MODJARRAD
Sean S. Modjarrad, MBA, Macc R. Eric Lopez
Nazeh R. Abusaad Mohamad Said
Patty A. Morris
Bernard J. Grant
& Rod B. Khavari

ABUSAAD
LAW FIRM

May 1, 2010

VIA ELECTRONIC SUBMISSION
Commissioner for Trademarks
Attn: Jennifer Martin
P.O. Box 1451
Alexandria, VA 22313-1451

RE: Mark: Chophouse Burger
Serial #: 77/791858
Applicant: Hoque, Sardar M.
Date of Office Action: Nov. 3, 2009

Dear Ms. Martin:

This letter is in response to the office action dated Nov. 3, 2009, regarding the above-
referenced mark. With regards to the issues raised in the office action, we hereby respectfully
submit the following:

Response to Section 2(e)(1) Refusal – Merely Descriptive

A combination of marks or words may constitute a valid trademark or, in the case of
words, a tradename, even though some of the constituent portions thereof would not be subject,
separately, to exclusive appropriation as such.1 Applicant respectfully submits that to the extent
that a trademark leads the consumer to the exercise of mental processes requiring a modicum of
imaginative thought relative to the nature, purpose, result, characteristics or features of the
goods, the mark CHOPHOUSE BURGER is suggestive rather than descriptive. Applicant
submits that the mark is surely not generic of Applicant’s goods.

Additionally, a composite mark is tested by looking at it as a whole, rather than its parts,
although it is acceptable to separate a compound mark and consider the descriptiveness of each

1
Virginia Baking Co. v. Souther Biscuit Works, 111 Va. 227, 68 S.E. 261 (1910); Powder River Oil Co., v. Powder
River Petroleum Corp., 830 P.2d 403 (Wyo. 1992).

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part, provided that the ultimate determination is made on the basis of the mark in its entirety.2
Thus, when the mark at issue is a composite mark consisting of additional words, the question, in
classifying the mark, becomes what the purchasing public would think when confronted with the
mark as a whole.3

Applicant respectfully submits that the mark CHOPHOUSE BURGER is neither generic
nor merely descriptive of Applicant’s product. The issue of whether or not a mark is generic or
even merely descriptive is one which, as referenced above from McCarthy, is critical and must
be studiously observed. The Dallas Chop House Lunch Menu,4 describes the CHOPHOUSE
BURGER as one that is “Lightly aged and grilled perfection.” It further describes the
CHOPHOUSE BURGER as being served with a “house made steak sauce, bacon and smoked
cheddar.”5 Thus, in the instant case, the CHOPHOUSE BURGER, as described therein and
offered by Dallas Chop House is unique and different from other such offerings in that it is
prepared using lightly aged beef and further in that it is served with a house made steak sauce.
Thus, the CHOPHOUSE BURGER offered by Dallas Chop House differs from those described
and identified in the Attachments to the Office Action in that it is served with differently from
the way the other entities serve a Chophouse Burger. Further, the attached Lunch Menu of
Dallas Chop House clearly indicates that the Chophouse Burger is one that is served by the
Applicant’s restaurant, Dallas Chop House.

Moreover, Dallas Chop House offers a variety of other “chops” throughout its’ Dinner
6
Menu. As reflected therein, Dallas Chop House offers a variety of other specialty cuts of meat,
which are offered with a variety of house made “Sauces, Butters, & Toppings.”7 Those include,
but are not limited to: (i) Bearnaise Sauce; (ii) Charon Sauce; (iii) Moroccan Rub; and (iv) Jerk
Rub. This is further indicative that Dallas Chop House offers a distinct CHOPHOUSE
BURGER, in addition to a variety of other distinct and different cuts of meat.

Lastly, as described in the “About Us” section of the website for Dallas Chop House, the
menu has been developed to present “fresh approaches to many of the classic recipes served in
American Steakhouses.”8

For these reasons, Applicant respectfully submits that the CHOPHOUSE BURGER, as
served by Dallas Chop House, is distinct from the chophouse burger, as typically offered by
other restaurants, as described in the Menu. Dallas Chop House clearly seeks to introduce a new
approach to classic recipes, and does so through the so-called “twists” offered to its menu
offerings. Applicant respectfully requests that the Examining Attorney withdraw its objections
to this application and allow it to proceed to publication.

2
Great Southern Bank v. First Southern Bank, 625 So.2d 463 (Fla. 1993).
3
Lane Capital Management, Inc. v. Lane Capital Management, Inc. 192 F.3d 337 (2d Cir. 1999).
4
See Exhibit “A,” Dallas Chop House Lunch Menu.
5
Id.
6
See Exhibit “B,” Dallas Chop House Dinner Menu.
7
Id.
8
See Exhibit “C,” About Us section of Dallas Chop House website (http://www.dallaschophouse.com).

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Sincerely,

/s/ Rod B. Khavari

Rod B. Khavari
Attorney and Counselor at Law

cc: client; file
Enclosures as stated

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