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  77/115807

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

Search of the Office Records

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.

False Connection – Refusal to Register

Registration is refused because the proposed mark consists of or comprises matter which may falsely suggest a connection with the famous 50s television show, “The Howdy Doody Show,” and the puppet named Howdy Doody, a popular cultural icon which appeared on that show.  Although not connected with the goods or services applicant provides under the proposed mark, Howdy Doody and “The Howdy Doody Show” are so famous that consumers would presume a connection.  Trademark Act Section 2(a), 15 U.S.C. §1052(a); TMEP §§1203.03, 1203.03(e) and 1203.03(f); See generally University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990); University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986); In re Cotter & Co., 228 USPQ 202 (TTAB 1985); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985).

The following is required for a showing of false connection under Section 2(a):

·        the mark sought to be registered is the same as or a close approximation of the name or identity of a person or institution;

·        the mark would be recognized as such;

·        the person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark; and

·        the fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods or services.

In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990); In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985); Buffett v. Chi‑Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985).

In this case, applicant has applied for the mark “HOWDY DOODY” for “Action figures and accessories, stuffed toy characters, plush toy characters; bobble head toy figures, bobble head action figures action games; action playsets; aerodynamic flying discs for playing toss-type game; amusement park rides; arcade games; audio/visual toy projectors and accessories; balloons; barbells; baseball and softball bats; bath toys; battery operated action toys; beach balls; beach toys; bean bags; bendable toys; board games made of paper; board games made of cardboard; board games made of metal and/or plastic; board games adaptable to mechanical apparatus and applications; card games; cases for action figures; cases for toy structures; cases for toy vehicles; children’s play cosmetics; Christmas decorations; Christmas tree ornaments; coin-operated video games; collectable and positionable toy figures; construction toys; costumes; costume masks; craft sets for decorating balloons; crib activity toys namely mobiles and clutch ball; dart games; dice; disc toss toys; dolls and doll accessories; dumbbells; electric action toys; electric plastic toy figurines; electrical, mechanical and battery operated action toys; electronic action skill games; electronic dart games; electronic pinball games; equipment sold as a unit for playing a board game and puzzles; equipment sold as a unit for playing a video game; fantasy character toys; foot pumps; games which can be played by one person and fit into that person’s hand while being played; gum figure makers; gum machines; hand grips; hand held games; hand held units for playing action skill games; hand held non electronic games; hand held units for playing electronic games; helmets; hi-bounce balls; infant toys; inflatable boats; inflatable pool toys; inflatable swimming pools; inflatable mattresses; inflatable toys; in-line skates; inner tubes; jet skis; jigsaw puzzles; kites, kite strings, kite tails, kite reels, kite lines, kite parts, and kite handles; manipulative and cube puzzles; manipulative games; face masks; mechanical and electronic action toys; milk cap games; model plastic toy figurines; musical toys; music box toys; non electronic pinball games; non electronic arcade games; non-riding transportation toys; packaged amusement and educational toys in the nature of board games; parlor games; party favors in the nature of crackers and noisemakers; pillow-back lounge chairs; plastic character toys; play figures; playsets for action figures; playsets for toy vehicles; plush toys; pop up toys; printing toys; protective pads and padding for skateboarding, in-line skating, and roller skating; pinball machines; pull toys; punching toys; puppets; puzzles; rafts; ride-on toys; role playing games; roller skates; rubber character toys; sand toys; scooters; skateboards; soft sculpture toys; spinning tops game; sports balls; squeezable squeaking toys; stand alone video game machines; stuffed toys; surfboards; swim fins; swim goggles; table top action skill games related to wrestling; three wheel cycle for use by children; toy action figures; toy action figure accessories; toy banks; toy belts; toy boxes; toy building blocks and connecting links for the same; toy candy dispensers and holders; toy championship belts; toy film cartridges and viewers therefor; toy figures; toy foam weapons; toy miniature dolls; toy model hobby craft kits; toy model vehicles and related accessories therefor sold as units; toy modeling compound and accessories; toy musical instruments; toy paint sets; toy pedal cars; toy playsets; toy snow globes; toy stuffed figures; toy vehicles; toy vehicles made of non-precious metals; toy watches; toy weapons; toy wrestling gear sets; trampolines; vinyl pool products for playing; water squirting toys; wind-up toys; workout sets comprising exercise equipment; yo-yos.”  The mark sought to be registered identifies the same name as the famous 50s television show, “The Howdy Doody Show,” and the famous marionette, Howdy Doody, which appeared and was the star of that nationally televised children’s program.  Please see the attached Internet website evidence which clearly shows that the puppet, Howdy Doody, and the show on which he appeared, “The Howdy Doody Show,” are so famous that the proposed mark would be recognized as such.  Further, the attached evidence shows that the “Rogar Studios, Inc.,” set forth as the applicant of the proposed mark, is a company that constitutes what appears to be a different entertainment marketing and production company, which is not connected with Howdy Doody or “The Howdy Doody Show” and provides services and goods that range from toy and character development to animation, video, television, film and live stage production.  Please see the attached Internet website evidence.  Where applicant’s goods or services are of a type that the named person or institution sells or uses such goods or services, and the named party is sufficiently famous, then it may be inferred that purchasers of the goods or services would be misled into making a false connection of sponsorship, approval, support or the like with the named party.  In re Cotter & Co., 228 USPQ 202 (TTAB 1985); In re National Intelligence Academy, 190 USPQ 570 (TTAB 1976).  Accordingly, as the proposed mark may suggest a connection with Howdy Doody and “The Howdy Doody Show,” registration is refused under Trademark Act Section 2(a) based on false connection.

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

If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirements.

Identification and Classification of Goods

The wording “accessories, Christmas decorations, costumes, foot pumps, helmets, inflatable boats, inflatable mattresses, inner tubes, pillow-back lounge chairs, scooters, toy modeling compound and accessories, toy wrestling gear sets” in the identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes.  TMEP §§1402.01 and 1402.03.  For example, “Masquerade costumes” is classified in Class25; whereas, “Costume masks” is classified in Class 28. 

Further, the wording “action games, dart games, games which can be played by one person and fit into that person's hand while being played, gum figure makers; gum machines; hand grips, hand held games; hand held units for playing action skill games; hand held non electronic games, hi-bounce balls, milk cap games, protective pads and padding for skateboarding, in-line skating, and roller skating, toy playsets, vinyl pool products for playing” in the identification of goods is indefinite and must be clarified because applicant must provide more specificity regarding the nature, type or common commercial name of the goods for which applicant is applying.  TMEP §1402.01.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. 

Further, the word “kit” and “set” in the identification of goods “toy model hobby craft kits,” “toy wrestling gear sets” and “workout sets comprising exercise equipment” is indefinite and must be clarified to include a description of both the major components of the kit and set and the main purpose of the kit and set.  Classification of these goods is determined by the primary components of the kit.  TMEP §§1401.05, 1402.01 and 1402.03.

Moreover, the goods “equipment sold as a unit for playing a video game” and “swim goggles;” and “three wheel cycle for use by children,” “jet skis,” and “rafts” are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 9 and 12, respectively.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

In addition, the wording “jet skis” in the identification of goods is a registered mark not owned by applicant.  See enclosed copy of U.S. Registration No(s). 1394547.  In its own application, an applicant may use its own registered mark in an identification of goods or services, but may not use a registered mark owned by another party.  A registered mark indicates origin in one party and cannot be used to define goods or services that originate in a party other than the registrant.  See Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958); TMEP §1402.09.

Therefore, applicant must amend the identification of goods by deleting the wording “jet skis” and substituting the common commercial or generic name for the goods. 

Applicant may substitute the following wording, if accurate: 

International Class 009:  equipment sold as a unit for playing a video game, namely, {specify type, e.g., Joysticks for video games}; swim goggles

International Class 012:  rafts {otherwise if “life saving rafts” will need to be classified in Class 9}; personal watercraft, namely, {specify type, e.g., small powerboats, personal jet boats, water scooters; three wheel cycle for use by children, namely, tricycles

International Class 028:  Action figures and accessories therefor, stuffed toy characters, plush toy characters; bobble head toy figures, bobble head action figures, action skill games; action playsets for {specify use}; aerodynamic flying discs for playing toss-type game; amusement park rides; arcade games; audio/visual toy projectors and accessories therefor; balloons; barbells; baseball and softball bats; bath toys; battery operated action toys; beach balls; beach toys; bean bags; bendable toys; board games made of paper; board games made of cardboard; board games made of metal and/or plastic; board games adaptable to mechanical apparatus and applications; card games; cases for action figures; cases for toy structures; cases for toy vehicles; children's play cosmetics; Christmas decorations, namely {specify type, e.g., Christmas tree decorations}; Christmas tree ornaments; coin-operated video games; collectable and positionable toy figures; construction toys; costumes, namely {specify type, e.g. “doll costumes” or “costume masks”, otherwise other types of costumes would be classified in Class 25, e.g., “masquerade costumes”}; costume masks; craft sets for decorating balloons; crib activity toys namely mobiles and clutch ball; dart games, namely {specify type, e.g., darts or electronic dart games}; dice; disc toss toys; dolls and doll accessories; dumbbells; electric action toys; electric plastic toy figurines; electrical, mechanical and battery operated action toys; electronic action skill games; electronic dart games; electronic pinball games; equipment sold as a unit for playing a board game and puzzles; equipment sold as a unit for playing a video game; fantasy character toys; foot pumps for inflating sports equipment, namely, {indicate use, e.g., basketballs, footballs}; games which can be played by one person and fit into that person's hand while being played, namely, {specify type, e.g., Hand held unit for playing video games}; toy gum figure makers; toy gum machines; hand grips for {specify type, e.g, hand grips for golf clubs}; hand held games, namely, {specify type, e.g., Hand held unit for playing electronic games}; hand held units for playing action skill video games; hand held non electronic games, namely {specify type, e.g., Paddle ball games}; hand held units for playing electronic games; miniature toy helmets {otherwise other types of helmets will need to be classified in Class 9}; hi-bounce balls, namely, rubber balls; infant toys; inflatable toy boats; inflatable pool toys; inflatable swimming pools; inflatable mattresses for recreational use; inflatable toys; in-line skates; inflatable inner tubes for aquatic recreational use; jet skis; jigsaw puzzles; kites, kite strings, kite tails, kite reels, kite lines, kite parts, and kite handles; manipulative and cube puzzles; manipulative games; face masks; mechanical and electronic action toys; milk cap games {specify common commercial name}; model plastic toy figurines; musical toys; music box toys; non electronic pinball games; non electronic arcade games; non-riding transportation toys; packaged amusement and educational toys in the nature of board games; parlor games; party favors in the nature of crackers and noisemakers; floating recreational lounge chairs, namely, pillow-back lounge chairs {otherwise other types of lounge chairs will need to be classified in Class 20}; plastic character toys; play figures; playsets for action figures; playsets for toy vehicles; plush toys; pop up toys; printing toys; athletic protective pads and padding for skateboarding, in-line skating, and roller skating; pinball machines; pull toys; punching toys; puppets; puzzles; rafts; ride-on toys; role playing games; roller skates; rubber character toys; sand toys; toy scooters; skateboards; soft sculpture toys; spinning tops game; sports balls; squeezable squeaking toys; stand alone video game machines; stuffed toys; surfboards; swim fins; swim goggles; table top action skill games related to wrestling; three wheel cycle for use by children; toy action figures; toy action figure accessories; toy banks; toy belts; toy boxes; toy building blocks and connecting links for the same; toy candy dispensers and holders; toy championship belts; toy film cartridges and viewers therefor; toy figures; toy foam weapons; toy miniature dolls; toy model hobby craft kits comprising {indicate primary components or item to be made}; toy model vehicles and related accessories therefor sold as units; toy modeling compound, namely toy modeling dough {otherwise other types will need to be classified in Class 16} and accessories, namely, {specify type of accessory}; toy musical instruments; toy paint sets; toy pedal cars; toy playsets for {specify use}; toy snow globes; toy stuffed action figures; toy vehicles; toy vehicles made of non-precious metals; toy watches; toy weapons; toy wrestling gear sets comprising of athletic equipment, namely, guards for {indicate specific type and purpose, e.g., the mouth, the nose, the chin}; trampolines; vinyl pool products for playing, namely {specify type, e.g., inflatable toys}; water squirting toys; wind-up toys; workout sets comprising exercise equipment in the nature of {specify type of exercise equipment, e.g., chest pulls}; yo-yos

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

Requirements for Combined Application

If applicant prosecutes this application as a combined, or multiple-class application, applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order; and

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov). 

37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

The filing fee for adding classes to an application is as follows:

(1)     $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

(2)     $375 per class, when the fees are submitted with a paper response. 

37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

Ebeyer

/Elizabeth L. Beyer/

Trademark Attorney

Law Office 102

(571) 272-5490

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

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.