| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88509557 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88509557/mark.png |
| LITERAL ELEMENT | UNCOOKED |
| 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) | |
|
The Trademark Examining Attorney has rejected the application to register UNCOOKED for tortillas, on the basis that the mark appears to be generic, or, if not generic, merely descriptive of a feature or character of the goods.
The evidence attached to the Office Action provides no support for the contention that UNCOOKED is a generic term for tortillas. To support a finding that the mark is generic, the Trademark Examining Attorney must show that the term UNCOOKED is used to name a class of tortillas. “[W]hether a mark is generic…involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered…understood by the relevant purchasing public to refer to that genus of goods or services.” H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 228 USPQ 528, 530 (Fed. Cir. 1986).
The Trademark Examining Attorney relies on four publications: none of these show use of UNCOOKED as the name of a genus of tortillas. The first, an entry in the LEXICO online dictionary, is a definition of uncooked and makes no reference to tortillas. The three other references appear to be webpages. The first is for Maria-Ricardo’s tortillas, and uses the word UNCOOKED alone, in a prominently, eye-catching way on the packaging, which is not consistent with the view that the term is used as a generic.
The second reference is a webpage promoting Kroger Uncooked Flour Tortillas. Once again, UNCOOKED is used alone on the packaging in large white characters on a red background. This eye-catching use of UNCOOKED does not indicate that there is a class of tortillas for which UNCOOKED is the word used to identify that class or genus.
The third reference is a webpage promoting My Nana’s brand tortillas, which includes a product identified as Uncooked Flour Tortillas. There is no indication that “uncooked” as used on the packaging is the name of a genus of tortillas.
In sum, the evidence relied on by the Trademark Examining Attorney does not come close to the “clear and convincing” evidence required to show that a mark applied for is generic. “[I]n registration proceedings the PTO always bears the burden of proving genericness by clear and convincing evidence.” In re Cordua Rests., Inc., 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (citing In re Hotels.com, L.P., 573 F.3d 1300 (Fed. Cir. 2009). The rejection on the basis of genericness should be withdrawn.
Turning now to the descriptiveness objection, it is submitted that the mark is suggestive, not descriptive. Thought and imagination are required to understand that tortillas sold under the mark UNCOOKED are, in fact, cooked but are intended to be re-heated for a short time before serving.
As the Maria-Ricardo’s webpage explains, “We do all the work but leave the finishing touch to you! Just slide a tortilla from the package heat for one minute on each side and fill with any combination of savory or sweet!”
Reconsideration of applicant’s application is respectfully requested.
|
|
| ATTORNEY SECTION (current) | |
| NAME | John M. Cone |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | FERGUSON BRASWELL FRASER KUBASTA PC |
| STREET | 2500 DALLAS PARKWAY, SUITE 600 |
| CITY | PLANO |
| STATE | Texas |
| POSTAL CODE | 75093 |
| COUNTRY | US |
| PHONE | 972-826-4436 |
| FAX | 972-378-9115 |
| jmcdocket@fbfk.law | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 5139.228.US |
| ATTORNEY SECTION (proposed) | |
| NAME | John M. Cone |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | FERGUSON BRASWELL FRASER KUBASTA PC |
| STREET | 2500 DALLAS PARKWAY, SUITE 600 |
| CITY | PLANO |
| STATE | Texas |
| POSTAL CODE | 75093 |
| COUNTRY | United States |
| PHONE | 972-826-4436 |
| FAX | 972-378-9115 |
| jmcdocket@fbfk.law | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 5139.228.US |
| CORRESPONDENCE SECTION (current) | |
| NAME | JOHN M. CONE |
| FIRM NAME | FERGUSON BRASWELL FRASER KUBASTA PC |
| STREET | 2500 DALLAS PARKWAY, SUITE 600 |
| CITY | PLANO |
| STATE | Texas |
| POSTAL CODE | 75093 |
| COUNTRY | US |
| PHONE | 972-826-4436 |
| FAX | 972-378-9115 |
| jmcdocket@fbfk.law; dcone@fbfk.law | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 5139.228.US |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | John M. Cone |
| FIRM NAME | FERGUSON BRASWELL FRASER KUBASTA PC |
| STREET | 2500 DALLAS PARKWAY, SUITE 600 |
| CITY | PLANO |
| STATE | Texas |
| POSTAL CODE | 75093 |
| COUNTRY | United States |
| PHONE | 972-826-4436 |
| FAX | 972-378-9115 |
| jmcdocket@fbfk.law | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 5139.228.US |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /johnmcone/ |
| SIGNATORY'S NAME | John M. Cone |
| SIGNATORY'S POSITION | Attorney of Record |
| SIGNATORY'S PHONE NUMBER | 972-826-4436 |
| DATE SIGNED | 01/17/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Jan 17 13:19:09 EST 2020 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XXX.XXX- 20200117131909612712-8850 9557-7001dad5bdd9b38651a2 36c1d83892aab1fc2b71c19e0 3488ca7dfea8cef4ce4-N/A-N /A-20200117131707380437 |
| 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) |
The Trademark Examining Attorney has rejected the application to register UNCOOKED for tortillas, on the basis that the mark appears to be generic, or, if not generic, merely descriptive of a feature or character of the goods.
The evidence attached to the Office Action provides no support for the contention that UNCOOKED is a generic term for tortillas. To support a finding that the mark is generic, the Trademark Examining Attorney must show that the term UNCOOKED is used to name a class of tortillas. “[W]hether a mark is generic…involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered…understood by the relevant purchasing public to refer to that genus of goods or services.” H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 228 USPQ 528, 530 (Fed. Cir. 1986).
The Trademark Examining Attorney relies on four publications: none of these show use of UNCOOKED as the name of a genus of tortillas. The first, an entry in the LEXICO online dictionary, is a definition of uncooked and makes no reference to tortillas. The three other references appear to be webpages. The first is for Maria-Ricardo’s tortillas, and uses the word UNCOOKED alone, in a prominently, eye-catching way on the packaging, which is not consistent with the view that the term is used as a generic.
The second reference is a webpage promoting Kroger Uncooked Flour Tortillas. Once again, UNCOOKED is used alone on the packaging in large white characters on a red background. This eye-catching use of UNCOOKED does not indicate that there is a class of tortillas for which UNCOOKED is the word used to identify that class or genus.
The third reference is a webpage promoting My Nana’s brand tortillas, which includes a product identified as Uncooked Flour Tortillas. There is no indication that “uncooked” as used on the packaging is the name of a genus of tortillas.
In sum, the evidence relied on by the Trademark Examining Attorney does not come close to the “clear and convincing” evidence required to show that a mark applied for is generic. “[I]n registration proceedings the PTO always bears the burden of proving genericness by clear and convincing evidence.” In re Cordua Rests., Inc., 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (citing In re Hotels.com, L.P., 573 F.3d 1300 (Fed. Cir. 2009). The rejection on the basis of genericness should be withdrawn.
Turning now to the descriptiveness objection, it is submitted that the mark is suggestive, not descriptive. Thought and imagination are required to understand that tortillas sold under the mark UNCOOKED are, in fact, cooked but are intended to be re-heated for a short time before serving.
As the Maria-Ricardo’s webpage explains, “We do all the work but leave the finishing touch to you! Just slide a tortilla from the package heat for one minute on each side and fill with any combination of savory or sweet!”
Reconsideration of applicant’s application is respectfully requested.