| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 76682873 |
| LAW OFFICE ASSIGNED | LAW OFFICE 111 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
In the Office Action with a mailing date of June 30, 2009, the Examining Attorney refused registration of the mark "GET TOUGH" pursuant to Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127, stating that the applied-for mark is merely a decorative or ornamental feature of the goods in Classes 14 and 25, and does not function as a trademark to identify and distinguish Applicant's goods from those of others. In addition, the Examining Attorney advises that the specimen of use submitted in support of Class 41 is unacceptable. Pursuant to the telephone conversation between the undersigned attorney, Jason Kotzker, and the Examining Attorney, the refusal based on the unacceptable nature of the Class 41 specimen has been withdrawn and thus no response from the Applicant is required regarding this matter. With respect to the ornamental refusal of Classes 14 and 25, Applicant submits that while the mark "GET TOUGH" serves as an ornamental feature of the goods, it is also an identifier of secondary source and thus is registrable on the Principal Register. See TMEP Section 1202.03(c). It is well settled that matter which serves as part of the aesthetic ornamentation of goods may nevertheless be registered as a trademark for such goods if it also serves a source-indicating function. See In re Astro-Gods Inc., 223 U.S.P.Q. 621 (TTAB 1984), citing In re Olin Corp., 181 U.S.P.Q. 182 (TTAB 1973). According to TMEP Section 1202.03(c), to show that a proposed mark, which is used on goods in an ornamental manner, also serves a source-indicating function, the Applicant may submit evidence that the proposed mark would be recognized as a mark through its use with goods other than those identified in the application. Evidence of this secondary source may be shown by the Applicant in: (1) ownership of a U.S. registration on the Principal Register of the same mark for other goods or services based on use in commerce under §1 of the Trademark Act, or (2) non-ornamental use of the mark in commerce on other goods or services. TMEP § 1202.03(c). If the Applicant establishes that the proposed mark serves as an identifier of a secondary source, the mark is registrable on the Principal Register. Id. In In re Olin Corp, the applicant sought registration of a stylized "O" design, which was applied to the front of t-shirts. The applicant had previously obtained a U.S. registration for the identical mark for skis. In reversing the refusal of registration, the Board stated that "[t]he 'ornamentation' of a T-shirt can be of a special nature which inherently tells the purchasing public the source of T-shirt, not the source of manufacture but the secondary source." Id at 182. In a subsequent case, the Board reached the same conclusion with respect to the source-identifying function of an ornamental design in reversing a refusal to allow registration of "MORK & MINDY" as a trademark for decals. See In re Paramount Pictures Corp., 213 U.S.P.Q. 1111 (TTAB 1982). In In re Paramount, the Board concluded that the mark "MORK & MINDY", while "certainly part of the ornamentation of the decal, also indicate[s] source or origin in the proprietor of the Mork & Mindy television series." Id. at *10. In the instant matter, much as the stylized "O" in Olin and "MORK & MINDY" in Paramount, the Applicant's specimens show use of the mark on a hat and on a pin in an ornamental, but also source-identifying manner. Applicant is the owner of U.S. Registration No. 3583328 for "GET TOUGH" for bar services. A copy of this U.S. Registration is attached as Exhibit 1. As such, Applicant is the owner of a registration for the same mark for other services. In addition, the Applicant uses the "GET TOUGH" mark to promote other services in a non-ornamental manner. Specifically, Applicant uses "GET TOUGH" to promote its events and on printed matter. Applicant submits as Exhibit 2 evidence of use of the "GET TOUGH" mark on its media guide. These non-ornamental uses, which have been accepted by the USPTO evidence that the mark "GET TOUGH" is used and recognized by the consuming public as a source identifier. In sum, the Applicant has shown that the mark "GET TOUGH" serves as a source identifier for the goods in Classes 14 and 25. Moreover, Applicant has shown use of the "GET TOUGH" mark on goods and services outside of those goods in Classes 14 and 25 as well as ownership of U.S. Registration No. 3583328 for "GET TOUGH" for bar services such that registration of the "GET TOUGH" mark in Classes 14 and 25 is proper. It is now believed that the case is in condition for registration and such action is hereby respectfully submitted. If the Examining Attorney has any questions, please contact the undersigned at 303-863-9700. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_63254254122-143458097_._Reg_Certificate.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT8\IMAGEOUT8\766\828\76682873\xml2\ROA0002.JPG |
| ORIGINAL PDF FILE | evi_1-63254254122-143458097_._Class_16_Media_Guide.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT8\IMAGEOUT8\766\828\76682873\xml2\ROA0003.JPG |
| DESCRIPTION OF EVIDENCE FILE | Exhibits 1 and 2 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Jason A. Kotzker/ |
| SIGNATORY'S NAME | Jason A. Kotzker |
| SIGNATORY'S POSITION | Attorney of record, New York bar member |
| DATE SIGNED | 11/23/2009 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Nov 23 14:43:23 EST 2009 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20091123144323444719-7668 2873-46020b87fb3e84859640 dc3faca8339135-N/A-N/A-20 091123143458097032 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
In the Office Action with a mailing date of June 30, 2009, the Examining Attorney refused registration of the mark "GET TOUGH" pursuant to Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127, stating that the applied-for mark is merely a decorative or ornamental feature of the goods in Classes 14 and 25, and does not function as a trademark to identify and distinguish Applicant's goods from those of others. In addition, the Examining Attorney advises that the specimen of use submitted in support of Class 41 is unacceptable. Pursuant to the telephone conversation between the undersigned attorney, Jason Kotzker, and the Examining Attorney, the refusal based on the unacceptable nature of the Class 41 specimen has been withdrawn and thus no response from the Applicant is required regarding this matter. With respect to the ornamental refusal of Classes 14 and 25, Applicant submits that while the mark "GET TOUGH" serves as an ornamental feature of the goods, it is also an identifier of secondary source and thus is registrable on the Principal Register. See TMEP Section 1202.03(c).
It is well settled that matter which serves as part of the aesthetic ornamentation of goods may nevertheless be registered as a trademark for such goods if it also serves a source-indicating function. See In re Astro-Gods Inc., 223 U.S.P.Q. 621 (TTAB 1984), citing In re Olin Corp., 181 U.S.P.Q. 182 (TTAB 1973). According to TMEP Section 1202.03(c), to show that a proposed mark, which is used on goods in an ornamental manner, also serves a source-indicating function, the Applicant may submit evidence that the proposed mark would be recognized as a mark through its use with goods other than those identified in the application. Evidence of this secondary source may be shown by the Applicant in: (1) ownership of a U.S. registration on the Principal Register of the same mark for other goods or services based on use in commerce under §1 of the Trademark Act, or (2) non-ornamental use of the mark in commerce on other goods or services. TMEP § 1202.03(c). If the Applicant establishes that the proposed mark serves as an identifier of a secondary source, the mark is registrable on the Principal Register. Id. In In re Olin Corp, the applicant sought registration of a stylized "O" design, which was applied to the front of t-shirts. The applicant had previously obtained a U.S. registration for the identical mark for skis. In reversing the refusal of registration, the Board stated that "[t]he 'ornamentation' of a T-shirt can be of a special nature which inherently tells the purchasing public the source of T-shirt, not the source of manufacture but the secondary source." Id at 182.
In a subsequent case, the Board reached the same conclusion with respect to the source-identifying function of an ornamental design in reversing a refusal to allow registration of "MORK & MINDY" as a trademark for decals. See In re Paramount Pictures Corp., 213 U.S.P.Q. 1111 (TTAB 1982). In In re Paramount, the Board concluded that the mark "MORK & MINDY", while "certainly part of the ornamentation of the decal, also indicate[s] source or origin in the proprietor of the Mork & Mindy television series." Id. at *10. In the instant matter, much as the stylized "O" in Olin and "MORK & MINDY" in Paramount, the Applicant's specimens show use of the mark on a hat and on a pin in an ornamental, but also source-identifying manner.
Applicant is the owner of U.S. Registration No. 3583328 for "GET TOUGH" for bar services. A copy of this U.S. Registration is attached as Exhibit 1. As such, Applicant is the owner of a registration for the same mark for other services. In addition, the Applicant uses the "GET TOUGH" mark to promote other services in a non-ornamental manner. Specifically, Applicant uses "GET TOUGH" to promote its events and on printed matter. Applicant submits as Exhibit 2 evidence of use of the "GET TOUGH" mark on its media guide. These non-ornamental uses, which have been accepted by the USPTO evidence that the mark "GET TOUGH" is used and recognized by the consuming public as a source identifier.
In sum, the Applicant has shown that the mark "GET TOUGH" serves as a source identifier for the goods in Classes 14 and 25. Moreover, Applicant has shown use of the "GET TOUGH" mark on goods and services outside of those goods in Classes 14 and 25 as well as ownership of U.S. Registration No. 3583328 for "GET TOUGH" for bar services such that registration of the "GET TOUGH" mark in Classes 14 and 25 is proper. It is now believed that the case is in condition for registration and such action is hereby respectfully submitted. If the Examining Attorney has any questions, please contact the undersigned at 303-863-9700.
