| 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 | 88243022 |
| LAW OFFICE ASSIGNED | LAW OFFICE 121 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88243022/mark.png |
| LITERAL ELEMENT | YOGURTLAND |
| 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) | |
|
The Examining Attorney has refused registration of Applicant Mark “YOGURTLAND” under Trademark Act Sections 1, 2, and 45, U.S.C Section 1051-1052, arguing that Applicant’s goods are not “Goods in Trade”.
Applicant’s applied for goods are “goods in trade” because they have been sold or distributed to others in commerce and have utility to others as the type of product named in the trademark application. Specifically, Applicant’s cups often include licensed images (Looney Tunes, Hello Kitty, Little Twin Stars, Tuxedo Sam, Badtz-Maru) on the cup. Users take the cups home and save them for future use. Specifically, the items have utility to others as the type of product named in the trademark application. The cups can even be purchased as collecor's items on eBay (see attached). In re Snap-On Tools Corp., 159 USPQ 254 (TTAB 1968), ball point pens used to promote Applicant’s tools were considered goods in trade, because they had a utilitarian function and purpose, and had been sold to applicant’s franchised dealers and transported in commerce under the mark. Similarly here, Applicant’s cups have been transported under the mark in commerce, and purchased by Applicant’s franchisees. Moreover, the cups serve the identical utilitarian function and purpose as a cup in Applicant’s store as they do in customer's home (or wherever else possessed). Also, In re United Merchants & Mfrs., Inc., 154 USPQ 625 (TTAB 1967), it held that calendars used to promote applicant’s plastic film constituted goods in trade, where calendar had a utilitarian function and purpose in and of itself, and had been regularly distributed in commerce for several years. Applicant’s goods are similar to the calendars in that they have both a utilitarian function as well as have been distributed in commerce for several years. Thus, Applicant’s amended goods are appropriate goods in trade and the application should be allowed.
Moreover, the USPTO has allowed similar registrations for identical goods. Should the Examiner disagree with this proposition, Applicant respectfully requests that the Examiner expressly state the laws and reasons under which Starbuck’s and Wendy’s were entitled to register their mark for “paper cups” (Reg. No. 4,538,585 and Reg. No. 1,297,495) under the same laws and reasons, Yogurtland Franchising, Inc. is not entitled to registration for its “YOGURTLAND” mark. Applicant should be afforded the same opportunity to use the phrase on its similar goods. Otherwise, it would be clear that this application is being examined under a set of rules, which differs from that applied to Starbuck’s and Wendy’s, or a set of rules that permits arbitrary and capricious decision-making. Thus, based on the arguments above, Applicant’s goods are goods in use and should be allowed.
|
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_98186238180-20190731165132638252_._544.29_Cups.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\882\430\88243022\xml4\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\882\430\88243022\xml4\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\430\88243022\xml4\ROA0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\430\88243022\xml4\ROA0005.JPG | |
| DESCRIPTION OF EVIDENCE FILE | A snapshot of an eBay website. |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 021 |
| DESCRIPTION | Paper and cardboard cups for use in Applicant's store |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 02/01/2006 |
| FIRST USE IN COMMERCE DATE | At least as early as 02/01/2006 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 021 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | Paper and cardboard cups for use in frozen yogurt store |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 02/01/2006 |
| FIRST USE IN COMMERCE DATE | At least as early as 02/01/2006 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Niky Economy Syrengelas/ |
| SIGNATORY'S NAME | Niky Economy Syrengelas |
| SIGNATORY'S POSITION | Applicant's Attorney |
| SIGNATORY'S PHONE NUMBER | 949-588-6171 |
| DATE SIGNED | 07/31/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Jul 31 16:57:06 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20190731165706122572-8824 3022-6204622ccd08fdccf335 98576aaecae24dce1a66b5ab7 ccabf927a7f0c2245abd-N/A- N/A-20190731165132638252 |
| 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) |
The Examining Attorney has refused registration of Applicant Mark “YOGURTLAND” under Trademark Act Sections 1, 2, and 45, U.S.C Section 1051-1052, arguing that Applicant’s goods are not “Goods in Trade”.
Applicant’s applied for goods are “goods in trade” because they have been sold or distributed to others in commerce and have utility to others as the type of product named in the trademark application. Specifically, Applicant’s cups often include licensed images (Looney Tunes, Hello Kitty, Little Twin Stars, Tuxedo Sam, Badtz-Maru) on the cup. Users take the cups home and save them for future use. Specifically, the items have utility to others as the type of product named in the trademark application. The cups can even be purchased as collecor's items on eBay (see attached). In re Snap-On Tools Corp., 159 USPQ 254 (TTAB 1968), ball point pens used to promote Applicant’s tools were considered goods in trade, because they had a utilitarian function and purpose, and had been sold to applicant’s franchised dealers and transported in commerce under the mark. Similarly here, Applicant’s cups have been transported under the mark in commerce, and purchased by Applicant’s franchisees. Moreover, the cups serve the identical utilitarian function and purpose as a cup in Applicant’s store as they do in customer's home (or wherever else possessed). Also, In re United Merchants & Mfrs., Inc., 154 USPQ 625 (TTAB 1967), it held that calendars used to promote applicant’s plastic film constituted goods in trade, where calendar had a utilitarian function and purpose in and of itself, and had been regularly distributed in commerce for several years. Applicant’s goods are similar to the calendars in that they have both a utilitarian function as well as have been distributed in commerce for several years. Thus, Applicant’s amended goods are appropriate goods in trade and the application should be allowed.
Moreover, the USPTO has allowed similar registrations for identical goods. Should the Examiner disagree with this proposition, Applicant respectfully requests that the Examiner expressly state the laws and reasons under which Starbuck’s and Wendy’s were entitled to register their mark for “paper cups” (Reg. No. 4,538,585 and Reg. No. 1,297,495) under the same laws and reasons, Yogurtland Franchising, Inc. is not entitled to registration for its “YOGURTLAND” mark. Applicant should be afforded the same opportunity to use the phrase on its similar goods. Otherwise, it would be clear that this application is being examined under a set of rules, which differs from that applied to Starbuck’s and Wendy’s, or a set of rules that permits arbitrary and capricious decision-making.
Thus, based on the arguments above, Applicant’s goods are goods in use and should be allowed.
