Lebewohl et al v. Heart Attack Grill LLC et al Doc. 65 Att. 5

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1 Lebewohl et al v. Heart Attack Grill LLC et al Doc. 65 Att. 5 To: Subject: Sent: Sent As: Attachments: Uncle Abies Deli Inc. (william@jakubowitzchuang.com) U.S. TRADEMARK APPLICATION NO INSTANT HEART ATTACK SANDWICH - N/A 8/9/2011 4:14:14 PM ECOM115@USPTO.GOV UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO) OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT S TRADEMARK APPLICATION APPLICATION SERIAL NO MARK: INSTANT HEART ATTACK SANDWICH CORRESPONDENT ADDRESS: WILLIAM W. CHUANG JAKUBOWITZ & CHUANG LLP 401 BROADWAY STE 408 NEW YORK, NY * * CLICK HERE TO RESPOND TO THIS LETTER: APPLICANT: Uncle Abies Deli Inc. CORRESPONDENT S REFERENCE/DOCKET NO: N/A CORRESPONDENT ADDRESS: william@jakubowitzchuang.com OFFICE ACTION STRICT DEADLINE TO RESPOND TO THIS LETTER TO AVOID ABANDONMENT OF APPLICANT S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. ISSUE/MAILING DATE: 8/9/2011 This Office Action is in response to applicant s communication filed on July 13, The following requirements/refusals in the previous office action are maintained and continued: Section 2(d) refusal, prior pending applications advisory, disclaimer. Applicant must respond to the following new issue: Dockets.Justia.com

2 CHANGE OF OWNER NAME NO ASSIGNMENT Applicant has requested that the owner name be amended; however, applicant has not explained the reason for such request and has not provided or recorded ownership transfer documentation. The name of the original applicant is Uncle Abies Deli Inc., a NY corporation; the request is to amend this to Jack Lebewohl, a U.S. individual. The request to change the applicant s name raises a question regarding whether the proper party filed the initial application. Therefore, applicant must clarify whether the proper party filed the original application, and whether the assignee is a successor to applicant s business. Pending proper response, the request to amend the owner name is denied. An intent-to-use application is void if it was filed in the name of a party who was not entitled to use the mark as of the application filing date. 37 C.F.R. 2.71(d); Am. Forests v. Sanders, 54 USPQ2d 1860 (TTAB 1999), aff d, 232 F.3d 907 (Fed. Cir. 2000); TMEP , (b); see 15 U.S.C. 1051(b). In addition, an intent-to-use application is void if, prior to filing an allegation of use, the application is assigned to a party other than either a successor to the applicant s business or to a portion of the applicant s business to which the mark pertains, if that business is ongoing and existing. 15 U.S.C. 1060(a)(1); 37 C.F.R. 3.16; Clorox Co. v. Chem. Bank, 40 USPQ2d 1098, (TTAB 1996); TMEP (a). A void application cannot be cured by amendment or assignment. 37 C.F.R. 2.71(d); TMEP , (b). In such cases, the true owner must file a new application. TMEP If the application was filed by the owner and the original applicant has since changed its name or transferred ownership of the mark to another entity, then the new owner must submit documentation to establish a clear chain of title as follows: (1) The new owner must record an assignment, name change or other documentation affecting title with the Office s Assignment Services Branch showing a clear chain of title to the mark in the new owner, and promptly notify the examining attorney that such documentation has been recorded; or (2) The new owner must submit either a written statement, verified with an affidavit or signed declaration under 37 C.F.R. 2.20, explaining in detail the chain of title to the current owner, or submit documentation showing transfer of title to the new owner. However, the registration will not issue in the new owner name without recording chain of title documentation with the Office and notifying the examining attorney, as specified in (1) above. 37 C.F.R. 3.73(b)(1); TMEP ; see 15 U.S.C. 1060; 37 C.F.R (e)(1). Assignments and other documents affecting title can be filed electronically at There is a fee for recording such ownership changes. 37 C.F.R. 2.6(b)(6), 3.41(a); TMEP (d). Merely recording an assignment or other ownership transfer document does not constitute a response to an Office action. See TMEP (d). If the party applying to register the mark is in fact the owner of the mark, but there is a typographical error or other minor mistake in the manner in which the name of the applicant is set forth in the application, the mistake may be corrected by amendment. U.S. Pioneer Elecs. Corp. v. Evans Mktg., Inc., 183 USPQ 613 (Comm r Pats. 1974); see TMEP (c) (providing examples of correctable and non-correctable errors).

3 COMMENTS If applicant has questions regarding this Office action, please telephone or the assigned trademark examining attorney. All relevant communications will be placed in the official application record; however, an communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R ; TMEP Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant s rights. See TMEP , TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions. See 37 C.F.R. 2.23(a)(1). For a complete list of these documents, see TMEP (b). In addition, such applicants must accept correspondence from the Office via throughout the examination process and must maintain a valid address. 37 C.F.R. 2.23(a)(2); TMEP 819, (a). TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services. 37 C.F.R. 2.6(a)(1)(iv); TMEP In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner s amendment will not incur this additional fee. /Fong Hsu/ Law Office 115 Trademark Examining Attorney fong.hsu@uspto.gov Office: (571) TO RESPOND TO THIS LETTER: Go to Please wait hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by . All informal communications relevant to this application will be placed in the official application record. WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response. PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months

4 using Trademark Applications and Registrations Retrieval (TARR) at Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call For more information on checking status, see TO UPDATE CORRESPONDENCE/ ADDRESS: Use the TEAS form at

5 To: Subject: Sent: Sent As: Attachments: Uncle Abies Deli Inc. U.S. TRADEMARK APPLICATION NO INSTANT HEART ATTACK SANDWICH - N/A 8/9/2011 4:14:16 PM ECOM115@USPTO.GOV IMPORTANT NOTICE REGARDING YOUR U.S. TRADEMARK APPLICATION USPTO OFFICE ACTION HAS ISSUED ON 8/9/2011 FOR SERIAL NO Please follow the instructions below to continue the prosecution of your application: TO READ OFFICE ACTION: Click on this link or go to and enter the application serial number to access the Office action. PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification. RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 8/9/2011 (or sooner if specified in the office action). Do NOT hit Reply to this notification, or otherwise attempt to your response, as the USPTO does NOT accept ed responses. Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form. HELP: For technical assistance in accessing the Office action, please TDR@uspto.gov. Please contact the assigned examining attorney with questions about the Office action. WARNING Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.

6 Trademark Snap Shot Amendment & Mail Processing Stylesheet (Table presents the data on Amendment & Mail Processing Complete) OVERVIEW SERIAL NUMBER FILING DATE 09/29/2010 REG NUMBER REG DATE N/A REGISTER PRINCIPAL MARK TYPE TRADEMARK INTL REG # N/A INTL REG DATE N/A TM ATTORNEY HSU, FONG L.O. ASSIGNED 115 RUN DATE 07/30/2011 PUB INFORMATION PUB DATE STATUS N/A 661-RESPONSE AFTER NON-FINAL-ACTION-ENTERED STATUS DATE 07/29/2011 LITERAL MARK ELEMENT INSTANT HEART ATTACK SANDWICH DATE ABANDONED N/A DATE CANCELLED N/A SECTION 2F NO SECTION 2F IN PART NO SECTION 8 NO SECTION 8 IN PART NO SECTION 15 NO REPUB 12C N/A RENEWAL FILED NO RENEWAL DATE N/A DATE AMEND REG N/A FILING BASIS FILED BASIS CURRENT BASIS AMENDED BASIS 1 (a) YES 1 (a) YES 1 (a) NO 1 (b) NO 1 (b) NO 1 (b) NO 44D NO 44D NO 44D NO 44E NO 44E NO 44E NO 66A NO 66A NO NO BASIS NO NO BASIS NO MARK DATA STANDARD CHARACTER MARK LITERAL MARK ELEMENT YES INSTANT HEART ATTACK SANDWICH

7 MARK DRAWING CODE COLOR DRAWING FLAG 4-STANDARD CHARACTER MARK NO CURRENT OWNER INFORMATION PARTY TYPE NAME ADDRESS ENTITY CITIZENSHIP 10-ORIGINAL APPLICANT Uncle Abies Deli Inc. 162 East 33rd Street New York, NY CORPORATION New York GOODS AND SERVICES INTERNATIONAL CLASS 030 DESCRIPTION TEXT Sandwiches GOODS AND SERVICES CLASSIFICATION INTERNATIONAL CLASS 030 FIRST USE DATE 05/19/2004 FIRST USE IN COMMERCE DATE 05/19/2004 CLASS STATUS 6-ACTIVE MISCELLANEOUS INFORMATION/STATEMENTS CHANGE IN REGISTRATION NO PROSECUTION HISTORY DATE ENT CD ENT TYPE DESCRIPTION ENT NUM 07/29/2011 TEME I TEAS/ CORRESPONDENCE ENTERED /29/2011 CRFA I CORRESPONDENCE RECEIVED IN LAW OFFICE /21/2011 ALIE A ASSIGNED TO LIE /13/2011 TROA I TEAS RESPONSE TO OFFICE ACTION RECEIVED /13/2011 GNRN O NOTIFICATION OF NON-FINAL ACTION ED /13/2011 GNRT F NON-FINAL ACTION ED /13/2011 CNRT R NON-FINAL ACTION WRITTEN /07/2011 DOCK D ASSIGNED TO EXAMINER /04/2010 NWOS I NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM /02/2010 NWAP I NEW APPLICATION ENTERED IN TRAM 001

8 CURRENT CORRESPONDENCE INFORMATION ATTORNEY CORRESPONDENCE ADDRESS DOMESTIC REPRESENTATIVE William W. Chuang WILLIAM W. CHUANG JAKUBOWITZ & CHUANG LLP 401 BROADWAY STE 408 NEW YORK, NY NONE

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10 PTO Form 1957 (Rev 9/2005) OMB No (Exp. 04/30/2011) Response to Office Action The table below presents the data as entered. Input Field Entered SERIAL NUMBER LAW OFFICE ASSIGNED LAW OFFICE 115 MARK SECTION (no change) OWNER SECTION (current) NAME STREET CITY STATE Uncle Abies Deli Inc. 162 East 33rd Street New York New York ZIP/POSTAL CODE COUNTRY United States OWNER SECTION (proposed) NAME STREET CITY STATE Jack Lebewohl 20 East 9th St. New York New York ZIP/POSTAL CODE COUNTRY United States LEGAL ENTITY SECTION (current) TYPE STATE/COUNTRY OF INCORPORATION corporation New York LEGAL ENTITY SECTION (proposed) TYPE COUNTRY OF CITIZENSHIP individual United States

11 EVIDENCE SECTION EVIDENCE FILE NAME(S) ORIGINAL PDF FILE CONVERTED PDF FILE(S) (2 pages) evi_ _._ response_to_uspto_requesting_a_stay.pdf \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0002.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0003.JPG ORIGINAL PDF FILE CONVERTED PDF FILE(S) (7 pages) evi_ _._docket_no._1_- _ Complaint_ECF.pdf \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0004.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0005.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0006.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0007.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0008.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0009.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0010.JPG ORIGINAL PDF FILE CONVERTED PDF FILE(S) (29 pages) evi_ _._docket_no._6_- _Answer_and_Counterclaims.pdf \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0011.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0012.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0013.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0014.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0015.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0016.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0017.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0018.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0019.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0020.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0021.JPG

12 \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0022.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0023.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0024.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0025.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0026.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0027.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0028.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0029.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0030.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0031.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0032.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0033.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0034.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0035.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0036.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0037.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0038.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml4\ROA0039.JPG DESCRIPTION OF EVIDENCE FILE Applicant requests that the Examiner suspend the instant proceedings due to a court action concerning this mark in the Southern District of New York with docket number 11-CV Attached are the argument in support, the Complaint, and the Answers and Counterclaims. SIGNATURE SECTION RESPONSE SIGNATURE SIGNATORY'S NAME SIGNATORY'S POSITION /William W. Chuang/ William W. Chuang Attorney of Record, NY State bar member DATE SIGNED 07/13/2011 AUTHORIZED SIGNATORY YES FILING INFORMATION SECTION SUBMIT DATE Wed Jul 13 16:19:16 EDT 2011

13 TEAS STAMP USPTO/ROA dae25a752b9aac14c 75537d8e68a6f-N/A-N/A PTO Form 1957 (Rev 9/2005) OMB No (Exp. 04/30/2011) Response to Office Action To the Commissioner for Trademarks: Application serial no INSTANT HEART ATTACK SANDWICH has been amended as follows: EVIDENCE Evidence in the nature of Applicant requests that the Examiner suspend the instant proceedings due to a court action concerning this mark in the Southern District of New York with docket number 11-CV Attached are the argument in support, the Complaint, and the Answers and Counterclaims. has been attached. Original PDF file: evi_ _._ response_to_uspto_requesting_a_stay.pdf Converted PDF file(s) (2 pages) Evidence-1 Evidence-2 Original PDF file: evi_ _._docket_no._1_-_ complaint_ecf.pdf Converted PDF file(s) (7 pages) Evidence-1 Evidence-2 Evidence-3 Evidence-4 Evidence-5 Evidence-6 Evidence-7 Original PDF file: evi_ _._docket_no._6_-_answer_and_counterclaims.pdf Converted PDF file(s) (29 pages) Evidence-1 Evidence-2 Evidence-3 Evidence-4 Evidence-5 Evidence-6 Evidence-7

14 Evidence-8 Evidence-9 Evidence-10 Evidence-11 Evidence-12 Evidence-13 Evidence-14 Evidence-15 Evidence-16 Evidence-17 Evidence-18 Evidence-19 Evidence-20 Evidence-21 Evidence-22 Evidence-23 Evidence-24 Evidence-25 Evidence-26 Evidence-27 Evidence-28 Evidence-29 APPLICANT AND/OR ENTITY INFORMATION Applicant proposes to amend the following: Current: Uncle Abies Deli Inc., a corporation of New York, having an address of 162 East 33rd Street New York, New York United States Proposed: Jack Lebewohl, a citizen of United States, having an address of 20 East 9th St. New York, New York United States SIGNATURE(S) Response Signature Signature: /William W. Chuang/ Date: 07/13/2011 Signatory's Name: William W. Chuang Signatory's Position: Attorney of Record, NY State bar member 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

15 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: Internet Transmission Date: Wed Jul 13 16:19:16 EDT 2011 TEAS Stamp: USPTO/ROA dae25a752b9aac14c75537 d8e68a6f-n/a-n/a

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54 To: Subject: Sent: Sent As: Uncle Abies Deli Inc. U.S. TRADEMARK APPLICATION NO INSTANT HEART ATTACK SANDWICH - N/A 1/13/2011 5:00:35 PM ECOM115@USPTO.GOV Attachments: Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO) OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT S TRADEMARK APPLICATION APPLICATION SERIAL NO MARK: INSTANT HEART ATTACK SANDWICH CORRESPONDENT ADDRESS: WILLIAM W. CHUANG JAKUBOWITZ & CHUANG LLP 401 BROADWAY STE 408 NEW YORK, NY * * CLICK HERE TO RESPOND TO THIS LETTER: APPLICANT: Uncle Abies Deli Inc. CORRESPONDENT S REFERENCE/DOCKET NO: N/A CORRESPONDENT ADDRESS: william@jakubowitzchuang.com OFFICE ACTION STRICT DEADLINE TO RESPOND TO THIS LETTER TO AVOID ABANDONMENT OF APPLICANT S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. ISSUE/MAILING DATE: 1/13/2011 The referenced application has been reviewed by the assigned trademark examining attorney. Applicant

55 must respond timely and completely to the issue(s) below. 15 U.S.C. 1062(b); 37 C.F.R. 2.62(a), 2.65(a); TMEP 711, SECTION 2(d) REFUSAL LIKELIHOOD OF CONFUSION Registration of the applied-for mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s) Trademark Act Section 2(d), 15 U.S.C. 1052(d); see TMEP et seq. See the enclosed registration(s). Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. 1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP et seq. Similar Marks The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services they identify come from the same source. In re West Point- Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, (C.C.P.A. 1972); TMEP (b). For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison. The question is whether the marks create the same overall impression. See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, , 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537, (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP (b). Applicant has applied to register INSTANT HEART ATTACK SANDWICH. Registrant s mark is HEART ATTACK CAFE. Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant s and registrant s mark. See Crocker Nat l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat l Ass n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and 21 CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP (b)(ii)-(iii).

56 The mere addition of a term to a registered mark generally does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Trademark Act Section 2(d). See In re Chatam Int l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR S ALE and JOSE GASPAR GOLD); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (THE LILLY and LILLI ANN); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266 (TTAB 2009) (TITAN and VANTAGE TITAN); In re El Torito Rests., Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO and MACHO COMBOS); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE and CREST CAREER IMAGES); In re Riddle, 225 USPQ 630 (TTAB 1985) (ACCUTUNE and RICHARD PETTY S ACCU TUNE); TMEP (b)(iii). In this case, the respective marks share the identical wording HEART ATTACK. The mere addition of the word INSTANT merely reinforces the shared wording, and thus does not obviate the similarity between the marks. Further, the wording SANDWICH is descriptive and requires disclaimer, and disclaimed matter is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, (Fed. Cir. 1997); In re Nat l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP (b)(viii), (c)(ii). If the goods and/or services of the respective parties are similar in kind and/or closely related, as they are in this case, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP (b). Related Goods and/or Services The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP (a)(i). Rather, it is sufficient that the goods and/or services are related in some manner and/or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP (a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, , 56 USPQ2d 1471, (Fed. Cir. 2000); In re Martin s Famous Pastry Shoppe, Inc., 748 F.2d 1565, , 223 USPQ 1289, 1290 (Fed. Cir. 1984). Applicant s goods and/or services include sandwiches. Registrant s goods and/or services include café and restaurant services. The respective goods and/or services are related because consumers in the market for sandwiches encounter them at cafés and restaurants. See applicant s specimen of record showing that sandwiches are served as menu items at cafes and restaurants. Conclusion Given the similarity of the marks and the goods and/or services, prospective customers are likely to confuse the source of the respective goods and/or services. Accordingly, registration of applicant s mark is properly refused under Section 2(d) of the Trademark Act.

57 Although applicant s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. ADVISORY POTENTIAL LIKELIHOOD OF CONFUSION The filing dates of pending Application Serial Nos and precede applicant s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. 1052(d); 37 C.F.R. 2.83; TMEP 1208 et seq. Therefore, upon receipt of applicant s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications. In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant s mark and the marks in the referenced applications. Applicant s election not to submit arguments at this time in no way limits applicant s right to address this issue later if a refusal under Section 2(d) issues. If applicant chooses to respond to the refusal to register, applicant must also respond to the requirement(s) set forth below: DISCLAIMER REQUIRED Applicant must disclaim the descriptive wording SANDWICH apart from the mark as shown because it merely describes applicant s sandwich goods. See 15 U.S.C. 1056(a); TMEP 1213, (a). The computerized printing format for the Office s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP (a)(i). The following is the standard format used by the Office: No claim is made to the exclusive right to use SANDWICH apart from the mark as shown. TMEP (a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm r Pats. 1983). A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown COMMENTS If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below. TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions. For a complete list of these documents, see TMEP (b). In addition, such applicants must accept correspondence from the Office via throughout the examination process and must maintain a valid address. 37 C.F.R. 2.23(a)(2); TMEP 819, (a). TEAS Plus applicants who do not meet these

58 requirements must submit an additional fee of $50 per international class of goods and/or services. 37 C.F.R. 2.6(a)(1)(iv); TMEP Responding by telephone to authorize an examiner s amendment will not incur this additional fee. /Fong Hsu/ Law Office 115 Trademark Examining Attorney Office: (571) TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at Please wait hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, TEAS@uspto.gov. WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response. PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call For more information on checking status, see TO UPDATE CORRESPONDENCE/ ADDRESS: Use the TEAS form at

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65 To: Subject: Sent: Sent As: Attachments: Uncle Abies Deli Inc. U.S. TRADEMARK APPLICATION NO INSTANT HEART ATTACK SANDWICH - N/A 1/13/2011 5:00:38 PM ECOM115@USPTO.GOV IMPORTANT NOTICE REGARDING YOUR U.S. TRADEMARK APPLICATION USPTO OFFICE ACTION HAS ISSUED ON 1/13/2011 FOR SERIAL NO Please follow the instructions below to continue the prosecution of your application: TO READ OFFICE ACTION: Click on this link or go to and enter the application serial number to access the Office action. PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification. RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 1/13/2011 (or sooner if specified in the office action). Do NOT hit Reply to this notification, or otherwise attempt to your response, as the USPTO does NOT accept ed responses. Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form. HELP: For technical assistance in accessing the Office action, please TDR@uspto.gov. Please contact the assigned examining attorney with questions about the Office action. WARNING Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.

66 *** User:fhsu *** # Total Dead Live Live Status/ Search Marks Marks Viewed Viewed Search Docs Images Duration N/A 0 0 0:02 *n{"sz":2}t{v}nt* [bi,ti] not dead[ld] N/A 0 0 0:02 *h{"ea":2}rt* [bi,ti] not dead[ld] N/A 0 0 0:06 *a{"td":2}a{"ckqx"}* [bi,ti] not dead[ld] :01 1 and (2 3) :01 2 and N/A 0 0 0:03 1 and 030[cc] :01 1 and ("030" "A" "B" "200")[ic] N/A 0 0 0:03 2 and 030[cc] :02 2 and ("030" "A" "B" "200")[ic] :03 3 and 030[cc] N/A 0 0 0:02 *h{"ea":2}rd* [bi,ti] not dead[ld] :01 11 and (1 3) N/A 0 0 0:02 11 and 030[cc] :02 11 and ("030" "A" "B" "200")[ic] Session started 1/9/2011 3:10:47 PM Session finished 1/9/2011 3:39:51 PM Total search duration 0 minutes 31 seconds Session duration 29 minutes 4 seconds Defaut NEAR limit=1adj limit=1 Sent to TICRS as Serial Number:

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80 PTO Form 1478 (Rev 9/2006) OMB No (Exp 12/31/2011) Trademark/Service Mark Application, Principal Register TEAS Plus Application Serial Number: Filing Date: 09/29/2010 NOTE: Data fields with the * are mandatory under TEAS Plus. The wording "(if applicable)" appears where the field is only mandatory under the facts of the particular application. The table below presents the data as entered. Input Field Entered TEAS Plus YES MARK INFORMATION *MARK *STANDARD CHARACTERS USPTO- GENERATED IMAGE LITERAL ELEMENT *MARK STATEMENT REGISTER Instant Heart Attack Sandwich YES YES Instant Heart Attack Sandwich The mark consists of standard characters, without claim to any particular font, style, size, or color. Principal APPLICANT INFORMATION *OWNER OF MARK *STREET *CITY *STATE (Required for U.S. applicants) *COUNTRY *ZIP/POSTAL CODE (Required for U.S. applicants only) Uncle Abies Deli Inc. 162 East 33rd Street New York New York United States 10016

81 LEGAL ENTITY INFORMATION *TYPE * STATE/COUNTRY OF INCORPORATION CORPORATION New York GOODS AND/OR SERVICES AND BASIS INFORMATION * INTERNATIONAL CLASS IDENTIFICATION *FILING BASIS FIRST USE ANYWHERE DATE FIRST USE IN COMMERCE DATE 030 Sandwiches SECTION 1(a) At least as early as 05/19/2004 At least as early as 05/19/2004 SPECIMEN FILE NAME(S) ORIGINAL PDF FILE CONVERTED PDF FILE(S) (2 pages) spec _._menu.pdf \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml1\FTK0003.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml1\FTK0004.JPG ORIGINAL PDF FILE CONVERTED PDF FILE(S) (2 pages) spec _._receipt.pdf \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml1\FTK0005.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml1\FTK0006.JPG ORIGINAL PDF FILE CONVERTED PDF FILE(S) (8 pages) spec _._instant_heart_attack_sandwich_- _Chowhound_May_ pdf \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml1\FTK0007.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml1\FTK0008.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml1\FTK0009.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml1\FTK0010.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml1\FTK0011.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml1\FTK0012.JPG \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml1\FTK0013.JPG

82 \\TICRS\EXPORT11\IMAGEOUT11\851\407\ \xml1\FTK0014.JPG SPECIMEN DESCRIPTION Applicant submits a copy of a menu used by Applicant to offer for sale a sandwich using the mark being sought. An invoice for the menu dated 8/10/2005 is offered to corroborate the date. An article from a third-party review website referring to the applicant's Instant Heart Attack sandwich is offered to show a date of use at least as early as May 19, ADDITIONAL STATEMENTS INFORMATION *TRANSLATION (if applicable) *TRANSLITERATION (if applicable) *CLAIMED PRIOR REGISTRATION (if applicable) *CONSENT (NAME/LIKENESS) (if applicable) *CONCURRENT USE CLAIM (if applicable) ATTORNEY INFORMATION NAME FIRM NAME William W. Chuang Jakubowitz & Chuang LLP STREET 401 Broadway Suite 408 CITY STATE COUNTRY New York New York United States ZIP/POSTAL CODE PHONE FAX ADDRESS AUTHORIZED TO COMMUNICATE VIA william@jakubowitzchuang.com Yes CORRESPONDENCE INFORMATION *NAME FIRM NAME William W. Chuang Jakubowitz & Chuang LLP

83 *STREET 401 Broadway Suite 408 *CITY *STATE (Required for U.S. applicants) *COUNTRY New York New York United States *ZIP/POSTAL CODE PHONE FAX * ADDRESS *AUTHORIZED TO COMMUNICATE VIA Yes FEE INFORMATION NUMBER OF CLASSES 1 FEE PER CLASS 275 *TOTAL FEE PAID 275 SIGNATURE INFORMATION * SIGNATURE /William W. Chuang/ * SIGNATORY'S NAME * SIGNATORY'S POSITION William W. Chuang Attorney of Record * DATE SIGNED 09/29/2010

84 PTO Form 1478 (Rev 9/2006) OMB No (Exp 12/31/2011) Trademark/Service Mark Application, Principal Register TEAS Plus Application Serial Number: Filing Date: 09/29/2010 To the Commissioner for Trademarks: MARK: Instant Heart Attack Sandwich (Standard Characters, see mark) The literal element of the mark consists of Instant Heart Attack Sandwich. The mark consists of standard characters, without claim to any particular font, style, size, or color. The applicant, Uncle Abies Deli Inc., a corporation of New York, having an address of 162 East 33rd Street New York, New York United States requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following: For specific filing basis information for each item, you must view the display within the Input Table. International Class 030: Sandwiches In International Class 030, the mark was first used at least as early as 05/19/2004, and first used in commerce at least as early as 05/19/2004, and is now in use in such commerce. The applicant is submitting one specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed goods and/or services, consisting of a(n) Applicant submits a copy of a menu used by Applicant to offer for sale a sandwich using the mark being sought. An invoice for the menu dated 8/10/2005 is offered to corroborate the date. An article from a third-party review website referring to the applicant's Instant Heart Attack sandwich is offered to show a date of use at least as early as May 19, Original PDF file: spec _._menu.pdf Converted PDF file(s) (2 pages) Specimen File1 Specimen File2 Original PDF file: spec _._receipt.pdf Converted PDF file(s) (2 pages) Specimen File1 Specimen File2

85 Original PDF file: spec _._instant_heart_attack_sandwich_-_chowhound_may_ pdf Converted PDF file(s) (8 pages) Specimen File1 Specimen File2 Specimen File3 Specimen File4 Specimen File5 Specimen File6 Specimen File7 Specimen File8 The applicant's current Attorney Information: William W. Chuang of Jakubowitz & Chuang LLP 401 Broadway Suite 408 New York, New York United States The applicant's current Correspondence Information: William W. Chuang Jakubowitz & Chuang LLP 401 Broadway Suite 408 New York, New York (phone) (fax) (authorized) A fee payment in the amount of $275 has been submitted with the application, representing payment for 1 class(es). Declaration 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. Section 1001, and that such willful false statements, and the like, 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. Section 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; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.

86 Signature: /William W. Chuang/ Date Signed: 09/29/2010 Signatory's Name: William W. Chuang Signatory's Position: Attorney of Record RAM Sale Number: 8444 RAM Accounting Date: 09/29/2010 Serial Number: Internet Transmission Date: Wed Sep 29 11:57:21 EDT 2010 TEAS Stamp: USPTO/FTK a2e95dc7691caf22c CC

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