TRADEMARK
Atty Docket No .: 905 08

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Applicant: Richmond Wholesale Meat ) Law Of?ce: 1 16
Co, )
) Examining Attorney: Alice Benmaman
Serial No: 77/682,120 )
) RESPONSE TO OFFICE ACTION DATED
Filed: March 3, 2009 ) JUNE 2, 2009
)
Mark: RICH CHICK )
)

Commissioner for Trademarks
Post Of?ce Box 1451
Alexandria VA 22313-145 1

Dear Sir:

In response to the Of?cial Action received electronically on June 2, 2009,
please amend the above-referenced application by inserting the following
disclaimer:
–No claim is made to the exclusive right to use “CHICK” apart
from the mark as shown-—

Applicant has disclaimed “CHICK” apart ?’om the mark as shown As such, the
only matter which remains is the refusal based upon the Examining Trademark
Attorney’s conclusion that the mark merely describes a desirable feature ofapplicant’s
goods. Speci?cally, the Examiner has dissected the mark concluding that the term
“RICH” is de?ned as “high seasoned or containing large amounts of choice ingredients
such as butter, sugar or eggs” while “CHICK” de?nes a “young chicken.” It is
respectfully requested that the Examining Trademark Attorney reconsider this
conclusion
It is, at the outset, noted that “RICH” has several meanings and it is this fact that
which is at odds with the refusal based upon descriptiveness ofthe composite mark RICH
TRADEMARK
Atty Docket No..: 905 .08
CHICK . The Examiner has cited one such de?nition as noted above. However,
applicant is using RICH to connote a rather “high brow” or “valuable” product playing
upon such de?nition to suggest a chicken which is extraordinary.
Pursuant to Webster ’5 New Collegiate Dictionary p. 995 (1976), RICH is de?ned
as:
57‘8″???)2“

Having abundant possessions and esp material wealth;
(3) Having high value or quality, (b) well supplied
Magni?cently impressive: sumptuous;
(a) Vivid and deep in color, (b) full in tone and quality, (0) pungent [odors]
Highly productive or remunerative;
(a) Having abundant plant nutrients [soil], (b) highly seasoned, fatty, oily or
sweet [foods], (0) high in combustible component [fuel mixture];
‘7. (a) Amusing, almost laugh able, (b) meaningful, signi?cant (allusions), (c)
lush (meadows);
8. Ordinarily pure

Again stated, there are a myriad of definitions for “rich” and it is not the usage ofthat
term as suggested by the Trademark Examining Attorney that applicant is playing upon
in seeking to register the subject trademark.
Reference is made to In Re Dial-A-Mattress Operating Corp, 57 USPQ2d 1107
(Fed. Cir 2001) in which the Federal Circuit reversed the T‘TAB’s ?nding that the mark
1-800-M-A-T -T -R-E-S-S is generic in identifying telephone shop-at—home mattress retail
services The Court took the position that the T’TAB failed to consider the commercial
impression ofthe mark as a whole rather than that derived from its elements separated
and considered in detail. Applied here, not only does RICH CHICK not de?ne a chicken
which is “highly seasoned or containing large amounts of choice ingredients such as
butter, sugar or eggs,” it is respectfully asserted that when the mark is considered as a
whole, it is not even suggestive of such goods.
The Board of Customs and Patent Appeals, predecessor to the Federal Circuit, has
held that within the meaning of Section 2 of the Lanham Act, “merely descriptive means
that the mark is gnly descriptive of the goods and services identi?ed by the mark.” Thus,
TRADEMARK
Atty Docket No..: 905 .08
in the case of In Re Colonial Stores Inc. 157 USPQ 381, CCPA (1968) the Court held
that the mark SUGAR & SPICE was not descriptive ofbakery products which it
admittedly included as ingredients sugar and spice because the mark had another
associated connotation. Applied to the present case, RICH CHICK could mean a chicken
product which has high value or quality, in a way, a cut above the ordinary.
Under Section 1207 ofthe Trademark Manual for Examining Procedure, the case
of’Ex Parte Heatube Corp, 109 USPQ 423 (Comr. Pats. 1956) sets forth basic principles
to be applied to assist in deciding whether or not a mark is merely descriptive Three
questions set forth in this case are as follows:
(a) Does the mark presented for registration used as a trademark or the name of
goods?
(b) Does the mark immediately tell the purchaser only what the goods are, or
what their function is, what their characteristics are; what their use is; or is it
likely to tell the potential purchaser that these goods and others related or
associated goods marked with the same word or words come from the same
producer?
(0) Is the word or term (or its phonetic equivalent) in common usage in the trade
or elsewhere as a description ofthe same or related goods?
As to the ?rst question, RICH CHICK cannot be considered the name of goods.
It is clearly used as a trademark. Nowhere in the record is their evidence of the mark
being used by anyone else to describe the goods. Regarding the second question, as
previously noted, the mark does not immediately tell the potential purchaser only what
the goods are or what their function is. No one viewing this mark would believe that the
product is necessarily “highly seasoned or containing large amounts ofchoice ingredients
such as butter, sugar or eggs ” The product is a raw chicken product sold at the
wholesale level. The product would never have such ingredients associated therewith.1
Finally, there is no evidence in the record that RICH CHICK is in common usage
in the trade or elsewhere as a description of‘the same or related goods

1 As a further consideration, applicant is willing to amend the identification ot’goods to indicate that the
product to be sold under the RICH CHICK mark is raw or uncooked chicken and chicken parts
TRADEMARK
Atty Docket No: 905 08
Perhaps some guidance can be derived from the case of In Re Remolds Metal
Co., 178 USPQ 296, 297 (CCPA 1973) with the following:
It is true but not fatal that [applicants’] mark is informational Because
“BAG” is obviously descriptive ofthe product and “BROWN” is
descriptive of what can happen to some food when the bag is used, the
Commissioner ’5 br‘ief’insists that the mark informs the
housewife/purchaser of’a purpose to which the bag may be put and thus is
merely descriptive ofa purpose and unregisterable One may be informed
by suggestions as well as by description” Here [applicant] is not seeking
to register the “information” that their bags may be used to brown foods
and is not seeking to register a direction such as “brown foods in this bag.”
[Applicant] seeks to register as a unitary mark, the combination of words
and hyphens which form the mark BROWN-IN— BAG.

Applied to the present situation, certainly applicant’s mark is intended to identify
certain chicken as emanating from applicant It is respectfully asserted that RICH
CHICK when used on the recited goods is much less descriptive than the mark BROWN-
lN—BAG for product intended to be used to brown foods in a bag during cooking.
Finally, if there is any doubt as to whether a mark is merely descriptive or
suggestive the matter must be resolved in favor of an ex parte applicant, Certainly, if
those in the trade or industry believe the mark to be descriptive and not register-able,
ample opportunity would be provided to them to prevent registration by virtue of the
opposition process.
For the reasons advanced above, it is respectfully asserted that the refusal to
register on the basis of Section 2(e)(1) of’the Act should be reconsidered as the mark
sought to be registered is at best suggestive of applicant’s goods and not merely
descriptive 0f’them..
Respectfully submitted,

BAY AREA TECHNOLOGY LAW GROUP PC

Dated: 6/2/2009 By: /malcolm b Wittenbergz
Malcolm Br. Wittenber’g
500 Sansome Street, Suite 404
San Francisco, CA 94111
(415) 868-4072