Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1073273
`
`Filing date:
`
`08/06/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
`
`88164332
`
`Lake Effect Ice Cream, LLC
`
`Applied for Mark
`
`LAKE EFFECT ARTISAN ICE CREAM
`
`Correspondence
`Address
`
`ELLEN S.SIMPSON
`SIMPSON & SIMPSON PLLC
`5555 MAIN STREET, SUITE 2
`WILLIAMSVILLE, NY 14221
`UNITED STATES
`Primary Email: TrademarkEFS@idealawyers.com
`Secondary Email(s): esimpson@idealawyers.com, trade-
`markefs@idealawyers.com
`716-626-1564
`
`Submission
`
`Attachments
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Applicants Request for Remand and Amendment
`
`Request for Remand.pdf(196052 bytes )
`Exhibit 1.pdf(1943227 bytes )
`
`Ellen S. Simpson
`
`TrademarkEFS@idealawyers.com, esimpson@idealawyers.com
`
`/Ellen S. Simpson/
`
`08/06/2020
`
`

`

`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of US. Trademark Application Serial No. 88164332 (Consolidated)
`In the Matter of US. Trademark Application Serial No. 88164367
`
`Applicant:
`
`Lake Effect Ice Cream, LLC
`
`Marks:
`
`LAKE EFFECT ARTISAN ICE CREAM
`
`
`
`RE UEST TO REMAND FOR ADDITIONAL EVIDENCE
`
`This is a Request to Remand for Additional Evidence under 37 CFR §2.l42(d) and TBMP
`
`1207.02 filed in reference to the applications to register the trademarks LAKE EFFECT ARTISAN
`
` ICE CREAM and
`
`referenced above.
`
`Background and Facts
`
`On October 22, 2018, Applicant filed applications to register the marks LAKE EFFECT
`
`ARTISAN ICE CREAM (U.S. Trademark Application Serial No. 88/164,332) and
`
`
`
`.-
`
`(U.S. Trademark Application Serial No. 88/ 164,367), both for use in association with ice cream
`
`and frozen confections in International Class 30, and scoop shops in the nature of ice cream and
`
`l
`
`

`

`fiozen confection parlor services for consumption on and off the premises in International Class
`
`43.
`
`Thereafter, on February 5, 2019, the Examining Attorney contacted counsel for Applicant
`
`and requested that a disclaimer be entered into the application, namely, that no claim would be
`
`made to the exclusive right to use “ARTISAN ICE CREAM” apart from the mark as shown.
`
`Applicant agreed to the entry of the disclaimer, whereupon the Examining Attorney issued an
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`Examiner’s Amendment, dated February 6, 2019. However, on February 8, 2019, Applicant’s
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`counsel was contacted by the Examining Attorney stating that the approval for publication was
`
`being withdrawn, and that an Office Action would be issued refusing registration of Applicant’s
`
`mark. Thereafter, on February 8, 2019, the Examining Attorney issued an Office Action refusing
`
`registration of Applicant’s mark, LAKE EFFECT ARTISAN ICE CREAM, citing U.S. Service
`
`Mark Registration No. 3,185,742 for the mark
`
`
`
`for use in association with “services
`
`for providing food and drink, namely, restaurant, coffee shop service, banquet-style serving of
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`food and drinks, catering and take-out restaurant services,” in International Class 43.
`
`Applicant responded to the refusal to register by filing a Request for Reconsideration
`
`submitting arguments based on the duPont factors.
`
`In a Final Office Action, the Examining
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`Attorney continued to refuse registration based on U.S. Service Mark Registration No. 3,185,742
`
` for the mark
`
`-
`
`. After the Examining Attorney made the refusal final, an appeal of the
`
`refusal to register for each application was filed. The appeals were consolidated and further action
`
`on the appeals was suspended pending the outcome of 199 Delaware Avenue, Inc. v. Lake Effect
`
`Artisan Ice Cream, et a]. Civil Action No. l:l9-cv-00224, which was then pending in the United
`
`2
`
`

`

`States District Court, Western District of New York. The civil action was ultimately settled, and
`
`thereafter the action was dismissed with prejudice on June 29, 2020.
`
`RE! QUEST TO REMAND
`
`After the filing of the Appeal, and simultaneously with the settlement and dismissal of the
`
`federal court litigation, Lake Effect Ice Cream, LLC received a fully executed Consent Agreement
`
`from counsel for Registrant, 199 Delaware Avenue, Inc., owner of the mark
`
`
`
`.
`
`I
`
`. The
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`Consent Agreement was executed by 199 Delaware Avenue, Inc. and Lake Effect Ice Cream, Inc.,
`
`effective June 18, 2020, whereby Applicant and Registrant consented and agreed to the registration
`
`and use of each other’s respective marks. See Exhibit 1, Executed Consent Agreement between
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`Applicant, Lake Effect Ice Cream, LLC and Registrant, 199 Delaware Avenue, Inc. Both parties
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`executed the Consent Agreement on June 19, 2020. Applicant has agreed to amend its description
`
`of services to clarify that it serves ice cream and frozen confections only. Registrant has consented
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`and agreed that Applicant may use and register the marks LAKE EFFECT ARTISAN ICE
`
` CREAM and
`
`"
`
`in association with “ice cream and frozen confections,” and “scoop shops
`
`in the nature of ice cream and frozen confection parlor services for consumption on and off the
`
`premises serving ice cream and frozen confections only,” as amended, and Registrant and
`
`Applicant agree that neither party believes that there is any likelihood of confusion between the
`
`respective marks. The Consent Agreement further states that, in the unlikely event of any
`
`confusion, both parties will take whatever steps are necessary to alleviate any confusion.
`
`

`

`Applicant now submits that US. Service Mark Registration No. 3,185,742 is no longer a
`
`bar to the registration of US. Trademark Application Serial Nos. 88/164,332 and 88/1 64,3 67 based
`
`on the attached Consent Agreement. Applicant submits that good cause has been shown for the
`
`request for remand, namely, that the Consent Agreement between 199 Delaware Avenue, Inc. and
`
`Lake Effect Ice Cream, LLC was entered into on June 18, 2020 which was after the filing of the
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`appeal and thus, such evidence was not available prior to the time of the filing of the appeal.
`
`As such, Applicant respectfully requests that the Board suspend the Appeal, and remand
`
`the application for further review by the Examining Attorney based on the new evidence.
`
`Respectfully submitted,
`
`SIMPSON & SIMPSON PLLC
`
`5555 Main Street
`
`Williamsville, New York 14221
`Telephone No.2 716-626-1564
`Facsimile No.1 716-626-0366
`
`Email: gainznsm@irigalamers-com.
`
`Dated: August 6, 2020
`ESS/
`
`Attorneyfor Applicant
`
`

`

`CERTIFICATION UNDER 37 C.F.R. §1.8
`
`I hereby certify that this REQUEST TO REMAND FOR ADDITIONAL EVIDENCE is
`being filed electronically with the United States Patent and Trademark Office utilizing the
`Electronic System for Trademark Trials and Appeals on this 6th day of August, 2020.
`
`SIMPSON & SIMPSON PLLC
`
`gamma!—
`
`llen S. Simpson
`5555 Main Street
`
`Williamsville, New York 14221
`(tel) 71 6-626-1 5 64
`(fax) 7 1 6-626-03 66
`(email) mpfl@jdeal awyergzom
`
`Attorneyfor Applicant
`
`

`

`U.S. Trademark Application Serial No. 88164332 (Consolidated)
`U.S. Trademark Application Serial No. 88164367
`
`Marks: LAKE EFFECT ARTISAN ICE CREAM
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT 1
`
`

`

`CONSENT AGREEMENT
`
`This Consent Agreement is entered into as of the 18‘h day of June, 2020, by and between
`
`199 DELAWARE AVENUE, INC. d/b/a LAKE EFFECT DINER (hereinafter “LAKE EFFECT
`
`DINER") and LAKE EFFECT ARTISAN ICE CREAM, LAKE EFFECT ICE CREAM
`
`HERTEL, LLC, LAKE EFFECT ICE CREAM, LLC, LAKE EFFECT ICE CREAM
`
`WHOLESALE, LLC, and LAKE EFFECT CANAL STREET, LLC (hereinafter collectively
`
`referred to as “LAKE EFFECT ICE CREAM”). LAKE EFFECT DINER and LAKE EFFECT
`
`ICE CREAM shall be referred to collectively as the "Parties."
`
`WHEREAS, LAKE EFFECT ICE CREAM has adopted and used the marks LAKE
`
`EFFECT ARTISAN ICE CREAM and
`
`
`
`continuously since June 2008 in
`
`connection with ice cream and frozen confections; and since June 201 1
`
`in connection with scoop
`
`shops in the nature of ice cream and frozen confection parlor services for consumption on and off
`
`the premises; and,
`
`WHEREAS, on October 22, 2018, LAKE EFFECT ICE CREAM applied to register the
`
`mark LAKE EFFECT ARTISAN ICE CREAM for use in association with “Ice cream and frozen
`
`confections” in International Class 30, and “Scoop shops in the nature of ice cream and frozen
`
`confection parlor services for consumption on and off the premises,” in International Class 43,
`
`and such application is currently pending before the US. Patent and Trademark Office as US.
`
`Trademark Application Serial No. 88/164,332; and,
`
`WHEREAS, on October 22, 2018, LAKE EFFECT ICE CREAM applied to register the
`
` mark
`
`for use in association with “Ice cream and frozen confections” in
`
`International Class 30, and “Scoop shops in the nature of ice cream and frozen confection parlor
`
`

`

`services for consumption on and off the premises,” in International Class 43, and such
`
`application is currently pending before the US. Patent and Trademark Office as US. Trademark
`
`Application Serial No. 88/164,367; and,
`
`WHEREAS, LAKE EFFECT DINER is the owner of US. Service Mark Registration No.
`
`
`
`3,185,742 for the mark
`
`, which registered on December 19, 2006, for use in
`
`association with “Services for providing food and drink, namely, restaurant, coffee shop service,
`
`banquet-style serving of food and drinks, catering and take—out
`
`restaurant services,” in
`
`International Class 30; and,
`
`WHEREAS, U.S.
`
`Service Mark Registration No.
`
`3,185,742
`
`for
`
`the mark
`
`
`
`has been cited by the US. Patent & Trademark Office as a bar to
`
`registration of US. Trademark Application Serial Nos. 88/164,332 and 88/164,367 for the marks
`
`LAKE EFFECT ARTISAN ICE CREAM and
`
`
`
`, respectively; and
`
`NOW THEREFORE, in consideration of the mutual covenants hereinafter stated, LAKE
`
`EFFECT DINER and LAKE EFFECT ICE CREAM agree as follows:
`
`

`

`l.
`
`The LAKE EFFECT ICE CREAM marks LAKE EFFECT ARTISAN ICE
`
` CREAM and
`
`are used in association with “ice cream and frozen confections”;
`
`and “scoop shops in the nature of ice cream and frozen confection parlor services for
`
`consumption on and off the premises serving ice cream and frozen confections only,” as
`
`amended.
`
`2.
`
`The LAKE EFFECT DINER mark
`
`
`
`is used in association with
`
`services for providing food and drink, namely, restaurant, coffee shop service, banquet-style
`
`serving of food and drinks, catering and take—out restaurant services.
`
`3.
`
`The Parties agree that, based upon the dissimilar focus of the Parties’ goods and
`
`services, specifically that
`
`the LAKE EFFECT DINER mark
`
`
`
`is used in
`
`association with restaurant services that provide diner-style food and beverages, and the LAKE
`
`EFFECT ICE CREAM marks LAKE EFFECT ARTISAN ICE CREAM and
`
`
`
`are
`
`used in association with ice cream and frozen confections, and scoop shops that sell ice cream
`
`and frozen confections only; the resultant disparate channels of trade because of the differences
`
`in the types of goods and services offered by the respective Parties; the display of a disclaimer
`
`indicating that LAKE EFFECT ICE CREAM is not associated with LAKE EFFECT DINER; the
`
`agreement by LAKE EFFECT ICE CREAM to limit the use ofa cursive font and avoid use of
`3
`
`

`

`such font on its trucks, windows, in its scoop shops, and on hats, t-shirts, and other apparel worn
`
`by its employees in its scoop shops, and the geographic distance between LAKE EFFECT
`
`DINER’s restaurant and LAKE EFFECT ICE CREAM’s scoop shops, there is no likelihood of
`
`confusion between the Parties’ respective marks.
`
`4.
`
`LAKE EFFECT DINER hereby consents to LAKE EFFECT ICE CREAM’s use
`
`and registration of the trademark LAKE EFFECT ARTISAN ICE CREAM used in association
`
`with ice cream and frozen confections; and scoop shops in the nature of ice cream and frozen
`
`confection parlor services for consumption on and off the premises serving ice cream and frozen
`
`confections only.
`
`5.
`
`LAKE EFFECT DlNER hereby consents to LAKE EFFECT ICE CREAM’s use
`
`and registration of the trademark
`
`
`
`used in association with ice cream and frozen
`
`confections; and scoop shops in the nature of ice cream and frozen confection parlor services for
`
`consumption on and off the premises serving ice cream and frozen confections only.
`
`6.
`
`LAKE EFFECT ICE CREAM hereby consents to LAKE EFFECT DlNER’s use
`
`and registration of the service mark
`
`
`
`in association with services for
`
`providing food and drink, namely, restaurant, coffee shop service, banquet-style serving of food
`
`and drinks, catering and take-out restaurant services.
`
`7.
`
`As a result of the factors set forth in Paragraph 3 which serve to obviate any
`
`likelihood of potential confusion between the trademarks at
`
`issue, consumer confusion is
`
`4
`
`

`

`unlikely. The Parties agree that
`
`in the unlikely event that any confusion arises,
`
`they will
`
`cooperate and find ways to eliminate or minimize the confusion, without obligation for either
`
`Party to cease or further restrict their respective uses of the marks.
`
`8.
`
`The term of this Agreement shall commence upon execution of this Agreement
`
`and shall continue in perpetuity.
`
`9.
`
`This Agreement will be effective and binding upon the Parties hereto and upon
`
`their respective officers, employees, directors, agents, successors, assigns, affiliates and related
`
`businesses and subsidiaries.
`
`10.
`
`This Agreement represents the complete understanding and agreement of the
`
`Parties hereto and can only be modified or waived by a written amendment agreement
`
`identifying this Agreement and signed by authorized executive officers or representatives of each
`
`party.
`
`11.
`
`This Agreement may be executed in duplicate or counterpart originals, all of
`
`which shall constitute a single agreement, and will be effective upon execution by each party and
`
`has been fully and duly authorized as the binding and enforceable agreement of each party.
`
`[Signature Page Follows]
`
`

`

`IN WITNESS WHEREOF, the parties have executed this Agreement as of the date first written
`
`above.
`
`199 DELAWARE AVENUE, INC.
`
`S.
`
`I iii; CURTIN
`
`LAKE EFFECT ARTISAN ICE CREAM
`
`LAKE EFFECT ICE CREAM HERTEL,
`LLC
`
`LAKE EFFECT ICE CREAM, LLC
`LAKE EFFECT ICE CREAM
`
`WHOLESALE, LLC
`LAKE EFFECT CANAL STREET, LLC
`
`
`
`ERIK BERNARDI, MEMBER
`
`JASON WULF, MEMBER
`
`DATED: June/1, 2020
`
`DATED: June _, 2020
`
`
`
`

`

`IN WITNESS WHEREOF, the parties have executed this Agreement as of the date first written
`
`above.
`
`199 DELAWARE AVENUE, INC.
`
`LAKE EFFECT ARTISAN ICE CREAM
`
`LAKE EFFECT ICE CREAM HERTEL,
`LLC
`
`LAKE EFFECT ICE CREAM, LLC
`LAKE EFFECT ICE CREAM
`
`WHOLESALE, LLC
`
`LAKE EFFECT CANAL STREET, LLC
`
`S. TUCKER CURTIN
`
`ERIK BERNARDI, MEMBER
`
`
`
`JASON
`
`LF, M MBE
`
`é
`
`DATED: June
`
`
`
`, 2020
`
`DATED: June i, 2020
`
`

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