NOTE TO THE FILE
Sent to TICRS as Serial Number: 88896710SERIAL NUMBER: 88896712
DATE: 07/31/2020
NAME: pdang4
NOTE:
Searched:
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Other:Checked:
Geographic significance
Surname
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ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney: via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:From: Samman, Luna <Luna.Samman@arentfox.com>
Sent: Thursday, July 30, 2020 1:48 PM
To: Dang, Peter <Peter.Dang@USPTO.GOV>
Cc: RBI <RBI@arentfox.com>
Subject: RE: Trademark Application SN: 88896710 and 88896712 (BURGER KING)
Dear Mr. Dang,
We are in receipt of your email below and have discussed this matter with the applicant. We would like to amend the identification of goods and services for both applications as follows:
International Class 029: Chicken pieces; potato fries; French fried potatoes; hash brown potatoes; garden salads; milk and milk products excluding ice cream, ice milk, and frozen yogurt; milk shakes; milk-based beverages; onion rings; processed apples; whipped topping; jellies; jams; eggs; cheese; mozzarella sticks; pickles; processed onions; prepared meals consisting primarily of meat, fish, and poultry; constituents for meals, namely, beef, chicken, and fish burger patties; plant-based veggie burger patties; all of the foregoing sold in restaurants for consumption on or off the premises
International Class 030: Hamburger sandwiches; fish sandwiches; chicken sandwiches; veggie burger sandwiches; plant-based sandwiches; breakfast sandwiches; hot sandwiches; burritos; sandwiches; wrap sandwiches; burgers contained in bread rolls; French toast; pancakes; condiments, namely, pickle relish and sandwich relish; mustard; ketchup; mayonnaise; salad dressings; oatmeal; cinnamon rolls, doughnuts; pies; desserts consisting primarily of ice cream and ice milk and including a variety of customer-selected toppings, namely, coffee flavored syrup, cookie crumbs, cake, marshmallow topping, and flavored, prepared and processed nuts; milk products, namely, ice cream, ice milk and frozen yogurt; Appetizers, namely, breaded and fried appetizers consisting primarily of macaroni and cheese; all of the foregoing sold in restaurants for consumption on or off the premises
International Class 043: Services of providing food and drink;
Providingtemporary accommodation; cafe and coffee bar services; food and drink preparation services; food and drink take-out restaurant services; restaurant services; fast-food restaurant services; quick service restaurant services; providing prepared meals; preparation of food and meals for consumption on or off the premises
We agree with your proposed change to the description of the mark for App. No. 88896712 to read as follows:
The mark consists of the stacked, stylized words “BURGER KING” in the color red in between two orange hamburger buns. The color white represents background and is not claimed as a feature of the mark.
We look forward to hearing from you. Please let us know if you have any questions.
Best,
Luna
Luna M. Samman
Partner
Arent Fox LLP | Attorneys at Law
1717 K Street, NW
Washington, DC 20006-5344
202.857.6404 DIRECT | 202.857.6395 FAXluna.samman@arentfox.com | www.arentfox.com
From: Norton, Christopher <Christopher.Norton@arentfox.com>
Sent: Wednesday, July 29, 2020 3:39 PM
To: RBI <RBI@arentfox.com>
Subject: FW: Trademark Application SN: 88896710 and 88896712 (BURGER KING)
From: Dang, Peter <Peter.Dang@USPTO.GOV>
Sent: Wednesday, July 29, 2020 3:35 PM
To: Norton, Christopher <Christopher.Norton@arentfox.com>
Cc: TMDocket <TMDocket@ARENTFOX.COM>
Subject: Trademark Application SN: 88896710 and 88896712 (BURGER KING)
Dear N. Christopher Norton,
I am the trademark examining attorney assigned to your trademark applications for the mark BURGER KING (SN: 88896710 and 88896712). I have reviewed your applications and they look mostly fine, but there are a few procedural issues I would like to speak to you about before we may continue with the application process. These issues are detailed below.
1. Clarification of Identification of Goods and Services (Both applications)
Portions of the identification of goods and services are indefinite and must be clarified.
First, the wording “macaroni and cheese poppers” in International Class 029 is indefinite and must be clarified to specify the nature of the goods. Further, the word “POPPERS” is a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and provide the common commercial or generic name of the goods. Applicant is also advised that macaroni cheese and pasta-based goods are properly classified in International Class 030. Thus, applicant must reclassify these goods accordingly.
Second, the wording “plant-based patties” in International Class 030 is indefinite and must be clarified. For example, applicant may clarify that these goods are in the nature of “veggie burger patties” or “soy burger patties.” Further, applicant is advised that burger patties are properly classified in International Class 029. Thus, applicant must reclassify these goods accordingly.
Third, the wording “desserts consisting primarily of ice cream or ice milk and including a variety of customer-selected toppings, namely, coffee flavored syrup, cookie crumbs, cake, marshmallow topping, and flavored, prepared and processed nuts” in International Class 030 is indefinite, because it is unclear whether applicant provides ice cream-based desserts or ice milk-based desserts. Applicant may clarify this wording by replacing this wording with “and.”
Fourth, the wording “temporary accommodation” in International Class 043 is indefinite and must be clarified to specify the nature of the services provided in relation to temporary accommodation. For example, applicant may clarify that it is “providing temporary accommodation” or “booking of temporary accommodation.”
Lastly, the wording “preparation of food or meals for consumption on or off the premises” in International Class 043 is indefinite, because it is unclear whether applicant provides preparation of foods, preparation of meals, or both. Applicant may clarify this wording by replacing this wording with “and.”
The following is suggested, if accurate:
International Class 029: Chicken pieces; potato fries; French fried potatoes; hash brown potatoes; garden salads; milk and milk products excluding ice cream, ice milk, and frozen yogurt; milk shakes; milk-based beverages; onion rings; processed apples; whipped topping; jellies; jams; eggs; cheese; mozzarella sticks; pickles; processed onions; prepared meals consisting primarily of meat, fish, and poultry; constituents for meals, namely, beef, chicken, and fish burger patties; plant-based veggie burger patties; all of the foregoing sold in restaurants for consumption on or off the premises
International Class 030: Hamburger sandwiches; fish sandwiches; chicken sandwiches; veggie burger sandwiches; plant-based sandwiches; breakfast sandwiches; hot sandwiches; burritos; sandwiches; wrap sandwiches; burgers contained in bread rolls; French toast; pancakes; condiments, namely, pickle relish and sandwich relish; mustard; ketchup; mayonnaise; salad dressings; oatmeal; cinnamon rolls, doughnuts; pies; desserts consisting primarily of ice cream and ice milk and including a variety of customer-selected toppings, namely, coffee flavored syrup, cookie crumbs, cake, marshmallow topping, and flavored, prepared and processed nuts; milk products, namely, ice cream, ice milk and frozen yogurt; Appetizers, namely, breaded and fried dough-enrobed foods consisting of a dough based wrapper with filling consisting of macaroni and cheese; all of the foregoing sold in restaurants for consumption on or off the premises
International Class 043: Services of providing food and drink; Providing temporary accommodation; cafe and coffee bar services; food and drink preparation services; food and drink take-out restaurant services; restaurant services; fast-food restaurant services; quick service restaurant services; providing prepared meals; preparation of food and meals for consumption on or off the premises
2. Mark Description Amendment Required (Application Serial No. 88896712)
The mark description is accurate, but incomplete, because it does not specify whether the color white is claimed as a feature of the mark. Applicant may clarify that the color white represents background and is not claimed as a feature of the mark.
The following is suggested, if accurate:
The mark consists of the stacked, stylized words “BURGER KING” in the color red in between two orange hamburger buns. The color white represents background and is not claimed as a feature of the mark.
There are two ways we may proceed. The first is that I can draft an examiner’s amendment and make the changes with your permission. Second, I can issue an Office Action to which you must respond within 6 months. Please let me know by the end of the business day Friday, July 31st. Let me know if you have any questions.
Thank you,
/Peter Dang/
Trademark Examining Attorney
Law Office 121
United States Patent & Trademark Office
(571) 270-1998