Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA451756
`ESTTA Tracking number:
`01/18/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91201310
`Plaintiff
`McDonald's Corporation
`ROBERT E BROWNE
`NEAL GERBER & EISENBERG LLP
`2 N LASALLE STREET, SUITE 1700
`CHICAGO, IL 60602
`UNITED STATES
`rbrowner@ngelaw.com
`Other Motions/Papers
`Robert E. Browne
`rbrowne@ngelaw.com, simon@hugheslegal.com, jcullis@ngelaw.com,
`ljames@ngelaw.com, kblouin@ngelaw.com, mbenson@ngelaw.com
`/Robert E. Browne/
`01/18/2012
`Proposed_Stipulated_Amendment_of_Application.pdf ( 2 pages )(71820 bytes )
`Agreed_Motion_to_Amend_App_etc.pdf ( 3 pages )(114705 bytes )
`Order.pdf ( 1 page )(38877 bytes )
`
`Proceeding
`Party
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`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
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`

`
`in the United States Patent and Trademark Office
`Before the Trademark Trial and Appeal Board
`
`In the Matter of:
`Application Serial No. 85197789
`
`.
`
`McDonald’s Corporation,
`Opposer,
`
`V.
`Jus’ Mac, Inc.
`' Applicant
`
`§
`§
`§
`§
`§
`§
`§
`§
`
`Opposition No 91201310
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`PROPOSED STIPULATED AMENDMENT OF APPLICATION
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`Defendant Jus’ Mac,
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`Inc. and Plaintiff McDonald’s Corporation have entered into a
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`settlement agreement
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`(“Settlement Agreement“) which resolves P1aintiff’s opposition to
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`Defendant’s application for registration of the mark ‘fllus’ Mac” for a restaurant in International
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`Class 43, U .S. Trademark Serial No. 85/197,789 (the “/application”).
`Pursuant to the Settlement Agreement, as stipulated by the parties, Defendant hereby
`proposes to amend the Application to change the proposed mark from: ‘ilus’ Mac” to: ‘fllus’ Mac
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`- - The Mac and Cheese Eatery" and to change the identification of services from: “Restaurant"
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`to: “Restaurant services featuring macaroni and cheese entrees.”
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`Further, Plaintiff and Defendant will seek the Board’s approval of the proposed
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`amendment of the mark and identification of services in a motion to be filed concurrently with
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`this Proposed Stipulated Amendment of» Application, which motion shall" also ask that, in the
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`event the Board approves of and enters the amendment, Plaintiffs opposition be dismissed
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`without prejudice.
`Respectfully submitted,
`
`JUS’ MAC, INC.
`
`.
`
`MCD()N/\l..D°S C()RI’OR/\'l‘l"ON _
`
`By’
`
`.........................W
`Simon H
`ghes
`Attorney
`
`‘l”.)et'endant/Applicant
`
`W
`
`By:
`
`

`
`Certificate of Transmission
`
`On January 18, 2012, a true and correct copy of this pleading was electronically
`transmitted via the Electronic System for Trademark Trials and Appeals (“ESTTA”) at
`http://estta.uspto. gov.
`
`Mavis Benson
`
`Paralegal
`
`Certificate of Service
`
`On January 18, 2012, a true and correct copy of this pleading was sent via First Class
`Mail, Postage Pre-paid to all counsel of record.
`
`Simon H. Hughes
`THE HUGHES LAW FIRM
`
`13280 Northwest Freeway, No. F-400
`Houston, Texas 77040
`
`Mavis Benson
`
`Paralegal
`
`

`
`In the United States Patent and Trademark Office
`
`Before the Trademark Trial and Appeal Board
`
`Opposition No 91201310
`
`§
`
`§ §
`
`§
`§
`§
`§
`§
`
`In the Matter of:
`Application Serial No. 85197789
`
`McDonald’s Corporation,
`Opposer,
`
`V.
`Jus’ Mac, Inc.
`Applicant
`
`' AGREED MOTION FOR APPROVAL OF AMENDMENT TO APPLICA"I“I()N,
`AND AGREED MOTION TO DISMISS OPPOSITION Wrrnour PREJUDICE
`
`Defendant Jus’ Mac. Inc. files this Agreed Motion requesting the Board’s approval of a
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`sti ulated amendment to its a
`I3
`
`PP
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`lication. for re vistration of the mark “.lus’ Mae”, and dismissal of
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`Plaintiff MeDonald‘s Corporations opposition.
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`Defendant Jus’ Mae, Inc. and McDOnald’s Corporation have entered into a settlement
`agreement (“Settlement Agreement”) which resolves Plaintiffs opposition to I)efendant’s
`application for registration of the mark “Jus‘ Mac” for a restaurant in International Class 43, U.S.
`“rademark. Serial No. 85/ 197,789 (the “Application”).
`
`Pursuant to the Settlement Agreement, as stipulated by the parties, Defendant has filed a
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`“Proposed Stipulated Amendment of Application” by which the parties propose to amend the
`Application to change the proposed mark from: “Jus' Mac” to:
`‘fllus’ Mac — The Mac and
`Cheese Eatery” and to change the identiiieation of services from: “Restaurant” to: “Restaurant
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`services featuring macaroni and cheese entrees.“
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`Plaintiff’ has agreed to withdraw its
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`opposition to registration of the mark, as amended to reflect these changes, contingent upon the
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`Board’s approval of the proposed amendment.
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`Plaintiff and Defendant seek the Board’s approval of the proposed amendment of the
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`mark and identification of services as set forth above and in the Proposed Stipulation to Amend
`the Application. The amendment of the mark is supported by the specimen on tile, and a
`comparison of the specimen and the proposed amendment of the mark shows that the amendment
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`does not reflect a material alteration of the mark, as required by Trademark Rule 2.”/2(a). The
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`amendment clearly limits the identification of services, rather than broadening them. as required
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`by Trademark Rule 2.7l(a). Moreover, Plaintiff consents to the amendment, and to the Board’s
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`approval of the amendment, as is authorized under Trademark Rule 2. l 33(a).
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`Agreed Motion to Approve Amendment. and/or Dt'sn1is.s'a/ - Page 1 of2
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`

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`Accordingly, Plaintiff and Defendant request that the Board approve the amendment and
`enter it into the record. They further request that, in the event the Board approves of, and enters,
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`the amendment, Plaintiffs opposition be dismissed without prejudice. A Proposed Order is
`attached.
`
`Dated: 17 January 20l2
`
`Respectfully submitted,
`
`Jus’ MAC, iNC.
`
` By:
`
`Simon H.l ug es
`State Bar N67 10230295
`Tm—; I~Iu<‘.Hns l..,.r\w FIRM
`
`13280 Northwest Freeway
`No. l«‘~4()O
`
`Houston, Texas 77040
`Tel:
`713-621-4500
`Fax:
`866-397-9747
`SlII1C)1'I(70,lll1’hCSl€
`ral.com
`
`
`
`
`ATTORNEYS FOR APPLl('ZANT
`Jus’ MAC, INC.
`
`Agreed Motion to Approve Amenclmem, cmd‘/or Dismissal - Page 2 of2
`
`

`
`Certificate of Transmission
`
`On January 18, 2012, a true and correct copy of this pleading was electronically
`transmitted via the Electronic System for Trademark Trials and Appeals (“ESTTA”) at
`http://estta.uspto. gov.
`
`Mavis Benson
`
`Paralegal
`
`Certificate of Service
`
`On January 18, 2012, a true and correct copy of this pleading was sent via First Class
`Mail, Postage Pre—paid to all counsel of record.
`
`Simon H. Hughes
`THE HUGHES LAW ‘FIRM
`
`13280 Northwest Freeway, No. F-400
`Houston, Texas 77040
`
`:
`
`Mavis Benson
`
`Paralegal
`
`

`
`In the United States Patent and Trademark Office
`
`Before the Trademark Trial and Appeal Board
`
`Opposition No 91201310
`
`§
`
`§ §
`
`§
`§
`§
`§
`§
`
`ORDER
`
`In the Matter of:
`Application Serial No. 85197789
`
`McDonald’s Corporation,
`Opposer,
`
`V.
`Jus’ Mac, Inc.
`Applicant
`
`On this day, the Board considered the Agreed Motion filed by Defendant Jus’ Mac, lnc.,
`requesting the Board’s approval of a stipulated amendment to Defendant’s Application for
`registration of the mark “Jus’ Mac”, and dismissal of Plaintiff McDonald’s Corporaticn’s
`
`opposition.
`
`By the proposed amendment, and pursuant to the Settlement Agreement, as stipulated by
`the parties, Defendant has filed a “Proposed Stipulated Amendment of Application” by which the
`parties propose to amend the Application to change the proposed mark from: “Jus’ Mac” to:
`“Jus’ Mac — The Mac and Cheese Eatery” and to change the identification of services from:
`“Restaurant” to: “Restaurant services featuring macaroni and cheese entrees.” Plaintiff has
`agreed to withdraw its opposition to registration of the mark, as amended to reflect these
`changes, contingentupon the Board’s approval of the proposed amendment.
`
`Inasmuch as the amendment is clearly limiting in nature, as required by Trademark Rule
`2.71(a), and because Plaintiff consents,
`it
`is approved and entered.
`See Trademark Rule
`
`2.133(a).
`
`The contingency in Plaintiffs withdrawal having now been met,
`dismissed without prejudice.
`'
`
`the opposition is
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`Singed this
`
`day of
`
`20
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`TRADEMARK TRIAL AND APPEAL BOARD
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`Order ~ Page 1 of 1