On Wed, 26 May 2010 15:04:13 -0400, pltrgyst wrote:
> On Wed, 26 May 2010 11:13:32 -0500, Sqwertz
> > wrote:
>
>>....There is no way they're going to give them "Footlong(TM)" and by telling
>>competitors that they are cease and desist using "Footlonmg(TM)" borders on
>>fraudulent trade practices and is illegal. Footlong is NOT a a (TM), for
>>Subway or anyone else at the time of that letter.
>
> Wrong, as usual.
>
> There are two live (current) US food service trademarks for "footlong,"
> both owned by Doctor's Associates, Inc., of Plantation, FL.
Why do some of you even bother trying to prove me wrong?
This makes Subway's letter even more fradulent. They were just denied
(again) the Footlong trademark just 3 weeks ago. Yet they're claiming they
own the trademark - THEY DON'T.
-sw
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/752328
MARK: FOOTLONG
*77752328*
CORRESPONDENT ADDRESS:
VALERIE A. POCHRON
DOCTOR'S ASSOCIATES INC.
325 BIC DR
MILFORD, CT 06461-3072
RESPOND TO THIS ACTION:
http://www.uspto.gov/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION:
http://www.uspto.gov/main/trademarks.htm
APPLICANT: Doctor's Associates Inc.
CORRESPONDENT˙S REFERENCE/DOCKET
NO:
DAIUSTM/077
CORRESPONDENT E-MAIL ADDRESS:
OFFICE ACTION
TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS
OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE:
Introduction
This Office action supplements any previous Office actions issued in this
application. Upon further
review, the following issue(s) has been raised and must be addressed. The
Office apologizes for any
inconvenience this may cause. Applicant must respond to all issues within
six months from the date of
this new Office action in order to avoid abandonment of the application.
TMEP §1104.09(h).
Failure to Function
Registration is refused because the applied-for mark, as used on the
specimen of record, does not function
as a service mark to identify and distinguish applicant˙s services from
those of others and to indicate the
source of applicant˙s services. Trademark Act Sections 1, 2, 3 and 45, 15
U.S.C. §§1051-1053, 1127; see
In re Moody˙s Investors Serv., Inc., 13 USPQ2d 2043 (TTAB 1989); In re The
Signal Cos., 228 USPQ
956 (TTAB 1986); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984); TMEP
§§904.07(b), 1301.02
et seq.
The applied-for mark, as shown on the specimen, does not function as a
service mark because the mark
refers specifically to sandwiches, which are Class 030 goods. A term that
serves only to identify a menu
item does not function as a service mark for restaurant services. In re El
Torito Rest. Inc., 9 USPQ2d
2002 (TTAB 1988); TMEP §1301.02(a). Attached are additional case laws
supporting the determination
that a mark for a menu item does not function as a service mark for
restaurant services. See attached.
Applicant has submitted numerous specimens and exhibits showing use of the
mark in commerce. All of
the evidence shows the mark being used to refer to a type of sandwich, not
restaurant services. For
example, the specimen of record shows the mark under ´Your Menu Choicesˇ
along with other menu
items, such as 6ˇ (referring to a 6ˇ sub as opposed to a footlong sub),
salad, and flatbread. Another exhibit
submitted on October 16, 2009 is of a banner stating ´ALL FOOTLONG SUBSˇ
are $5. And a similar
exhibit shows $5 FOOTLONGS with the phrase A VARIETY OF GREAT SUBS. In the
latter cases, the
mark specifically refers to a menu item costing $5.
The specimen of record, along with any other relevant evidence of record,
is reviewed to determine
whether an applied-for mark is being used as a service mark. In re Volvo
Cars of N. Am., Inc., 46
USPQ2d 1455, 1458 (TTAB 1998). Not every word, design, symbol or slogan
used in the advertising or
performance of services functions as a mark, even though it may have been
adopted with the intent to do
so. See TMEP §1301.02. A designation cannot be registered unless purchasers
would be likely to regard
it as a source-indicator for the services. Id.; see In re Moody˙s Investors
Serv. Inc., 13 USPQ2d 2043,
2047-49 (TTAB 1989).