Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA210332
`ESTTA Tracking number:
`05/09/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92048012
`Plaintiff
`Wells' Dairy, Inc.
`Bruce W. McKee
`McKee, Voorhees & Sease, P.L.C.
`801 Grand Ave., Suite 3200
`Des Moines, IA 50309
`UNITED STATES
`mvslit@ipmvs.com
`Motion for Summary Judgment
`Christine Lebron-Dykeman
`mvslit@ipmvs.com
`/christine lebron-dykeman/
`05/09/2008
`Our Motion for Summary Judgment_05-09-08.pdf ( 105 pages )(4774986 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
` WELLS‘ DAIRY, INC.,
`
`Cancellation. No: 92048012
`
`Registration No. 3166541
`
`
`
`Petitioner,
`
`V.
`
`MANHATTAN CONFECTIONERS INC.,
`
`Registrant.
`
`
`
`PETITIONER WELLS’ DAIRY INC.'S MOTION FOR SUMMARY JUDGMENT
`
`Trademark Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Petitioner, Wells’ Dairy Inc. ("Petitioner"), through counsel, respectfully moves for
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`summary judgment sustaining this opposition pursuant to Federal Rule of Civil Procedure 56, 37
`
`C.F.R. § 2.116 and 37 C.F.R. § 2.127 on the basis that due to over three consecutive years of
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`nonuse, Registrant's Registration No. 3166541 is presumed abandoned under 15 U.S.C. §1127
`
`and should be cancelled. Thus, summary judgment should be entered in favor of Petitioner. A
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`memorandum, affidavit of Christine Lebron-Dykeman and exhibits attached thereto, are
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`submitted herewith.
`
`

`
`Res ectfully submitted,
`
`
`Bruce W. McKee
`
`Christine Lebrén-Dykeman
`Janet Phipps Burkhead
`MCKEE, VOORHEES & SEASE, P.L.C.
`801 Grand Avenue, Suite 3200
`
`Des Moines, IA 50309-2721
`Phone: 515-288-3667
`
`Fax:
`
`515-288-1338
`
`Email: mckee@ipmVs.com
`Email:
`lebrén-dykeman@ipmVs.com
`Email: janet.phippsburkhead@ipmvs.com
`Email: mvslit@ipmvs.com
`
`ATTORNEYS FOR PETITIONER
`
`CERTIFICATE OF FILING
`
`I hereby declare that the foregoing document has been filed via the Electronic System for
`Trademark Trials and Appeals (ESTTA) this 9th May, 2008.
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby declare that the foregoing document was served upon the following this 9th day
`of May, 2008, via:
`
`CI
`Cl
`
`Federal Express
`Hand Delivery
`
`15‘ Class U.S. Mail
`Facsimile
`Other
`
`CI
`El
`
`- Bruce B. Brunda
`
`Stetina Brunda Garred & Brucker
`
`75 Enterprise, Suite 250
`Aliso Viejo, CA 92656
`Facsimile: (949) 855-6371
`
`Telephone: (949)855-1246
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
` WELLS’ DAIRY, INC.,
`
`Petitioner,
`
`Cancellation. No: 92048012
`
`v.
`
`Registration No. 3166541
`
`MANHATTAN CONFECTIONERS INC.,
`
`
`
`Registrant.
`
`
`
`MEMORANDUM IN SUPPORT OF PETITIONER WELLS‘ DAIRY, INC.'S MOTION
`FOR SUMMARY JUDGMENT AND TO STAY ALL PROCEEDINGS
`
`Trademark Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`1.
`
`INTRODUCTION
`
`Petitioner, Wells’ Dairy Inc. ("Petitioner"'), has moved this Board for summary judgment
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`on the grounds that Registrant, Manhattan Confectioner's Inc. ("Registrant") has not used its
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`mark in commerce and thus the Registration should be cancelled because it has been abandoned.
`
`There is no genuine factual dispute as to all to the fact that although Registrant, in its
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`trademark application, claims a first use date of March 29, 2005, three years later it is still not
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`selling candy products under the "Gooey Chewy" trademark. Consequently, pursuant to 15
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`U.S.C. § l052(d), FED. R. CIV. P. 56, 37 C.F.R. § 2.116 and 37 C.F.R. § 2.127, summary
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`

`
`judgment should be entered in favor of Petitioner and Registrant ‘s registration should be
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`cancelled.
`
`II.
`
`BACKGROUND
`
`Petitioner filed Application Serial No. 78/670,433 for the mark "Gooey Chewy Turtle
`
`Brownie"; however the application was refused registration as a result of the existence on the
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`Patent and Trademark Office Registry of Registrant's earlier registration. (See Exhibits A, B.)
`
`Upon receipt of the rejection, counsel for Petitioner investigated Registrant and the status of its
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`use of the trademark "Gooey Chewy" for candy but was unsuccessful in finding any evidence of
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`current use and thus proceeded to file the present cancellation action. (See Exhibit C.)
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`Registrant filed an intent-to-use trademark application for its "Gooey Chewy" trademark
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`for use in connection with candy on April 4, 2005. (See Exhibit D.) Thereafter, in August 2006,
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`it filed a statement of use claiming a first use date of March 29, 2005 after which Registration
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`No. 3166541 issued (See Exhibit E, F). However, as of April 5, 2008, Applicant was not selling
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`a candy product under its "Gooey Chewy" trademark. (See Exhibit H.) As over three years have
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`passed since the alleged date of first use and products under the mark have never been sold in
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`commerce, the registration has been abandoned.
`
`III.
`
`THE SUMMARY JUDGMENT STANDARD
`
`"Summary judgment procedure is properly regarded not as a disfavored procedural
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`shortcut but rather as an integral part of the Federal Rules as a whole, which are designed ‘to
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`secure the just, speedy and inexpensive determination of every action."' Celotex Corp. v. Catrett,
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`477 U.S. 317, 327 (1986) (quoting FED. R. CIV. P. 1). An issue may be decided on motion for
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`summary judgment when there is no genuine issue of material fact and the movant is entitled to
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`judgment as a matter of law. FED. R. CIV. P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S.
`
`

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`242, 247-48 (1986). The mere existence of some factual dispute does not defeat a summary
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`judgment motion; the requirement is that there be no genuine issue of material fact. Anderson,
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`477 U.S. at 248. For a dispute to be genuine, the evidence must be such that a reasonable fact
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`finder could return a verdict for the non-moving party. Id. For a fact to be material, it must
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`relate to a disputed matter that "might affect the outcome of the suit." Id.
`
`A party opposing summary judgment "may not rest upon .
`
`.
`
`. mere allegations or denials,"
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`but rather must introduce affidavits or other evidence to "set forth specific facts showing that
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`there is a genuine issue for trial." FED. R. CIV. P. 56(e). A mere scintilla of proof will not suffice
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`to prevent summary judgment; the question is "not whether there is literally no evidence, but
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`whether there is any upon which a [fact finder] could properly proceed to find a verdict for the
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`party" resisting summary judgment. Anderson, 477 U.S. at 251 (internal quotations omitted).
`
`IV.
`
`ARGUMENT
`
`A.
`
`Petitioner has Standing
`
`Section 13(a) of the Lanham Act, 15 U.S.C. § l063(a), provides that "[a]ny person who
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`believes that he would be damaged by the registration of a mark upon the principal register .
`
`.
`
`.
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`may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office,
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`stating the grounds therefor." 15 U.S.C. § l063(a). A plaintiff may show that it has standing to
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`bring a cancellation on the ground of likelihood of confixsion by proving that it has a real
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`commercial interest in its own mark, plus a reasonable basis for its belief that it would be
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`damaged by the registration of the mark in question. Ritchie v. Simpson, 170 F.3d 1092, 1095,
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`50 U.S.P.Q.2d 1023, 1025-26 (Fed. Cir. 1999).
`
`It is undisputed that Petitioner has standing to bring the opposition proceeding. Petitioner
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`is the owner of Application Serial No. 78/670,433 for the mark "Gooey Chewy Turtle Brownie"
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`

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`which has been used in commerce in connection with the sale of frozen confections since at least
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`as early as December 26, 2002. (See Exhibit A.) The Patent and Trademark Office, by Office
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`Action dated February 21, 2007, has refused registration of Petitioner's "Gooey Chewy Turtle
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`Brownie" under Section 2(d), 15 U.S.C. §l052 (b) finding that Petitioner's mark so resembles
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`Registrant's "Gooey Chewy" mark in Registration No. 3166541 so as to cause a likelihood of
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`confusion, mistake, or to deceive. (See Exhibit B.) Registrant's Registration No. 3166541 is
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`blocking registration of Petitioner's Application Serial No. 78/670,433 and thus its continued
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`existence on the Registry will cause damage to Petitioner under 15 U.S.C. 2(d). Accordingly, it
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`is undisputed that Petitioner has a real interest in the outcome of this proceeding and reasonable
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`basis for its belief that it will be damaged by the continued registration of Registrant's mark.
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`B.
`
`Registrant has not "used" its mark in commerce
`
`Pursuant to 15, U.S.C. §l127, a mark shall be deemed to be “abandoned” if
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`the
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`following occurs:
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`(1) When its use has been discontinued with intent not to resume such use. Intent not to
`resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be
`prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such
`mark made in the ordinary course of trade, and not made merely to reserve a right in a
`mark.
`
`15 U.S.C. § 1127 (emphasis added).
`
`In cases where the mark has not been used for 3 consecutive years, there is a presumption
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`of abandonment from nonuse and a mere statement declaring intent not to abandon, or intent to
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`resume use is not dispositive. l5 U.S.C. § 1127 (“Intent not to resume may be inferred from
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`circumstances.”); Rivard v. Linville, 133 F.3d 1446, 1448-1449 (Fed.Cir.1998) (affirming
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`summary judgment finding of abandonment where there was a presumption of abandonment
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`from nonuse); Silverman v. CBS Inc., 870 F.2d 40, 46-48 (2nd Cir.l989) (affirming finding of
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`

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`abandonment afier a trial on the merits where there was a presumption of abandonment from
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`nonuse); Uncas Mfg. Co. v. Clark & Coombs Co., 309 F.2d 818, 819-20 (1st Cir. 1962) (same).
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`The current version of 15 U.S.C. § 1127 was enacted in 1988 when Congress passed the
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`Trademark Law Revision Act (TLRA), Pub.L. No. 100-667, 102 Stat. 3935 (1988). Congress
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`amended the Lanham Act by redefining the term “use in commerce” to mean “the bona fide use
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`of a mark in the ordinary course of trade, and not made merely to reserve a mark.” This Board
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`has held that the purpose of this revision was to eliminate “token use” as a basis for registration,
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`and that the stricter standard contemplates instead “commercial use of the type common to the
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`particular industry in question.” Paramount Pictures Corp. v. White, 31 U.S.P.Q.2d 1768, 1774
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`(TTAB 1994). “Prior to 1989, in order to qualify for federal registration, the extent of actual use
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`of the mark was irrelevant so long as it amounted to more than a mere sham attempt to conform
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`with statutory requirements. However, effective November 16, 1989, Congress changed the
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`statutory definition of ‘use’ so as to require a greater degree of activity.” 2 J. Thomas McCarthy,
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`MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 16:8 (4th ed. 1 997) (footnotes
`
`omitted). The revised section now requires a showing that the applicant has a bona fide intention
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`to use the mark in commerce. This new bona fide intention requirement has been termed entirely
`
`consistent with the traditional rules governing common law ownership of trademarks. Allard
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`Enters, Inc. v. Advanced Programming Resources, Inc., 146 F.3d 350, 357 (6th Cir.1998).
`
`Consistent with this definition of the statutory “use in commerce” requirement, the
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`Supreme Court has said that “[t]here is no such thing as property in a trade-mark except as a
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`right appurtenant to an established business or trade in connection with which the mark is
`
`employed.... [T]he right to a particular mark grows out of its use, not its mere adoption;” United
`
`Drug Co. v. Theodore Rectanus, Co., 248 U.S. 90, 97 (1918). Likewise, the Federal Circuit has
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`

`
`held that the “use in commerce” requirement breaks down into two distinct elements: (1) Was
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`the transaction upon which the registration application was founded bona fide; and (2) if it was
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`bona fide, was it followed by activities proving a continuous effort or intent to use the mar .”
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`Avakoflv. S. Pac. Co., 765 F.2d 1097, 10998 (Fed.Cir.1985) (citing 1 MCCARTHY § 19:37[C]
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`(internal quotation and citations omitted)). However, because token use is not enough, “[m]ere
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`adoption of a mark without bona fide use, in an attempt to reserve it for the future, does not
`
`create trademark rights.... [O]wnership of a mark requires both appropriation and use in trade;
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`and []ownership of a mark and the exclusive right to a mark belongs to the one who first uses the
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`mark on goods placed on the market.” Signature Guardian SyS., Inc. v. Lee, 209 U.S.P.Q. 81, 87
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`(TTAB 1980), citing United Drug C0., 248 U.S. 90 (1918).
`
`In this case, although in its trademark application, Registrant claimed a first use date of
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`March 29, 2005 as of April 5, 2008, Registrant still has not made a bona fide use of the mark in
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`commerce. (See Exhibits D, H.) Indeed, Registrant, which does business under the name of Jo's
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`Candies still does not offer for sale a candy product under its "Chewy Gooey" trademark. (See
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`Exhibits G, H.) Registrant's website is an interactive site which allows consumers to directly
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`purchase its candy products on-line and lists over twenty-five different candy products offered
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`under a variety of trademarks. (See Exhibit H.) However, conspicuously absent from the website
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`is any reference to a "Gooey Chewy" candy product, either for direct purchase or in reference to
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`a product which can be purchased at some other retail outlet. (See Exhibit H.) Additionally,
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`there appears to be no "Gooey Chewy" product available for purchase through the websites of
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`retail outlets through which Registrant sells its products. (See Exhibit 1.) Because the mark has
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`not been used for 3 consecutive years, there is a statutory presumption of abandonment from
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`nonuse. 15 U.S.C. §1l27 and thus the Registration should be cancelled.
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`

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`V.
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`CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully requests that its motion be
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`granted and that summary judgment be entered in its favor and that the Petition to Cancel
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`be sustained.
`
`Respectfully submitted,
`
`
`
`Bruce W. McKee
`
`Christine Lebrén-Dykeman
`Janet Phipps Burkhead
`MCKEE, VOORHEES & SEASE, P.L.C.
`801 Grand Avenue, Suite 3200
`Des Moines, IA 50309-2721
`Phone: 515-288-3667
`
`Fax:
`
`515-288-1338
`
`Email: mckee@ipmvs.com
`Email:
`lebrén-dykeman@ipmVs.com
`Email: janet.phippsburkhead@ipmvs.com
`Email: mvslit@ipmVs.com
`
`ATTORNEYS FOR PETITIONER
`
`CERTIFICATE OF FILING
`
`I hereby declare that the foregoing document has been filed via the Electronic System for
`Trademark Trials and Appeals (ESTTA) this 9th day of May, _/
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby declare that the foregoing document was served upon the following this 9th day
`of May, 2008, via:
`
`El
`El
`
`Federal Express
`Hand Delivery
`
`1“ Class U.S. Mail
`Facsimile
`Other
`
`Cl
`CI
`
`Bruce B. Brunda
`
`Stetina Brunda Garred & Brucker
`
`75 Enterprise, Suite 250
`Aliso Viejo, CA 92656
`Telephone: 949 855-1246
`Fax: 949 855 6371
`
`
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
` WELLS‘ DAIRY, INC.,
`
`Cancellation. No: 92048012
`
`Registration No. 3166541
`
`
`
`Petitioner,
`
`v.
`
`MANHATTAN CONFECTIONERS INC.,
`
`
`Registrant.
`
`
`
`AFFIDAVIT OF CHRISTINE LEBRON-DYKEMAN IN SUPPORT OF PETITIONER'S
`MOTION FOR SUMMARY JUDGMENT
`
`1, Christine Lebrén—Dykeman, hereby affirm that I am over 21 years of age, that I am
`
`competent to make this affidavit, and that I have personal knowledge of the facts stated herein.
`
`I
`
`hereby declare and state:
`
`1.
`
`I am an attorney at the law firm of McKee, Voorhees & Sease, P.L.C., which
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`represents Wells‘ Dairy, Inc., the Registrant in this case.
`
`2.
`
`A true and correct copy of the Applicant's Application Serial No. 78/670,433 is
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`attached here to as Exhibit A.
`
`3.
`
`A true and correct copy of the Office Action issued by the Patent and Trademark
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`Office and dated February 21, 2007 refusing registration of Petitioner's "Gooey Chewy Turtle
`
`Brownie" mark is attached hereto as Exhibit B.
`
`4.
`
`A true and correct copy of the Petition for Cancellation filed by Petitioner against
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`Registration No. 3166541 is attached hereto as Exhibit C.
`
`

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`4
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`5.
`
`In connection with this litigation, I performed an intemet research with respect to
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`the Registrant, Manhattan Confectioner's Inc., d/b/a/ Jo's Candies. Specifically, I have looked on
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`the Patent and Trademark Office website and printed off pages of the filewrapper of Registration
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`No. 3166541, performed a search on "Google" regarding Registrant and printed out a company
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`profile of Registrant, and viewed Registrant's website and printed out each page of the website.
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`6.
`
`A true and correct copy of the Registrant's Application for Registration No.
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`3166541 is attached hereto as Exhibit D.
`
`7.
`
`A true and correct copy of the Registrant's Statement of Use for Registration No.
`
`3166541 is attached hereto as Exhibit E.
`
`8.
`
`A true and correct copy of Registration No. 3166541 is attached hereto as Exhibit
`
`F.
`
`7
`
`A true and correct copy of a company profile of Registrant is attached hereto as
`
`Exhibit G.
`
`8.
`
`9.
`
`A true and correct copy of the Registrant's website is attached hereto as Exhibit H.
`
`On its website Registrant identifies a number of retail outlets through which it
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`sells its products.
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`In connection with this case, I did a "Google" search for each of these entities.
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`If a website was accessible and searchable, I performed a search for the "Gooey Chewy" product.
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`I did not find evidence that the product was sold anywhere. I also performed a "Google" search
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`generally for Registrant's "Gooey Chewy" product and did not find evidence that the product was
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`sold anywhere. True and correct copies of web pages from several of the retail outlets through
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`which Registrant sells its products which show that the product is not available are attached
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`hereto as Exhibit 1.
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`

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`I certify under 28 U.S.C. § 1746, and penalty of perjury that above-referenced statements are true
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`and correct.
`
`_
`Dated: bzflog
`
`: 1/ Z :
`
`Christine Lebrén-Dykeman
`
`STATE OF IOWA )
`)
`COUNTY OF POLK )
`
`ss.
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`Subscribed and sworn to before me, a notary public for the state of Iowa, this 9 day of
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`K
`
`III,»
`
`/
`
`
`Nota Public in and for the State of Iowa
`
`My commission expires:
`
`SW07
`
`

`
`
`
`Trademark/Service Mark Application, Principal Register
`Serial Number: 78670433
`
`Filing Date: 07/14/2005
`
`
`
`The table below presents the data as entered.
`
`
`
`53
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`LITERAL ELEMENT
`
`MARK STATEMENT
`
`NAIVIE
`STREET
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`AUTHORIZED EMAIL COMMUNICATION
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`
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`STATE/COUNTRY OF INCORPORATION
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`GOODS AND/OR SERVICES SECTION
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`INTERNATIONAL CLASS
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`DESCRIPTION
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`FILING BASIS
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`'
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`FIRST USE ANYWHERE DATE
`FIRST USE IN COMMERCE DATE
`
`SPECIMEN FILE NAMHS)
`
`SPECIMEN DESCRIPTION
`
`GOOEY CHEWY TURTLE BROWNIE
`
`GOOEY CHEWY TURTLE BROWNIE
`
`The mark consists of standard characters, without claim to any
`particular font, style, size, or color.
`
`Wells‘ Dairy, Inc.
`
`One Blue Bunny Drive P.O. Box 1310
`
`Le Mars
`
`Iowa
`
`51031
`
`United States
`
`No
`
`CORPORATION
`
`Iowa
`
`030
`
`Frozen Confections
`
`Section 1(a)
`
`At least as early as 12/26/2005
`
`At least as early as 12/26/2002
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`\\TICRS\EXPORT10\IMAGEOUT
`10\786\704\78670433\xml1\ APP0003.JPG
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`scanned image of packaging
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`ADDITIONAL STATEMENTS SECTION
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`MISCFJ .l .AN'F.OI IS STATEMENT
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`Annlicant claims nwnershin nflI.S. Annlicatirm Nnmher
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`EXHIBIT
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`hbblef
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`_A_
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` — 72072200-
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`SIGNATURE SECTION
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`PAYMENT SECTION
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`NUMBER OF CLASSES
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`NUMBER OF CLASSES PAID
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`\\TICRS\EXPORT10\IMAGEOUT
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`www-
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`1
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`1
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`SUBTOTAL AMOUNT
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`TOTAL AMOUNT
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`ATTORNEY
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`325
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`325
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`M
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`OTHER APPOINTED A'ITORNEY(S)
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`CORRESPONDENCE SECTION
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`Michael G. VoO_rh_ees, Edmund J. Sease, Mark D. Hansing, Kirk
`M. Hartung, _He1d1 Segse Nebel, Wend K. Marsh, Jeffrey D.
`Hartg Chr1s_t1ne Lebron Dykeman, R. cott Johnson_, John D.
`Goo hue, L1la Alyce Toh1dastAkrad, Steve1_1 P. Smlth, Robert
`A. Hodgson, Janae Lehman—Bell, and Bart Flsher
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`Br0°0W- 0002000
`McKee, Voorhees & Sease, PLC
`00000200
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`
`
`0000000000
`1°02
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`00202-2221
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`‘ USPTO/BAS—21681229218—2OO
`50714132828695299-7867043
`3-2006e3a1a859daaae83c959
`f28d8c8c1570-DA- 1507-2005
`O714132720882119
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`
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`FILING INFORMATION
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`TEAS STAMP
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`.
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`
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`Trademark/Service Mark Application, Principal Register
`
`Serial Number: 78670433
`
`Filing Date: 07/14/2005
`
`To the Commissioner for Trademarks:
`
`MARK: (Standard Characters, see mark)
`The mark consists of standard characters, without claim to any particular font, style, size, or color.
`The literal element of the mark consists of GOOEY CHEWY TURTLE BROWNIE.
`
`The applicant, Wells‘ Dairy, Inc., a corporation of Iowa, residing at One Blue Bunny Drive P.O. Box 1310, Le Mars, Iowa, United States, 51031,
`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.
`The applicant, or the applicant's related company or licensee, is using the mark in commerce, and lists below the dates of use by the applicant, or the
`applicant's related company, licensee, or predecessor in interest, of the mark on or in connection with the identified goods and/or services. 15 U.S.C.
`Section 1051(a), as amended.
`International Class 030: Frozen Confections
`
`In International Class 030, the mark was first used at least as early as 12/26/2005, and first used in commerce at least as early as 12/26/2002, and is
`now in use in such commerce. The applicant is submitting or will submit one specimen for each class 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) scanned image of packaging.
`Specimen — 1
`
`Applicant claims ownership of U.S. Application Number 78/572,309.
`The applicant hereby appoints Bruce W. McKee and Michael G. Voorhees, Edmund J. Sease, Mark D. Hansing, Kirk M. Hartung, Heidi Sease
`Nebel, Wendy K. Marsh, Jeffrey D. Harty, Christine Lebron Dykeman, R. Scott Johnson, John D. Goodhue, Lila Alyce Tohidast Akrad, Steven P.
`Smith, Robert A. Hodgson, Janae Lehman-Bell, and Bart Fisher of McKee, Voorhees & Sease, PLC, Suite 3200, 801 Grand Avenue, Des Moines,
`Iowa, United States, 50309-2721 to submit this application on behalf of the applicant. The attorney docket/reference number is T54826US00.
`The USPTO is authorized to communicate with the applicant or its representative at the following email address: patatty@ipmvs.com.
`A fee payment in the amount of $325 will be 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 105l(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.
`Signature:
`Signatory's Name: James W. Reynolds
`Signatory's Position: VP Marketing
`Signatory's Signature: Signature
`Mailing Address:
`Bruce W. McKee
`Suite 3200
`801 Grand Avenue
`
`Des Moines, Iowa 50309-2721
`RAM Sale Number: 1507
`
`RAM Accounting Date: 07/ 14/2005
`Serial Number: 78670433
`Internet Transmission Date: Thu Jul 14 13:28:28 EDT 2005
`
`TEAS Stamp: USPTO/BAS-21681229218-200507141328286952
`99-78670433-2006e3a1a859daaae83c959f28d8
`c8c1570—DA— 1507—200507141327208821 19
`
`

`
`4 GOOEY CHEWY TURTLE BRWNIE
`
`

`
`

`
`;~1I‘I'Li(3.A.W'l‘ N.%!o.MfF.: Wells‘ Dairy, Im.
`-(standard chmmtfls}
`
`Deacilrauon
`
`punisiaablc
`The undersigned, being: herdby wamed that willfial. Ealm statements arafi tlzu: like so mafia
`by fine or irnprisanmmt. or helix. uzadar IE U.S.C.V Saflfififlrt 1001. and [mi
`willifusfl fame étazzmnms,
`mm tine film. mayjenpamdizza tisc vaiidity of the appiicafim or any resulting wgismufian, dcctaresy than
`height: in prajpcrly aufl1arimd.‘m~v:xu:ute fliizs application an behalf0!‘ IM:
`hafshe imlim-‘tss the
`nwliamt to be
`Elf
`trwmnazflmvinc marl: wuglu fbuv be mgizsmcd. arr, if the application is
`fining fiiend under 15 U;S.C.. Ifiectinn NEH‘-bjl, ‘lwsha Jnalksvus aappiicam In b¢»m1:iI1¢sdV la
`in
`In flfbfi best. :31" hjsiher knawicdgyu
`‘buatiufnau uflacr purwrx, firm, wxpcxratiznn, um nmmzimiam
`has thnright m use the manic i:a.coImnv.=n':«c, ¢ifl'.I.¢r in the idemimll fieurm flnzereafor
`mach mm:
`ather
`mm:-mblance: therein as 130 hf; likrzly. whcn used an at in mnmcxian
`the gun-dsfsewices of
`to cause‘ wnfimim. or is cause: mismkfi, at 1:13 dnceive; and 11:12.!
`smiwlmm made u,f’hisfttcr
`awn imtswlesdga
`mdV final! all
`mad: an
`and b::JiefaJ1eéb¢!:'crvr:zd 20 134: mm.
`
`
`
`
`\
`Signazbry‘
`Sigrnalury-‘.5; Posifivttnz _
`
`

`
`f’l‘('i I‘-.-r
`(xvii). .\’.
`
`'
`
`Preliminary Amendment
`
`
`M
`
`
`
`
`
`
`
`
`SERIL ER I
`
`MARK SECTION (no change)
`
`The table below presents the data as entered.
`
`
`
`78670433
`
`A
`
`GOODS AND/OR SERVICES SECTION (current)
`
`GOODS AND/OR SERVICES SECTION (proposed)
`
`INTERNATIONAL CLASS
`
`030
`
`mm
`
`SIGNATURE SECTION
`
`FILING INFORMATION SECTION
`
`TEAS STAMP
`
`
`
`
`
`We‘”“”-717=37=39ED”°°5
`USPTO/PA—216812292l8-2005
`fl‘7")‘71‘7'1‘7’1OQ(\{\(Y'7’7_'IS2R’7(\/1 '11
`
`
`
`
`
`
`
`

`
`73704732150
`
`-200646827d1c6d91e8ae3dad
`2e227fe1365-N-N-200507271
`
`To the Commissioner for Trademarks:
`
`Preliminary Amendment
`
`Application serial no. 78670433 is amended as follows:
`
`
`
`
`
`
`
`
`Applicant hereby amends flie follofivziing class of goods/services in the application as follows:
`Current: Class 030 for Frozen Confections
`
`Original Filing Basis: 1(a).
`Proposed: Class 030 for Frozen Confections
`
`Section 1(a), Use in Commerce: Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or
`licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on or in connection with the
`identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/26/2002 and first used
`in commerce at least as early as 12/26/2002, and is now in use in such commerce.
`Applicant hereby submits a specimen for Class 030.
`The specimen(s) submitted consists of scanned image of packaging.
`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-1
`
`
`-
`
`
`
`If the applicant is seeking registration under Section 1(b) and/or S
`tio
`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 trademarl</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.
`
`Date: 07/27/2005
`Signature: /Bruce W. McKee/
`Signatory's Name: Bruce W. McKee
`Signatory's Position: Attorney
`.~‘:§%!’8i&" """.""“
`
`
`
`x
`
`
`Signature: /Bruce W. McKee/ Date Signed: 07/27/2005
`Signatory's Name: Bruce W. McKee
`Signatory's Position: Attorney
`
`

`
`Serial Number: 78670433
`
`Internet Transmission Date: Wed Jul 27 17:37:39 EDT 2005
`TEAS Stamp: USPTO/PA—21681229218—2005072717373980002
`7—78670433—200646827d1c6d91e8ae3dad2e227
`fel365-N-N—20050727173704732150
`
`

`
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`
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`T
`1‘ 3
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`*1. 3
`
`Page 1 of 5
`
`Ernie Strate
`
`From:
`Sent:
`To:
`Subject:
`
`ECom111 [Ecom1113@USPTO.GOV]
`Wednesday, February 21, 2007 1 1:38 AM
`GeneralDelivery
`TRADEMARK APPLICATION NO. 78670433 - GOOEY CHEWY TURTLE BROWNIE -
`T54826US00
`
`Attachments: 78601028P001OF002.JPG; 78601 O28P0O2OF002.JPG,' 78204382PO01OF003.JPG;
`
`78849803P002OF002.JPG; 20050728-pra0002.JPG; turtle brownie.jpg; turtle brownie 2.jpg;
`turtle brownie 3.jpg
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`SERIAL NO:
`
`78/670433
`
`WCi1S'Dairy, I110.
`APPLICANT:
`CORRESPONDENT ADDRESS:
`BRUCE W. MCKEE
`MCKEE, VOORHEES & SEASE, PLC
`
`801 GRAND AVENUE
`DES MOINES, IA 50309-2721
`
`_
`
`MARK:
`
`GOOEY CHEWY TURTLE BROWNIE
`
`3 *
`
`*78 6
`RETURN ADDRESS:
`Commissioner for Trademarks
`P-Q B°"_1451
`AiCX3.ndl'I8,
`
`Ii
`
`CORRESPONDENT’S REFERENCE/DOCKET N0: T54826US00
`
`Please provide in all correspondence:
`
`CORRESPONDENT EMAIL ADDRESS!
`'
`patatty@1pmvs'c0m
`
`1. Filing date, serial number, mark and
`applicant's name.
`2. Date of this Office Action,
`3. Examining Attomey's name and
`
`Law Office nmnber.
`4. Your
`telephone number and e-mail
`address.
`
`OFFICE ACTION
`
`MAILING DATE.
`
`MAILING/E-MAILING DATE INFORMATION: If the mailing or e—mailing date ofthis Office
`action does not appear above, this infonnation can be obtained by visiting the USPTO website at
`
`EXHIBIT
`
`

`
`{_.—)
`
`Page 2 of 5
`
`hfip://tarr.uspto.gov/, inserting the application serial number, and viewing the prosecution history for the ‘
`mailing date of the most recently issued Office communication.
`
`Serial Number 78/670433
`
`On August 4, 2006, action on this application was suspended pending the disposition of Application
`Serial No. 78601028. The referenced pending application has since registered. Therefore, registration is
`now refused under Trademark Act Section 2(d) as follows.
`
`Likelihood of glgnfusimr — §ectigi_1 2(d)
`Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S.
`Registration No. 3166541. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§ 1207.01 et seq.
`See the enclosed registration.
`A likelihood of confusion determination requires a two-part analysis. First the marks are compared for
`similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de
`Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the goods or services are
`compared to detennine whether they are similar or related or whether the activities surrounding their
`marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB
`1983); In re Int ’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott
`Paper C0,, 200 USPQ 738 (TTAB 1978); TMEP §§l207.0l et seq.
`I.
`Similarity of the Marks
`The applicant has applied to register the mark GOOEY CHEWY TURTLE BROWNIE.
`The mark in U.S. Registration No. 3166541 is GOOEY CHEWY.
`Marks may be confusingly similar in appearance where there are similar tenns or phrases or similar
`