Comments for filing with Response to Office Action
in U. S. Tm. Appln. No. 76/719408

Applicant notes that the Office failed to include an “Issue/Mailing Date” on the first page
of this Office Action. Rather than request that the Action be re-issued with an
“Issue/Mailing Date”, Applicant is filing this response well prior to March 21, 2017, which
would appear to be the due date based upon the TSDR records of the USPTO showing
that the Office Action was mailed on September 21, 2016. This response is, therefore,

The Examiner is thanked for her thorough examination of the captioned application and
for her indication that no registered mark has been found that would prevent registration
of the mark under Section 2(d) of the Lanham Act.

Potential 2(d) Citation

It is noted that the Examiner has cited United States Trademark Application No.
86/783451 which is a pending Intent-to-Use application and has indicated that, upon
Applicant herein overcoming all of the other rejections in this Office Action, prosecution
of this application will be suspended pending grant or abandonment of the ‘451
application. Further, the Examiner has indicated that, if the ‘451 application proceeds to
grant, it may be cited against the captioned application.

Applicant notes that the captioned application claims both a date of first use anywhere
and first use in commerce of the mark at least as early as June 1, 2015. On the other
hand, the ‘451 application is an Intent-to-Use application filed by a Mexican attorney on
behalf of a Mexican client on October 9, 2015, more than five (5) months after the dates
of first use of the mark by Applicant herein. It is, unfortunately, too late to file an
Opposition to the ‘451 application, but it would appear that Applicant herein will most
likely prevail in any priority contest, e.g., a Cancellation proceeding, to establish rights to
use and register the mark in the United States.

Unnecessary Disclaimer

The Examiner has rejected the application based on the unnecessary disclaimer of the
phrase “EL MUELLE” which is neither required nor appropriate as it essentially amounts
to a disclaimer of the entire mark.

Applicant requests that the disclaimers as originally filed be withdrawn. Applicant has
amended the application to disclaim only the phrase “SEAFOOD & CEVICHE BAR” and
requests that the application proceed with only the following disclaimer:

No claim is made to the exclusive right to use
apart from the mark as shown.

Thus, the Applicant has overcome the rejection based on the unnecessary disclaimer.
Color Claim and Description of the Mark

The Examiner has rejected the application based on the use of a black and white
drawing and on the wording of the color claim and description of the mark.

Applicant has amended the description of the mark and the claim to color as requested
by the Examiner. Applicant notes that the application was submitted as a paper
application with a color drawing. It appears that the Office has created a black and
white drawing which has been designated as the official drawing. The color drawing as
submitted, however, remains in the application. When viewed in or printed from the
TSDR database, there appears to be a wide, pale yellow border a white rectangle in
which the mark is displayed. In a telephone visit with the Examiner on September 29,
the drawing(s) in the application were discussed. The Examiner stated that the color
drawing is in the internal Office database and does not show any such border in that
database. In any event, the Examiner agreed that the application could proceed with
the color drawing submitted with the original application and that the drawing approved
for publication would have only a white background. Applicant requests that the color
drawing submitted with the original application be designated as the official “drawing”
and that the application proceed with that drawing. Thus, the drawing should be the
color drawing as submitted in the original application and with only a white background
as apparently shown in the internal Office database or in the small rectangle
surrounding the mark as it appears in the TSDR database.

In compliance with the Examiner’s request, the application has been amended to
include the following:

Color claim: The colors blue, black, red and
white are claimed as a feature of the mark.

Mark description: The mark consists of the stylized phrase “EL MUELLE”
appearing in blue with black outlining and
the phrase “SEAFOOD & CEVICHE BAR” appearing below in white
within a red rectangle with rounded corners and black outlining.

Thus, Applicant has overcome the rejection based upon the color claim and the
description of the mark.

Significance of the Mark

The Examiner has raised a number of questions concerning the significance of the mark
in the Applicant’s trade or industry as applied to the services described in the

The mark EL MUELLE (or its translation, The Pier or The Wharf) does not have any
significance in the restaurant trade or industry. EL MUELLE or its translations may
suggest some connection to the sea or to a lake, river or other body of water and, thus,
at most, might be suggestive of seafood.

Applicant’s restaurants, however, are not located on, near or in view of a pier or wharf.