UNITED STATES PATENT AND TRADEMARK OFFICE
| | PAPER NO. |
| MAT 09/22/03 09/22/03 Rev. No. 1 | ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 www.uspto.gov If no fees are enclosed, the address should include the words "Box Responses - No Fee." |
| | Please provide in all correspondence: 1. Filing Date, serial number, mark and Applicant's name. 2. Mailing date of this Office action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and ZIP code. |
A PROPER RESPONSE TO THIS OFFICE ACTION MUST BE RECEIVED WITHIN 6 MONTHS FROM THE DATE OF THIS ACTION IN ORDER TO AVOID ABANDONMENT. For your convenience and to ensure proper handling of your response, a label has been enclosed. Please attach it to the upper right corner of your response. If the label is not enclosed, print or type the Trademark Law Office No., Serial No., and Mark in the upper right corner of your response.
Serial Number: 76/149869
This letter is in response to the communication received from applicant on June 16, 2003.
Applicant has (1) entered a description of the mark; (2) submitted a specimen of the mark; and (3) has traversed the refusal under Section 2(a) of the Act. The description of the mark is acceptable and has been entered in the record. However, the refusal under Section 2(a) and the requirement for an acceptable specimen is continued and now made FINAL.
Final Refusal Under Section 2(a)
Section 2(a) of the Trademark Act provides that no trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 2(9) of the Uruguay Round Agreements Act) enters into force with respect to the United States. 15 U.S.C. §1052.
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), bars the registration of any mark that consists of or comprises matter which, with regard to persons, institutions, beliefs, or national symbols, does any of the following: (1) disparages them, (2) falsely suggests a connection with them, (3) brings them into contempt, or (4) brings them into disrepute.
This provision bars the registration of such marks on both the Principal Register and, pursuant to §23(a), 15 U.S.C. §1091(a), the Supplemental Register.
The test for determining the propriety of a refusal to register based on Section 2(a) has four elements: (1) the mark (or part of it) must be shown to be the same as or a close approximation of the person’s previously used name of identity; (2) the mark would be recognized as such (i.e., the mark points uniquely to that person; (3) the person in question is not connected with the goods or services of the applicant; and (4) the person’s name or identity must be of sufficient fame that when it is used as part or all of the mark on applicant’s goods or services, a connection with that person would be presumed by someone considering purchasing the goods or services. Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985).
(1) The mark must be the same or close approximation of the person’s previously used name or identity.
Applicant’s mark is a fanciful representation of nude female in a posing position with the words SURPRISE ATTACK. The commercial impression is that of a morale-boosting pinup similar to those used in World War II as nose art which were created by Gil Elvgren. Nose art is artwork used on the nose of an aircraft by servicemen in World War II. A review of the attached evidence shows a strong similarity between applicant’s mark and the artwork of Gil Elvgren.
(2) The mark would be recognized as such (i.e., the mark points uniquely to that person).
Prospective purchasers of applicant’s goods will recognize the image in the mark as one of Gil Elvgren. Such recognition is implicit in applicant’s web site which states that its designs were modeled after the images by Gil Elvgren. Note the enclosed copy of Double Exposure from www.mutoworld.com as well as numerous articles from www.altavista.com and Gil Elvgren’s fame as a pinup artist. All of this evidence was included in the prior office action.
Applicant argues that Gil Elvgren is dead; that his estate is estopped from taking action; and that he never applied for trademark protection. Section 2(a) extends protection to persons “living or dead.” Appropriation of one’s “name, likeness, achievements, identifying characteristics or actual performances” is protected. Carson et al. V. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831, 218 USPQ 1 (6th Cir. 1983). A party’s interest in such name or designation does not depend for its existence on the adoption and use of a technical trademark. University of Notre Dame de Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), aff’g 213 USPQ 594 (TTAB 1982).
(3) The person in question is not connected with the goods or services of the applicant.
Applicant has stated in its response that it has no connection with Gil Elvgren. Applicant also states “No attempt is made to associate with Mr. Elvgren by the Museum (Applicant) by use of this image and phrase.
(4) The person’s name or identity must be of sufficient fame that when it is used as part or all of the mark on applicant’s goods or services, a connection with that person would be presumed by someone considering purchasing the goods or services.
Gil Elvgren (1914–1980) was one of the most important pin-up and glamour artists of the twentieth century. During his professional career, which began in the mid 1930s and lasted more than forty years, he established himself as the clear favorite of pin-up collectors and fans worldwide. Thus, part of Elvgren’s fame is undoubtedly due to his now legendary series of pin-ups painted over a period of thirty years for Brown and Bigelow, calendar publishers of St. Paul, Minnesota.
Immediately after the bombing of Pearl Harbor, General Electric asked Elvgren to do some national advertising work for their War Effort campaign. His first ad painting for the company, published in June 1942 as a full page in Good Housekeeping, carried the caption “She Knows What Freedom Really Means” and depicted a proud Elvgren Girl dressed in an officer’s uniform of the Red Cross Motor Corps. By the time the US had become involved in the war, Elvgren had already had his pin-ups published and reproduced on millions of advertising specialty products and, of course, on calendars of all sizes and shapes. With the need to encourage the troops, the Louis F. Dow Company very smartly repackaged some of the special twelve-print Elvgren pin-up booklets so that they could be easily mailed without an envelope from the United States to GIs fighting abroad. These were a smashing success. See the enclosed article entitled “The Art and Life of Gil Elvgren” by Charles G. Martingnette.
Newspapers and magazines of the period were filled with stories about the soldiers who were abroad fighting the war, for it would be hard to find an American who did not have a neighbor or loved one in the armed services. Often focusing on the morale of the troops, such stories would be illustrated with snapshots of the soldiers in their barracks or tents or perhaps even in a battlefield trench during a lull in the fighting. Quite often, one can spot Elvgren’s Louis F. Dow pin-up prints and booklets hanging on a wall, glued to a knapsack, or clutched by a young, obviously lonely soldier. Elvgren’s accomplishment is all the more amazing in that he had attained such popularity within five years of opening his first studio. No doubt his art had met with such a response from the American public because it offered escape from reality, and even solace, during the dark days of the war. See the enclosed article entitled “The Art and Life of Gil Elvgren” by Charles G. Martingnette.
Throughout the 1940’s and 1950’s Elvgren continued to produce pinup art. In 1963 Elvgren was honored with the publication of a unique deck of playing cards entitled American Beauties (or sometimes Top Hat). Licenced by Brown and Bigelow, this deck was the first ever to contain reproductions of fifty-three different Elvgren pin-up images, as compared to previous decks which illustrated merely one Elvgren Girl. Elvgren was the only Brown and Bigelow artist ever to be so honored; the only other pin-up artist to have a fifty-three-image deck produced was Alberto Vargas. The Elvgren deck far surpassed the Vargas deck in every respect, and it proved a huge success. Elvgren’s pictures are narrative, entertaining and lively, whereas Vargas’s lacked backgrounds, situations and any substantial life. See the enclosed article entitled “The Art and Life of Gil Elvgren” by Charles G. Martingnette.
Gil Elvgren’s achievements made him famous which means his identity through his achievements has a pecuniary value. It is this fame and pecuniary value which applicant is creating a false connection.
Specimen of Use
Specimens of use are not required in an Intent to Use application until an allegation of use is filed. Accordingly, the specimens filed will not be reviewed at this time.
Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board. 37 C.F.R. Section 2.64(a). If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned. 37 C.F.R. Section 2.65(a).
/Margery A. Tierney/
Examining Attorney, Law Office 111
703-536-5277
fax: (703)746-6402