Big Boy Restaurants International, LLC
Hamburger sandwiches, for consumption on or off the premises
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
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, Frischs 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 Frischs 889 registration and the Applicants mark. Hence, it is respectfully submitted
that Applicants 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 Attorneys 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 Applicants 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) 3642100.
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
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, Frischs 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 Frischs 889 registration and the Applicants mark. Hence, it is respectfully submitted
that Applicants 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 Attorneys 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 Applicants 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) 3642100.
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