65134—K027US 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 22313—1451

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 Attorney’s

reconsideration of the refusal to register the mark in the above—identi?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 Applicant’s goods.

The Examining Attorney reasons as follows:

In the instant case, applicant seeks registration of the mark
“TORPEDOES” for Snack rolls, namely, a hand—held snack food

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consisting of an unleavened ?our—based 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.”
Applicant’s 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 Attomey’s 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 Attorney’s 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 Applicant’s designated goods. The

Examining Attorney has stated further that “Applicant’s wrap is a type of sandwich.” From this

comment, it appears that, perhaps based on Applicant’s 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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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 Attorney’s 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 Chinese—style

snack consisting of diced meat or shrimp and shredded vegetables wrapped in a dough made

with egg and deep—fried. Id. at 541 (emphasis added) (See Attachment A for a copy of the

dictionary de?nition cited). Attachments B and C are pages from Applicant’s website describing

egg rolls (including the wrapper for egg rolls) and showing packaging that depicts egg rolls.

Attachment D shows a mock—up 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

Attorney’s 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 Applicant’s advertisements

and in the designation of goods in this Application, Applicant’s 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 Applicant’s 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

Applicant’s 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 Applicant’s

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 “dough—enrobed foods

consisting of a dough—based 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 Attorney’s assertion that “Applicant’s 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 Attorney’s 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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65134—K027US 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 Attorney’s 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 Applicant’s 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 Applicant’s

goods for which registration is sought. The consumer, when encountering Applicant’s 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

“cigar—shaped, self—propelled 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 Applicant’s 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 Applicant’s 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 ?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 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 Applicant’s 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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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 Applicant’s 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

Registrant’s 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 Applicant’s 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 applicant’s mark, namely, TORPEDOES, is similar to the
registered mark, TOASTY TORPEDOES because they both

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contain the term, TORPEDOES. The additional wording
TOASTY i[n] registrant’s 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 ADOLPH’S GOLD’N CRUST & Design (with “GOLD’N 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

“GOLD’N CRUST” and that the label of record stated that the product gives chicken a delicate

golden crust, and hence was descriptive of the registrant’s 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 ADOLPH’S 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 Applicant’s 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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65134—K027US 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 Applicant’s 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,

Applicant’s 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 registrant’s goods and suggestive of the

applicant’s 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 Applicant’s

TORPEDOES mark for use on the identi?ed goods and the Cited Mark for sandwiches where the

common element is arbitrary for Applicant’s goods and generic or highly descriptive for

Registrant’s 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 Applicant’s TORPEDOES mark and is more than enough to obviate any

likelihood of confusion.

2. Agglicant’s 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 Applicant’s goods are

closely related to sandwiches, the Examining Attorney reasons as follows:

The applicant’s 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 registrant’s 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 Attorney’s

assertion that Applicant’s 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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similar marks. See Safe—T 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 Safe—T 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 315—3 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 respondent’s 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 one’s 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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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 Applicant’s 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, Applicant’s 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 Applicant’s goods differ in appearance from Registrant’s

sandwiches, they also differ in general purpose.

As concerns manner of use, like egg rolls, Applicant’s 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 Applicant’s

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

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and general purpose between Applicant’s goods and Registrant’s sandwiches, such is not

suf?cient to render them closely related for purposes of likelihood of confusion analysis.

In sum, if Applicant’s 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.

Applicant’s 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,

Applicant’s goods and Registrant’s goods are unrelated and this du Pont factor should weigh in

favor of ?nding no likelihood of confusion.

3. Conclusion

Based on the foregoing, Applicant’s 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 Applicant’s

goods and generic or highly descriptive with respect to Registrant’s goods.

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Since Applicant’s 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: 214—855—8331
Telecopier: 214—855—8200

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