applicant’s TASTY Stylized mark is at worst suggestive of the subject goods, and that consumers are capable of recognizing it as more than merely descriptive of its Class 30 goods. 

Conclusion

            For the reasons presented here, Applicant respectfully requests that the Examining Attorney withdraw the refusal to register the subject application, and move it on for publication in the Official Gazette.

EVIDENCE
Evidence in the nature of Argument and Exhibit A has been attached.
Original PDF file:
evi_20447535-20200131112544950580_._OAR_2e_-_RFR_-_TASTY_Stylized_in_Class_30.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_20447535-20200131112544950580_._Exhibit_A__88123606_.pdf
Converted PDF file(s) ( 8 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8

The applicant's current attorney information: Michelle Mancino Marsh. Michelle Mancino Marsh of Arent Fox LLP, is located at

      1301 Avenue of the Americas, Floor 42
      New York, New York 10019
      US
The docket/reference number is 039779.

The phone number is 212-484-3900.

The fax number is 212-484-3990.

The email address is tmdocket@arentfox.com

The applicants proposed attorney information: Michelle Mancino Marsh. Michelle Mancino Marsh of Arent Fox LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1301 Avenue of the Americas, Floor 42
      New York, New York 10019
      United States
The docket/reference number is 039779.00152.

The phone number is 212-484-3900.

The fax number is 212-484-3990.

The email address is tmdocket@arentfox.com

Michelle Mancino Marsh submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: Michelle Mancino Marsh. Michelle Mancino Marsh of Arent Fox LLP, is located at

      1301 Avenue of the Americas, Floor 42
      New York, New York 10019
      US
The docket/reference number is 039779.

The phone number is 212-484-3900.

The fax number is 212-484-3990.

The email address is tmdocket@arentfox.com

The applicants proposed correspondence information: Michelle Mancino Marsh. Michelle Mancino Marsh of Arent Fox LLP, is located at

      1301 Avenue of the Americas, Floor 42
      New York, New York 10019
      United States
The docket/reference number is 039779.00152.

The phone number is 212-484-3900.

The fax number is 212-484-3990.

The email address is tmdocket@arentfox.com; michelle.marsh@arentfox.com; peter.menchini@arentfox.com; portia.gordon@arentfox.com

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Peter Menchini/     Date: 01/31/2020
Signatory's Name: Peter Menchini
Signatory's Position: Attorney of Record, Associate, Arent Fox LLP, New York Bar member

Signatory's Phone Number: 212.457.5472

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed 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.

Mailing Address:    Michelle Mancino Marsh
   Arent Fox LLP
   
   1301 Avenue of the Americas, Floor 42
   New York, New York 10019
Mailing Address:    Michelle Mancino Marsh
   Arent Fox LLP
   1301 Avenue of the Americas, Floor 42
   New York, New York 10019
        
Serial Number: 88123618
Internet Transmission Date: Fri Jan 31 14:47:48 EST 2020
TEAS Stamp: USPTO/RFR-XXX.X.XX.XX-202001311447481093
04-88123618-70046418c90ce44b7729f54982b3
edfb3fe6e8d6e732db5d4b4eace6513fcd36d-N/
A-N/A-20200131142853532579