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. 88487524 SUPREME (Stylized and/or with Design, see http://uspto.report/TM/88487524/mark.png) has been amended as follows:

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

This is responsive to the Office Action dated September 19, 2019. Applicant notes with appreciation that the Examining Attorney’s search of the U.S. Patent and Trademark Office records did not locate any registrations or pending applications that would block registration. The sole issue raised in the Office Action is the requirement that the Applicant add a disclaimer into the record. Applicant respectfully traverses this requirement. The application has been amended to seek registration based on Section 2(f), in part. Applicant has acquired distinctiveness in SUPREME based on its long and continuous use of SUPREME in commerce.

Applicant, through its predecessor in interest, has used SUPREME as a trademark since at least as early as 1984. Indeed, the word SUPREME is the subject of a composite trademark registered on the Principal Register (Reg. No. 2892449). This mark is SUPREME w/Design, registered October 12, 2004 based on a June 19, 2002 filing date. TESS page attached. Hence, although the SUPREME mark was used since 1984, the application gave the present Applicant national priority in 2002, and as will be further discussed below, SUPREME has been a dominant trademark feature used by Applicant to indicate the source of its cheese since then. Accordingly, Applicant submits that it has achieved acquired distinctiveness in SUPREME based on long and continuous use in commerce. Applicant submits with this response a Declaration of Acquired Distinctiveness based on use.

Moreover, in support of the long and continuous use, Applicant submits images of specimens submitted to the U.S. Patent and Trademark Office through the years (e.g., attached examples include specimens submitted in 1996, 2006, 2010, 2013) with its various other SUPREME formative trademark registrations, along with current 2020 screen shots showing some ongoing uses of SUPREME by Applicant. These support the position that SUPREME has been used over the years as a dominant feature of a number of Applicant’s marks. Indeed, Applicant owns a family of SUPREME formative trademark registrations, TESS copies of which are included with this response. Applicant submits that its use of SUPREME, as evidenced by the exhibits submitted with this response, is consistently dominant and is a distinctive indicator of source for Applicant’s cheese product. When one seeks to purchase this cheese, one is accustomed to looking for the SUPREME brand. Thus, it is submitted that SUPREME has acquired distinctiveness and that no disclaimer should be required in this application.

Moreover, the USPTO has granted many trademark registrations on the Principal Register for marks that include the word SUPREME, but wherein SUPREME is not disclaimed. These include SUPREME BRAND for seeds, SUPREME FRESH for canned fish, NATURE’S SUPREME for animal foodstuffs and bird seed, TASTE OF SUPREME for pastry and dessert shops, RACE HORSE SUPREME for horse feed, SUPREME for rice, SUPREME w/Design for fresh fruits, SUPREME SOURCE for dog and cat food, SUPREME CUISINE for meat and sauces, SUPREME COMFORT for compost, fuels, wood shaving and animal bedding, and SUPREME EXPERTS IN SMALL PETS for animal foodstuffs, bedding and training chews. TESS copies of these registrations are attached. These are merely examples of SUPREME formative marks on the Principal Register, and there are many more. The vast number of such registrations indicates that there is no per se rule that SUPREME must be disclaimed. Indeed, in response to the Examining Attorney’s contention that the term is laudatory—which it is not—Applicant asserts that SUPREME merely suggests many possibilities about the goods. For example, it suggests that the cheese may be tasty, or that it mixes well with other foods, or that the customer will like it. To consumers, the SUPREME is simply a brand of cheese and to that end Applicant submits SUPREME has acquired distinctiveness and is able to coexist on the Principal Register as part of a trademark wherein SUPREME is not disclaimed. This is further supported by the USPTO’s recent publication of trademark applications to register on the Principal Register the single word SUPREME (with or without design) since January 2019 (and without disclaimer), including by way of example only: Serial Nos. 88199285, 88554222, 88045843, 87932224, 87932218, and 88294872. It is submitted that these publications confirm that SUPREME is arbitrary and suggestive, and that Applicant’s mark should likewise be approved for publication without disclaimer of SUPREME. Applicant respectfully requests that the Examining Attorney reconsider and withdraw the disclaimer requirement.

Early notice that the disclaimer requirement has been withdrawn and that the subject application is approved for publication under Section 2(f) in part is earnestly solicited.

EVIDENCE
Evidence in the nature of TESS pages and examples of use has been attached.
JPG file(s):
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_3867194146-20200318101232267002_._Supreme_in_1996.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_3867194146-20200318101232267002_._SUPREME_2006.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_3867194146-20200318101232267002_._SUPREME_2010.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_3867194146-20200318101232267002_._SUPREME_2013.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_3867194146-20200318101232267002_._Savencia_s_Family_of_Supreme_registrations.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_3867194146-20200318101232267002_._SUPREME_Registrations_compiled.pdf
Converted PDF file(s) ( 12 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: SAVENCIA SA a(n) société anonyme (sa), legally organized under the laws of France, having an address of
      42 rue Rieussec
      Viroflay, 78220
      France

Proposed: SAVENCIA SA, société anonyme (sa) legally organized under the laws of France, having an address of
      42 rue Rieussec
      Viroflay, 78220
      France
      Email Address: TMOwner@faysharpe.com

The owner's/holder's current attorney information: Sandra M. Koenig. Sandra M. Koenig of FAY SHARPE LLP, is located at

      1228 EUCLID AVENUE, 5TH FLOOR
      CLEVELAND, Ohio 44115
      United States
The docket/reference number is BGSA 500062U.
      The phone number is 216-363-9000 x137.
      The fax number is 216-363-9001.
      The email address is skoenig@faysharpe.com

The owner's/holder's proposed attorney information: Sandra M. Koenig. Other appointed attorneys are Colleen Flynn Goss and Mandy B. Willis. Sandra M. Koenig of FAY SHARPE LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1228 EUCLID AVENUE, 5TH FLOOR
      CLEVELAND, Ohio 44115
      United States
The docket/reference number is BGSA 500062U.
      The phone number is 216-363-9000 x137.
      The fax number is 216-363-9001.
      The email address is skoenig@faysharpe.com

Sandra M. Koenig 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.Correspondence Information (current):
      SANDRA M. KOENIG
      PRIMARY EMAIL FOR CORRESPONDENCE: skoenig@faysharpe.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): uspto@faysharpe.com

The docket/reference number is BGSA 500062U.
Correspondence Information (proposed):
      Sandra M. Koenig
      PRIMARY EMAIL FOR CORRESPONDENCE: skoenig@faysharpe.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): uspto@faysharpe.com; chutter@faysharpe.com

The docket/reference number is BGSA 500062U.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Five or More Years' Use
SUPREME has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.


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: /sandramkoenig/      Date: 03/18/2020
Signatory's Name: Sandra M. Koenig
Signatory's Position: Attorney of record, Ohio bar member
Signatory's Phone Number: 216-363-9137


Response Signature
Signature: /sandramkoenig/     Date: 03/18/2020
Signatory's Name: Sandra M Koenig
Signatory's Position: Attorney of record, Ohio Bar member

Signatory's Phone Number: 2163639137

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:    SANDRA M. KOENIG
   FAY SHARPE LLP
   
   1228 EUCLID AVENUE, 5TH FLOOR
   CLEVELAND, Ohio 44115
Mailing Address:    Sandra M. Koenig
   FAY SHARPE LLP
   1228 EUCLID AVENUE, 5TH FLOOR
   CLEVELAND, Ohio 44115
        
Serial Number: 88487524
Internet Transmission Date: Wed Mar 18 11:41:23 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2020031811412326
1549-88487524-71046ab81c579c95f70e38ad1c
cc2b38866aacfbb395b46e6b282c38a61bedd-N/
A-N/A-20200318101232267002