throbber
Cowan, Liebowitz 8: Latman, P.C.
`Law Offices
`
`1133 Avenue of the Americas
`
`9 New York, NY 10036-6799
`
`(212)790-9200 0 www.cll.com 0 Fax (212)575-0671
`
`Sujata Chaudhri
`Direct (212) 790-9236
`s7.c@cll.c0m
`
`April 3, 2007
`
`VIA EXPRESS MAIL
`
`Box TTAB ~ FEE
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`Re:
`
`The Chios Mastiha Growers Association
`
`Mark THE CHIOS MASTIHA GROWERS ASSOCIATION& Design
`Serial No. 79/018,867 in Classes 3, 5, 30 and 33
`Attorney Reference No. 25034005
`
`
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`,
`1-
`,
`""‘““"""“**~*'*~- —»»--—»----~—
`
`
`
`Dear Commissioner:
`
`.
`We attach the following:
`
`1.
`
`2.
`
`3.
`
`Notice of Appeal.
`
`Copy of Request for Reconsideration in Response to Office Action
`Dated October 3, 2006.
`
`Check in the amount of $400 to cover filing fees with respect to
`Notice of Appeal.
`
`If the enclosed check is insufficient and additional fees are required, please charge our
`Deposit Account No. 03-3415.
`
`Kindly acknowledge receipt of the enclosures recited above BY STAMPING THE
`ATTACHED POST CARD April 3, 2006, IN ACCORDANCE WITH THE EXPRESS
`MAIL RULE.
`
`
`
`O4-O3-2007
`U.S. Patent &TMO\‘c!TM Mail RCQDL #01
`9,99 C L L JOHN F. KENNEDY I:\'TERNA‘I'IONAL AIRPORT Omci: o JAi°.»\;\= AlRLI:\3E5BU1LD1NG 14, Sum: 113 - (718)244-8595
`26100/090/7835371
`
`

`
`Cowan, Liebowitz & Latman, P.C.
`Box T.T.A.B. Fee
`
`Page 2
`
`Please address all communications, either by mail or telephone, to the undersigned.
`
`Respectfully submitted,
`
`COWAN,LIE OWIT
`Attorneys for
`pplica
`
`
`
`
`LA MAN,P.C.
`
`
`
`Enclosures
`
`cc:
`
`Tricia Sonneborn, Esq., Trademark Attorney, Law Office 1 10
`
`26100/090/783537.|
`
`

`
`i
`
`‘.'/
`
`Attorney Ref. No. 25034005
`
`,._——.——
`
`TTAB
`
`TRADEMARK LAW OFFICE 110
`Serial No. 79/018,867
`
`Mark: THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION &
`
`Design
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_ . . . . _ _ _ . _ _ . _ . _ _ . _ . _ _ _ _ . _ _ _ . _ _ _ _ _ _ _ _ _ _ _ . _ _ _ _ _ . _ _ _ ..._x
`
`In re Application of
`
`The Chios Mastiha Growers Association
`
`Serial N0. 79/018,867
`
`: NOTICE OF APPEAL
`
`Filed: January 23, 2005
`
`For Mark: THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION & Design
`
`_ _ . _ _ _ _ _ _ _ . _ _ _ _ _ _ _ _ _ _ _ _ . . _ . . . _ _ _ _ _ . _ _ _ _ . _ . . _ _ _ _ _ _ __x
`
`Commissioner for Trademarks
`Box TTAB
`
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`Sir:
`
`Applicant hereby appeals to the Trademark Trial and Appeal Board from the decision
`
`of the examining attorney dated October 3, 2006 refusing registration.
`
`This notice of appeal
`
`is accompanied by a copy of Applicant's Request
`
`for
`
`Reconsideration to the Examining Attorney's Office Action of October 3, 2006. Applicant
`
`respectfully requests that this appeal be suspended and that the case be remanded to the
`
`Examining Attorney for consideration of Applicant's Response.
`,0
`“Express Mail" Mailing Label Number
`H
`Ih
`b
`rt'fythtth'
`fibi
`d
`'td 'ththU‘tdStt
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`sefviciil Em???
`C.F.R. 1.10 on the dte indicated hove and is adresed to the ommissioner
`
`
`
`
`
`°"°9’9°°7 °T“°"“99 °°°°°°33 033415
`01 FC=6403
`400-00 DA
`
`79013367
`
`25034/004/783 181. 1
`
`

`
`‘\
`
`Applicant encloses herewith a check for $400 in payment of the prescribed appeal fee.
`
`Dated: New York, New York
`
`April 3, 2007
`
`Respectfully submitted,
`
`
`
`New Yprk, New York 10036-6799
`(212) 790-9200
`
`cc:
`
`Tricia Sonneborn, Esq., Trademark Attorney, Law Office 1 10
`
`25034/O04/783 l 81 .1
`
`

`
`

`
`" ‘Cieek loukoumi. Greek loukoumi info and quality.
`
`Page 1 of 1
`
`greekproducfscom _.j%~’M’l‘ié.“3'o1»-i...»..~——’
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`
`IOU__,,- .,.. V
`\r ~-
`~.s':;mc 391%!‘
`The source for Grezk Products
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`I
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`Natural Fruit
`Preserves & Jams
`
`"Tuesday April 13, 2007
`
`Loukoumi
`
`-
`
`’ Your are in : Main > About Greek Products > Loukoumi
`
`About Loukoumi
`
`oukoumi, a chewy candy dusted in
`powdered sugar IS the Greek version
`of the so-called "Turkish Delight".This
`rubbery-textured candy is extremely popular
`throughout Greece.lt is made from gelatin or
`cornstarch, sugar, honey and fruitjuice or
`jelly, and is often tinted pink or green.
`Chopped almonds, pistachio nuts, pine nuts
`or hazelnuts are frequently added.
`Once the candy becomes firm, it is cut into
`small squares and coated with confectioners'
`sugar_
`
`
`
`oukoumi must be 99% sugar and it is packed in powdered sugarjust in case
`wasn't sweet enough to begin with.
`The best loukoumi it is produced in the Cycladic island of Syros, where its
`preparation is a real art.Not only Syros produces loukoumi, but one can find this tra
`candy in the whole of the country.
`Many Greek industries of the confectionery sector produce the same traditional loul
`in large quantities by using the same raw materials in its preparation.
`Loukoumi is an important export product of Greece and can be found in candy shot
`supermarkets throughout the world.
`
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`4/3/2007
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`

`
`Attorney Ref. No. 25034004
`
`TRADEMARK LAW OFFICE 11 1
`Serial No. 79/018,867
`Mark: THE CHIOS MASTIHA
`GROWERS ASSOCIATION & Design
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_ — — — _ - . _ _ . _ _ . _ . _ _ _ _ . . _ _ _ . . _ . . . _ _ . _ . _ _ _ _ . _ _ _ _ _ _ _ _ _ __ X
`
`In re Application of
`
`The Chios Mastiha Growers Association
`
`Serial No. 79/018,867
`
`piled; January 23, 2005
`
`- REQUEST FOR
`, RECONSIDERATION IN
`' RESPONSE TO OFFICE ACTION
`I DATED OCTOBER 3, 2006
`
`For Mark: THE CHIOS MASTIHA
`GROWERS ASSOCIATION & Design
`
`_________________________________________________ __ X
`
`Commissioner for Trademarks
`
`P. O. Box 1451
`
`"
`
`Alexandria, Virginia 22313-1451
`
`Attention: Tricia Sonneborn, Esg., Trademark Attorney, Law Office 110
`
`The Chios Mastiha Growers Association (“Applicant”) hereby responds to the FINAL
`
`Office Action dated October 3, 2006 in connection with the above—identified trademark
`
`application.
`
`—
`
`7..
`
`04-03-2007
`U.S.Pa1ent &TMOfc!TM Mail RCQDL #01
`
`25034/005/786536.]
`
`“Express Mail“ Mailing Label Number B) W W H
`I hereby certify that this paper or fee is being deposited with the United States
`Postal Service “Express Mail Post office to Addressee" service under 37
`ove and is addressed to the Commissioner
`
`“Aw
`
`

`
`Attorney Ref. No. 25034.004
`
`TRADEMARK LAW OFFICE 11]
`Serial No. 79/018,867
`
`Mark: THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION &
`
`Design
`
`AMENDMENTS
`
`Please amend the identification of goods covered by Applicant’s application as
`
`follows:
`
`International class 3
`
`a.
`
`Please amend “acne treating cosmetic creams” to “non—medicated acne treating
`
`cosmetic creams."
`
`b.
`
`Please amend “cream for the feet” to “non-medicated cream for the feet.”
`
`International class 5
`
`a.
`
`Please amend “therapeutic preparations, namely, oral—cavity care preparations” to
`
`“therapeutic preparations, namely, oral—cavity care preparations, namely, mouth cavity
`
`cleansers.”
`
`b.
`
`Please amend “preparations
`
`for
`
`the treatment of the skin and wounds” to
`
`“preparations for the treatment of the skin and wounds, namely, medicated skin care
`
`preparations.”
`
`25034/005/786536.]
`
`

`
`Attorney Ref. No. 25034004
`
`TRADEMARK LAW OFFICE 1 11
`Serial No. 79/018,867
`Mark: THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION &
`
`Design
`
`International class 30
`
`Please amend “crisps” to “bread crisps.”
`
`Please amend “sweets made of sesame and honey” to “sweets made of sesame and
`
`a.
`
`b.
`
`honey, namely, pastelli and sesame pies.”
`
`c.
`
`cl.
`
`e.
`
`Please delete “sweets with biscuits.”
`
`Please amend “mastic-based sweets” to “mastic-based sweets, namely, puddings.”
`
`Please amend “delight” to “delight, namely, Turkish delight and loukoumi.”
`
`A.
`
`Disclaimers
`
`REMARKS
`
`The examining attorney has made final the requirement to disclaim THE CHIOS
`
`MASTIHA GROWERS ASSOCIATION and ORIGINAL PRODUCT GUARANTEED, the
`
`non-Latin characters that mean THE CHIOS MASTIHA GROWERS ASSOCIATION and
`
`ORIGINAL PRODUCT GUARANTEED.
`
`Applicant respectfully states the disclaimer requirement regarding ORIGINAL
`
`PRODUCT GUARANTEED and the non-Latin characters that mean ORIGINAL
`
`PRODUCT GUARANTEED is moot because Applicant has already entered disclaimers of
`
`these terms. See printout from TARR attached as Exhibit 1.
`
`Applicant respectfully disagrees with the examining attorney’s position regarding
`
`THE CHIOS MASTIHA GROWERS ASSOCIATION and the non-Latin characters that
`
`mean THE CHIOS MASTIHA GROWERS ASSOCIATION and requests that the examining
`
`25034/005/786536.]
`
`

`
`Attorney Ref. No. 2S034.004
`
`TRADEMARK LAW OFFICE 11 1
`Serial No. 79/018,867
`
`Mark: THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION &
`
`Design
`
`attorney reconsider and withdraw the refusal because Applicant is the sole and exclusive
`
`source of the goods covered by classes 3, 5, 30 and 33 and the term THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION has acquired distinctiveness in relation to goods covered by
`
`these classes, as stated in the attached declaration.
`
`i. Applicant is the Only Source of Mastiha and Mastiha Products in the United
`States
`
`Applicant, The Chios Mastiha Growers Association, is an agricultural cooperative
`
`engaged in the business of selling mastiha gum (hereinafter referred to as “mastiha”) and
`
`products derived from mastiha such as mastiha essential oil and chewing gum. See
`
`Declaration of Konstantinos Ganiaris, President of Applicant, attached as Exhibit 2
`
`(hereinafter “Ganiaris Decl.”) at 1] 3-4 and 7. Mastiha is a resin-type gum, harvested
`
`exclusively from the mastiha tree, Pistacia Lentiscus L. var. Chia. This tree can only be
`
`grown in twenty-four (24) villages in the southern part of the Greek island of Chios in the
`
`north-eastem Aegean Sea. Ganiaris Decl. at 11 3. Owing to the fact that mastiha only
`
`originates in one place throughout the world, the European Union has recognized mastiha
`
`and mastiha products, namely, mastiha essential oil and mastiha chewing gum, as protected
`
`designations of origin (hereinafter “PDOs”). Ganiaris Decl. at 1] 11.
`
`Applicant was founded in 1938 by a special law, namely, Compulsory Law No. 1390
`
`of 8/ 10 October 1938 (hereinafter “Law”), and continues to be in good standing. Ganiaris
`
`Decl. at 1] 6. The Law requires all growers of mastiha to become members of Applicant.
`
`25034/005/786536.l
`
`

`
`Attorney Ref. No. 25034.004
`
`TRADEMARK LAW OFFICE 111
`Serial No. 79/018,867
`
`Mark: THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION &
`
`Design
`
`Ganiaris Decl. at1] 7.
`
`In addition, the Law requires each and every grower of mastiha to
`
`deliver its entire produce (except for a small quantity for personal consumption) to Applicant.
`
`Ganiaris Decl. atfil 9. Thus, under the Law, Applicant has an exclusive right over the
`
`mastiha grown by growers in the southern part of the island of Chios (the only place in the
`
`world where mastiha is grown). The Law also gives Applicant the sole and exclusive right to
`
`commercialize mastiha and mastiha products all over the world, including the United States.
`
`Applicant first cleans and processes the mastiha crop that is delivered to it by the
`
`growers of mastiha. Ganiaris Decl. atfll 12. Applicant then packages the mastiha and
`
`mastiha products and sells them either directly or indirectly in numerous countries around the
`
`world, including the United States. Ganiaris Decl. at fil 13. Thus, one hundred percent
`
`(100%) of mastiha and mastiha products, namely, mastiha essential oil and chewing gum,
`
`sold in the United States and other countries emanate from Applicant. Ganiaris Decl. at fil 14.
`
`Applicant’s exclusive rights in mastiha and mastiha products are further safeguarded
`
`by additional laws passed by the state of Greece. Ganiaris Decl. atfil 10.
`
`Applicant has also been recognized as having exclusive rights in mastiha and mastiha
`
`products outside Greece. The European Union which comprises twenty seven (27) countries
`
`recognizes Applicant as the only legitimate rights holder of the PDOs, namely, Chios
`
`Mastiha, Chios Mastiha oil and Chios chewing gum. Ganiaris Decl. atfil l 1.
`
`Thus, the only source of mastiha is the Greek island of Chios, all mastiha harvested on
`
`Chios (except for a small quantity for personal consumption by the growers) must be turned
`
`25034/005/786536.!
`
`5
`
`

`
`Attorney Ref. No. 25034.004
`
`TRADEMARK LAW OFFICE 111
`Serial No. 79/018,867
`
`Mark: THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION &
`
`Design
`
`over to Applicant, and Applicant is the sole entity that is authorized to sell and sells mastiha
`
`in the United States.
`
`It follows that the term THE CHIOS MASTIHA GROWERS
`
`ASSOCIATION can not help but function as a source identifier for the goods bearing this
`
`term. Ganiaris Decl. at 1] 2. See I_n re Failure Analysis Associates,
`
`1 USPQ2d 1 144 (TTAB
`
`1986) (term FAILURE ANALYSIS ASSOCIATES, which had not been used by other
`
`entities to denote type of services rendered by applicant, held sufficient to establish, prima
`
`facie, that the relevant public understands the term as nothing more than name of the services
`
`rendered by applicant).
`
`ii.
`
`The Term THE CHIOS MASTIHA GROWERS ASSOCIATION Has
`Acquired Distinctiveness Through Substantially Exclusive and Continuous
`Use For At least Five Years Prior to the Date of Applieant’s Declaration
`
`The term THE CHIOS MASTIHA GROWERS ASSOCIATION has become
`
`distinctive through Applieant’s substantially exclusive and continuous use for at least five
`
`years on and in connection with mastiha and mastiha products in commerce between Greece
`
`and the United States or in U.S. interstate commerce.
`
`Section 2(f) of the Trademark Act, 15 U.S.C. §1052(i), provides that "proof of
`
`substantially exclusive and continuous use" of a designation "as a mark by the applicant in
`
`commerce for the five years before the date on which the claim of distinctiveness is made“
`
`may be accepted as primafacie evidence that the mark has acquired distinctiveness as used
`
`with the applicant's goods in commerce. 37 C.F.R. §2.41(b); T.M.E.P. §1205.05. If an
`
`applicant chooses to seek registration under Section 2(f) of the Trademark Act, 15 U.S.C.
`
`25034/005/786536.]
`
`6
`
`

`
`Attorney Ref. No. 25034.004
`
`TRADEMARK LAW OFFICE ll 1
`Serial No. 79/018,867
`Mark: THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION &
`
`Design
`
`§l052(t), by using the statutory suggestion of five years of use as proof of distinctiveness, the
`
`applicant should submit a claim of distinctiveness. T.M.E.P. §l205.05(d). The claim of
`
`distinctiveness is generally required to be supported by an affidavit or declaration under 37
`
`C.F.R. §2.20, signed by a person properly authorized to sign on behalf of applicant under 37
`
`C.F.R. §2.33(a). T.M.E.P. §1205.05(d).
`
`Here, Applicant has used the term THE CHIOS MASTIHA GROWERS
`
`ASSOCIATION substantially exclusively and continuously for at least five years on and in
`
`connection with mastiha and mastiha products in commerce between Greece and the United
`
`States or in U.S. interstate commerce. Ganiaris Decl. at 1] 16. Applicant’s claim of five years’
`
`use should be accepted as prima facie evidence that the term THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION has acquired distinctiveness under Section 2(t) of the
`
`Trademark Act, 15 U.S.C. §1052(t).
`
`iii.
`
`The Term THE CHIOS MASTIHA GROWERS ASSOCIATION Has
`
`Acquired Distinctiveness Through Use in the United States
`
`Furthermore, a review of the evidence submitted along with the Ganiaris Declaration
`
`shows that the term THE CHIOS MASTIHA GROWERS ASSOCIATION has acquired
`
`distinctiveness by long and extensive use in commerce such that the U.S. press, trade, and
`
`public widely recognize it as a source identifier of goods emanating from Applicant.
`
`Accordingly, Applicant should not be required to disclaim the term THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION.
`
`25034/O05/786536.!
`
`

`
`Attorney Ref. No. 25034.004
`
`TRADEMARK LAW OFFICE 1 1 1
`Serial No. 79/018,867
`
`Mark: THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION &
`
`Design
`
`Applicant has sold mastiha and mastiha based products in the United States for close
`
`to five decades. Long use of the mark is one relevant factor to consider in determining
`
`whether a mark has acquired distinctiveness. T.M.E.P. 1212.06(a). These products have
`
`been distributed throughout the United States either directly by Applicant or through third-
`
`party distributors and retailers in packaging bearing the term THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION. Such use of the term THE CHIOS MASTIHA GROWERS
`
`ASSOCIATION has helped establish consumer recognition of Applicant as the source of the
`
`mastiha and mastiha products. Ganiaris Decl. at 1] 17. Moreover, as explained above, such
`
`use has been exclusive.
`
`Furthermore, Applicant’s use of THE CHIOS MASTIHA GROWERS
`
`ASSOCIATION has been substantial. Applicant has enjoyed strong sales since the early
`
`-- days. Ganiaris Decl. at 1] 17. Applicant’s direct sales of mastiha during the period between
`
`1959 through 2006 exceeded one hundred and thirty five thousand kilograms or three
`
`hundred thousand pounds. During the years 2000 through 2006, Applicant’s direct sales of
`
`unprocessed mastiha exceeded thirty eight thousand kilograms or eighty five thousand
`
`pounds. The dollar value of this unprocessed mastiha was approximately 3 million Euros‘ or
`
`US$ 4 millionz. Ganiaris Decl. atfll 18 and 19. See In r_e Uncle Sam Chemical Co., Inc., 229
`
`USPQ 233 (TTAB 1986) (§2(f) claim of acquired distinctiveness of SPRAYZON for
`
`' This figure has been calculated using a yearly average price per kilo.
`2 The conversion from Euros into dollars has been done using the exchange rate as of March 24, 2007.
`
`25034/O05/786536.l
`
`8
`
`

`
`Attorney Ref. No. 25034.004
`
`TRADEMARK LAW OFFICE 1 l 1
`Serial No. 79/018,867
`Mark: THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION &
`
`Design
`
`"cleaning preparations and degreasers for industrial and institutional use" found persuasive
`
`where applicant had submitted declaration of its president supporting sales figures and
`
`attesting to over eighteen years of substantially exclusive and continuous use).
`
`Applicant has also promoted the term THE CHIOS MASTIHA GROWERS
`
`ASSOCIATION as an indicator of source for
`
`its goods.
`
`Ganiaris Decl. at
`
`1] 20.
`
`Advertisements featuring the term THE CHIOS MASTIHA GROWERS ASSOCIATION in
`
`conjunction with the goods covered by App1icant’s application have appeared in
`
`publications,
`
`including general
`
`interest magazines targeted towards the general public, as
`
`well as specialty publications such as magazines targeted towards food connoisseurs and the
`
`culinary industry. Ganiaris Decl. at 1] 20. Applicant and Applicant’s products have also
`
`received unsolicited media coverage on the Today Show and Good Morning America.
`
`Ganiaris Decl. at fil 21. These shows are watched by millions of people across the United
`
`States.
`
`In 2006 Applicant embarked on an aggressive advertising campaign which cost
`
`Applicant close to one million three hundred forty thousand US$ (1,340,000 US$). Ganiaris
`
`Decl. at ‘ll 20. As part of this campaign, Applicant co—sponsored an event called “Passport to
`
`a Taste of Greece” in which numerous well-known New York City restaurants participated.
`
`Brochures and promotional materials distributed during this event prominently listed
`
`Applicant as a co-sponsor of the event. Ganiaris Decl. at 1] 22. App1icant’s association with
`
`mastiha and mastiha products has also been enhanced through presentations about mastiha in
`
`25034/O05/786536.]
`
`

`
`Attorney Ref. No. 25034.004
`
`TRADEMARK LAW OFFICE 11 1
`Serial No. 79/018,867
`
`Mark: THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION &
`
`Design
`
`major U.S. cities such as New York and Washington, D.C.
`
`In December 2006, Applicant
`
`presented a program at the famous French Culinary Institute where chefs and beauty experts
`
`presented the culinary and cosmetic uses of mastiha to an audience consisting of journalists
`
`from prominent magazines, chefs and ordinary persons interested in mastiha. Ganiaris Decl.
`
`at 1] 23. Also, in December 2006, the Greek embassy in Washington, D.C. held a program for
`
`journalists and media persons about mastiha. This program was hosted by the Greek
`
`ambassador to the United States and was sponsored, in part, by Applicant, thus increasing the
`
`exposure of Applicant and its products to the U.S. media and public. Id.
`
`Not only has Applicant promoted THE CHIOS MASTIHA GROWERS
`
`ASSOCIATION as a source identifier among the general public, it has also promoted itself
`
`among the members of the trade. Invoices issued to Applicant’s retailers and distributors in
`
`the United States prominently display Applicant’s name. Ganiaris Decl. at 1] 17. Such use
`
`has helped in consumer recognition of Applicant as the source of the mastiha and mastiha
`
`products. Id.
`
`Applicant has also participated in international Food & Drink trade shows in the
`
`United States, such as the Summer and Winter Fancy Food Shows in New York and San
`
`Francisco. App1icant’s booths and promotional materials at these trade shows display
`
`Applicant’s name such that the trade and other persons who visit these trade shows know that
`
`the mastiha and mastiha products emanate from Applicant. Ganiaris Decl. at 1] 24.
`
`25034/005/786536.]
`
`10
`
`

`
`Attorney Ref. No. 25034.004
`
`TRADEMARK LAW OFFICE 1 l 1
`Serial No. 79/018,867
`
`Mark: THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION &
`
`Design
`
`For all the above reasons, the term THE CHIOS MASTII-IA GROWERS
`
`ASSOCIATION has become widely recognized by the U.S. press, trade, and public as a
`
`source identifier of Applicant’s goods.
`
`Since Applicant should not be required to disclaim THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION, it should also not be required to disclaim the non-Latin
`
`characters that mean CHIOS MASTIHA GROWERS ASSOCIATION and the transliteration
`
`of those foreign characters which is ENOSI MASTIOPARAGOGON CHUOU.
`
`B.
`
`Identification of Goods and Services
`
`Applicant responds to the examining attomey’s requirements as follows:
`
`Class 3:
`
`The examinin attorne has asked A licant to amend “acne treatin cosmetic
`g
`3’
`PP
`
`creams” to “non—medicated acne treating cosmetic creams” and “cream for the feet” to “non-
`
`medicated cream for the feet.” Applicant has complied with the examining attomey’s
`
`requirements.
`
`Class 5:
`
`The
`
`examining attorney has
`
`asked Applicant
`
`to specify “therapeutic
`
`preparations, namely, oral-cavity carc preparations.” Applicant has specified these goods as
`
`follows:
`
`“therapeutic preparations, namely, oral-cavity care preparations, namely, mouth
`
`cavity cleansers.” The examining attorney has also asked Applicant to specify “preparations
`
`for the treatment of skin and wounds.” Applicant has specified these goods as follows:
`
`“medicated preparations for the treatment of skin and wounds.“
`
`25034/O05/786536.]
`
`1 1
`
`

`
`Attorney Ref. No. 25034.004
`
`TRADEMARK LAW OFFICE lll
`Serial No. 79/018,867
`
`Mark: THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION &
`
`Design
`
`Class 30:
`
`The examining attorney requires Applicant to delete “tahini” from this class.
`
`Applicant respectfully disagrees with the examining attorney and requests that she withdraw
`
`this requirement.
`
`Examining attorneys are required to examine § 66(a) applications
`
`according to “the same standards of specificity used in examining applications under § 1 and
`
`§44 of the Trademark Act, 15 U.S.C. §§l051 and 1126.” T.M.E.P. § 1904.02. However,
`
`classification of goods and services covered by § 66(a) applications is controlled by the
`
`International Bureau (IB). See Article 3(2) ofthe Madrid Protocol and T.M.E.P. § 1904.02.
`
`It follows that the USPTO cannot change the classification of goods/services in a § 66(a)
`
`application even if the IB’s classification of goods/services in the § 66(a) application is
`
`different from the classification set forth in the USPTO Manual.
`
`In fact, the T.M.E.P. clearly
`
`states that “if the IB’s classification of goods/services in the §66(a) application is different
`
`from the classification set forth in the USPTO ID Manual, the examining attorney will not
`
`request an amendment of the classification.” T.M.E.P. § 1904.02
`
`Here, the IB has classified “tahini” in class 30, whereas the USPTO Manual classifies
`
`“tahini” in class 29.
`
`In accordance with T.M.E.P. § 1904.02, the examining attorney should
`
`accept the classification of “tahini” in class 30.
`
`The examining attorney also requires Applicant to specify “crisps”, sweets made of
`
`sesame and honey”, “sweets made with biscuits”, “delight” and mastic based sweets.”
`
`25034/O05/786536.l
`
`

`
`Attorney Ref. No. 250341.004
`
`TRADEMARK LAW OFFICE 111
`Serial No. 79/018,867
`
`Mark: THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION &
`
`Design
`
`Applicant has specified “crisps” by amending to “bread crisps.” Applicant has also
`
`amended “sweets made of sesame and honey” to “sweets made of sesame and honey, namely,
`
`pastelli and sesame pies.” Further, Applicant has deleted “sweets made with biscuits” and
`
`amended “mastic based sweets” to “mastic based sweets, namely, puddings.
`
`Lastly,
`
`Applicant
`
`requests amendment of “delight” to “delight, namely, Turkish delight and
`
`loukoumi3.”
`
`The identification of goods covered by class 30 remains unchanged.
`
`Pursuant to the amendments, the application covers the following goods:
`
`Class 3:
`
`BLEACHING PREPARATIONS FOR COSMETIC PURPOSES AND FOR
`HOUSEHOLD USE; PREPARATIONS FOR LAUNDRY USE, NAMELY,
`FABRIC SOFTENERS, SEAWEED GELATINE; GENERAL PURPOSE
`PREPARATIONS FOR CLEANING AND POLISHING; ABRASIVE
`LIQUIDS AND POWDERS; SOAPS, NAMELY, LIQUID, HAND AND
`LAUNDRY SOAPS; AFTER-SHAVE LOTION;
`SHAVING FOAM;
`PERFUMERY; COSMETICS; HAIR DRESSING PREPARATIONS,
`NAMELY, SHAMPOOS, CONDITIONERS, POMADE; PERFUMES,
`ESSENTIAL OILS AND COSMETIC PREPERATIONS WITH OR
`WITHOUT PERFUME, NAMELY, SKIN CREAMS FOR THE NECK,
`NON-MEDICATED
`ACNE
`TREATING
`COSMETIC
`CREAMS,
`CLEANSING MILK FOR THE FACE, FACE SCRUB, BODY SCRUB,
`MOISTURIZING BODY MILK, NON-MEDICATED CREAM FOR THE
`FEET; BATH SALTS; NON-MEDICATED BATH PREPARATIONS;
`
`3 Loukoumi is the Greek version of Turkish delight. See printout from website located at
`
`www.greekproducts.com attached as Exhibit 3.
`
`25034/O05/786536.l
`
`13
`
`

`
`Attorney Ref. No. 25034004
`
`TRADEMARK LAW OFFICE 11 1
`
`Serial No. 79/018,867
`Mark: THE CHIOS MASTIHA
`GROWERS ASSOCIATION &
`
`Design
`
`Class 5:
`
`BEAUTY MASKS; CREAMS AND PREPARATIONS FOR BODY AND
`FACE CARE, SKIN HYDRATION CREAMS, CREAMS WITH PERFUME
`FOR BODY AND FACE, EYE CREAMS; CREAMS, LOTION AND
`CLEANING LOTION FOR THE BODY, FACE, SKIN AND HANDS;
`BREATH FRESHENERS; ESSENTIAL OIL, NAMELY, MASTIC OIL FOR
`COSMETIC USE AND FOR CLEANING; MOUTH WASHES, NOT FOR
`MEDICAL
`PURPOSES; TOOTHPASTES; TEETH AND MOUTH
`CLEANING AND WASHING PREPARATIONS, NOT FOR MEDICAL
`PURPOSES.
`
`PHARMACEUTICAL PREPARATIONS, NAMELY, ULCER-TREATING
`PREPARATIONS, ANTI-INFLAMMATORY PREPARATIONS, ANTI-
`OXIDANT
`PREPARATIONS;
`VETERINARY
`PREPARATIONS,
`NAMELY,
`ULCER-TREATING
`PREPARATIONS,
`ANTI-
`INFLAMMATORY PREPARATIONS, ANTI-OXIDANT PREPARATIONS;
`SANITARY PREPARATIONS FOR MEDICAL USE; THERAPEUTIC
`PREPARATIONS, NAMELY, ORAL-CAVITY CARE PREPARATIONS,
`NAMELY, MOUTH CAVITY CLEANSERS, PREPARATIONS FOR THE
`TREATMENT
`OF
`THE
`GASTRO-INTESTIAL
`SYSTEMS,
`PREPARATIONS FOR THE TREATMENT OF THE SKIN AND
`WOUNDS, NAMELY, MEDICATED SKIN CARE PREPARATIONS;
`DIETARY SUPPLEMENTS ADAPTED FOR MEDICAL USE FOR
`CHILDREN AND THE SICK; MEDICAL PLASTERS; BANDAGING
`
`Class 30:
`
`FOR TEETH AND TEETH IMPRINTS; DISINFECTANT PREPARATIONS
`FOR DESTROYING VERMIN AND HARMFUL PESTS, NAMELY,
`PESTICIDES FOR DOMESTIC, AGRICULTURAL, INDUSTRIAL AND
`COMMERCIAL USE; FUNGICIDES, ANTI-FUNGAL CREAMS FOR
`MEDICAL USE; HERBICIDES.
`
`COFFEE; TEA; COCOA; SUGAR; RICE; TAPIOCA; SAGO; ARTIFICIAL
`COFFEE SUBSTITUTES; FLOUR AND PREPARATIONS MADE FROM
`CEREAL, NAMELY, CAKES, CROISSANTS, COOKIES, BREAD,
`HALVA, TAHINI, BISCUITS, SHORTBREAD, SWEET BREAD, BREAD
`CRISPS, DRIED BREAD, WAFFLES, PIES, SWEETS MADE OF SESAIVIE
`AND HONEY, NAMELY,
`PASTELLI AND
`SESAI\/[E
`PIES;
`PREPARATIONS MADE FROM BREAD, NAMELY, DRIED BREAD;
`
`25034/005/7865361
`
`14
`
`

`
`Attorney Ref. No. 25034.004
`
`TRADEMARK LAW OFFICE 111
`Serial No. 79/018,867
`
`Mark: THE CHIOS MASTIHA
`
`GROWERS ASSOCIATION &
`
`Design
`
`FROM BISCUITS, NAMELY, CAKES;
`PREPARATIONS MADE
`PREPARATIONS MADE FROM PASTRIES, NAMELY, CAKES,
`CROISSANTS, BAKLAVA, KATAIFI, DELIGHT, NAMELY, TURKISH
`DELIGHT AND LOUKOUMI, MASTIC BASED SWEETS, NAMELY,
`PUDDINGS;
`WAFFLES;
`PREPRATIONS
`MADE
`FROM
`CONFECTIONARY, NAMELY, CANDIES, TOFFIES, LOLIPOPS AND
`BON-BONS;
`ICE-CREAMS; HONEY; TREACLE; YEAST; BAKING-
`POWDER; SALT; MUSTARD; VINEGAR, PEPPER; SAUCES; SPICES;
`ICE; CHOCOLATE; CHEWING GUMS, NOT FOR MEDICAL PURPOSES.
`
`Class 33:
`
`WINES; ALCOHOLIC BEVERAGES, NAMELY, RUM OF FRUIT, OUZO,
`GRAPPA, RAKI, TSIPOURO, BRANDY, ALCOHOLIC COFFEE AND
`TEA BASED BEVERAGES; LIQEURS.
`
`CONCLUSION
`
`Based on the foregoing amendment and remarks, Applicant believes that
`
`it has
`
`satisfied all of the examining attorney’s requirements. Accordingly, Applicant requests that
`
`Applicant’s application be passed to publication.
`
`Dated: April 3, 2007
`
`New York, New York
`
`COWAN, LIEB I WITZ & .
`Attorneys for A o licant
`
`
`
`1 133 A venue of the Americas
`New York, New York 10036-6799
`
`(212) 790-9200
`
`Cc: Trademark Trial and Appeal Board
`
`25034/005/786536.]
`
`15
`
`

`
`

`
`Latest Status Info
`
`Page 1 of 5
`
`Thank you for your request. Here are the latest results from the TARR web server.
`
`This page was generated by the TARR system on 2007-04-02 1 1:1 1:09 ET
`
`Serial Number: 79018867 Assignment Information
`
`Registration Number: (NOT AVAILABLE)
`
`Mark
`
`EITYHMEHNO
`AYBENTIKO |'IPOlON
`OP.|GlNAL PRODUCT
`GU;\F.."'~ N l":I: D
`
`SROWE HS ASSOC VXTION
`
`ENQZH
`MAXTIXOFIAPAFQ1’QN XIOY
`‘THE CHICS MASTIHA
`
`(words only): THE CHIOS MASTIHA OWNERS ASSOCIATION
`
`Standard Character claim: No
`
`Current Status: An office action making FINAL a refusal to register the mark has been mailed.
`
`Date of Status: 2006-10-03
`
`Filing Date: 2005-01-23
`
`Transformed into a National Application: No
`
`Registration Date: (DATE NOT AVAILABLE)
`
`Register: Principal
`
`Law Office Assigned: LAW OFFICE 110
`
`Attorney Assigned:
`SONNEBORN TRICIA L Err_1;my_ee_L_ocatio_n
`
`Current Location: MIX -TMO Law Office 1 10 - Examining Attorney Assigned
`
`Date In Location: 2006-10-03
`
`LAST APPLICANT(S)/OWNER(S) OF RECORD
`
`1. The Chios Mastiha growers Association
`
`Address:
`
`The Chios Mastiha growers Association
`K. Monomachou 1 GR-82 100 Chios
`Greece
`Legal Entity Type: Cooperative with limited liability
`
`http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=79018 867
`0...}
`
`4/2/2007
`
`

`
`Latest Status Info
`
`Page 2 of 5
`
`State or Country Where Organized: Greece
`
`
`
`GOODS AND/OR SERVICES
`
`International Class: 003
`
`Class Status: Active
`BLEACHING PREPARATIONS FOR COSMETIC PURPOSES AND FOR HOUSEHOLD USE;
`PREPARATIONS FOR LAUNDRY USE, NAMELY, FABRIC SOFTENERS, SEAWEED
`GELATINE; GENERAL PURPOSE PREPARATIONS FOR CLEANING AND POLISHING;
`ABRASIVE LIQUIDS AND POWDERS; SOAPS, NAMELY, LIQUID, HAND AND LAUNDRY
`SOAPS; AFTER-SHAVE LOTION; SHAVING FOAM; PERFUMERY; COSMETICS; HAIR
`DRESSING PREPARATIONS, NAMELY, SHAMPOOS, CONDITIONERS, POMADE; PERFUMES,
`ESSENTIAL OILS AND COSMETIC PREPARATIONS WITH OR WITHOUT PERFUME,
`NAMELY, SKIN CREAMS FOR THE NECK, ACNE TREATING COSMETIC CREAMS,
`CLEANSING MILK FOR THE FACE, FACE SCRUB, BODY SCRUB, MOISTURIZING BODY
`MILK, CREAM FOR THE FEET; BATH SALTS; NON-MEDICATED BATH PREPARATIONS;
`BEAUTY MASKS; CREAMS AND PREPARATIONS FOR BODY AND FACE CARE, SKIN
`HYDRATION CREAMS, CREAMS WITH PERFUME FOR BODY AND FACE, EYE CREAMS;
`CREAMS, LOTION AND CLEANING LOTION FOR THE BODY, FACE, SKIN AND HANDS;
`BREATH FRESHENERS; ESSENTIAL OIL, NAMELY, MASTIC OIL FOR COSMETIC USE AND
`FOR CLEANING; MOUTH WASHES, NOT FOR MEDICAL PURPOSES; TOOTHPASTES; TEETH
`AND MOUTH CLEANING AND WASHING PREPARATIONS, NOT FOR MEDICAL PURPOSES
`Basis: 66(a)
`First Use Date: (DATE NOT AVAILABLE)
`First Use in Commerce Date: (DATE NOT AVAILABLE)
`
`International Class: 005
`Class Status: Active
`PHARMACEUTICAL PREPARATIONS, NAMELY, ULCER-TREATING PREPARATIONS, ANTI-
`INFLAMMATORY PREPARATIONS, ANTI-OXIDANT PREPARATIONS; VETERINARY
`PREPARATIONS, NAMELY, ULCER-TREATING PREPARATIONS, ANTI-INFLAMMATORY
`PREPARATIONS, ANTI-OXIDANT PREPARATIONS; SANITARY PREPARATIONS FOR
`MEDICAL USE; THERAPEUTIC PREPARATIONS, NAMELY, ORAL-CAVITY CARE
`PREPARATIONS, PREPARATIONS FOR THE TREATMENT OF THE GASTRO-INTESTINAL
`SYSTEMS, PREPARATIONS FOR THE TREATMENT OF THE SKIN AND WOUNDS; DIETARY
`SUPPLEMENTS ADAPTED FOR MEDICAL USE FOR CHILDREN AND THE SICK; MEDICAL
`PLASTERS; BANDAGING MATERIAL, NAMELY, COMPRESSION, SURGICAL AND ELASTIC
`BANDAGES; MASTIC OIL AND MA

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