UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/626942
APPLICANT: Farrar, Sam
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: PHANTOM PLANET
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CORRESPONDENT’S REFERENCE/DOCKET NO: 005986.T001U
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/626942
The following authorities govern the processing of trademark and service mark applications: The Trademark Act, 15 U.S.C. Section 1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure (TMEP).
The assigned examining attorney has reviewed the referenced application and determined the following.
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. Section 1052(d). TMEP section 1105.01.
The specimens are acceptable for Class 25 goods and Class 41 services, however, registration is refused in Class 9, because the proposed mark, as used on the specimen of record, is the title of a single creative work, namely, the title of a specific CD and the title of a specific DVD, and thus fails to function as a trademark for such goods. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §1051, 1052 and 1127; In re Cooper, 254 F.2d 611, 117 USPQ 396 (C.C.P.A. 1958), cert. denied, 358 U.S. 840, 119 USPQ 501 (1958); In re Hal Leonard Publishing Corp., 15 USPQ2d 1574 (TTAB 1990); In re Scholastic Inc., 223 USPQ 431 (TTAB 1984); TMEP §1202.08.
Applicant is advised that the name of a series of creative works may be registrable if the designation serves to identify and distinguish the source of the goods. In re Scholastic Inc., 23 USPQ2d 1774 (TTAB 1992). Therefore, if applicant uses the mark to identify a series, rather than a single work, then applicant should provide such evidence for the record so this refusal can be withdrawn. Evidence of a series includes copies of multiple book covers or packaging for prerecorded works that show the mark as a source-identifier for the series as well as show the mark as distinguishable from the individual titles of the works.
The Trademark Trial and Appeal Board in In re Scholastic Inc., 223 USPQ 431 (TTAB 1984) and In re Posthuma, 45 USPQ2d 2011 (TTAB 1998) refers to In re Cooper, 254 F. 2d 611, 117 USPQ 396 (C.C.P.A. 1958), as the “seminal case” in this area of trademark law. In Cooper, the U.S. Court of Custom and Patent Appeals affirmed a refusal to register a mark for a single children’s book. The Court essentially held that the title of a single book, even an arbitrary title, is merely descriptive of the literary work itself “and is not associated in the public mind with the publisher, printer or bookseller” whereas “[t]he name for a series, at least while it is still being published, has a trademark function in indicating that each book of the series comes from the same source as the others.” In re Cooper, 117 USPQ at 400.
Registration is refused for Class 16 goods, because the proposed mark, as used on the specimen of record, does not function as a trademark to indicate the source of the identified goods. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; In re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987); TMEP §§1202 et seq.
The specimen consists of what appears to be a poster or an advertising flyer with the title of the musical group appearing on it. The mark does not function as a trademark on the specimen because consumers would not regard the mark as a source indicator for the posters. Moreover, advertising flyers are not considered goods in trade.
The specimen of record, along with any other relevant evidence submitted with the application, is reviewed and analyzed in order to determine whether a term is being properly used as a trademark. In re Bose Corp., 546 F.2d 893, 192 USPQ 213 (C.C.P.A. 1976); In re Volvo Cars of North America, 46 USPQ2d 1455 (TTAB 1998). Not all words, designs, symbols or slogans used in the sale or advertising of goods or services function as marks, even if they may have been adopted with the intent to do so. A designation cannot be registered unless ordinary purchasers would regard it as a source-indicator for the goods. In re Manco, Inc., 24 USPQ2d 1938 (TTAB 1992); TMEP §§1202 et seq.
This refusal will be withdrawn if applicant submits both (1) a substitute specimen showing use as a trademark, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the application filing date,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a); TMEP §904.09.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/AMY GEARIN/
Trademark Attorney
Law Office 115
United States Patent and Trademark Office
571-272-9473
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.