To: | The Honey Baked Ham Company, LLC (tmadmin@kilpatricktownsend.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88197911 - ·HONEY BAKED HAM· WORLD'S BEST HAM - 1115772 |
Sent: | 1/3/2019 12:49:28 PM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88197911
MARK: ·HONEY BAKED HAM· WORLD'S BEST HAM
|
|
CORRESPONDENT ADDRESS: KILPATRICK TOWNSEND & STOCKTON LLP |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: The Honey Baked Ham Company, LLC
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 1/3/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
IDENTIFICATION OF GOODS REQUIREMENT
In addition, the identification for “gift baskets containing ham, cheese, prepared nuts, soup, preserved fruit, crackers, candy, cookies, biscuits” in International Class 29 is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(a), 1402.01, 1402.03. Gift baskets generally consist of a group of components that (1) share a common theme, or (2) are used to make a particular product. See TMEP §1401.05(a). The type of gift basket and the gift basket’s principal components generally determine classification. Applicant must amend the identification to enable appropriate classification using the guidelines below. See id.
For gift baskets consisting of a group of components that share a common theme, the identification should specify the theme followed by the wording “comprising” or “comprised of” and a list of the components that make up the gift baskets, with all of the components in the predominant class listed first. See id. Generally, a gift baskets is classified in the same international class as the majority of the components in the gift baskets. See id.
If there are no components that are more dominant than another in a shared-theme gift baskets, the first component listed after the wording “comprising” or “comprised of” will determine the class of the gift baskets. See id.
For gift baskets that make a particular product, the identification must specify the product being made using the following format: “gift baskets for making [specify item]. See id. Generally, this type of gift baskets is classified in the international class of the product being made.
Applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 29 for “deli meats” and “cheese” See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods may not later be reinserted. TMEP §1402.07(e).
Applicant may substitute the following wording, if accurate (suggestions in bold):
International Class 29: Ham; ham slices; ham portions; prepared meals consisting of ham; ham packaged on trays; gift baskets containing ham; pork; deli meats;
cheese; prepared food, namely, cheese, preserved vegetables, ham, meat, and preserved fruit packaged on trays; gift baskets containing ham, cheese, prepared nuts, soup, preserved fruit, cracker,
candy, cookies, biscuits sold together as a unit; beef, namely, beef roast, beef steaks, beef tenderloin, prime rib, beef wellington; pork, namely, ham, pork roast, barbecue
pork roast, pork loin, pork ribs, pork chops, barbecue pork; bacon; vegetable salads; baked beans; meat salads, including ham salad, chicken salad, and turkey salad; deli meats; sliced turkey;
sliced ham; cheese; prepared foods, namely, casseroles mainly consisting of vegetables, potatoes, beans or fruits; mashed potatoes; au gratin potatoes; frozen fruits, namely, cinnamon apples;
sweet potato soufflé; prepared food consisting primarily of vegetables, namely, green bean casserole; fruit salad; fruit preserves; cheese spreads; jams, jellies; soup mixes; lettuce, processed:
garden salads; dips, pastries with meat, pastries with vegetables
International Class 30: pastries with meat; pastries with vegetables
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least 4 classes; however, applicant submitted a fees sufficient for only 3 classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
DISCLAIMER REQUIREMENT
In this case, applicant must disclaim the “HONEY BAKED HAM WORLD’S BEST HAM EST 1987” and “CO” because it is not inherently distinctive. These un-registrable terms merely designate the legal character or family business structure of an entity and do not indicate the source of applicant’s goods and services. See 15 U.S.C. §§1051-1053, 1127; In re Piano Factory Grp., Inc., 85 USPQ2d 1522, 1526 (TTAB 2006); In re Patent & Trademark Servs., Inc., 49 USPQ2d 1537, 1539-40 (TTAB 1998); TMEP §1213.03(d).
The attached evidence from Oxford Dictionary defines “HONEY” as “sweet, sticky yellowish-brown fluid made by bees and other insects from nectar collected from flowers”; “BAKED” as “(as food) cooked by dry heat in an oven”; “HAM” as “meat from the upper part of a pig's leg salted and dried or smoked.” Thus, the wording merely describes applicant’s goods and services because sells goods, such as ham, that are baked in, or baked with honey. Moreover, this wording describes a feature of goods offers through applicant’s various restaurant services and through its mail order services.
In addition, “WORLD’S BEST HAM” is laudatory and descriptive of the alleged merit of applicant’s goods and services. See 15 U.S.C. §§1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1256, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012); TMEP §1209.03(k).
“Self-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods [or services].” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d at 1256, 103 USPQ2d at 1759 (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)). Thus, wording such as “ultimate,” “best,” “greatest,” and the like are generally considered laudatory and descriptive of an alleged superior quality of the goods and/or services. See In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re The Boston Beer Co., 198 F.3d at 1373-74, 53 USPQ2d at 1058-59; TMEP §1209.03(k).
The attached evidence from Oxford Dictionary defines “WORLD” as “the earth, together with all of its countries, peoples, and natural features”; “BEST” as “of the most excellent, effective, or desirable type or quality”; and “HAM” as “meat from the upper part of a pig's leg salted and dried or smoked.” Therefore, this wording is merely laudatory of the supposed superior quality of applicant’s goods and services.
Furthermore, the attached evidence from Oxford and MacMillian Dictionary shows that the terms “EST 1987” is commonly used by businesses or other organization to show when it was started. Because consumers are accustomed to seeing this term commonly used by many businesses to impart information to consumers, they will perceive this term or slogan only as informational matter rather than as a trademark or service mark that identifies the source of applicant’s goods and services. See 15 U.S.C. §§1051-1053, 1127; In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006); TMEP §§807.14(a), 1202.04, 1213.03(a), (b).
Lastly, “CO” merely designates the legal character or family business structure of an entity and does not indicate the source of the applicant’s goods and services. Business type designations and abbreviations such as “Corporation,” “Inc.,” “Company,” “LLC,” and “Ltd.” or family business designations such as “& Sons” or “Bros.” must be disclaimed, because they merely indicate applicant’s business type or structure and generally have no source-indicating capacity. TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888); In re Piano Factory Grp., Inc., 85 USPQ2d at 1526; In re Patent & Trademark Servs., Inc., 49 USPQ2d at 1539-40.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “HONEY BAKED HAM WORLD’S BEST HAM EST 1987” and “CO” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
MARK DESCRIPTION
The following description is suggested, if accurate (amendments in bold): The mark consists of the words "HONEY BAKED HAM WORLD'S BEST HAM" written around a medallion made up of small dots with a dot between the words “HONEY and WORLD’S and a dot between the words “HAM”. Inside the medallion is a drawing of a pig. Inside the drawing of the pig are the letters "HBH" positioned horizontally. Inside the drawing of the pig and next to the letters "HBH" are the letters "CO" positioned vertically. Above the drawing of the pig is the term "EST". Below the drawing of the pig is the number "1957".
DRAWING REQUIREMENT
Therefore, applicant must submit a new drawing showing a clear depiction of the mark. All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a). Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14 et seq.
For more information about drawings and instructions on how to submit a drawing, see the Drawing webpage.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Marcya Betts/
Examining Attorney
Law Office 106
(571) 272-4913
Marcya.Betts@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.