UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 7/27/2008

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on July 1, 2008.

 

For the reasons set forth below, the refusal is now made FINAL under Trademark Act Sections 1, 2 and 45 for failure to function as a trademark as used on the specimen of record.  See 15 U.S.C. §§1051, 1052, 1127; 37 C.F.R. §2.64(a).

 

Final Refusal:  Title of a Single Work

The refusal to register the applicant’s mark because the applied-for mark, as used on the specimen of record, is used only as a portion of a title of a single creative work and does not function as a trademark is maintained and made FINAL.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127. 

 

The title of a single creative work is not registrable on either the Principal or Supplemental Register. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) ("the title of a single book cannot serve as a source identifier"); In re Cooper, 254 F.2d 611, 615-16, 117 USPQ 396, 400 (C.C.P.A. 1958), cert. denied, 358 U.S. 840, 119 USPQ 501 (1958) ("A book title ... identifies a specific literary work ... and is not associated in the public mind with the publisher, printer or bookseller...."); In re Posthuma, 45 USPQ2d 2011 (TTAB 1998) (title of a live theater production held unregistrable); In re Hal Leonard Publishing Corp., 15 USPQ2d 1574 (TTAB 1990) (INSTANT KEYBOARD, as used on music instruction books, found unregistrable as the title of a single work); In re Appleby, 159 USPQ 126 (TTAB 1968) (title of single phonograph record, as distinguished from a series, does not function as mark).  Single creative works include works in which the content does not change significantly, whether that work is in printed, recorded or electronic form.  TMEP §1202.08(a).

 

The applicant argues the refusal should be withdrawn because the proposed mark CONKER is recognized by consumers as referring to the applicant’s computer game software.  However, a showing of secondary source is not sufficient to overcome the single work refusal.  Whether consumers recognize the applicant as the source of other goods or services is not relevant to whether the proposed mark as used in the present case is the title of a single work, or a portion thereof.  The applicant has not submitted any evidence that the mark is used on a series of creative works.  As indicated above, the title of a single creative work is not registrable on either the Principal or Supplemental Register, regardless of whether the same mark is used to identify the applicant’s other goods and services.

 

For the reasons discussed above, the refusal to register the applicant’s mark under Trademark Act Sections 1, 2, and 45 is maintained and made FINAL.

 

Applicant may respond to this refusal by submitting evidence that the applied-for mark (1) is used on a series of creative works, (2) creates a separate commercial impression apart from the complete title, and (3) is promoted or recognized as a mark for the series.  See In re Scholastic, 23 USPQ2d at 1776-78; TMEP §§1202.08(d) et seq.

 

Evidence of a series includes copies of at least two different book covers (not two copies of the same work), with the mark used in all the titles.  TMEP §1202.08(d)(ii).  Evidence that a portion of a title is promoted or recognized as a mark for a series includes advertising that promotes that portion of the title as the source of the series, third-party reviews showing use of that portion of the title by others to refer to the series, and/or declarations from publishers, retailers, purchasers or readers showing recognition of that portion of the title as an indicator of the source of a series of written works.  See In re Scholastic, 23 USPQ2d at 1776-78; TMEP §1202.08(d)(iii).

 

Applicant may not withdraw the statement of use.  37 C.F.R. §2.88(g); TMEP §1109.17.

Response

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

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

 

 

 

/Kimberly Frye/

Trademark Examining Attorney

Law Office 113

(571) 272-9430 (phone)

(571) 273-9430 (fax)

 

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 7/27/2008 FOR

APPLICATION SERIAL NO. 78534544

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=78534544&doc_type=OOA&mail_date=20080727 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 7/27/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.