Lebewohl et al v. Heart Attack Grill LLC et al

Filing 55

FILING ERROR - WRONG EVENT TYPE SELECTED FROM MENU - MOTION for Summary Judgment. Document filed by Jon Basso, Diet Center LLC(Delaware), Diet Center LLC(Texas). Responses due by 4/16/2012 (Attachments: # 1 Exhibit Exhibit, # 2 Exhibit Exhibit, # 3 Exhibit Exhibit, # 4 Exhibit Exhibit, # 5 Exhibit Exhibit, # 6 Exhibit Exhibit, # 7 Exhibit Exhibit, # 8 Exhibit Exhibit, # 9 Exhibit Exhibit, # 10 Exhibit Exhibit, # 11 Exhibit Exhibit, # 12 Exhibit Exhibit, # 13 Exhibit Exhibit, # 14 Exhibit Exhibit, # 15 Exhibit Exhibit)(Kain, Robert) Modified on 3/27/2012 (db).

PTO Form 1478 (Rev 9/2006)
OMB No. 0651-0009 (Exp 12/31/2011)

Trademark/Service Mark Application, Principal Register
TEAS Plus Application
Serial Number: 85140751
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 10016
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,
2004..
Original PDF file:
spec-7410823473-113905490 . Menu.pdf
Converted PDF file(s) (2 pages)
Specimen File1
Specimen File2
Original PDF file:
spec-7410823473-113905490_._Receipt.pdf
Converted PDF file(s) (2 pages)
Specimen File1
Specimen File2
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Original PDF file:
spec-7410823473-113905490_._Instant_Heart_Attack_Sandwich_-_Chowhound_May_19__2004.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 10013-3031
United States

The applicant's current Correspondence Information:
William W. Chuang
Jakubowitz & Chuang LLP
401 Broadway Suite 408
New York, New York 10013-3031
347-542-8529(phone)
347-532-1344(fax)
[e-mail] (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.
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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: 85140751
Internet Transmission Date: Wed Sep 29 11:57:21 EDT 2010
TEAS Stamp: USPTO/FTK-74.108.234.73-2010092911572158
9621-85140751-470a2e95dc7691caf22c965662
62440721-CC-8444-20100929113905490974

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To:

Uncle Abies Deli Inc. ([e-mail])

Subject:

U.S. TRADEMARK APPLICATION NO. 85140751 - INSTANT HEART
ATTACK SANDWICH - N/A

Sent:

1/13/2011 5:00:35 PM

Sent As:

[e-mail]

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.

85140751

MARK: INSTANT HEART ATTACK SANDWICH

CORRESPONDENT ADDRESS:
WILLIAM W. CHUANG
JAKUBOWITZ & CHUANG LLP
401 BROADWAY STE 408
NEW YORK, NY 10013-3031
APPLICANT:

*85140751*
CLICK HERE TO RESPOND TO THIS LETTER:

http://www.uspto.gov/teas/eTEASpageD.htm

Uncle Abies Deli Inc.

CORRESPONDENT’S REFERENCE/DOCKET
NO:
N/A
CORRESPONDENT E-MAIL ADDRESS:
[e-mail]

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
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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, 718.03.
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). 3128169. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP
§§1207.01 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
§1207.01.
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 §§1207.01 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 PointPepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(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, 1329-30, 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, 540-41 (TTAB 1979); Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(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 §1207.01(b)(ii)-(iii).
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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 §1207.01(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, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp. ,
753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(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 §1207.01(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 §1207.01(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 §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080,
1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc. , 748
F.2d 1565, 1566-68, 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.
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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. 85096673 and 85101637 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, 1213.03(a).
The computerized printing format for the Office’s Trademark Official Gazette requires a standardized
format for a disclaimer. TMEP §1213.08(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 §1213.08(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 §819.02(b). In addition, such applicants must accept correspondence
from the Office via e-mail throughout the examination process and must maintain a valid e-mail address.
37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these
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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 §819.04. Responding by telephone to authorize an examiner’s amendment
will not incur this additional fee.

/Fong Hsu/
Law Office 115
Trademark Examining Attorney
Office: [phone]

TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS)
response form at http://teasroa.uspto.gov/roa/. Please wait 48-72 hours from the issue/mailing date before
using TEAS, to allow for necessary system updates of the application. For technical assistance with
online forms, e-mail [e-mail].
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 http://tarr.uspto.gov/. Please keep a
copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-7869199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at
http://www.uspto.gov/teas/eTEASpageE.htm.

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