NOTE TO THE FILE
SERIAL NUMBER: 88316049
DATE: 05/14/2019
NAME: jsolite
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:Thank you Joshua. The disclaimer of "bread" is acceptable as is the translation of "du jour" --of the day. Please issue an Examiner's Amendment that reflects the changes.
Kathleen
Kathleen Gallagher-Duff
Covington & Burling LLP
One CityCenter, 850 Tenth Street, NW
Washington, DC 20001-4956
T +1 202 662 5299 | kgallagher-duff@cov.com
This message is from a law firm and may contain information that is confidential or legally privileged. If you are not the intended recipient, please immediately advise the sender by reply e-mail that this message has been inadvertently transmitted to you and delete this e-mail from your system. Thank you for your cooperation.
-----Original Message-----
From: Solite, Joshua <Joshua.Solite@USPTO.GOV>
Sent: Tuesday, May 14, 2019 5:25 PM
To: Gallagher-Duff, Kathleen <kgallagher-duff@cov.com>
Cc: Halmen, Katy <Katy.Halmen@USPTO.GOV>; Augsburger, Jennifer L. <jaugsburger@cov.com>
Subject: RE: Lewis Bakeries, Inc.: Trademark Applications 88301058, 88301083, 88301051, 88316049 LEWIS BAKE SHOP marks
Hello Ms. Gallagher-Duff:
My apologies, there was a mistake in my initial email. The additional disclaimer would only be for the wording "BREAD". Thus, that disclaimer would be the following:
"BAKE SHOP", "SPECIAL RECIPE DINNER ROLLS", “BREAD”, “HAWAIIAN", "FAMILY BAKERS SINCE 1925" AND "1/2 PACK".
However, we would still need the translation statement for "DU JOUR". See http://gcc01.safelinks.protection.outlook.com/?url=https%3A%2F%2Ftranslate.google.com%2F%23view%3Dhome%26op%3Dtranslate%26sl%3Dauto%26tl%3Den%26text%3Ddu%2520jour&data=02%7C01%7CJoshua.Solite%40uspto.gov%7C2076e027b66d40d7dae708d6d8b547eb%7Cff4abfe983b540268b8ffa69a1cad0b8%7C1%7C0%7C636934670436217927&sdata=9%2FefgA%2FbvOKDcImkrF9%2BYfDH6BpuMARg2JUdOVTvxtA%3D&reserved=0
Please let me know by Thursday, 5-16-19 if you would like me to enter these changes in an examiner's amendment rather than an formal office action.
Thank you,
Joshua
-----Original Message-----
From: Gallagher-Duff, Kathleen [mailto:kgallagher-duff@cov.com]
Sent: Tuesday, May 14, 2019 3:45 PM
To: Solite, Joshua <Joshua.Solite@USPTO.GOV>
Cc: Halmen, Katy <Katy.Halmen@USPTO.GOV>; Augsburger, Jennifer L. <jaugsburger@cov.com>
Subject: Lewis Bakeries, Inc.: Trademark Applications 88301058, 88301083, 88301051, 88316049 LEWIS BAKE SHOP marks
Dear Joshua:
The request for disclaimer of "Bread du Jour" in the mark LEWIS BAKE SHOP SPECIAL RECIPE DINNER ROLLS BREAD DU JOUR HAWAIIAN FAMILY BAKERS SINCE 1925 1/2 PACK & Design (Serial No. 88316049) is not warranted because the mark is not descriptive. Lewis Bakeries, Inc. owns registrations for BREAD DU JOUR and BREAD DU JOUR & Design, respectively, and one pending, published application for BREAD DU JOUR, for bread or bakery products. See below.
Reg. No. 1454551 for BREAD DU JOUR (disclaimer of "bread").
Reg. No. 1845798 for BREAD DU JOUR & Design (disclaimer of "bread").
Serial No. 88135648 for BREAD DU JOUR (disclaimer of "bread") (published for opposition)
Only the term "bread" was disclaimed in such registrations and pending application. That is consistent with the PTO's consistent position that BREAD DU JOUR is not descriptive of bakery products, including bread.
Accordingly, on behalf of Lewis Bakeries, Inc., we request that you withdraw the requirement to disclaimer the entire mark BREAD DU JOUR in Serial No. 88316049.
Kathleen Gallagher-Duff
Kathleen Gallagher-Duff
Covington & Burling LLP
One CityCenter, 850 Tenth Street, NW
Washington, DC 20001-4956
T +1 202 662 5299 | kgallagher-duff@cov.com
This message is from a law firm and may contain information that is confidential or legally privileged. If you are not the intended recipient, please immediately advise the sender by reply e-mail that this message has been inadvertently transmitted to you and delete this e-mail from your system. Thank you for your cooperation.
-----Original Message-----
From: Solite, Joshua <Joshua.Solite@USPTO.GOV>
Sent: Tuesday, May 14, 2019 1:45 PM
To: Gallagher-Duff, Kathleen <kgallagher-duff@cov.com>
Cc: Halmen, Katy <Katy.Halmen@USPTO.GOV>; Augsburger, Jennifer L. <jaugsburger@cov.com>
Subject: RE: Trademark Applications 88301058, 88301083, 88301051, 88316049 LEWIS BAKE SHOP marks
Hello Ms. Gallagher-Duff:
I just wanted to reach out regarding the proposed changes in item number 4 (SN: 88316049) in the previous email. Please let me know soon.
Thanks,
Joshua
-----Original Message-----
From: Solite, Joshua
Sent: Wednesday, May 08, 2019 8:12 AM
To: Gallagher-Duff, Kathleen <kgallagher-duff@cov.com>
Cc: Halmen, Katy <Katy.Halmen@USPTO.GOV>; Augsburger, Jennifer L. <jaugsburger@cov.com>
Subject: RE: Trademark Applications 88301058, 88301083, 88301051, 88316049 LEWIS BAKE SHOP marks
Thanks Ms. Gallagher-Duff, will do. And I look forward to hearing from you soon on number 4.
Thanks again,
Joshua
-----Original Message-----
From: Gallagher-Duff, Kathleen [mailto:kgallagher-duff@cov.com]
Sent: Wednesday, May 08, 2019 8:09 AM
To: Solite, Joshua <Joshua.Solite@USPTO.GOV>
Cc: Halmen, Katy <Katy.Halmen@USPTO.GOV>; Augsburger, Jennifer L. <jaugsburger@cov.com>
Subject: Re: Trademark Applications 88301058, 88301083, 88301051, 88316049 LEWIS BAKE SHOP marks
Dear Joshua:
Please issue Examiner’s Amendments that reflect the proposed changes in items 1, 2 and 3. I will get back to you by tomorrow regarding the proposed changes in item 4.
Thank you.
Kathleen Gallagher-Duff
Sent from my iPhone
On May 8, 2019, at 7:55 AM, Solite, Joshua <Joshua.Solite@uspto.gov<mailto:Joshua.Solite@uspto.gov>> wrote:
Good Morning Ms. Gallagher-Duff:
I am an attorney with the United States Patent and Trademark Office, and I have been assigned to review four of your trademark applications for LEWIS BAKE SHOP, Serial Numbers 88301058, 88301083, 88301051, and 88316049. I have reviewed the applications and have determined that we need to address a few minor issues concerning the mark description, identification, disclaimer, and a translation statement before I can approve the marks for publication. Since the issues are fairly simple, I thought we might resolve them via email rather than a formal office action. I have provided below the issues for each separate application.
If you agree to my suggestions below, simply respond to this email and I will enter the changes for you and approve the marks for publication immediately.
1. 88301058 - LEWIS BAKE SHOP BREAD 12 GRAIN FAMILY BAKERS SINCE 1925 ½ LOAF
MARK DESCRIPTION – We need to amend the mark description so that it matches the actual drawing of the mark.
Suggested Amendment: The mark consists of the wording "LEWIS" and “BAKE SHOP” in a hexagon shape with the word “LEWIS” in the middle, “BAKE” above “LEWIS”, and “SHOP” below “LEWIS”. Below is a rectangle shape with the words "SPECIAL RECIPE BREAD" with a line above and below the words. The words "12 GRAIN" are below, and the words "FAMILY BAKERS SINCE 1925" are beneath, also with a line above the words "FAMILY BAKERS" and below "1925", and lines on either side of the word "SINCE". The "1925" portion is in a stylized font. To the right are two vertical lines, and to the right of the two vertical lines is "1/2 LOAF".
2. 88301083 - LEWIS BAKE SHOP SPECIAL RECIPE BREAD MADE WITH REAL HONEY HONEY WHEAT FAMILY BAKERS SINCE 1925 ½ LOAF
MARK DESCRIPTION – We need to amend the mark description so that it matches the actual drawing of the mark.
Suggested Amendment: The mark consists of the wording "LEWIS" and “BAKE SHOP” in a hexagon shape with the word “LEWIS” in the middle, “BAKE” above “LEWIS”, and “SHOP” below “LEWIS”. Below is a rectangle shape with the words "SPECIAL RECIPE BREAD" with a line above and below the words. The words "MADE WITH REAL HONEY" is below in a stylized font, with the words "HONEY WHEAT" below it. The words "FAMILY BAKERS SINCE 1925" are beneath "HONEY WHEAT", also with a line above the words "FAMILY BAKERS" and below "1925", and lines on either side of the word "SINCE". The "1925" portion is in a stylized font. To the right are two vertical lines, and to the right of the two vertical lines is "1/2 LOAF".
3. 88301051 – LEWIS BAKE SHOP BREAD 100% WHOLE WHEAT FAMILY BAKERS SINCE 1925 ½ LOAF
MARK DESCRIPTION – We need to amend the mark description so that it matches the actual drawing of the mark.
Suggested Amendment: The mark consists of the wording "LEWIS" and “BAKE SHOP” in a hexagon shape with the word “LEWIS” in the middle, “BAKE” above “LEWIS”, and “SHOP” below “LEWIS”. Below is a rectangle shape with the word "BREAD" with a line above and below the word. The words "100% WHOLE WHEAT" is below, with the words "FAMILY BAKERS SINCE 1925" beneath, also with a line above the words "FAMILY BAKERS" and below "1925", and lines on either side of the word "SINCE". The "1925" portion is in a stylized font. To the right are two vertical lines, and to the right of the two vertical lines is "1/2 LOAF".
IDENTIFICATION OF GOODS – We need to amend the ID to in order to avoid a deceptiveness refusal. The ID in the application reads: “Class 030: Bread”
Suggested Amendment: “Class 030: 100% WHOLE WHEAT BREAD”
4. 88316049 – lewis bake shop special recipe dinner rolls bread du jour Hawaiian family bakers since 1925 ½ PACK
DISCLAIMER – Since “BREAD DU JOUR” is descriptive of a user of the goods, this wording must be disclaimed. A disclaimer does not change the appearance of your mark. It is simply a statement that you are not claiming exclusive rights to use the word BREAD DU JOUR since this wording is descriptive in connection with your goods.
TRANSLATION – We need an English translation in your application for the term “DU JARDIN”.
Suggested Translation Statement: The English translation of “BREAD DU JOUR” in the mark is “bread of the day”.
Thanks in advance for your prompt response.
Sincerely,
Joshua A. Solite
Law Clerk
Law Office 123
U.S. Patent & Trademark Office
(571) 272-3199
joshua.solite@uspto.gov<mailto:joshua.solite@uspto.gov> (for informal communications only)