Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/640936

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

No Conflicting Marks

 

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

 

Title of a Single Creative Work

Registration is refused 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 book, 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.

 

The applicant seeks registration of “BEST BEHAVIOR” for use with “Printed publications, namely, books and training manuals on the topic of building positive behavior support in schools for kindergarten through grade twelve.”  In this case, there is no trademark use.  The mark appears in large lettering on the book, and covers the major portion of the cover

 

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.

 

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.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

/Brian Neville/

Trademark Examining Attorney

Law Office 114

(571) 272 - 9203

 

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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.