Mark : BANGIN’ BURGERS
Application No. : 77806532
Filing Date : 08/18/2009
Applicant : Patty Shack, LLC
Examining Attorney : Mister, Katina S.
Office Number : 104

RESPONSE TO OFFICE ACTION
Commissioner For Trademarks
P.O. Box 1451
Arlington, Virginia 22313-1451

Dear Commissioner,

In the office action dated November 21, 2009 for the mark “BANGIN’
BURGERS,” serial number 77806532, the Examining Attorney refuses registration,
requesting that Applicant disclaim the descriptive wording “BURGER” apart from the
mark as shown because it describes a feature of the applicant’s services described as
“restaurant services.” Applicant traverses this requirement and submits that the mark
“BANGIN’ BURGERS” as a whole constitutes a double entendre and, therefore, is a
unitary composite, which should not be broken up for the purposes of requiring a
disclaimer, and the mark “BANGIN’ BURGERS” is entitled to registration without the
additional disclaimer requested by the Examining Attorney.

I. THE DISCLAIMER OF THE TERM “BURGER” IS NOT WARRANTED

A. THE EXPRESSION “BANGIN’ BURGERS” IS A DOUBLE ENTENDRE

The Examining Attorney is respectfully reminded that a double entendre is “an
ambiguity of meaning arising from language that lends itself to more than one
interpretation.” In re The Place inc., 76 USPQ2d 1467 (TTAB 2005).

In the present case, the term “BANGIN’ BURGERS” has three meanings that
arise from language that lends itself to more than one interpretation. “BANGIN’
BURGERS” appears, on one hand, to refer to “Hamburgers that are extremely good.”

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(See definitions, infra). Moreover, the term “BURGERS” is pronounced the same as the
term “burghers,” which refers to the “inhabitants of a borough or town,” and the term
“BANGIN’ ” is understood in many urban communities as a slang term with the meaning
“to hang out.” Thus, upon hearing the expression “BANGIN’ BURGERS,” consumers
would readily think of an alternative meaning for the expression – namely “townspeople
hanging out” – which, to the benefit of Applicant, would suggest to consumers that
Applicant’s restaurants are places in town where townspeople hang out. Finally, the
term “BURGERS” is also known to refer to attractive members of the opposite sex. And
the term “BANGIN’ ” is known to refer to the act of sexual intercourse. Thus a third,
decidedly bawdy, meaning for the expression – namely “the act of sexual intercourse
with an attractive member of the opposite sex” readily comes to mind.

In the first instance, the word “BANGIN’ ” (adjective) references to the goodness
of the “BURGERS” (noun) to be sold at Applicant’s restaurant establishments. In the
second instance, the word “BANGIN’ ” (adjective derivation of intransitive verb) modifies
the word “BURGERS” (noun), which, in this second instance constitutes a misspelling
(common in slang) of the term “burghers” and refers to “the townspeople who
sometimes “bang” or hang out” at Applicant’s establishments. And in the third instance,
the word “BANGIN’ ” (adjective derivation of intransitive verb) references the act of
sexual intercourse with “BURGERS” (noun), which is understood to mean attractive
members of the opposite sex.

The Examining Attorney’s attention is specifically directed to the following
definitions of the terms “BANGIN’ ”, “BANG”, “BURGER” and “BURGHER” taken from
various dictionaries and submitted herewith as Exhibits A, B, C, and D, respectively, to
make them of record:

Bangin’ (slang)

Adjective

· The bomb, extremely good.

That new CD is bangin’!

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Bang (slang)

Intransitive verb

· to hang out

I was banging with my peeps.

Bang (slang)

Transitive verb

· To have sexual intercourse with

I banged that girl I brought home from the bar last night.

Burger (slang)

Noun

· Usually used in reference to an attractive member of the opposite sex.

Isn’t she a tasty looking burger?

Burgher

Noun

1. A citizen of a town or borough.

2. A comfortable complacent member of the middle class.

The three aforementioned meanings of “BANGIN’ BURGERS” create an
ambiguity in meaning arising from language that lends itself to more than one
interpretation. Therefore, BANGIN’ BURGERS constitutes a double entendre.

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B. THE DOUBLE ENTENDRE, “BANGIN’ BURGER,” IS AT LEAST
SUGGESTIVE
The test for determining whether a mark is merely descriptive is whether it
immediately conveys information concerning a quality, characteristic, function,
ingredient, attribute or feature of the product or service in connection with which it is
used, or intended to be used. In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB
1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is well established that if
a mark creates a suggestive double entendre or double meaning that is suggestive and
would be recognizable by the average prudent consumer, then the mark itself is
suggestive. See Estee Lauder, Inc. v. The Gap, Inc., 932 F.Supp. 595, 609-610
(S.D.N.Y. 1996), rev’d on other grounds, 108 F.3d 1503 (2nd. Cir. 1997) (Stating that the
mark “100% TIME RELEASE MOISTURIZER” for skin moisturizer was suggestive
rather than merely descriptive because consumers could interpret the mark to mean
“100% (the brand) time release moisturizer”); see also In re Grand Metropolitan
Foodservice, Inc., 30 USPQ2d 1974, 1975 (TTAB 1994) (stating that the mark Muf-
Funs” as applied to muffins was not merely descriptive because of the double meaning
of muffins and that the produce was “fun”); In re Priefert Manufacturing Co., 222 USPQ
731 (TTAB 1984)(holding that the mark “HAY DOLLY” for self-loading trailers for hauling
hay bales was not merely descriptive because of the double meaning with the phrase
“Hey Dolly” and the musical “Hello Dolly”); In re National Tea Co., 144 USPQ 286
(TTAB 1965) (stating that the mark “NO BONES ABOUT IT” for boneless ham was not
merely descriptive because of the double entendre with the common phrase; In re
Colonial Stores Inc., 157 USPQ 382 (CCPA 1968) (stating that the mark “SUGAR &
SPICE” for cookies and other baked goods was not merely descriptive because of the
double entendre with the nursery rhyme.)

In the present case, the double entendre, “BANGIN’ BURGERS” is at least
suggestive. Even if the first meaning of “BANGIN’ BURGERS” described above, in
which the word “BANGIN’ ” references the goodness of the “BURGERS” to be sold at
Applicant’s restaurant establishments, the second meaning is at least suggestive since
it does not reveal anything about the nature of Applicant’s services. The mere fact that
Applicant’s restaurant establishments are places where “townspeople hang out” does

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not “immediately convey[ ] information concerning a[ny] quality, characteristic, function,
ingredient, attribute or feature of” Applicant’s “service[s] in connection with which [they
are] used, or intended to be used.” The third meaning is also at least suggestive since it
does not reveal anything about the nature of Applicant’s services. Sexual intercourse
with an attractive member of the opposite sex has nothing to do with Applicant’s
“service[s] in connection with which [they are] used, or intended to be used.” Therefore,
the mark is not merely descriptive of Applicant’s services and, by inference, is at least
suggestive.

Furthermore, all three meanings of the double entendre, “BANGIN’ BURGERS,”
would be easily recognized by the average consumer. The dictionary used herein to
provide definitions for the term “BANGIN’ ”, “BANG”, and “BURGERS” is an online
dictionary that involves user-generated definitions, meaning that the definitions provided
herein were generated by, reviewed by, and revisable by average consumers.
Accordingly, it is reflexively self-evident that it would be easy for the average consumer
to recognize all three meanings of Applicant’s usage of the word “BANGIN’ ” as well as
the second meaning of the term “BURGERS” as herein defined. The dictionary used to
provide the definition for the term “BURGHER” as used herein is one of the most
celebrated, reputable, and longstanding dictionaries used in the United States, the
American Heritage Dictionary of the English Language, Fourth Edition, published by
Houghton Mifflin and made available to the public on dictionary.com.

Accordingly, the term “BANGIN’ BURGERS” as it appears in Applicant’s mark is
a suggestive double entendre carrying at least three meanings that would be easily
recognizable by the average prudent consumer.

C. “BURGERS” IS PART OF THE UNITARY COMPOSITE “BANGIN’
BURGERS,” WHICH SHOULD NOT BE BROKEN UP FOR THE PURPOSE OF
REQUIRING A DISCLAIMER

It has been long recognized that two or more descriptive terms in combination
can create a unitary composite which is not merely descriptive. The Board set forth this
rule in In re Disc Jockey’s Inc., 23 USPQ2d 1715 (1992) wherein it stated:

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It is true that terms which may not individually be considered
trademarks may become such upon being combined into a
composite. However, combining two descriptive terms is
insufficient to accomplish that goal unless the combination is such
as to create a new and different commercial impression from that
which is engendered by the separate components.
A true “double entendre” is, as a matter of law, a unitary composite that should
not be broken up for purposes of requiring a disclaimer. See In re Kraft, Inc., 218
USPQ 571, 573 (TTAB 1983), where the Board found inappropriate a requirement for a
disclaimer of “LIGHT” apart from the mark “LIGHT N’ LIVELY” for reduced calorie
mayonnaise, stating as follows:

The mark “LIGHT N’ LIVELY” as a whole has a suggestive significance which is
distinctly different from the merely descriptive significance of the term “LIGHT”
per se. That is, the merely descriptive significance of the term “LIGHT” is lost in
the mark as a whole. Moreover, the expression as a whole has an alliterative
lilting cadence which encourages persons encountering it to perceive it as a
whole.1
The word “BURGERS,” in the present case, even if merely descriptive of
Applicant’s services, when standing alone, is part of a double entendre “BANGIN’
BURGERS,” as discussed (supra). Therefore, it is part of a unitary composite. Like
“LIGHT N’ LIVELY,” the expression “BANGIN’ BURGERS” as a whole has a suggestive
significance, as discussed (supra), which is distinct from the supposed merely
descriptive significance of the term “BANGIN’ .” Like the term “LIGHT,” in the mark
“LIGHT N’ LIVELY,” any supposed merely descriptive significance of the term
“BURGERS” is lost in the mark as a whole. Furthermore, like “LIGHT N’ LIVELY” the
expression “BANGIN’ BURGERS,” has an alliterative lilting cadence which encourages
persons encountering it to perceive it as a whole. Accordingly, the mark “BANGIN’
BURGERS” is a suggestive unitary composite such that Applicant’s mark “BANGIN’

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The following cases provide further illustrations of cases in which m arks were considered to be “double
entendres” and, therefore, registrable unitary m arks: In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ
382 (C.C.P.A. 1968) (“SUGAR & SPICE” for bakery products); In re Simmons Co., 189 USPQ 352 (TTAB
1976) (“THE HARD LINE” for m attresses and bed springs); In re Delaware Punch Co., 186 USPQ 63
(TTAB 1975) (“THE SOFT PUNCH” for noncarbonated soft drink); In re National Tea Co., 144 USPQ 286
(TTAB 1965) (“NO BONES ABOUT IT” for fresh pre-cooked ham ).

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BURGERS” should not be broken up for purposes of requiring the additional disclaimer
of the term BURGERS.

II. CONCLUSION

For the reasons set forth herein, Applicant’s mark “BANGIN’ BURGERS” is a
suggestive double entendre unitary composite. Therefore, “BURGERS” is part of a
unitary composite, which should not be broken up for the purposes of requiring a
disclaimer, and the mark “BANGIN’ BURGERS” is entitled to registration without the
Examining Attorney’s requested disclaimer. Applicant respectfully requests the
Examining attorney to reconsider and withdraw the disclaimer requirement in view
thereof.

DATED: February 10, 2010 Respectfully submitted,
TDFoster – Intellectual Property Law

By: /Thomas D. Foster/
Thomas D. Foster
Attorneys for Applicant
12760 High Bluff Drive, Suite 300
San Diego, CA 92130
Phone: 858.922.2170
Fax: 858.259.6008
email: [email protected]

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