UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/511510

 

Search Results

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Refusal -- Mark Identifies Character

The specimen states: “SCOOBY-DOO! IN STAGEFRIGHT” such that SCOOBY-DOO is perceived as a character in the production STAGEFRIGHT. 

 

The examining attorney refuses registration because the proposed mark does not function as a service mark to identify and distinguish the applicant’s services from those of others and to indicate their source.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127; TMEP §1301.02(b).  Specifically, the proposed mark does not function as a service mark because it merely identifies a character.  In re Hechinger Investment Co. of Delaware, Inc., 24 USPQ2d 1057 (TTAB 1992); In re McDonald’s Corp., 229 USPQ 555 (TTAB 1985); In re Whataburger Systems, Inc., 209 USPQ 429 (TTAB 1980).

 

The examining attorney will reconsider this refusal if the applicant submits a substitute specimen showing use as a service mark.  TMEP §904.11.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the application filing date.  37 C.F.R. §2.59(a); TMEP §904.09.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Advisory

If the substitute specimen shows the mark without a hyphen, or with an exclamation point, the drawing must be amended to reflect such punctuation or lack of punctuation.

 

 

 

 

/Steven Fine/

Examining Attorney

Law Office 110

(703) 308-9110 ext. 124

(703) 746-8100 (fax)

ecom110@uspto.gov

 

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.