Response to Office Action

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)

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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. 88388277 SEV (Stylized and/or with Design, see http://uspto.report/TM/88388277/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

In the Official Action, the Examiner has initially refused registration on the Principal Register because of the alleged "merely descriptive" nature of Applicant's mark. Applicant respectfully contends that not only did the U.S. Patent and Trademark Office fail to meet its burden of showing by clear evidence that Applicant's mark is primarily merely descriptive, but that Applicant's mark is, in fact, not primarily merely descriptive. See In re Pennzoil Products Co., 20 USPQ2d 1753, 1758 (TTAB 1991). "There is a thin line between a suggestive and a merely descriptive designation, and where reasonable men may differ, it is the Board's practice to resolve the doubt in applicant's favor and publish the mark for opposition." In re Intelligent Medical Systems Inc., 5 USPQ2d 1674, 16765 (TTAB 1987); In re Aid Laboratories, Inc., 221 USPQ 1215, 1216 (TTAB 1983); In re Gourmet Bakers, Inc., 173 USPQ 565, 565 (TTAB 1972).

In order to reject the subject application, the Examiner must submit "clear evidence" that Applicant's mark, as a whole, is descriptive in relation to the goods contained in the application. A mark is descriptive if it "forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods [and/or services]." Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759, 765 (2d Cir. 1976) (emphasis added); see In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). In this case, Applicant's mark is incongruous, susceptible to multiple connotations, or requires imagination, cogitation or gathering of further information in order for the relevant public to perceive any significance of the mark as it relates to a significant aspect of the Applicant's goods. Furthermore, the Examiner has made no argument and has included no evidence as to how a consumer would perceive Applicant's mark, as a whole, as it is used on the goods in International Classes 29. Quite simply, the mark "SEV (Stylized)" does not describe the Applicant's goods, nor does it describe an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods. See TMEP §1209.01(b). The relevant public could not possibly infer from the mark alone that the mark is for these goods.

I. THE MARK IS NOT MERELY DESCRIPTIVE OF THE GOODS.

Applicant first notes that the interpretation suggested by the Examiner for the term "SEV (Stylized)" is wholly unfounded. In the Official Action, the Examiner has suggested that the term "SEV" refers to "[a]n Indian snack consisting of long, thin strands of gram flour, deep-fried and spiced". The only citations made by the Examiner in the Office Action to support such a meaning are found on the "Lexico" and "Nuts.com" websites. See [Attachments to Official Action]. The Lexico and Nuts.com references are hardly authoritative sources on the meaning of the term. Instead, the dictionary would be a more appropriate source to find the English meaning of a term. The dictionary contains no such definition for the term "SEV". See [Exhibit A: Merrriam-Webster Dictionary definition of the term "SEV"]. Merriam-Webster's Dictionary only suggests that the term "SEV" may be an abbreviated form of the word "SEVERAL". Id.

The Examiner fails to recognize that the term "SEV" will likely be translated from Turkish into English as "love/like" and/or "to love/to like." Applicant is a Türk limited sirket (tls) of Turkey, and so it makes sense that consumers who encounter Applicant's mark will stop and translate the mark from Turkish into English. The term "SEVMEK" is a verb form of the word "SEV". And, as elucideated by the SesliSozluk Turkish to English translator, "SEV" means "love," "loved," and "loving." See [Exhibit B: http://www.seslisozluk.net/en/what-is-the-meaning-of-sev/]. The Dict.com online translator confirms this translation, illuminating that "SEV" has meanings of "like," "be fond of," "love," and "be in love with." See [Exhibit C: http://www.dict.com/turkish-english/sev].

With this background in mind, is unlikely that consumers would readily ascertain a descriptive meaning of "SEV (Stylized)" mark, the Applicant's meats, fish, pulses, olive-based foods, fruits and vegetables, nuts, hazelnut and peanut pastes, tahini, eggs, coffee, cocoa, chocolate based products, past, dumplings, noodles, bstarch, sugar, tea, confectionery, gum, ice cream, salts, and molasses related food products in Classes 29 and 30.

Applicant is a Turkish entity, and Applicant's mark consists of a Turkish word that has translations and meanings pertaining to "liking" and "loving." As evidenced above, the mark will likely be translated from Turkish into English as "love/like" and/or "to love/to like." When used in association with Applicant's wide variety of food products in Classes 29 and 30, a prospective consumer could not possibly ascertain the goods sold under Applicant's mark simply by viewing the mark. Applicant's mark is simply not a common descriptive phrase used in today's lexicon and, as a whole, does not identify any type of feature or characteristic of Applicant's goods. See TMEP §1209.01(b); In re Disc Jockeys Inc., 23 USPQ2d 1715, 1716 (TTAB 1992), citing In re Uniroyal, Inc., 215 USPQ 716 (TTAB 1982). The evidence attached to the Official Action is not "clear evidence" that Applicant's mark is descriptive in relation to the goods contained in its application, descriptive in relation to the context in which the mark is intended to be used on such goods and services, and descriptive in relation to the impact, or significance, that the mark is likely to make on the average purchaser of such goods and services. See TMEP 1209.01(b). The evidence attached to the Official Action fails to show a relationship between the "SEV (Stylized)" mark and the goods identified in the application. Moreover, Applicant's mark is a suggestive mark that exists when the consumer's imagination, thought or perception is required and the mark does not merely describe the listed services. In re Atavio Inc., 25 USPQ2d 1361, 1362 (TTAB 1992) (explaining that a mark "which is only suggestive requires some imagination, thought or perception to determine its meaning in relation to the goods."); In re WSI Corporation, 1 U.S.P.Q.2d 1570, 1572 (TTAB 1986) ("Where such imagination or forethought is required to reach a conclusion as to the nature of a key characteristic of goods or services, a mark must be determined to be suggestive and not descriptive."); The Institut National Des Appellations D’Origine v. Vintners International Co. Inc., 22 USPQ 1190 (Fed Cir 1992). Other similar cases in which a mark was found to be suggestive rather than descriptive include:

"RAPID-SHAVE" for shaving cream; Colgate-Palmolive Co. v. House for Men, Inc., 143 U.S.P.Q. 159 (TTAB 1964);

"FRUIT SUNDAE" for yogurt; Johnston Foods, Inc. v. Carnation Co., 159 U.S.P.Q. 624 (TTAB 1968);

"SUGAR & SPICE" for bakery products; In re Colonial Stores, Inc., 394 F.2d 549, 157 U.S.P.Q. 382 (CCPA 1968);

"BIASTEEL" for steel belted bias tires; Firestone Tire & Rubber Co. v. Goodyear Tire & Rubber Co., 186 U.S.P.Q. 557 (TTAB 1975), aff'd, 189 USPQ 348 (CCPA. 1976); and

"ACTION SLACKS" for pants; Levi Strauss & Co. v. R. Josephs Sportswear, 28 U.S.P.Q.2d 1464 (TTAB 1993).

For these reasons, Applicant respectfully requests that the present mark is passed to publication at an early date.

II. CONCLUSION

The mark "SEV (Stylized)" could convey to the ordinary consumer a variety of meanings, because it is suggestive as applied to the goods in the application. For this reason, Applicant respectfully contends that the present mark should not be refused because of "mere descriptiveness." Applicant notes that the Examining Attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under the Trademark Act. As such, Applicant respectfully requests that the present mark be passed to publication at an early date.

EVIDENCE
Evidence in the nature of Exhibit A: Merrriam-Webster Dictionary definition of the term "SEV"; Exhibit B: http://www.seslisozluk.net/en/what-is-the-meaning-of-sev/; Exhibit C: http://www.dict.com/turkish-english/sev has been attached.
Original PDF file:
evi_5078217165-20191112153609203278_._4162-5_OA_Response_Exhibits.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 029 for Meat, fish, poultry and game; processed foodstuff based on meat, dried pulses, soups, bouillon, processed olives, olive paste, milk and milk products, butter, edible oils; dried, crisped, preserved, frozen, cooked, smoked or salted fruits and vegetables; pollen prepared as foodstuff, prepared nuts and dried fruits as snacks, hazelnut and peanut paste, tahini (sesame seed paste), eggs and powdered eggs
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. 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, and 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/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Meat, fish, poultry and game; Meat, fish, poultry and game, not live; processed foodstuff based on meat, dried pulses, soups, bouillon, processed olives, olive paste, milk and milk products, butter, edible oils; pre-packaged processed meals consisting primarily of meat, dried pulses, and/or soups, and also containing bouillon, processed olives, olive paste, milk and milk products excluding ice cream, ice milk, and frozen yogurt, butter, edible oils; dried, crisped, preserved, frozen, cooked, smoked or salted fruits and vegetables; pollen prepared as foodstuff, prepared nuts and dried fruits as snacks, hazelnut and peanut paste, tahini (sesame seed paste), eggs and powdered eggsClass 029 for Meat, fish, poultry and game, not live; pre-packaged processed meals consisting primarily of meat, dried pulses, and/or soups, and also containing bouillon, processed olives, olive paste, milk and milk products excluding ice cream, ice milk, and frozen yogurt, butter, edible oils; dried, crisped, preserved, frozen, cooked, smoked or salted fruits and vegetables; pollen prepared as foodstuff, prepared nuts and dried fruits as snacks, hazelnut and peanut paste, tahini (sesame seed paste), eggs and powdered eggs
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. 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, and 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/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 030 for Coffee, cocoa; coffee or cocoa based beverages, chocolate based beverages, pasta, stuffed dumplings, noodles, pastries and bakery products based on flour, desserts based on flour and chocolate, honey, bee glue for human consumption, propolis for food purposes, spices and condiments for foodstuff, yeast, baking powder, flour, semolina, starch for food, sugar, cube sugar, powdered sugar, tea, ice tea, confectionery, chocolate, biscuits, crackers, wafers, chewing gums, ice-cream, edible ices, salt, cereals and cereal-based foodstuff, molasses for food
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. 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, and 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/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Coffee, cocoa; coffee or cocoa based beverages, chocolate based beverages, pasta, stuffed dumplings, noodles, pastries and bakery products based on flour, desserts based on flour and chocolate, honey, bee glue for human consumption, propolis for food purposes, spices and condiments for foodstuff, yeast, baking powder, flour, semolina, starch for food, sugar, cube sugar, powdered sugar, tea, ice tea, confectionery, chocolate, biscuits, crackers, wafers, chewing gums, ice-cream, edible ices, salt, cereals and cereal-based foodstuff, molasses for food; coffee or cocoa based beverages, chocolate based beverages, pasta, stuffed dumplings, noodles, pastries and bakery products based on flour, bakery desserts based on flour and chocolate, honey, bee glue for human consumption, propolis for food purposes, spices for foodstuff; condiments for foodstuff, namely, pepper sauce; yeast, baking powder, flour, processed semolina, starch for food, sugar, cube sugar, powdered sugar, tea, ice tea; confectionery, namely, confectionery made of sugar; chocolate, biscuits, crackers, wafers, chewing gums, ice-cream, edible ices, salt; processed cereals and cereal-based foodstuff in the nature of cereal-based snack foods; molasses for foodClass 030 for Coffee, cocoa; coffee or cocoa based beverages, chocolate based beverages, pasta, stuffed dumplings, noodles, pastries and bakery products based on flour, bakery desserts based on flour and chocolate, honey, bee glue for human consumption, propolis for food purposes, spices for foodstuff; condiments for foodstuff, namely, pepper sauce; yeast, baking powder, flour, processed semolina, starch for food, sugar, cube sugar, powdered sugar, tea, ice tea; confectionery, namely, confectionery made of sugar; chocolate, biscuits, crackers, wafers, chewing gums, ice-cream, edible ices, salt; processed cereals and cereal-based foodstuff in the nature of cereal-based snack foods; molasses for food
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. 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, and 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/services that meet the certification standards of the applicant.

The applicant's current attorney information: John S. Egbert. John S. Egbert of EGBERT, MCDANIEL & SWARTZ, PLLC, is located at

      1001 TEXAS AVE., SUITE 1250
      HOUSTON, Texas 77002
      US
The docket/reference number is 4162-5.

The phone number is 713-224-8080.

The fax number is 713-223-4873.

The email address is mail@emsip.com

The applicants proposed attorney information: John S. Egbert. Other appointed attorneys are Michael F. Swartz, Kevin S. Wilson. John S. Egbert of EGBERT, MCDANIEL & SWARTZ, PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1001 TEXAS AVE., SUITE 1250
      HOUSTON, Texas 77002
      United States
The docket/reference number is 4162-5.

The phone number is 713-224-8080.

The fax number is 713-223-4873.

The email address is mail@emsip.com

John S. Egbert submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: JOHN S. EGBERT. JOHN S. EGBERT of EGBERT, MCDANIEL & SWARTZ, PLLC, is located at

      1001 TEXAS AVE., SUITE 1250
      HOUSTON, Texas 77002
      US
The docket/reference number is 4162-5.

The phone number is 713-224-8080.

The fax number is 713-223-4873.

The email address is mail@emsip.com; USPTO@dockettrak.com

The applicants proposed correspondence information: John S. Egbert. John S. Egbert of EGBERT, MCDANIEL & SWARTZ, PLLC, is located at

      1001 TEXAS AVE., SUITE 1250
      HOUSTON, Texas 77002
      United States
The docket/reference number is 4162-5.

The phone number is 713-224-8080.

The fax number is 713-223-4873.

The email address is mail@emsip.com

ADDITIONAL STATEMENTS
Translation
The English translation of "SEV" in the mark is "love", "like", "to love", "to like".


FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /4162-5/      Date: 11/12/2019
Signatory's Name: Michael F. Swartz
Signatory's Position: Attorney of record, Texas bar member
Signatory's Phone Number: 713-224-8080


Response Signature
Signature: /4162-5/     Date: 11/12/2019
Signatory's Name: Michael F. Swartz
Signatory's Position: Attorney of record, Texas bar member

Signatory's Phone Number: 713-224-8080

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    JOHN S. EGBERT
   EGBERT, MCDANIEL & SWARTZ, PLLC
   
   1001 TEXAS AVE., SUITE 1250
   HOUSTON, Texas 77002
Mailing Address:    John S. Egbert
   EGBERT, MCDANIEL & SWARTZ, PLLC
   1001 TEXAS AVE., SUITE 1250
   HOUSTON, Texas 77002
        
RAM Sale Number: 88388277
RAM Accounting Date: 11/12/2019
        
Serial Number: 88388277
Internet Transmission Date: Tue Nov 12 15:43:26 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019111215432660
6557-88388277-7007247b736d6f95ea8a641066
3076fa62e52be16acc4d6b2b657bb32b53426df-
CC-43240145-20191112153609203278