IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Applicant: Big Boy Restaurants International, LLC

Serial No: 76/705,293

Filed: November 10, 2010

Mark: JUNIOR BIG BOY

Attorney Docket No: 0225-20018
/
Hon. Commissioner for Trademarks
PO. Box 1451
Alexandria, VA 22313-145 1

AMENDMENT/RESPONSE

Dear Examining Attorney Powers:

This is in response to the office action dated February 22, 2011. Please amend the above

identified application as follows:

In the entity type, please amend the entity type to list LLC as being designated for a

limited liability company of the state of Michigan.

Please also add the following disclaimer to the application.

—— No claim is made to the exclusive right to use “JUNIOR” apart from the mark as

shown—-
REMARKS:

Applicant respectfully traverses the refusal of registration under Section 2(d).

The Examining Attorney refused registration of the current mark because of the

likelihood of confusion with the mark as shown in US. Registration 3690889, it is respectfully

submitted that this finding is in error. The Applicant and the owner of Registration No.

3690889, Frisch’s Restaurants, Inc. of Ohio are parties to a concurrent use agreement and

registrations for the “Big Boy” marks in the United States. Applicant is enclosing the agreement

regarding the use of Trademarks and the associated exhibits filed in concurrent use preceding

No. 94002189. This agreement clearly spells out the scope and terms for the parties of the use of

the Big Boy Trademarks in certain defined geographical territories of the United States. The

agreement regarding the use of trademarks clearly removes any likelihood that the ‘889

registration will be likely to cause confusion or to cause mistake or to deceive with resPect t0

Applicants pending JUNIOR BIG BOY Trademark. Therefore, it is respectfully submitted that

the proper safeguards have been put into place to ensure that no likelihood of confusion exists

between Frisch’s ‘889 registration and the Applicants mark. Hence, it is respectfully submitted

that Applicant’s JUNIOR BIG BOY mark is not likely to cause confusion with the ‘889

registration and as such the refusal of registration under Section 2(d) of the Trademark Act is in

error and it is respectfully requested that this refusal be removed. Hence, the Applicant

respectfully requests that the Examining Attorney withdraw the refusal of the registration of the

mark and allow the mark to pass to publication at the Examining Attorney’s earliest

convenience.

The Examining Attorney also required that the Applicant must disclaim the descriptive

word JUNIOR apart from the mark as shown because it merely describes an ingredient, quality,
characteristic, function, feature, purpose or use of Applicant’s goods and or services. Applicant

has amended the application to inciude the disclaimer of the word JUNIOR. Therefore, it is

respectfully requested that the rejection because of the lack of the disclaimer now be removed.

The Examining Attorney also objected to the application as not specifying what kind of

entity is applying for the application. It is respectfully submitted that the Applicant originally

applied for the registration as a limited liability company in the state of Michigan. However,

Applicant has also amended the application to correctly identify the entity type as a Limited

Liability Company of the State of Michigan if the original application did not show such.

Therefore, the Applicant is a limited liability company organized under the iaws of Michigan and

as such, is and was appropriately identified as an LLC. Therefore, it is respectfully submitted

that the entity has now been properly identified and such objection can be removed.

The Examining Attorney also stated that if the Applicant is the owner of previous U.S.

registrations then the Applicant must submit a ciaim of ownership. It is respectfully submitted

that page 2 of the Applicants original application clearly lists and submits a claim of ownership

to the prior U.S. registrations of the Applicant. The prior registrations as listed on page 2 of the

original application are as follows; 1806061, 1753878, 1871436, 1818909, 910758, 1823393,

913601, 935453, 944155, 2059156, 2090105, 2145671, 2442108, 1166686, 1230170, 1230569

and 1230570. Therefore, it is respectfully submitted that the Applicant did properly identify the

prior art registrations that it has ownership of and if not these prior registrations have now been

properly identified and as such the objection can be removed.

Therefore, Applicant respectfully requests that the Examining Attorney withdraw the

refusal of the registration of the Mark and allow the Mark to pass to publication at the Examining

Attorneys earliest convenience.
If the Examining Attorney has any further questions 01‘ needs any other information, the

Examining Attorney is invited to contact the undersigned at (248) 364—2100.

Respectfully submitted,

Michael T. Raggio

Michael T. Raggio (Reg
Raggio & Dinnin, PC.
2701 Cambridge Court, Ste. 410
Auburn Hills, MI 48326
(248) 364-2100

Attorney for Applicant

Dated: August 17, 2011