To:
`Subject:
`Sent:
`Sent As:
`
`MARK D. PASSLER(ip@akerman.com)
`U.S. Trademark Application Serial No. 90754790 - - - 11151-13-1
`April 30, 2024 06:04:07 PM EDT
`tmng.notices@uspto.gov
`
`Attachments
`
`james synowicki hestan.jpg
`tim hollingsworth hestan.jpg
`michael cimarusti hestan.jpg
`oscar torres hestan.jpg
`amanda haas hestan 01.jpg
`amanda haas hestan 02.jpg
`jason hartung hestan.jpg
`kerrie kelly hestan.jpg
`steve shipley hestan.jpg
`sarah robertson hestan.jpg
`activecampaign sponsored content.jpg
`steve shipley linkedin.jpg
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial No.  90754790
`
`Mark:  
`
`Correspondence Address:  
`Mark D. Passler
`AKERMAN LLP
`777 S. FLAGLER DRIVE
`SUITE 1100, WEST TOWER
`WEST PALM BEACH FL 33401
`UNITED STATES
`
`Applicant:   Hestan Commercial Corporation
`
`Reference/Docket No.  11151-13-1
`
`Correspondence Email Address:   ip@akerman.com
`
`
`
`
`
`
`REQUEST FOR RECONSIDERATION AFTER FINAL ACTION DENIED
`
`Issue date:   April 30, 2024
`
`The referenced application is currently the subject of an appeal with the Trademark Trial and Appeal
`
`

`

`Board (Board). However, the Board has suspended action on the appeal and has remanded the
`application to the trademark examining attorney to consider specific facts pertaining to the
`application.  See 37 C.F.R. §2.142(d), (f); TMEP §1504.05. Specifically, the Board has requested the
`examining attorney consider  applicant's additional evidence of acquired distinctiveness.  The trademark
`examining attorney has carefully reviewed applicant's new Section 2(f) evidence and has determined
`that it is insufficient to prove that the applied-for mark has acquired distinctiveness for the reasons
`indicated below.
`
`As noted in the previous Office actions,  applicant bears the burden of proving that its nondistinctive
`product design has acquired distinctiveness under Trademark Act Section 2(f). In re La. Fish Fry
`Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (citing In re
`Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)); TMEP
`§1212.01.  For the reasons stated in the previous Office actions, applicant's evidence submitted before
`appeal was insufficient to satisfy this burden.  The only new evidence applicant has submitted consists
`of nine declarations. These declarations are also insufficient to satisfy applicant's burden.
`
` A
`
` small number of declarations is not persuasive in demonstrating that the relevant public would view
`the nondistinctive product design in this case as a source-identifying mark. See, e.g., In re The Paint
`Prods. Co., 8 USPQ2d 1863, 1866 (TTAB 1988) (finding ten declarations not persuasive).
`
`Moreover, the nine declarations all contain identical wording in numbered paragraphs 4, 5, 6, 7, 8, and
`9. These paragraphs also include legal conclusions, including referring to the applied-for mark as
`"distinctive."  This limits their persuasive value. See In re Pacer Tech., 338 F.3d 1348, 67 USPQ2d
`1629, 1633 (Fed. Cir. 2003) (“nearly identical” and “conclusorily worded” affidavits not the type of
`“competent evidence” which would establish a prima facie case);  Kohler Co. v. Honda Giken Kogyo
`K.K., 125 USPQ2d 1468, 1507 (TTAB 2017) (probative value of declarations “vitiated” because they
`were identical in form, not composed individually, conclusory, and there was no evidence they were
`representative of others' views);  In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042, 1051 (TTAB
`2013) (“[T]hey are all essentially identical in form and were clearly not composed individually. ...
`[S]uch statements are less persuasive than statements expressed in the declarants' own words.”); Mag
`Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723 (TTAB 2010) (finding 16 declarations of
`little persuasive value, as they were nearly identical in wording); In re Pennzoil Products Co., 20
`USPQ2d 1753, 1759 (TTAB 1991) (form declarations found to “lack persuasiveness on the issue of the
`primary significance of the term ‘MULTI-VIS’ to the purchasing public” when there was no indication
`that the declarants were “familiar with such technical concepts as mere descriptiveness, distinctiveness
`and the definition of a trademark.”). 
`
`The fact that these registrations were not individually crafted and were drafted by applicant's attorney
`and then sent to these nine declarants to fill in with basic identifying information and then sign is
`supported by the fact that the declarations include notes from applicant's attorney telling declarants how
`to fill them in (e.g., bracketed prompts such as "[a top restaurant?]", "[professional chef?]"). In fact, in
`the Hollingsworth, Robertson, and Shipley declarations, the bracketed term "[CONFIRM]" appears
`next to the wording "As someone in the professional cooking business ...."
`
`All the declarants also have previous or existing business relationships with applicant.  James
`Synowicki ("Chef and Food Content Creator for Zimmy's Nook") identifies himself on the Zimmy's
`Nook website (https://zimmysnook.ca/) as "a Hestan Culinary ... Affiliate." According to applicant's
`website ( https://hestanculinary.com/pages/best-sellers),  Tim Hollingsworth (chef at Otium in Los
`Angeles) collaborates with applicant, as does Michael Cimarusti (chef at Providence in Los Angeles;
`
`

`

`https://www.prnewswire.com/news-releases/hestan-commercial-to-parade-latest-kitchen-line-at-
`see
`chicagos-nra-show-300075003.html)
`and
`Oscar
`Torres
`(chef
`at
`Verse;
`see  https://commercial.hestan.com/the-hestan-story/). Amanda Haas (cookbook author) sells applicant's
`products on her website
`(https://www.amandahaascooks.com/shop/).
`Jason Hartung
`(sales
`representative
`for
`Foodservice
`Equipment
`Agents)
`is
`a
`"Hestan
`Rep"
`(https://commercial.hestan.com/wp-content/uploads/2015/04/Hestan-Commercial-
`"Design Partner"
`Brochure_12_17.pdf), Kerrie Kelly
`(interior designer)
`is
`applicant's
`(https://home.hestan.com/introducing-our-new-design-partner-kerrie-kelly/), and Steve Shipley (head
`of Resource Development at Johnson & Wales University) collaborates with applicant in the "Hestan
`Kitchen
`Laboratory"
`at
`Johnson
`&
`Wales
`University
`(https://www.businesswire.com/news/home/20230803530776/en/Hestan-Establishes-Kitchen-
`Laboratory-in-Partnership-with-Johnson-Wales-University). Lastly, Sarah Robertson (kitchen designer)
`has
`written
`a
`"sponsored"
`blog
`post
`about
`applicant's
`goods
`(https://studiodearborn.com/2022/11/15/designing-an-outdoor-cooking-space-part-1/), which indicates
`that Ms. Robertson was paid by applicant to write an advertisement for applicant's goods. See, e.g.,
`Ernie Santeralli, Sponsored Content: What You Need to Know (and 9 Examples!), ActiveCampaign,
`June 5, 2023,  https://www.activecampaign.com/blog/sponsored-content (" Sponsored
`content
`is
`premium content that a sponsor pays a publisher to create and distribute. ... In other words, sponsored
`content is an ad that looks like it's supposed to be there –it feels like a natural fit for a platform, instead
`of an invasive advertisement.").  The fact that applicant has asked individuals who are already aware of
`applicant's goods to sign declarations on applicant's behalf lessens the persuasive value of the
`statements made therein.  See In re Pennzoil Prods. Co., 20 USPQ2d 1753, 1758 (TTAB 1991) (form
`declarations from nine marketers of oil products who have business relationships with the applicant
`“lack persuasiveness on the issue of the primary significance of the [proposed mark] to the purchasing
`public.”).
`
`Furthermore, the identification of goods is not limited to professional use only, but applicant has failed
`to provide any declarations from the general purchasing public who would purchase applicant's goods
`for home use. Applicant's sample of declarations consists of five chefs, a cookbook author, a sales
`representative for Foodservice Equipment Agents, and two kitchen designers. Thus, the declarations
`lack sufficient customer diversity, which limits their persuasive value. In re Pacer Tech., 338 F.3d
`1348, 67 USPQ2d 1629, 1633 (Fed. Cir. 2003) (criticizing form declarations for lack of customer
`diversity). 
`
`Though most applicants did not identify their geographic location, applicant makes reference to three
`declarants located in Los Angeles, one located in New York, and one located in Rhode Island (where
`Johnson & Wales University is located; see attached screen capture from Steve Shipley's LinkedIn).
`This lack of geographic diversity also limits the persuasive value of these declarations. See In re
`Florists’ Transworld Delivery Inc., 106 USPQ2d 1784, 1793-94 (TTAB 2013) (criticizing form
`declarations for lack of geographic diversity).
`
`Thus, it appears that applicant requested a few individuals with whom applicant has preexisting
`relationships to sign declarations that applicant's attorney wrote to support applicant's claim that the
`nondistinctive product design in the present applicant has acquired distinctiveness. These few form
`declarations are thus not representative of the general purchasing public's perception of the applied-for
`product design, which would include both commercial and home purchasers. 
`
`It is noted that applicant included in its request for reconsideration several statements about the nine
`declarants that the declarants did not make themselves (e.g., the number of alleged Instagram followers,
`
`

`

`appearances in magazines). Thus, applicant is making comments on the declarants that are unsupported
`by any evidence. Accordingly, any references to characteristics of the declarants not made by the
`declarants themselves in their signed declarations have not been considered and are formally objected
`to.  The record in an application should be complete prior to the filing of an appeal. 37 C.F.R.
`§2.142(d); TBMP §§1203.02(e), 1207.01; TMEP §710.01(c).
`
`Applicant was advised by the examining attorney initially assigned to this application in the May 4,
`2022 Office action of various types of evidence applicant could submit to support a Section 2(f) claim,
`including "association of the mark with a particular source by actual purchasers (typically measured by
`customer surveys linking the name to the source)." Applicant's declarations are all signed between
`April 8-10, 2024. It must be presumed that, despite having nearly two years to collect declarations from
`consumers to support its Section 2(f) claim from the date of the first refusal of applicant's Section 2(f)
`claim to the date applicant submitted its request for remand to the Board to have the declarations added
`to record, applicant was only able to gather the nine made of record, and that these represent the best
`evidence applicant could provide in terms of declarations from consumers. For the reasons stated
`previously,
`these nine declarations have
`little persuasive value on
`the
`issue of acquired
`distinctiveness.  Accordingly, the Sections 1, 2, and 45 refusal made final in the Office action dated July
`5, 2023, is continued and maintained because applicant has failed to meet its burden in proving the
`nondistinctive product design in the present application has acquired distinctiveness.  See TMEP
`§§715.03(a)(ii)(B), 715.04(a).  
`
`Applicant's request for reconsideration is therefore DENIED.  See 37 C.F.R. §2.63(b)(3). The Board
`will be notified to resume the appeal.  See TMEP §715.04(a).  
`
`
`/Andrew Leaser/
`Trademark Examining Attorney
`Law Office 117
`(571) 272-1911
`andrew.leaser@USPTO.GOV
`
`
`
`

`

`https://zimmysnook.ca/ (April 30, 2024 | 4:10PM)
`
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`https://hestanculinary.com/pages/best-sellers (April 30, 2024 | 4:30PM)
`
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`https://www.prnewswire.com/news-releases/hestan-commercial-to-parade-latest-kitchen-line-at-chicagos-nra-show-300075003.html
`(April 30, 2024 | 5:19PM)
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`Hestan Commercial to Parade Latest Kitchen
`Line at Chicago's NRA Show
`
`NEWS PROVIDED BY
`
`Hestan Commercial >
`
`Apr 30, 2015, 08:00 ET
`
`SHARE THIS ARTICLE
`
`eo eo © oO o
`
`ORANGE COUNTY,Calif., April 30, 2015 /PRNewswire/ -- Anaheim-based Hestan Commercial will proudly display its
`award-winning premium line of commercial kitchen appliances at this year's NRA event in Chicago's McCormick
`Place Convention Center May 16-19. Thousands of attendees of the largest foodservice trade association in the world
`will have a first-hand opportunity to peruse select models of the company’s much-buzzed about fleet of offerings,
`
`including its signature orange island suite.
`
`the world's best chefs and commercial kitchen
`
`Acclaimed Chef and Hestan Commercial
`
`Appliance Spokesperson Thomas Keller has
`announced plans to install a custom range in the
`renovated The French Laundry kitchen in
`Yountville, CA. Chefs Michael Voltaggio, Walter
`Manzke,
`
` Built
`entirely in the USA and with six utility patents and
`
`five design patents pending, Hestan Commercial is
`poised to lead the commercial kitchen appliance
`arena. Its outstanding features are the product of
`years of intensive research and input from some of
`
`

`

`QesiIQners.
`
`Hestan Commercial will assemble with the rest of
`
`this year’s winners of the NRA's Kitchen
`
`ferrous French top and longitudinal modular
`
`salamander and cheesemelter shelving system. Interested parties are invited to stop in at Hestan's
`
`Innovations (KI) Awards during a special cerermony
`Saturday, May 16. General Manager Eric Deng will
`be on hand to receive two KI awards for their Tri-
`
`Booth #8404 for an up close and personal look
`
`
`
`and engage with members of the team. Hestan
`Commercial Founder Stanley Cheng affirms, "The culinary world is the heart of our companyculture. Our main goal is
`for chefs to view us as a partner in their success—that they can enjoy and depend on our products on a daily basis for
`manyyears to come."
`
`
`
`

`

`https://commercial.hestan.com/the-hestan-story/ (April 30, 2024 | 4:48PM)
`
`VERSE | TOLUCA LAKE, CA
`
`Til be honest I didn't choose Hestan, but now that I've worked with Hestan itsei
`only brandI plan onusingfor our restaurants moving forward... From quality to
`lookit really upholdsthe “Rolls-Royce of the Rolls-Royce”. My dream nowforusis
`to really tum our kitchen into a show room.
`
`- CHEF OSCAR TORRES
`
`

`

`

`

`https://www-.amandahaascooks.com/shop/ (April 30, 2024 | 4:36PM)
`
`* Join Amanda's next a la carte cooking class on April 28: "Sunday School" Meal
`
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`Shop my favorites—both inside and outside the
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`sugar and fennel is my
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`https://www.amandahaascooks.com/shop/ (April 30, 2024 | 4:36PM)
`
`Cookware
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`10 1/4" SIGNATURE
`SKILLET
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`Le Creuset
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`https://commercial.hestan.com/wp-content/uploads/2015/04/Hestan-Commercial-Brochure1217.pdf
`
`(April 30, 2024 | 4:42PM) @ JASONHARTUNG
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`HESTAN REP
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`“T know the Hestan service
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`

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`https://home.hestan.com/introducing-our-new-design-partner-kerrie-kelly/ (April 30, 2024 | 4:45PM)
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`May 7
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`Introducing Our NewDesign Partner, Kerrie Kelly
`
`Hestan is excited to announceits partnership with California-based designer, Kerrie Kelly. An award-winning
`design expert, Kerrie is the founder and creative director of Kerrie Kelly Design Lab. Drawn to the Hestan
`brand for its innovative, luxury products and California roots, Kerrie brings her more than 20 years of sought-
`after design experience to her collaboration with Hestan.
`
`Related Posts
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`(NKBA), Houzz Advisory Board Member and ZillowInterior Design National Spokesperson. — —_
`
`Kerrie ts a Fellow and Chair for the National Board for the American Societyof Interior Designers (ASTID).
`She has earned the Design Luminary Award Honoring Nancy Vincent McClelland for education and served
`ASID in multiple capacities. She is a Global Connect Advisor for the National Kitchen and Bath Association
`
`Her thought leadership has been featured in Bloomberg, The NewYork Times. Forbes, The Globe and Mail,
`USA Today and The Wall Street Journal. She writes a monthly design column for Style Media Group and
`
`
`serves on the Editorial Board of Fur
`
`ture, Lighting d& Décor, Kerrie is a speaker and on-air talent for Outdoor
`Living and Livable Design. Sheis the author of two books: Home Decor: A Sunset Design Guide and Pearson
`
`Hestan Celebrates Innovation
`and Design Excellence with
`Kerrie Kelly
`BAA Alera aa
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`

`Education's MylnteriorDesignKit.
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`To learn more about Kerrie Kelly and Hestan, check out her announcementhere.
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`Share
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`f
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`Ww G+ in M
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`LEST — Spr ir, cue
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`We are thrilled to share the latest insights
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`L..] = Read Full Story
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`

`https://www.businesswire.com/news/home/20230803530776/en/Hestan-Establishes-Kitchen-Laboratory-in-Partnership-with-Johnson-
`Wales-University (April 30, 2024 | 4:54PM)
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`Hestan Establishes Kitchen Laboratory in Partnership with
`Johnson & Wales University
`
`Award-Winning Appliance Manufacturer Collaborates with University to Support Culinary
`Education
`
`
`
`HESTAN
`
`aguila@hestan.com
`
`> More News
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`Contacts
`Amber Gulla
`
`Thelatest partnership between Hestan and Johnson & Wales University showcases their continued
`collaborative effort to invest in the futures of students pursuing culinary arts. Pictured are Basil Larkin,
`SVP of Sales, andSteveShipley, Resource Development at Johnson & Wales University. (Photo:
`Business Wire)
`
`Bee ee.U
`
`August 03, 2023 01:00 PM Eastern Daylight Time
`
`ANAHEIM, Calif—(BUSINESS WIRE)—Hestan — the brand celebrated for bringing the award-winning innovations
`of its commercial appliances to the residential kitchen — is excited to announce its latest partnership witheaSURRNIMENENTISEOTENtre cotogeof Food innovation ang
`
`
`
`Technology.
`
`vie eek iaeward
`aENEIng an
`a aaa a eee
`
`The new kitchen laboratory, which opens in August, will feature a
`custom suite in the color Prince, one of 12 Hestan signature
`
`
`
`

`

`Tew Space I UTR Tan Ue
`upcoming fall semester.”
`
`colors, and a variety of professionalrefrigeration and cooking
`units, including French tops, charbroilers, open bummer
`fangetops, planchas and other specialty products.
`
`EQ Posi ins
`
`“The relationship between Hestan and Johnson & Wales
`University is one | truly value,” said Eric Deng, co-founder and
`president of Hestan Commercial Corporation. “| look forward to this collaboration and any future endeavors to
`better further the culinary education of students at the university.”
`
`Since 2018, Hestan has worked with the university and provided a variety of professional appliances, both
`commercial and residential, for its culinary programs. On the Harborside campus, four dual fuel ranges with
`ventilation are featured in the Food, Innovation & Design Lab (FIDL), and a commercial suite is available for
`studentsat the Cuisinart Center for Culinary Excellence (CCCE). Hestan also has a commercial kitchen on the
`university's Charlotte campus in the Academic Center.
`
`This latest collaboration honors Hestan's continued effort to invest in the future of students pursuing a career in
`culinary arts, and offers the opportunity for students to work with the same revolutionary culinary power and
`performance found in America’s most acclaimed restaurant kitchens.
`
`“As we celebrate half a century of excellence in food education at Johnson & Wales University, we are so
`pleased to have industry partners like Hestan to ensure our students have accessto top-of-the4ine equipment,”
`said JWU Chancellor Mim L. Runey, LP_D. “We look forward to unveiling the new spacein time for the upcoming
`fall semester.”
`
`Stanley Cheng, founder of Meyer Corporation and Hestan Commercial Corporation, was recognized as a
`hospitality and entrepreneurship industry leader, and awarded an honorary doctorate degree from Johnson &
`Wales University in May 2022, delivering the commencement keynote speech during the undergraduate studies.
`ceremony.
`
`

`

`https://studiodearborn.com/2022/11/15/designing-an-outdoor-cooking-space-part-1/ (April 30, 2024 | 5:06PM)
`
`STUDIO dearborn
`
`Oo
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`45 © f
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`in ©
`
`Designing an Outdoor Cooking Space Part|
`
`
`
`By Sarah Robertson
`
`Categories
`BATHROOMS
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`DESIGN INSPIRATION
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`FIXTURES AND FINISHES
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`KITCHENS
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`PROCESS
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`SHOPPING GUIDE
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`STORAGE SOLUTIONS
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`| have been wanting to design and build an outdoor cooking space at my home
`
`tor a while. One of the key inspirations was the grill | chose.
`
`| ended up going with the Hestan Outdoor Grill. | love that if comesin 12 colors,
`
`so the design possibilities are endless, but ! also love the functionality it offers us
`
`all year round.
`
`

`

`https://www.activecampaign.com/blog/sponsored-content (April 30, 2024 | 5:12PM)
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`https://www_linkedin.com/in/steve-shipley-38b4b87 (April 30, 2024 | 4:23PM)
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`Steve Shipley
`Resource Development at Johnson & Wales University
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`

`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on April 30, 2024 for
`U.S. Trademark Application Serial No.  90754790
`
`A USPTO examining attorney has reviewed your trademark application and issued an Office
`action.  You must respond to this Office action to avoid your application abandoning.  Follow
`the steps below.  
`
`(1)   Read the Office action.  This email is NOT the Office action.  
`
`(2)  Respond to the Office action by the deadline using the Trademark Electronic Application
`System (TEAS) or the Electronic System for Trademark Trials and Appeals (ESTTA), as
`appropriate.  Your response and/or appeal must be received by the USPTO on or before 11:59
`p.m. Eastern Time of the last day of the response deadline.  Otherwise, your application will
`be abandoned.  See the Office action itself regarding how to respond.  
`
`(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the
`application process, the status of your application, and whether there are outstanding deadlines
`to the Trademark Assistance Center (TAC).  
`
`After reading the Office action, address any question(s) regarding the specific content to the
`USPTO examining attorney identified in the Office action.  
`
`GENERAL GUIDANCE
`Check the status of your application periodically in the Trademark Status &
`•
`Document Retrieval (TSDR) database to avoid missing critical deadlines.  
`
`•
`
`•
`
`Update your correspondence email address to ensure you receive important USPTO
`notices about your application.  
`
`Beware of trademark-related scams .  Protect yourself from people and companies that
`may try to take financial advantage of you.  Private companies may call you and pretend
`to be the USPTO or may send you communications that resemble official USPTO
`documents to trick you.  We will never request your credit card number or social security
`number over the phone.  Verify the correspondence originated from us by using your
`serial number in our database, TSDR, to confirm that it appears under the “Documents”
`tab, or contact the Trademark Assistance Center.  
`
`

`

`•
`
`Hiring a U.S.-licensed attorney .   If you do not have an attorney and are not required to
`have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney
`specializing in trademark law to help guide you through the registration process.  The
`USPTO examining attorney is not your attorney and cannot give you legal advice, but
`rather works for and represents the USPTO in trademark matters.  
`
` 
`