PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 04/2009)
`
`Response to Office Action
`
`The table below presents the data as entered.
`
`Entered
`
`77116734
`
`LAW OFFICE 110
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION (no change)
`
`ARGUMENT(S)
`
`This is in response to the Office Action dated June 14, 2007.
`
`Specimen
`
`The Trademark Attorney has refused registration of BUENO, Trademark Serial No. 77/116,734, stating that, because “the goods do
`not appear anywhere in the photograph of the mark” and “[c]onsumers will not recognize that the mark is used in relation to the goods set
`forth in the identification” the specimen is unacceptable. (cid:160) Applicant respectfully disagrees.
`
`Applicant submits that the specimen submitted with the application functions properly as a point-of-purchase display and that the two
`additional specimens submitted herewith also function as such displays.(cid:160) The original specimen is a drive-thru window sign that shows the
`mark BUENO prominently.(cid:160) The substitute specimens are restaurant table tents/displays that also show the mark prominently.(cid:160) The specimens
`inform the consumer that the branded BUENO goods are available for purchase at the restaurant where the specimens appear.(cid:160) In effect, the
`brand BUENO is associated with, or related to, the goods in the specimen itself and with the point-of-sale at which both the specimens and
`goods are located.(cid:160)
`
`The specimens invite and induce the consumer to request the goods at the restaurant point-of-sale.(cid:160) For example, the original specimen
`appears at a restaurant drive-through window where the consumer, upon seeing the sign, can request the BUENO product, purchase it, and
`take delivery at the window.(cid:160) The customer knows that the goods received are the goods identified on the specimen under the mark.(cid:160) The
`substitute specimens function the same way.(cid:160) In effect, the association between the specimens/displays and the goods is inevitable.
`
`As stated in the TMEP 904.06, “[i]t is not necessary that the display be in close proximity to the goods.” (cid:160) Citing In re Marriott Corp.,
`459 F.2d 525, 527, 173 USPQ 799 (C.C.P.A. 1972); Lands' End Inc. v. Manbeck, 797 F. Supp. 511, 24 U.S.P.Q.2d 1314 (E.D. Va. 1992).(cid:160) The
`TMEP 904.06 notes that displays such as banners, window displays, menus, and the like comprise proper point-of-sale material.
`In Marriott, the court reversed the examiner for refusing to register the words "TEEN TWIST" as a trademark for a sandwich.(cid:160) In re
`Marriott Corp., 459 F.2d 525.(cid:160) The customer could make a sandwich selection from the menu depiction of the sandwich associated by the
`mark “TWEEN TWIST”. (cid:160) Id. at 527.(cid:160) The customer made the selection from this depiction of the sandwich, and the item was emphasized by
`the mark "TEEN TWIST" such that the mark was associated with the sandwich the customer received. (cid:160) Id.(cid:160) (cid:160)
`As stated by the court in Lands' End Inc. v. Manbeck, “a point of sale location provides a customer with the opportunity to look to the
`displayed mark as a means of identifying and distinguishing the source of goods.” (cid:160) Lands' End Inc. v. Manbeck, 797 F. Supp. at 514 (citing In
`re Shipley Co. Inc., 230 U.S.P.Q. 691 (TTAB 1986). (cid:160) The customers of Lands’ End purchased merchandise through a catalog that displayed
`pictures of the goods and the mark “KETCH”, and the catalog provided a telephone number for placing an order. (cid:160) Id.(cid:160) Thus, the
`display/catalog associated the product with the mark.(cid:160) Id.
`In the present matter, the customer identifies and distinguishes the goods as being from the source BUENO.(cid:160) Again, Applicant’s mark
`BUENO is shown in the displays at the point-of-sale, identify the goods available for purchase at the point-of-sale, the customer requests the
`goods at the point-of-sale, and the customer receives the goods identified on the displays at the restaurant point-of-sale.(cid:160) The association
`between the mark on the displays and the goods is less attenuated than the association between the Lands’ End catalog and the “KETCH”
`
`

`
`goods located miles away for order by telephone.(cid:160) Because the goods are restaurant menu items, the display specimens filed herein function not
`only in the manner of generally appropriate point-of-sale displays, but also in the manner of menus which have specifically been found to
`function as proper point-of-sale displays – this is of particular relevance given that in many restaurant establishments, such as that depicted in
`the original specimen herein, menu items are displayed on wall and window boards and signs.
`Therefore, Applicant submits that the specimens herein depict proper point-of-sale displays.
`Identification of Goods
`
`The Trademark Attorney has stated that the identification of goods is too broad.(cid:160) Applicant has amended the identification of goods to
`read:(cid:160)(cid:160) “Prepared food products, namely processed vegetables in the nature of cut chile peppers for sale and use in the restaurant setting, in
`International Class 29.”
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`For the reasons stated in response to the Trademark Attorney’s rejection over the mark, Applicant requests that the refusal be
`withdrawn.(cid:160) It is submitted that the present application is in condition for publication and registration, and such action is requested.(cid:160)
`
`GOODS AND/OR SERVICES SECTION (class deleted)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`030
`
`Prepared food products, namely chopped chile, chile sauce, tamales, tacos, and enchiladas for sale and use in the restaurant setting
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE IN COMMERCE DATE
`
`Section 1(a)
`
`At least as early as 12/31/1986
`
`At least as early as 12/31/1986
`
`GOODS AND/OR SERVICES SECTION (class added) Original Class (030)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`029
`
`Prepared food products, namely processed vegetables in the nature of cut chile peppers for sale and use in the restaurant setting
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE IN COMMERCE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)STATEMENT TYPE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)SPECIMEN
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FILE NAME(S)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)SPECIMEN DESCRIPTION
`
`SIGNATURE SECTION
`
`DECLARATION SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`DATE SIGNED
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`Section 1(a)
`
`At least as early as 12/31/1986
`
`At least as early as 12/31/1986
`
`"The substitute specimen(s) was in use in commerce as of the filing date of the
`application."
`
`\\TICRS2\EXPORT13\771\167 \77116734\xml3\ROA0002.JP G
`
`\\TICRS2\EXPORT13\771\167 \77116734\xml3\ROA0003.JP G
`
`(1) Restaurant table tent/display showing mark and identifying goods available at the
`point-of-sale; (2) Restaurant table tent/display showing mark and identifying goods
`available at the point-of-sale
`
`/Vidal A. Oaxaca/
`
`Vidal A. Oaxaca
`
`Attorney
`
`07/16/2007
`
`/Vidal A. Oaxaca/
`
`Vidal A. Oaxaca
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`
`SIGNATORY'S POSITION
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`Attorney
`
`07/16/2007
`
`YES
`
`SUBMIT DATE
`
`TEAS STAMP
`
`PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 04/2009)
`
`Mon Jul 16 22:45:06 EDT 2007
`
`USPTO/ROA-XX.XXX.XXX.XX-2
`0070716224506487130-77116
`734-380ba678e7911e83979b3
`b4fce95c8651-N/A-N/A-2007
`0716223401091449
`
`Response to Office Action
`
`To the Commissioner for Trademarks:
`
`Application serial no. 77116734 has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`This is in response to the Office Action dated June 14, 2007.
`
`Specimen
`
`The Trademark Attorney has refused registration of BUENO, Trademark Serial No. 77/116,734, stating that, because “the goods do not
`appear anywhere in the photograph of the mark” and “[c]onsumers will not recognize that the mark is used in relation to the goods set forth in
`the identification” the specimen is unacceptable. (cid:160) Applicant respectfully disagrees.
`
`Applicant submits that the specimen submitted with the application functions properly as a point-of-purchase display and that the two
`additional specimens submitted herewith also function as such displays.(cid:160) The original specimen is a drive-thru window sign that shows the mark
`BUENO prominently.(cid:160) The substitute specimens are restaurant table tents/displays that also show the mark prominently.(cid:160) The specimens inform
`the consumer that the branded BUENO goods are available for purchase at the restaurant where the specimens appear.(cid:160) In effect, the brand
`BUENO is associated with, or related to, the goods in the specimen itself and with the point-of-sale at which both the specimens and goods are
`located.(cid:160)
`
`The specimens invite and induce the consumer to request the goods at the restaurant point-of-sale.(cid:160) For example, the original specimen
`appears at a restaurant drive-through window where the consumer, upon seeing the sign, can request the BUENO product, purchase it, and take
`delivery at the window.(cid:160) The customer knows that the goods received are the goods identified on the specimen under the mark.(cid:160) The substitute
`specimens function the same way.(cid:160) In effect, the association between the specimens/displays and the goods is inevitable.
`
`As stated in the TMEP 904.06, “[i]t is not necessary that the display be in close proximity to the goods.” (cid:160) Citing In re Marriott Corp.,
`459 F.2d 525, 527, 173 USPQ 799 (C.C.P.A. 1972); Lands' End Inc. v. Manbeck, 797 F. Supp. 511, 24 U.S.P.Q.2d 1314 (E.D. Va. 1992).(cid:160) The
`TMEP 904.06 notes that displays such as banners, window displays, menus, and the like comprise proper point-of-sale material.
`In Marriott, the court reversed the examiner for refusing to register the words "TEEN TWIST" as a trademark for a sandwich.(cid:160) In re
`Marriott Corp., 459 F.2d 525.(cid:160) The customer could make a sandwich selection from the menu depiction of the sandwich associated by the
`mark “TWEEN TWIST”. (cid:160) Id. at 527.(cid:160) The customer made the selection from this depiction of the sandwich, and the item was emphasized
`
`

`
`by the mark "TEEN TWIST" such that the mark was associated with the sandwich the customer received. (cid:160) Id.(cid:160) (cid:160)
`As stated by the court in Lands' End Inc. v. Manbeck, “a point of sale location provides a customer with the opportunity to look to the
`displayed mark as a means of identifying and distinguishing the source of goods.” (cid:160) Lands' End Inc. v. Manbeck, 797 F. Supp. at 514 (citing In re
`Shipley Co. Inc., 230 U.S.P.Q. 691 (TTAB 1986). (cid:160) The customers of Lands’ End purchased merchandise through a catalog that displayed
`pictures of the goods and the mark “KETCH”, and the catalog provided a telephone number for placing an order. (cid:160) Id.(cid:160) Thus, the display/catalog
`associated the product with the mark.(cid:160) Id.
`In the present matter, the customer identifies and distinguishes the goods as being from the source BUENO.(cid:160) Again, Applicant’s
`mark BUENO is shown in the displays at the point-of-sale, identify the goods available for purchase at the point-of-sale, the customer
`requests the goods at the point-of-sale, and the customer receives the goods identified on the displays at the restaurant point-of-sale.(cid:160) The
`association between the mark on the displays and the goods is less attenuated than the association between the Lands’ End catalog and
`the “KETCH” goods located miles away for order by telephone. (cid:160) Because the goods are restaurant menu items, the display specimens filed
`herein function not only in the manner of generally appropriate point-of-sale displays, but also in the manner of menus which have specifically
`been found to function as proper point-of-sale displays – this is of particular relevance given that in many restaurant establishments, such as that
`depicted in the original specimen herein, menu items are displayed on wall and window boards and signs.
`Therefore, Applicant submits that the specimens herein depict proper point-of-sale displays.
`Identification of Goods
`
`The Trademark Attorney has stated that the identification of goods is too broad.(cid:160) Applicant has amended the identification of goods to
`read:(cid:160)(cid:160) “Prepared food products, namely processed vegetables in the nature of cut chile peppers for sale and use in the restaurant setting, in
`International Class 29.”
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`For the reasons stated in response to the Trademark Attorney’s rejection over the mark, Applicant requests that the refusal be withdrawn. (cid:160)
`It is submitted that the present application is in condition for publication and registration, and such action is requested.(cid:160)
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant hereby deletes the following class of goods/services from the application.
`Class 030 for Prepared food products, namely chopped chile, chile sauce, tamales, tacos, and enchiladas for sale and use in the restaurant setting
`
`Applicant hereby adds the following class of goods/services to the application:
`New: Class 029 (Original Class: 030 ) for Prepared food products, namely processed vegetables in the nature of cut chile peppers for sale and use
`in the restaurant setting
`Filing Basis: Section 1(a), Use in Commerce: The mark was first used at least as early as 12/31/1986 and first used in commerce at least as
`early as 12/31/1986, and is now in use in such commerce.
`Applicant hereby submits a specimen for Class 029. The specimen(s) submitted consists of (1) Restaurant table tent/display showing mark and
`identifying goods available at the point-of-sale; (2) Restaurant table tent/display showing mark and identifying goods available at the point-of-
`sale.
`For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application."
`Specimen File1
`Specimen File2
`
`SIGNATURE(S)
`Declaration Signature
`If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use
`or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as
`of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under
`Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of
`the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made
`are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the
`application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she
`believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C.
`§1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person,
`firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance
`
`

`
`thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to
`deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the
`declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are
`believed to be true.
`
`Signature: /Vidal A. Oaxaca/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 07/16/2007
`Signatory's Name: Vidal A. Oaxaca
`Signatory's Position: Attorney
`
`Response Signature
`Signature: /Vidal A. Oaxaca/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 07/16/2007
`Signatory's Name: Vidal A. Oaxaca
`Signatory's Position: Attorney
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an
`associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not
`currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently
`filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or
`Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`Serial Number: 77116734
`Internet Transmission Date: Mon Jul 16 22:45:06 EDT 2007
`TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2007071622450648
`7130-77116734-380ba678e7911e83979b3b4fce
`95c8651-N/A-N/A-20070716223401091449
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)