To: | The Downriver Grill, LLC (trademarks@leehayes.com) |
Subject: | U.S. Trademark Application Serial No. 88644882 - BURGER DOME EVERY WEDNESDAY - D075-0006TMU |
Sent: | January 15, 2020 04:56:18 PM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88644882
Mark: BURGER DOME EVERY WEDNESDAY
|
|
Correspondence Address: 601 W. RIVERSIDE AVE SUITE 1400
|
|
Applicant: The Downriver Grill, LLC
|
|
Reference/Docket No. D075-0006TMU
Correspondence Email Address: |
|
NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: January 15, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “EVERY WEDNESDAY,” “BURGER,” and “GRILL” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
Specifically, the wording EVERY WEDNESDAY is merely informational as per the specimen of record which makes clear that the restaurant’s chefs create a special burger “every Wednesday.” Therefore, this wording merely informs the consumers as to a feature of the restaurant services and does not function as a mark. See 15 U.S.C. §§1051-1053, 1127; In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006); TMEP §§807.14(a), 1202.04, 1213.03(a), (b).
Determining whether a term functions as a trademark or service mark depends on how such matter would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d at 1862; TMEP §1202.04. “The more commonly a [term] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].” In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04.
Second, Applicant must disclaim the term BURGER for the services in class 43 because it immediately identifies a key menu item featured in Applicant’s restaurants. A term may be generic for restaurant services if the term identifies a central focus or key aspect of the services, such as a specialty dish, as well as where the evidence shows that a class of restaurants have the same central focus or key aspect. See In re Cordua Rests., Inc., 823 F.3d 594, 604, 118 USPQ2d 1632, 1638 (Fed. Cir. 2016) (holding CHURRASCOS generic for a class of restaurants that serve churrascos (grilled meat)); Hunt Masters, Inc. v. Landry's Seafood Rest., Inc., 240 F.3d 251, 254, 57 USPQ2d 1884, 1885-86 (4th Cir. 2001) (holding CRAB HOUSE generic for a class of restaurants that serve crabs); TMEP §1209.03(v).
Lastly, Applicant must disclaim the term GRILL for class 43 because it identifies a type of restaurant. According to the attached, the term “grill” is defined as: An informal restaurant or a room in a restaurant where grilled foods are served. Also called grillroom. See attached. This aptly describes applicant’s services. Please note that Applicant disclaimed this term in its prior DOWNRIVER GRILL registrations.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “EVERY WEDNESDAY,” “BURGER” and “GRILL” for class 43 apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
The following cases further explain the disclaimer requirement: Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983).
Response Guidelines
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action.
Alain Lapter, Esq.
/Alain Lapter/
Trademark Examining Attorney
Law Office 105
email: alain.lapter@uspto.gov
phone: 571-272-3162
RESPONSE GUIDANCE