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) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88339889 |
LAW OFFICE ASSIGNED |
LAW OFFICE 126 |
MARK SECTION |
MARK |
http://uspto.report/TM/88339889/mark.png |
LITERAL ELEMENT |
SUNDAY ROAST |
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) |
Sunday Roast is a British chicken dish not regularly known to US diners. A customer of Applicant would be unlikely to expect to order a Sunday
Roast in Applicant's coffee shop. 1209.01(b) Merely Descriptive Marks: "...The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which
registration is sought, not in the abstract. In re Chamber of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219; In re Bayer, 488 F.3d at 964, 82 USPQ2d at 1831. This requires consideration of the
context in which the mark is used or intended to be used in connection with those goods/services, and the possible significance that the mark would have to the average purchaser of the goods or
services in the marketplace. See In re Chamber of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219; In re Bayer, 488 F.3d at 964, 82 USPQ2d at 1831; In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed.
Cir. 2001); In re Omaha Nat?l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Datapipe, Inc., 111 USPQ2d 1330 (TTAB
2014) . Sources for considering the context in which the mark is or may be used include websites, publications, labels, packages, advertising material, and explanatory text on specimens for the goods
and services. See In re N. C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017); In re Nett Designs, Inc., 236 F.3d at 1342; In re Abcor Dev. Corp., 588 F.2d 811 at 814...." |
GOODS AND/OR SERVICES SECTION (current) |
INTERNATIONAL CLASS |
043 |
DESCRIPTION |
Hotel, resort, motel, bar, café, coffee shop, restaurant, banqueting and catering services; provision of premises and facilities for
holding talks, presentations, conferences, concerts, discos, fitness classes, yoga classes, exhibitions, functions, conventions, exhibitions, seminars and meetings; provision of food and drink |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
UK0000338299 |
FOREIGN APPLICATION COUNTRY |
United Kingdom |
FOREIGN FILING DATE |
03/13/2019 |
GOODS AND/OR SERVICES SECTION (proposed) |
INTERNATIONAL CLASS |
043 |
TRACKED TEXT DESCRIPTION |
Hotel, resort, motel, bar, café, coffee shop, restaurant, banqueting and catering services;
Hotel, resort and motel services; provision of premises and facilities for holding talks, presentations, conferences, concerts,
discos, fitness classes, yoga classes, exhibitions, functions, conventions, exhibitions, seminars and meetings; coffee shop services including alcoholic
beverages served during the evenings excluding service of food; provision of food and drink; providing social banquet
facilities; Providing general purpose facilities for holding talks, presentations, conferences, concerts, discos, fitness classes, yoga classes, functions,
conventions, exhibitions, seminars and meetings" |
FINAL DESCRIPTION |
Hotel, resort and motel services; coffee shop services including alcoholic beverages served during the evenings excluding service of
food; providing social banquet facilities; Providing general purpose facilities for holding talks, presentations, conferences, concerts, discos, fitness classes, yoga classes, functions, conventions,
exhibitions, seminars and meetings" |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
UK0000338299 |
FOREIGN APPLICATION COUNTRY |
United Kingdom |
FOREIGN FILING DATE |
03/13/2019 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await
the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained. |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
//Ben Natter// |
SIGNATORY'S NAME |
Ben Natter |
SIGNATORY'S POSITION |
Attorney of record, Member NY bar |
DATE SIGNED |
05/06/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Mon May 06 18:11:06 EDT 2019 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XXX.X-20
190506181106477647-883398
89-620bd7233b8ed142ab5f4d
f1ae46e3c9777eed4d472bfe8
681cc2e41c4b347b11-N/A-N/
A-20190506180544700105 |
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) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
88339889 SUNDAY ROAST(Standard Characters, see http://uspto.report/TM/88339889/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
Sunday Roast is a British chicken dish not regularly known to US diners. A customer of Applicant would be unlikely to expect to order a Sunday Roast in Applicant's coffee shop. 1209.01(b) Merely
Descriptive Marks: "...The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. In re Chamber
of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219; In re Bayer, 488 F.3d at 964, 82 USPQ2d at 1831. This requires consideration of the context in which the mark is used or intended to be used in
connection with those goods/services, and the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace. See In re Chamber of Commerce, 675
F.3d at 1300, 102 USPQ2d at 1219; In re Bayer, 488 F.3d at 964, 82 USPQ2d at 1831; In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed. Cir. 2001); In re Omaha Nat?l Corp., 819 F.2d 1117, 2 USPQ2d
1859 (Fed. Cir. 1987); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Datapipe, Inc., 111 USPQ2d 1330 (TTAB 2014) . Sources for considering the context in which the mark is
or may be used include websites, publications, labels, packages, advertising material, and explanatory text on specimens for the goods and services. See In re N. C. Lottery, 866 F.3d 1363, 123 USPQ2d
1707, 1710 (Fed. Cir. 2017); In re Nett Designs, Inc., 236 F.3d at 1342; In re Abcor Dev. Corp., 588 F.2d 811 at 814...."
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 043 for Hotel, resort, motel, bar, café, coffee shop, restaurant, banqueting and catering services; provision of premises and facilities for holding talks, presentations,
conferences, concerts, discos, fitness classes, yoga classes, exhibitions, functions, conventions, exhibitions, seminars and meetings; provision of food and drink
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide
intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application.
For a
collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to
exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority
based upon a foreign application.
For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate
control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services
to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number UK0000338299 filed 03/13/2019]. 15 U.S.C.Section 1126(d), as
amended.
Proposed:
Tracked Text Description: Hotel, resort, motel, bar, café, coffee shop, restaurant, banqueting and catering services;
Hotel,
resort and motel services;
provision of premises and facilities for holding talks, presentations, conferences, concerts, discos, fitness classes, yoga classes,
exhibitions, functions, conventions, exhibitions, seminars and meetings;
coffee shop services including alcoholic beverages served during the evenings excluding
service of food;
provision of food and drink;
providing social banquet facilities;
Providing general purpose facilities for holding talks, presentations, conferences, concerts, discos, fitness classes, yoga classes, functions, conventions, exhibitions, seminars and
meetings"Class 043 for Hotel, resort and motel services; coffee shop services including alcoholic beverages served during the evenings excluding service of food; providing social banquet
facilities; Providing general purpose facilities for holding talks, presentations, conferences, concerts, discos, fitness classes, yoga classes, functions, conventions, exhibitions, seminars and
meetings"
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide
intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application.
For a
collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to
exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority
based upon a foreign application.
For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise
legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the
goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ United Kingdom application number UK0000338299 filed 03/13/2019]. 15
U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the
foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
SIGNATURE(S)
Response Signature
Signature: //Ben Natter// Date: 05/06/2019
Signatory's Name: Ben Natter
Signatory's Position: Attorney of record, Member NY bar
The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and
other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently
filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of
attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in
this matter.
Serial Number: 88339889
Internet Transmission Date: Mon May 06 18:11:06 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.X-20190506181106477
647-88339889-620bd7233b8ed142ab5f4df1ae4
6e3c9777eed4d472bfe8681cc2e41c4b347b11-N
/A-N/A-20190506180544700105