Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88316525

DATE:                                05/29/2019

NAME:                               gmaciol

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
        email                               Attorney/Applicant

     Requested Law Library search           Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        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:

 X   OTHER:

Good morning, Mr. Malkin.

 

Thank you for your email.  However, as a recap to our last conversation, I stated that an email is not the proper response to an outstanding Office action. 

 

In our discussions concerning the substantive refusal I told you that a response would need to be filed, that the type of evidence may include the webpages found at the end of the “links” you included, and that “links” are not proper to make evidence of record.  Please make certain that any evidence argued in response to the refusal is included in the response itself, (e.g. the actual webpages (in their entirety) found at the end of all “links”).  If it is not (or just the “link” itself is included) then it is not part of the record and will not be considered.

 

As to your background material, I recall stating that for purposes of likelihood of confusion, it is the recitation of goods and services in the registration and application that controls, i.e. any actual use or nonactual use or social media use or advertising links, etc. you may think you have found is not considered in an ex parte proceeding.  I did tell you that this type of evidence may be useful to the TTAB in a cancellation proceeding, but that I could not suggest a course of action for you to pursue, only how to respond to the outstanding office action.  As to the specific links you included in this email, I did not open any.  I do not know how probative they are or are not.  It would not be proper for me to open links in an email for both security reasons, or as a response to an office action.  However, I would be happy to talk to you on the phone and discuss anything further.

 

Best regards,

 

Gene

571 272 9280

 

NOTE:  All email communications are considered informal and are not responses to office actions, even though the contents thereof will be made part of the application prosecution record.

 

From: Ryan Malkin [mailto:ryan@malkin.law]
Sent: Tuesday, May 28, 2019 11:35 AM
To: Maciol, Gene <Gene.Maciol@USPTO.GOV>
Subject: RE: U.S. APPLICATION SERIAL NO. 88316525 MARK: JOEY'S MOUNTAINTOP

 

 

RE: U.S. APPLICATION SERIAL NO.  88316525
MARK: JOEY'S MOUNTAINTOP

 

Good afternoon Mr. Maciol,

 

Per our last phone conversation regarding my client's applied-for mark "Joey's Mountaintop" for use on coffee products and your finding of a likelihood of confusion with the mark "Joey's," U.S. Registration No. 4692193, for use on: "Beverages made of tea; Beverages with a coffee base; Beverages with a tea base; Flavorings for beverages; Flavorings for beverages, other than essential oils; Herbal flavourings for making beverages; Herbal food beverages; Mixes in the nature of concentrates, syrups or powders used in the preparation of tea based beverages; Prepared coffee and coffee-based beverages; Scented water for flavoring beverages; Tea-based beverages; Tea-based beverages with fruit flavoring," I have conducted research regarding other coffee companies and their widespread usage of the word "Joey's" to identify coffee related goods and services.

 

 

Per your request, examples of other companies using similar marks in commerce on coffee related goods and services are as follows:

 

· Joe Coffee Company, New York, New York, http://joecoffeecompany.com

· Joe & The Juice, California, New York, Florida, Illinois, http://www.joejuice.com

· Commonwealth Joe Coffee Roasters, Arlington, Virginia, http://commonwealthjoe.com

· Miami Joe Coffee Co., Miami, Florida, http://www.oyster.com/miami/hotels/loews-miami-beach-hotel/photos/miami-joe-coffee-co--v17434177/

· Joe's Coffee, Chicago, Illinois, http://www.yelp.com/biz/joes-coffee-chicago

· Joe's Coffee House, Tarrant City, Alabama, http://go2joes.com

· Pour Jo Coffee, Tempe, Arizona, http://pourjocoffee.com

· Roasted Joe Coffee Co, Eagan, Minnesota, http://roastedjoecoffeeco.com/roasted-joe-coffee-co-contact.htm

· Joe Jitters Coffee House, Moose Lake Minnesota, http://www.joejitters.com/Welcome.html

· Joey's Cafe, West Hollywood, California: http://joeyscafeweho.com/users/login

· Joey's Italian Cafe, Miami, Florida: http://joeyswynwood.com

· Joey's Cafe, Oklahoma City, Oklahoma, http://joeyscafeok.com

· Joey's Cafe,  Port St. Lucie, Florida, http://www.yelp.com/biz/joeys-cafe-port-saint-lucie

· Joe's Cafe, Granada Hills, California, http://joescafegh.com

· Joe's Bakery and Coffee Shop, Austin, Texas, http://joesbakery.com

And simply by way of background, I have also conducted research on the business activities of the registered mark "Joey's". First, it should be noted that based on advertising, social media, and all publicly available information, the registrant is no longer using the mark on goods and services in commerce. Second, it appears that registrant never used the trademark "Joey's" but rather an altered singular version of the mark "Joey Juice" or "Joey Juice Beverage Company". Lastly, when registrant described its purported business model on social media in 2015, registrant openly stated that they were in the business of producing cold juices and herbal teas, not coffee products. 

 

Please let me know if you have any questions on our findings of if you would like us to submit more examples of marks containing the word "Joey" describing coffee related goods and services.

Thanks

 

Ryan Malkin

Malkin Law P.A.

o: 305-763-8539 / c: 646 - 345 - 8639

ryan@malkin.law / malkin.law

 

 

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