Discovery Foods, LLC
Snack rolls, namely, a hand-held snack food consisting of an unleavened flour-based wrapper filled with meat, cheese, or vegetables or with a combination of meat, cheese, or vegetables, but not in the nature of a sandwich or a wrap sandwich
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
65134K027US l Examiner: Naakwama Ankrah
Serial No.: 77/799,529
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re application of: Discovery Foods, LLC
Serial No.: 77/799,529
Filed: August 7, 2009
Mark: ‘ TORPEDOES
Examiner: Naakwama Ankrah
Law Of?ce: 109
Commissioner for Trademarks
PO. Box 1451
Alexandria, VA 223131451
RESPONSE TO OFFICE ACTION DATED MARCH 31, 2011
In response to the Of?ce Action dated March 31, 2011, incorporating the Of?ce Action
issued on January 18, 2011, Applicant respectfully requests the Examining Attorneys
reconsideration of the refusal to register the mark in the aboveidenti?ed application
(Application) in View of the following amendment, arguments, evidence, and comments.
Refusal to Register Based on Descriptiveness
In this Of?ce Action, the Examining Attorney has maintained the refusal to register under
Trademark Act §2(e)(1), 15 U.S.C. § 1052(e)(1), originally issued in the November 13, 2009
Of?ce Action. As the basis for asserting that the mark merely descriptive of Applicants goods.
The Examining Attorney reasons as follows:
In the instant case, applicant seeks registration of the mark
TORPEDOES for Snack rolls, namely, a handheld snack food
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65134K027US 2 Examiner: Naakwama Ankrah
Serial No.: 77/799,529
consisting of an unleavened ?ourbased wrapper ?lled with meat,
cheese, and vegetables, but not in the nature of a sandwich.
As the attached evidence indicates, a torpedo is a large sandwich
made of a long crusty roll split lengthwise and ?lled with meats
and cheese (and tomato and onion and lettuce and condiments);
two (or more) slices of bread with a ?lling between them.
Applicants wrap is a type of sandwich. Therefore, the proposed
mark merely describes a feature of the goods and registration on
the Principal Register must be refused under Trademark Act
Section 2(e)(1).
November 13, 2009 Of?ce Action, p. 2 (emphasis added).
Applicant believes that the Examining Attomeys Section 2(e) refusal is the result of a
misinterpretation of the goods for which Applicant seeks to register the TORPEDOES mark.
The Examining Attorney has also incorrectly incorporated into the de?nition of a torpedo
sandwich, which is a very speci?c kind of sandwich (see November 13, 2009 Of?ce Action,
Attachment 4), a de?nition of the term sandwich. From the Examining Attorneys evidence,
two (or more) slices of bread with a ?lling between them is a de?nition of a sandwich, not a
torpedo sandwich. See November 13, 2009, 2011 Of?ce Action, Attachment 4.
Hence, the term torpedo can be applied only to a particular type of sandwich and it is
the de?nition of this type of sandwich that must be considered for purposes of assessing whether
the mark TORPEDOES is merely descriptive of Applicants designated goods. The
Examining Attorney has stated further that Applicants wrap is a type of sandwich. From this
comment, it appears that, perhaps based on Applicants use of the term wrapper in the
designation of goods, the Examining Attorney is viewing the goods for which Applicant seeks
registration as a wrap sandwich. As applicable here, a wrap is a sandwich in which the ?lling
is rolled in a soft tortilla. THE NEW OXFORD AMERICAN DICTIONARY 1939 (2d ed. 2005)
(emphasis added) (See Attachment A for a copy of the dictionary de?nition cited).
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Serial No.: 77/799,529
However, the goods for which Applicant seeks registration of the mark TORPEDOES,
i.e. snack rolls, are not a wrap or a sandwich of any kind. Rather, as stated in the response to the
Examining Attorneys request for information in the November 13, 2009 Of?ce Action, the
goods for which Applicant seeks registration of the mark TORPEDOES can be most closely
compared in size, shape and nature to an egg roll. An egg roll is de?ned as a Chinesestyle
snack consisting of diced meat or shrimp and shredded vegetables wrapped in a dough made
with egg and deepfried. Id. at 541 (emphasis added) (See Attachment A for a copy of the
dictionary de?nition cited). Attachments B and C are pages from Applicants website describing
egg rolls (including the wrapper for egg rolls) and showing packaging that depicts egg rolls.
Attachment D shows a mockup of packaging for the snack rolls for which Applicants seeks to
register the mark TORPEDOES (showing an altemative spelling of the mark for the same
product) that pictures the snack rolls and which was provided in the response to the Examining
Attorneys request for information about the goods in the November 13, 2009 Of?ce Action.l
It is anticipated that the snack rolls for which registration of the TORPEDOES mark is
sought may have ?avors not traditionally associated with egg rolls. For example, Attachment D
depicts a package for snack rolls with a quesadilla ?avoring. Nevertheless, as can be seen by a
comparison of these photos and descriptions of the goods, both in Applicants advertisements
and in the designation of goods in this Application, Applicants snack rolls for which it seeks to
register the TORPEDOES mark are very similar to egg rolls and can in no way be described as a
sandwich or a wrap, much less a torpedo sandwich.
1 Note that in this depiction of the goods, one end of the snack roll is shown open to display the ?lling, just as is
done on packaging for Applicants egg rolls. See Attachment B, 9.1 and Attachment C, 9.1. However, like an egg
roll, both ends of the snack roll would be closed.
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Serial No.: 77/799,529
In the designation of goods in this Application, Applicant is using the term wrapper,
not to refer to a wrap sandwich, but rather to refer to the coating surrounding the ?lling of the
product. By way of illustration, Attachment C shows photos and descriptions of some of
Applicants other products. For example, its potstickers are described as nestled in delicate,
pleated wrappers. Its egg rolls are described as containing savory meat and fresh cut
vegetables, all in a crispy wrapper. Its spring rolls are described as ?aky, delicate wrappers
?lled with meat, fresh vegetables and savory seasonings.
A review of registrations recently issued by the USPTO shows that Applicants
designation of goods in this Application is appropriate for the goods contemplated. For example,
Registration No. 3,886,361 for the mark QUALITY IS OUR PRIORITY, Registration No.
3,942,236 for the mark BREAK BITES & Design, and Registration No. 3,967,624 for the mark
BADGER FAMILY FARM are all registered for goods described as doughenrobed foods
consisting of a doughbased wrapper with ?llings consisting primarily of meats, poultry, ?sh,
fruits and vegetables and cheese. (See Attachments E F and G respectively, for the USPTO
records for these registrations) (emphasis added). Finally, Registration No. 3,883,127 for a rose
design mark is registered for goods designated as an edible spring roll wrapper. (See
Attachment H for the USPTO record for this registration) (emphasis added).
The Examining Attorneys assertion that Applicants wrap is a type of sandwich and,
therefore, the proposed mark merely describes a feature of the goods, does not recognize that
the term torpedo, as concerns sandwiches, refers to a very speci?c type of sandwich ~ not to a
wrap sandwich. Based on the Examining Attorneys evidence, a torpedo sandwich is:
a large sandwich made of a long crusty roll split lengthwise and
?lled with meats and cheese (and tomato and onion and lettuce and
condiments).
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Serial No.: 77/799,529
November 13, 2009 Of?ce Action, Attachment 4.
Attachments I and J are pages from the website of the owner of Registration No.
3,745,305 for the mark TOASTY TORPEDOES, registered for sandwiches and cited against
this Application in the March 31, 2011 Of?ce Action. These website pages pictures a torpedo
sandwich and describe it as over a foot of ?avor on a slim & soft deli baguette. Based on the
Examining Attorneys evidence, alternative names for a torpedo sandwich are used in different
sections of the United States and by the people and enterprises that sell them. See November
13, 2009 Of?ce Action, Attachments 4, 6, 7 and 9. These alternative names include hero
sandwich, hoagie, Italian sandwich, poor boy, sub, grinder, submarine sandwich and hero. Id.
Alternative terms do not include a wrap, an egg roll or a snack roll.
Thus, even if it could be said that Applicants goods are a wrap sandwich which they
are not the mark TORPEDOES cannot be said to merely describe a feature of the goods, as
the Examining Attorney asserts, and, hence the mark is not merely descriptive. Based on the
evidence of record, the mark TORPEDOES is completely arbitrary as applied to Applicants
goods for which registration is sought. The consumer, when encountering Applicants goods in
the marketplace and seeing a product in the size, shape and nature of an egg roll, would not think
that the product is in the nature of any kind of sandwich torpedo, wrap, or otherwise. Rather,
because of the primary and most commonly understood meaning of the term torpedo, i.e. a
cigarshaped, selfpropelled underwater projectile launched from a submarine . . . and designed
to detonate on contact with a . . . target (see November 13, 2009 Of?ce Action, Attachment 3),
the consumer would, at most, think the mark to be suggestive of the cylindrical shape and
perhaps spicy ?avor of Applicants snack rolls.
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Serial No.: 77/799,529
While understanding that the Examining Attorney is not bound by any prior decisions of
the USPTO, Applicant advises the Examining Attorney that Applicants original ?lings for the
marks TORPEDOES and TORPEDOZ, Application Serial Nos. 77,799,529 and 77,799,550,
respectively, were deemed eligible for registration on the Principal Register, i.e. not merely
descriptive, of the same goods originally designated in this Application. See Attachments L and
M, respectively, for the USPTO records for these applications. However, to address any
concerns of the Examining Attorney with respect to wrap sandwiches, Applicant submits
herewith an amendment so that the designation of goods would read as follows:
Snack rolls, namely, a hand~held snack food consisting of an
unleavened ?ourbased wrapper ?lled with meat, cheese, or
vegetables or with a combination of meat, cheese, or vegetables,
but not in the nature of a sandwich or a wrap sandwich.
With the amendment to the identi?cation of goods and the additional information
provided with this Of?ce Action response, Applicant believes that it has shown that the Section
2(e) refusal should be withdrawn.
Refusal to Register Based on Likelihood of Confusion
The Examining Attorney has refused registration under Trademark Act 2(d), 15 U.S.C.
§ 1052(d), because the Examining Attorney believes that the mark TORPEDOES, when used in
connection with Applicants identi?ed goods, so resembles the mark in US. Registration No.
3,745,305, for the mark TOASTY TORPEDOES (the Cited Mark), covering sandwiches, as
to be likely to cause confusion or to cause mistake, or to deceive.
As the Examining Attorney noted, the Court of Customs and Patent Appeals in In re E.I.
du Pont de Nemours & C0. listed the principal factors to consider in determining whether there is
a likelihood of confusion. 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Two such factors
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Serial No.: 77/799,529
are: 1) the similarity or dissimilarity of the marks in their entireties in appearance, sound,
connotation and commercial impression; and 2) the relatedness of the goods or services as
described in an application or registration or in connection with which a prior mark is in use.
TMEP § 1207.01, p. 1200-172. Based on her analysis of these factors, the Examining Attorney
concludes that Applicants use of TORPEDOES is likely to cause confusion with the Cited
Mark.
However, in comparing the marks in this case, the Examining Attorney has not given
adequate consideration to the nature of the common element of the marks as applied to
Registrants goods. The record shows that the term torpedo is generic or highly descriptive of
sandwiches. As such, Registrant does not even have the exclusive right to use the element
torpedoes for its own goods. Under such circumstances, the additional dominant element
TOASTY at the beginning of the Cited Mark is more than enough to obviate any likelihood of
confusion. Since Applicants goods are not related to sandwiches as the concept of relatedness
of goods has been interpreted by the Trademark Trial and Appeal Board in the context of food
products and services, this factor further weighs against a finding of likelihood of confusion.
However, under these facts and circumstances, no likelihood of confusion should be found even
if the goods were considered related.
1. Di?erences Between the Marks are Suf?cient to Obviate any Likelihood of
Confusion Because of the Nature of the Common Element
Turning ?rst to a comparison of the marks themselves, Applicant notes that, in refusing
registration based on likelihood of confusion and comparing the marks, the Examining Attorney
states as follows:
The applicants mark, namely, TORPEDOES, is similar to the
registered mark, TOASTY TORPEDOES because they both
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Serial No.: 77/799,529
contain the term, TORPEDOES. The additional wording
TOASTY i[n] registrants mark, does not obviate the similarity
between the marks nor does it alter the commercial impression of
the marks. 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).
March 31, 2011 Of?ce Action, p. 2 (citations omitted). However, the Examining Attorney has
not considered an exception to this general rule as concerns additions or deletions to marks in
circumstances where the matter common to the marks is not likely to be perceived by purchasers
as distinguishing source, at least with respect to one of the marks, because it is merely
descriptive. See TMEP § 1207.01(b)(iii), p. 1200-83.
For example, in In re Shawnee Milling C0,, the Trademark Trial and Appeal found no
likelihood of confusion between the applied-for mark GOLDEN CRUST for ?our and the
registered mark ADOLPHS GOLDN CRUST & Design (with GOLDN CRUST disclaimed)
for combination coating and seasoning for poultry, ?sh, and certain vegetables. 225 USPQ
747 (TTAB 1985). The Board noted that the registrant had disclaimed the exclusive right to use
GOLDN CRUST and that the label of record stated that the product gives chicken a delicate
golden crust, and hence was descriptive of the registrants goods. Id. at 749. The applied-for
mark GOLDEN CRUST was suggestive, not merely descriptive, as applied to ?our, but
entitled to a narrow scope of protection. Id. Under the circumstances, the Board found that the
addition of ADOLPHS in the senior mark was suf?cient to distinguish the marks as a whole and
avoid con?Jsion, even though the goods were considered related. Id. at 748-49.
As discussed in the previous section of this Of?ce Action response, the term
TORPEDOES is completely arbitrary as applied to Applicants goods. However, the evidence of
record shows that the term torpedo is highly descriptive, if not generic, for a certain kind of
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65134K027US 9 Examiner: Naakwama Ankrah
Serial No.: 77/799,529
sandwich. In fact, the owner of the registration for the Cited Mark itself has acknowledged this
by disclaiming the exclusive right to use TORPEDOES apart from the mark as shown. See
January 18, 2011 Of?ce Action, Attachments 1 – 3 for the USPTO record for the Cited Mark
provided by the Examining Attorney. Similarly, Applicant notes that in Registration No.
3,103,557 for the mark DELI EXPRESS TORPEDO FAMILY OWNED SINCE 1955 & Design,
registered for sandwiches, and in Registration No. 3,829,471 for the mark PANE FRESCO
TORPEDO ROLLS & Design, registered for bakery products, both disclaim the exclusive
right to use the term torpedo. (See Attachments M and N, respectively, for the USPTO records
for these registrations).
If the owner of the registration for TOASTY TORPEDOES does not have the exclusive
right to use the term torpedo or torpedoes as part of a mark for sandwiches or a roll used in
making a torpedo sandwich, either because it is highly descriptive or generic for a certain kind of
sandwich, it certainly cannot exclude others from using the term torpedoes for other kinds of
food products, such as Applicants goods.
Applicant notes that in no case cited by the Examining Attorney in the March 31, 2011
Of?ce Action to support her position with respect to similarity of the marks was the common
element or elements generic, or even highly descriptive, of the goods for which the senior mark
was registered or used. See March 31, 2011 Of?ce Action, p. 2. As discussed below,
Applicants goods identi?ed in the application are not related as that concept has been
interpreted by the Board. However, even in Shawnee Milling, no likelihood of confusion was
found where the common element was descriptive of the registrants goods and suggestive of the
applicants goods and the goods were considered related.
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Serial No.: 77/799,529
Based on the foregoing, no likelihood of confusion should be found between Applicants
TORPEDOES mark for use on the identi?ed goods and the Cited Mark for sandwiches where the
common element is arbitrary for Applicants goods and generic or highly descriptive for
Registrants goods, even if the goods could be considered related. Under the circumstances, the
addition of the dominant element TOASTY at the beginning of the Cited Mark renders it
distinguishable from Applicants TORPEDOES mark and is more than enough to obviate any
likelihood of confusion.
2. Agglicants Goods and Sandwiches are Unrelated
Finally, particularly in light of the du Pont factor already discussed, Applicant submits
that there is no likelihood of confusion because the goods on which it will use the TORPEDOES
mark are unrelated to sandwiches. As the basis for her assertion that Applicants goods are
closely related to sandwiches, the Examining Attorney reasons as follows:
The applicants goods, namely, snack rolls, namely, a hand-held
snack food consisting of an unleavened ?our-based wrapper ?lled
with meat, cheese, or vegetables or with a combination of meat,
cheese, or vegetables, but not in the nature of a sandwich are
closely related to the registrants goods, namely, sandwiches
because they are goods likely to travel through the same channels
of trade to the same classes of purchasers in that they are
?our-basedfood?lled with meat, cheese or vegetables.
March 31, 2011 Of?ce Action, p. 3. Thus, the principal basis for the Examining Attorneys
assertion that Applicants goods are closely related to sandwiches is the possibility of their
traveling through the same channels of trade to the same class of purchasers based on her
characterization of the goods in terms of their ingredients.
However, the Trademark Trial and Appeal Board has said that, in cases involving food
products, product ingredients and marketplace conditions alone do not conclusively establish that
the goods are so related as to result in a likelihood of confusion, even if they are sold under
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Serial No.: 77/799,529
similar marks. See SafeT Pacific Co. v. Nabisco, Inc, 204 U.S.P.Q. 307, 315-16 (T.T.A.B.
1979). Rather, the Trademark Trial and Appeal Board said that the differences in appearance,
general purpose and manner of use of the goods at issue must also be considered in determining
whether the goods are so closely related as to result in a likelihood of confusion. Id. at 316.
Thus, in SafeT Pacific Co. v. Nabisco, Inc., the Trademark Trial and Appeal Board
found no likelihood of con?lsion as between use of the senior mark CRAZY for ice cream cones
and use of the junior mark KRAZY GLAZY for toaster pastries. 204 U.S.P.Q. at 3153 17. The
owner of the senior mark argued that ice cream cones and toaster pastries were substantially the
same in that (i) both were bakery products; (ii) the principal ingredient of both was virtually
identical; (iii) the intended or ultimate use of the products was the same, namely as a
combination bakery and confection product which serves as a snack dessert item; and (iv) the
products were generally sold in the same retail outlets to the same class of purchasers. Id. at 315.
However, the Board observed:
No doubt various points of similarity can be drawn between the
food products of the parties, but there can be no question but that
they are speci?cally different items of merchandise, the ingredients
of which would be lost on or ignored by the average purchaser;
they are different in appearance, general purpose and manner of
use; and ice cream cones and cups are generally used for what their
nomenclature implies, namely, to hold ice cream or similar
products whereas respondents toaster pastries are used as is after
warming in a toaster, an operation no one would utilize for an ice
cream cone.
204 U.S.P.Q. at 316. The Board further observed that while the products would undoubtedly be
sold in the same stores, such was not conclusive because a supermarket today generally carries
an assortment of merchandise running the gamut of ones imagination . . . . Id. In fact, the
Trademark Trial and Appeal Board has observed that the means of distribution and sale are a
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65134K027US 12 Examiner: Naakwama Ankrah
Serial No.: 77/799,529
peripheral inquiry. Id. (citing Federated Foods, Inc. v. Fort Howard Paper Company, 192
USPQ 24 (C.C.P.A., 1976) (emphasis added).
Thus, when one considers the differences in appearance, general purpose and manner of
use of Applicants snack rolls set forth in the designation of goods as compared to sandwiches, it
can be readily seen that the goods are not so related as to result in a likelihood of customer
confusion, especially in light of the du Pont factor discussed previously. Speci?cally, as the
record shows, Applicants snack rolls are similar in size, shape, appearance and nature to an egg
roll. As such, their general purpose would be as a snack food, or perhaps an appetizer before a
meal. A single egg roll would not be viewed by most people as suf?cient for a meal. In
contrast, a sandwich does not share characteristics with an egg roll, in either size, shape,
appearance or nature. Certainly, a sandwich is the type of food that, to most people, would serve
as a meal. Thus, not only do Applicants goods differ in appearance from Registrants
sandwiches, they also differ in general purpose.
As concerns manner of use, like egg rolls, Applicants snack rolls, if served fresh, would
be served hot after being deep fried. Alternatively, they would be presented to the consumer
frozen (after being deep fried) for reheating in a microwave or oven. A sandwich, if served fresh
hot, would generally be served on toasted (as the Cited Mark suggests) or fresh bread, but
certainly not deep fried. If, in the alternative, there were a type of sandwich that could be
presented to the consumer for reheating in a microwave or oven, it would not have ?rst been
deep fried. Thus, as concerns manner of use, the most that can be said is that both Applicants
goods and sandwiches could be served fresh or could require reheating. However, there is such a
vast array of foods for which the same thing can be said, in light of the differences in appearance
86036317.]
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Serial No.: 77/799,529
and general purpose between Applicants goods and Registrants sandwiches, such is not
suf?cient to render them closely related for purposes of likelihood of confusion analysis.
In sum, if Applicants good are considered closely related to sandwiches because they
are a ?our based food ?lled with meat, cheese, or vegetables, for purpose of likelihood of
confusion analysis, then pot pies, pizza, pizza rolls, burritos, ravioli, quiche, tacos and any
number of other products must also be viewed as closely-related to sandwiches. Obviously,
however, such products would be viewed by the average consumer as being distinctive from
sandwiches in appearance, general purpose and/or manner of use, even if they share common
ingredients.
Applicants position that its goods and sandwiches are unrelated for purposes of
likelihood of confusion analysis is made clear by considering the distinction between the goods
at issue here and those at issue in the previously discussed Shawnee Milling case. In Shawnee
Milling, ?our and essentially seasoned ?our were found to be closely-related for obvious
reasons. See Shawnee Milling, 225 USPQ at 748. Accordingly, based on the foregoing analysis,
Applicants goods and Registrants goods are unrelated and this du Pont factor should weigh in
favor of ?nding no likelihood of confusion.
3. Conclusion
Based on the foregoing, Applicants mark, when used in connection with the identi?ed
goods, does not so resemble the Cited Mark as to cause con?lsion or to cause mistake, or to
deceive. Under the circumstances of and evidence of record in this case, the additional dominant
element TOASTY at the beginning of the Cited Mark is more than enough to obviate any
likelihood of confusion where the common element TORPEDOES is arbitrary as to Applicants
goods and generic or highly descriptive with respect to Registrants goods.
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Serial No.: 77/799,529
Since Applicants goods are not related to sandwiches as the concept of relatedness of
goods has been interpreted by the Trademark Trial and Appeal Board in the context of food
products and services, this factor further weighs against a ?nding of likelihood of confusion.
However, under these facts and circumstances, no likelihood of confusion should be found even
if the goods were considered related. Applicant, therefore, requests the Examining Attorney
withdraw her re?isal under Section 2(d).
In light of the foregoing and having responded to all issues raised in the Of?ce Action
dated March 31, 2011, Applicant respectfully requests that this application be passed to
publication. If a telephone conference would expedite the processing of this application, the
Examining Attorney is requested to contact the undersigned.
Respectfully submitted,
Linda M. Merritt
Counsel for Applicant
Dated: 20H
Fulbright & Jaworski L.L.P.
2200 Ross Avenue, Suite 2800
Dallas, Texas 75201~2784
Telephone: 2148558331
Telecopier: 2148558200
860363171
65134K027US l Examiner: Naakwama Ankrah
Serial No.: 77/799,529
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re application of: Discovery Foods, LLC
Serial No.: 77/799,529
Filed: August 7, 2009
Mark: ‘ TORPEDOES
Examiner: Naakwama Ankrah
Law Of?ce: 109
Commissioner for Trademarks
PO. Box 1451
Alexandria, VA 223131451
RESPONSE TO OFFICE ACTION DATED MARCH 31, 2011
In response to the Of?ce Action dated March 31, 2011, incorporating the Of?ce Action
issued on January 18, 2011, Applicant respectfully requests the Examining Attorneys
reconsideration of the refusal to register the mark in the aboveidenti?ed application
(Application) in View of the following amendment, arguments, evidence, and comments.
Refusal to Register Based on Descriptiveness
In this Of?ce Action, the Examining Attorney has maintained the refusal to register under
Trademark Act §2(e)(1), 15 U.S.C. § 1052(e)(1), originally issued in the November 13, 2009
Of?ce Action. As the basis for asserting that the mark merely descriptive of Applicants goods.
The Examining Attorney reasons as follows:
In the instant case, applicant seeks registration of the mark
TORPEDOES for Snack rolls, namely, a handheld snack food
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65134K027US 2 Examiner: Naakwama Ankrah
Serial No.: 77/799,529
consisting of an unleavened ?ourbased wrapper ?lled with meat,
cheese, and vegetables, but not in the nature of a sandwich.
As the attached evidence indicates, a torpedo is a large sandwich
made of a long crusty roll split lengthwise and ?lled with meats
and cheese (and tomato and onion and lettuce and condiments);
two (or more) slices of bread with a ?lling between them.
Applicants wrap is a type of sandwich. Therefore, the proposed
mark merely describes a feature of the goods and registration on
the Principal Register must be refused under Trademark Act
Section 2(e)(1).
November 13, 2009 Of?ce Action, p. 2 (emphasis added).
Applicant believes that the Examining Attomeys Section 2(e) refusal is the result of a
misinterpretation of the goods for which Applicant seeks to register the TORPEDOES mark.
The Examining Attorney has also incorrectly incorporated into the de?nition of a torpedo
sandwich, which is a very speci?c kind of sandwich (see November 13, 2009 Of?ce Action,
Attachment 4), a de?nition of the term sandwich. From the Examining Attorneys evidence,
two (or more) slices of bread with a ?lling between them is a de?nition of a sandwich, not a
torpedo sandwich. See November 13, 2009, 2011 Of?ce Action, Attachment 4.
Hence, the term torpedo can be applied only to a particular type of sandwich and it is
the de?nition of this type of sandwich that must be considered for purposes of assessing whether
the mark TORPEDOES is merely descriptive of Applicants designated goods. The
Examining Attorney has stated further that Applicants wrap is a type of sandwich. From this
comment, it appears that, perhaps based on Applicants use of the term wrapper in the
designation of goods, the Examining Attorney is viewing the goods for which Applicant seeks
registration as a wrap sandwich. As applicable here, a wrap is a sandwich in which the ?lling
is rolled in a soft tortilla. THE NEW OXFORD AMERICAN DICTIONARY 1939 (2d ed. 2005)
(emphasis added) (See Attachment A for a copy of the dictionary de?nition cited).
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65134K027US 3 Examiner: Naakwama Ankrah
Serial No.: 77/799,529
However, the goods for which Applicant seeks registration of the mark TORPEDOES,
i.e. snack rolls, are not a wrap or a sandwich of any kind. Rather, as stated in the response to the
Examining Attorneys request for information in the November 13, 2009 Of?ce Action, the
goods for which Applicant seeks registration of the mark TORPEDOES can be most closely
compared in size, shape and nature to an egg roll. An egg roll is de?ned as a Chinesestyle
snack consisting of diced meat or shrimp and shredded vegetables wrapped in a dough made
with egg and deepfried. Id. at 541 (emphasis added) (See Attachment A for a copy of the
dictionary de?nition cited). Attachments B and C are pages from Applicants website describing
egg rolls (including the wrapper for egg rolls) and showing packaging that depicts egg rolls.
Attachment D shows a mockup of packaging for the snack rolls for which Applicants seeks to
register the mark TORPEDOES (showing an altemative spelling of the mark for the same
product) that pictures the snack rolls and which was provided in the response to the Examining
Attorneys request for information about the goods in the November 13, 2009 Of?ce Action.l
It is anticipated that the snack rolls for which registration of the TORPEDOES mark is
sought may have ?avors not traditionally associated with egg rolls. For example, Attachment D
depicts a package for snack rolls with a quesadilla ?avoring. Nevertheless, as can be seen by a
comparison of these photos and descriptions of the goods, both in Applicants advertisements
and in the designation of goods in this Application, Applicants snack rolls for which it seeks to
register the TORPEDOES mark are very similar to egg rolls and can in no way be described as a
sandwich or a wrap, much less a torpedo sandwich.
1 Note that in this depiction of the goods, one end of the snack roll is shown open to display the ?lling, just as is
done on packaging for Applicants egg rolls. See Attachment B, 9.1 and Attachment C, 9.1. However, like an egg
roll, both ends of the snack roll would be closed.
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65134K027US 4 Examiner: Naakwama Ankrah
Serial No.: 77/799,529
In the designation of goods in this Application, Applicant is using the term wrapper,
not to refer to a wrap sandwich, but rather to refer to the coating surrounding the ?lling of the
product. By way of illustration, Attachment C shows photos and descriptions of some of
Applicants other products. For example, its potstickers are described as nestled in delicate,
pleated wrappers. Its egg rolls are described as containing savory meat and fresh cut
vegetables, all in a crispy wrapper. Its spring rolls are described as ?aky, delicate wrappers
?lled with meat, fresh vegetables and savory seasonings.
A review of registrations recently issued by the USPTO shows that Applicants
designation of goods in this Application is appropriate for the goods contemplated. For example,
Registration No. 3,886,361 for the mark QUALITY IS OUR PRIORITY, Registration No.
3,942,236 for the mark BREAK BITES & Design, and Registration No. 3,967,624 for the mark
BADGER FAMILY FARM are all registered for goods described as doughenrobed foods
consisting of a doughbased wrapper with ?llings consisting primarily of meats, poultry, ?sh,
fruits and vegetables and cheese. (See Attachments E F and G respectively, for the USPTO
records for these registrations) (emphasis added). Finally, Registration No. 3,883,127 for a rose
design mark is registered for goods designated as an edible spring roll wrapper. (See
Attachment H for the USPTO record for this registration) (emphasis added).
The Examining Attorneys assertion that Applicants wrap is a type of sandwich and,
therefore, the proposed mark merely describes a feature of the goods, does not recognize that
the term torpedo, as concerns sandwiches, refers to a very speci?c type of sandwich ~ not to a
wrap sandwich. Based on the Examining Attorneys evidence, a torpedo sandwich is:
a large sandwich made of a long crusty roll split lengthwise and
?lled with meats and cheese (and tomato and onion and lettuce and
condiments).
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65134K027US 5 Examiner: Naakwama Ankrah
Serial No.: 77/799,529
November 13, 2009 Of?ce Action, Attachment 4.
Attachments I and J are pages from the website of the owner of Registration No.
3,745,305 for the mark TOASTY TORPEDOES, registered for sandwiches and cited against
this Application in the March 31, 2011 Of?ce Action. These website pages pictures a torpedo
sandwich and describe it as over a foot of ?avor on a slim & soft deli baguette. Based on the
Examining Attorneys evidence, alternative names for a torpedo sandwich are used in different
sections of the United States and by the people and enterprises that sell them. See November
13, 2009 Of?ce Action, Attachments 4, 6, 7 and 9. These alternative names include hero
sandwich, hoagie, Italian sandwich, poor boy, sub, grinder, submarine sandwich and hero. Id.
Alternative terms do not include a wrap, an egg roll or a snack roll.
Thus, even if it could be said that Applicants goods are a wrap sandwich which they
are not the mark TORPEDOES cannot be said to merely describe a feature of the goods, as
the Examining Attorney asserts, and, hence the mark is not merely descriptive. Based on the
evidence of record, the mark TORPEDOES is completely arbitrary as applied to Applicants
goods for which registration is sought. The consumer, when encountering Applicants goods in
the marketplace and seeing a product in the size, shape and nature of an egg roll, would not think
that the product is in the nature of any kind of sandwich torpedo, wrap, or otherwise. Rather,
because of the primary and most commonly understood meaning of the term torpedo, i.e. a
cigarshaped, selfpropelled underwater projectile launched from a submarine . . . and designed
to detonate on contact with a . . . target (see November 13, 2009 Of?ce Action, Attachment 3),
the consumer would, at most, think the mark to be suggestive of the cylindrical shape and
perhaps spicy ?avor of Applicants snack rolls.
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65134K027US 6 Examiner: Naakwama Ankrah
Serial No.: 77/799,529
While understanding that the Examining Attorney is not bound by any prior decisions of
the USPTO, Applicant advises the Examining Attorney that Applicants original ?lings for the
marks TORPEDOES and TORPEDOZ, Application Serial Nos. 77,799,529 and 77,799,550,
respectively, were deemed eligible for registration on the Principal Register, i.e. not merely
descriptive, of the same goods originally designated in this Application. See Attachments L and
M, respectively, for the USPTO records for these applications. However, to address any
concerns of the Examining Attorney with respect to wrap sandwiches, Applicant submits
herewith an amendment so that the designation of goods would read as follows:
Snack rolls, namely, a hand~held snack food consisting of an
unleavened ?ourbased wrapper ?lled with meat, cheese, or
vegetables or with a combination of meat, cheese, or vegetables,
but not in the nature of a sandwich or a wrap sandwich.
With the amendment to the identi?cation of goods and the additional information
provided with this Of?ce Action response, Applicant believes that it has shown that the Section
2(e) refusal should be withdrawn.
Refusal to Register Based on Likelihood of Confusion
The Examining Attorney has refused registration under Trademark Act 2(d), 15 U.S.C.
§ 1052(d), because the Examining Attorney believes that the mark TORPEDOES, when used in
connection with Applicants identi?ed goods, so resembles the mark in US. Registration No.
3,745,305, for the mark TOASTY TORPEDOES (the Cited Mark), covering sandwiches, as
to be likely to cause confusion or to cause mistake, or to deceive.
As the Examining Attorney noted, the Court of Customs and Patent Appeals in In re E.I.
du Pont de Nemours & C0. listed the principal factors to consider in determining whether there is
a likelihood of confusion. 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Two such factors
860363171
65134K027US 7 Examiner: Naakwama Ankrah
Serial No.: 77/799,529
are: 1) the similarity or dissimilarity of the marks in their entireties in appearance, sound,
connotation and commercial impression; and 2) the relatedness of the goods or services as
described in an application or registration or in connection with which a prior mark is in use.
TMEP § 1207.01, p. 1200-172. Based on her analysis of these factors, the Examining Attorney
concludes that Applicants use of TORPEDOES is likely to cause confusion with the Cited
Mark.
However, in comparing the marks in this case, the Examining Attorney has not given
adequate consideration to the nature of the common element of the marks as applied to
Registrants goods. The record shows that the term torpedo is generic or highly descriptive of
sandwiches. As such, Registrant does not even have the exclusive right to use the element
torpedoes for its own goods. Under such circumstances, the additional dominant element
TOASTY at the beginning of the Cited Mark is more than enough to obviate any likelihood of
confusion. Since Applicants goods are not related to sandwiches as the concept of relatedness
of goods has been interpreted by the Trademark Trial and Appeal Board in the context of food
products and services, this factor further weighs against a finding of likelihood of confusion.
However, under these facts and circumstances, no likelihood of confusion should be found even
if the goods were considered related.
1. Di?erences Between the Marks are Suf?cient to Obviate any Likelihood of
Confusion Because of the Nature of the Common Element
Turning ?rst to a comparison of the marks themselves, Applicant notes that, in refusing
registration based on likelihood of confusion and comparing the marks, the Examining Attorney
states as follows:
The applicants mark, namely, TORPEDOES, is similar to the
registered mark, TOASTY TORPEDOES because they both
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65134K027US 8 Examiner: Naakwama Ankrah
Serial No.: 77/799,529
contain the term, TORPEDOES. The additional wording
TOASTY i[n] registrants mark, does not obviate the similarity
between the marks nor does it alter the commercial impression of
the marks. 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).
March 31, 2011 Of?ce Action, p. 2 (citations omitted). However, the Examining Attorney has
not considered an exception to this general rule as concerns additions or deletions to marks in
circumstances where the matter common to the marks is not likely to be perceived by purchasers
as distinguishing source, at least with respect to one of the marks, because it is merely
descriptive. See TMEP § 1207.01(b)(iii), p. 1200-83.
For example, in In re Shawnee Milling C0,, the Trademark Trial and Appeal found no
likelihood of confusion between the applied-for mark GOLDEN CRUST for ?our and the
registered mark ADOLPHS GOLDN CRUST & Design (with GOLDN CRUST disclaimed)
for combination coating and seasoning for poultry, ?sh, and certain vegetables. 225 USPQ
747 (TTAB 1985). The Board noted that the registrant had disclaimed the exclusive right to use
GOLDN CRUST and that the label of record stated that the product gives chicken a delicate
golden crust, and hence was descriptive of the registrants goods. Id. at 749. The applied-for
mark GOLDEN CRUST was suggestive, not merely descriptive, as applied to ?our, but
entitled to a narrow scope of protection. Id. Under the circumstances, the Board found that the
addition of ADOLPHS in the senior mark was suf?cient to distinguish the marks as a whole and
avoid con?Jsion, even though the goods were considered related. Id. at 748-49.
As discussed in the previous section of this Of?ce Action response, the term
TORPEDOES is completely arbitrary as applied to Applicants goods. However, the evidence of
record shows that the term torpedo is highly descriptive, if not generic, for a certain kind of
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65134K027US 9 Examiner: Naakwama Ankrah
Serial No.: 77/799,529
sandwich. In fact, the owner of the registration for the Cited Mark itself has acknowledged this
by disclaiming the exclusive right to use TORPEDOES apart from the mark as shown. See
January 18, 2011 Of?ce Action, Attachments 1 – 3 for the USPTO record for the Cited Mark
provided by the Examining Attorney. Similarly, Applicant notes that in Registration No.
3,103,557 for the mark DELI EXPRESS TORPEDO FAMILY OWNED SINCE 1955 & Design,
registered for sandwiches, and in Registration No. 3,829,471 for the mark PANE FRESCO
TORPEDO ROLLS & Design, registered for bakery products, both disclaim the exclusive
right to use the term torpedo. (See Attachments M and N, respectively, for the USPTO records
for these registrations).
If the owner of the registration for TOASTY TORPEDOES does not have the exclusive
right to use the term torpedo or torpedoes as part of a mark for sandwiches or a roll used in
making a torpedo sandwich, either because it is highly descriptive or generic for a certain kind of
sandwich, it certainly cannot exclude others from using the term torpedoes for other kinds of
food products, such as Applicants goods.
Applicant notes that in no case cited by the Examining Attorney in the March 31, 2011
Of?ce Action to support her position with respect to similarity of the marks was the common
element or elements generic, or even highly descriptive, of the goods for which the senior mark
was registered or used. See March 31, 2011 Of?ce Action, p. 2. As discussed below,
Applicants goods identi?ed in the application are not related as that concept has been
interpreted by the Board. However, even in Shawnee Milling, no likelihood of confusion was
found where the common element was descriptive of the registrants goods and suggestive of the
applicants goods and the goods were considered related.
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65134K027US 10 Examiner: Naakwama Ankrah
Serial No.: 77/799,529
Based on the foregoing, no likelihood of confusion should be found between Applicants
TORPEDOES mark for use on the identi?ed goods and the Cited Mark for sandwiches where the
common element is arbitrary for Applicants goods and generic or highly descriptive for
Registrants goods, even if the goods could be considered related. Under the circumstances, the
addition of the dominant element TOASTY at the beginning of the Cited Mark renders it
distinguishable from Applicants TORPEDOES mark and is more than enough to obviate any
likelihood of confusion.
2. Agglicants Goods and Sandwiches are Unrelated
Finally, particularly in light of the du Pont factor already discussed, Applicant submits
that there is no likelihood of confusion because the goods on which it will use the TORPEDOES
mark are unrelated to sandwiches. As the basis for her assertion that Applicants goods are
closely related to sandwiches, the Examining Attorney reasons as follows:
The applicants goods, namely, snack rolls, namely, a hand-held
snack food consisting of an unleavened ?our-based wrapper ?lled
with meat, cheese, or vegetables or with a combination of meat,
cheese, or vegetables, but not in the nature of a sandwich are
closely related to the registrants goods, namely, sandwiches
because they are goods likely to travel through the same channels
of trade to the same classes of purchasers in that they are
?our-basedfood?lled with meat, cheese or vegetables.
March 31, 2011 Of?ce Action, p. 3. Thus, the principal basis for the Examining Attorneys
assertion that Applicants goods are closely related to sandwiches is the possibility of their
traveling through the same channels of trade to the same class of purchasers based on her
characterization of the goods in terms of their ingredients.
However, the Trademark Trial and Appeal Board has said that, in cases involving food
products, product ingredients and marketplace conditions alone do not conclusively establish that
the goods are so related as to result in a likelihood of confusion, even if they are sold under
860363171
65134K027US 11 Examiner: Naakwama Ankrah
Serial No.: 77/799,529
similar marks. See SafeT Pacific Co. v. Nabisco, Inc, 204 U.S.P.Q. 307, 315-16 (T.T.A.B.
1979). Rather, the Trademark Trial and Appeal Board said that the differences in appearance,
general purpose and manner of use of the goods at issue must also be considered in determining
whether the goods are so closely related as to result in a likelihood of confusion. Id. at 316.
Thus, in SafeT Pacific Co. v. Nabisco, Inc., the Trademark Trial and Appeal Board
found no likelihood of con?lsion as between use of the senior mark CRAZY for ice cream cones
and use of the junior mark KRAZY GLAZY for toaster pastries. 204 U.S.P.Q. at 3153 17. The
owner of the senior mark argued that ice cream cones and toaster pastries were substantially the
same in that (i) both were bakery products; (ii) the principal ingredient of both was virtually
identical; (iii) the intended or ultimate use of the products was the same, namely as a
combination bakery and confection product which serves as a snack dessert item; and (iv) the
products were generally sold in the same retail outlets to the same class of purchasers. Id. at 315.
However, the Board observed:
No doubt various points of similarity can be drawn between the
food products of the parties, but there can be no question but that
they are speci?cally different items of merchandise, the ingredients
of which would be lost on or ignored by the average purchaser;
they are different in appearance, general purpose and manner of
use; and ice cream cones and cups are generally used for what their
nomenclature implies, namely, to hold ice cream or similar
products whereas respondents toaster pastries are used as is after
warming in a toaster, an operation no one would utilize for an ice
cream cone.
204 U.S.P.Q. at 316. The Board further observed that while the products would undoubtedly be
sold in the same stores, such was not conclusive because a supermarket today generally carries
an assortment of merchandise running the gamut of ones imagination . . . . Id. In fact, the
Trademark Trial and Appeal Board has observed that the means of distribution and sale are a
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65134K027US 12 Examiner: Naakwama Ankrah
Serial No.: 77/799,529
peripheral inquiry. Id. (citing Federated Foods, Inc. v. Fort Howard Paper Company, 192
USPQ 24 (C.C.P.A., 1976) (emphasis added).
Thus, when one considers the differences in appearance, general purpose and manner of
use of Applicants snack rolls set forth in the designation of goods as compared to sandwiches, it
can be readily seen that the goods are not so related as to result in a likelihood of customer
confusion, especially in light of the du Pont factor discussed previously. Speci?cally, as the
record shows, Applicants snack rolls are similar in size, shape, appearance and nature to an egg
roll. As such, their general purpose would be as a snack food, or perhaps an appetizer before a
meal. A single egg roll would not be viewed by most people as suf?cient for a meal. In
contrast, a sandwich does not share characteristics with an egg roll, in either size, shape,
appearance or nature. Certainly, a sandwich is the type of food that, to most people, would serve
as a meal. Thus, not only do Applicants goods differ in appearance from Registrants
sandwiches, they also differ in general purpose.
As concerns manner of use, like egg rolls, Applicants snack rolls, if served fresh, would
be served hot after being deep fried. Alternatively, they would be presented to the consumer
frozen (after being deep fried) for reheating in a microwave or oven. A sandwich, if served fresh
hot, would generally be served on toasted (as the Cited Mark suggests) or fresh bread, but
certainly not deep fried. If, in the alternative, there were a type of sandwich that could be
presented to the consumer for reheating in a microwave or oven, it would not have ?rst been
deep fried. Thus, as concerns manner of use, the most that can be said is that both Applicants
goods and sandwiches could be served fresh or could require reheating. However, there is such a
vast array of foods for which the same thing can be said, in light of the differences in appearance
86036317.]
65134~K027US 13 Examiner: Naakwama Ankrah
Serial No.: 77/799,529
and general purpose between Applicants goods and Registrants sandwiches, such is not
suf?cient to render them closely related for purposes of likelihood of confusion analysis.
In sum, if Applicants good are considered closely related to sandwiches because they
are a ?our based food ?lled with meat, cheese, or vegetables, for purpose of likelihood of
confusion analysis, then pot pies, pizza, pizza rolls, burritos, ravioli, quiche, tacos and any
number of other products must also be viewed as closely-related to sandwiches. Obviously,
however, such products would be viewed by the average consumer as being distinctive from
sandwiches in appearance, general purpose and/or manner of use, even if they share common
ingredients.
Applicants position that its goods and sandwiches are unrelated for purposes of
likelihood of confusion analysis is made clear by considering the distinction between the goods
at issue here and those at issue in the previously discussed Shawnee Milling case. In Shawnee
Milling, ?our and essentially seasoned ?our were found to be closely-related for obvious
reasons. See Shawnee Milling, 225 USPQ at 748. Accordingly, based on the foregoing analysis,
Applicants goods and Registrants goods are unrelated and this du Pont factor should weigh in
favor of ?nding no likelihood of confusion.
3. Conclusion
Based on the foregoing, Applicants mark, when used in connection with the identi?ed
goods, does not so resemble the Cited Mark as to cause con?lsion or to cause mistake, or to
deceive. Under the circumstances of and evidence of record in this case, the additional dominant
element TOASTY at the beginning of the Cited Mark is more than enough to obviate any
likelihood of confusion where the common element TORPEDOES is arbitrary as to Applicants
goods and generic or highly descriptive with respect to Registrants goods.
860363171
65134K027US l4 Examiner: Naakwama Ankrah
Serial No.: 77/799,529
Since Applicants goods are not related to sandwiches as the concept of relatedness of
goods has been interpreted by the Trademark Trial and Appeal Board in the context of food
products and services, this factor further weighs against a ?nding of likelihood of confusion.
However, under these facts and circumstances, no likelihood of confusion should be found even
if the goods were considered related. Applicant, therefore, requests the Examining Attorney
withdraw her re?isal under Section 2(d).
In light of the foregoing and having responded to all issues raised in the Of?ce Action
dated March 31, 2011, Applicant respectfully requests that this application be passed to
publication. If a telephone conference would expedite the processing of this application, the
Examining Attorney is requested to contact the undersigned.
Respectfully submitted,
Linda M. Merritt
Counsel for Applicant
Dated: 20H
Fulbright & Jaworski L.L.P.
2200 Ross Avenue, Suite 2800
Dallas, Texas 75201~2784
Telephone: 2148558331
Telecopier: 2148558200
860363171