UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

 

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  78/616536

 

Amendment to Allege Use is Acceptable

 

This letter is to inform you that the amendment to allege use filed October 18, 2006 is acceptable, so the application can be amended to the Supplemental Register.

 

Amendment to Supplemental Register Suggested

 

Although the trademark examining attorney has refused registration on the Principal Register, applicant may respond to the stated refusal under Section 2(e)(1) by amending the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.

 

 

Applicant has six months from the date of the 6/19/06 final refusal to:

 

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

 

Continued FINAL REFUAL - Section 2(e)(1) - Descriptiveness

Registration was refused because the proposed mark merely describes a feature of applicant’s goods, which feature subject matter in the field of the supernatural.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq   The examining attorney has carefully considered the applicant’s arguments, but is not persuaded.  Therefore, the descriptiveness refusal is continued and made FINAL.

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).

The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).  TMEP §1209.01(b). 

SUPERNATURAL is defined as:

 

su·per·nat·u·ral (s¡´per-nàch¹er-el) adjective

1.                               Of or relating to existence outside the natural world.[1][1][1]

 

The proposed mark is SUPERNATURAL for, as amended in the amendment to allege use,

 Motion picture films featuring comedy, drama, action, adventure and/or animation, and motion picture films for broadcast on television featuring comedy, drama, action,adventure and/or animation; audio tapes, audio-video tapes, audio video cassettes, audio video discs, and digital versatile discs featuring music, comedy, drama, action, adventure,and/or animation, in Class 9.

The goods feature subject matter relating to the supernatural.  The show’s theme is brothers who encounter the supernatural.  When viewed in relation to the goods, the descriptiveness of the proposed mark is immediately apparent.  A website describes the supernatural theme of the show contained on the goods:

Crisscrossing the lonely and mysterious back roads of the country in their `67 Chevy Impala, the Winchester brothers search desperately for their missing father – and hunt down every evil supernatural force they encounter along the way. (emphasis added)

http://www.wb16.com.

 

See attachment to Office action no. 1.

 

The applicant’s overview of the Supernatural show states:

 

The WB has a long tradition of interweaving character dramas and the world of the supernatural, beginning with Buffy The Vampire Slayer and continuing with hits like Smallville and Charmed... This fall, The WB will take viewers on a completely new kind of thrill ride - a journey into the dark world of the unexplained that will deliver the terror of films like The Ring and The Grudge…

 

Bound by tragedy and blood to their dangerous, other-worldly mission, the brothers travel from the Colorado wilderness to Nebraska farmlands and on to isolated Wisconsin lakes, encountering creatures that most people believe only exist in folklore, superstition and nightmares - the terrifying Bloody Mary, the brutal Native American beast known as the Wendigo, the man with a hook who haunts Lovers' Lanes and the dark Phantom Travelers who portend a violent plane crash. As they follow the clues in their father's journal, the brothers realize that he has passed on to them all the knowledge he accumulated during the past 20 years. What they can't understand is why he has vanished and left them to carry on without him. Taking up the mantle of their father's crusade, Dean and Sam hunt down the evil that preys upon the innocent in the darkest corners of America.

Crisscrossing the lonely and mysterious back roads of the country in their '67 Chevy Impala, the Winchester brothers search desperately for their missing father - and hunt down every evil supernatural force they encounter along the way.

(emphasis added)

 

http://thewb.warnerbros.com/web/show_overview.jsp?id=SN

 

See attachment to Office action no.1.

The applicant admits that “the SUPERNATURAL television series covers other wordly events.”  Applicant’s response filed May 24, 2006, page 4.  However, the applicant argues that the primary theme of the series is family relationships.  The applicant states that “the occult happenings are but a backdrop to the kids’ ongoing search for family” and states that “the occult aspect of the SUPERNATURAL series is but a minor part of its overall theme of relationships and the importance of family.”  Id.

However, it is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods to be merely descriptive.  It is enough if the term describes one attribute of the goods.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).  TMEP §1209.01(b). 

It is settled that "the question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them." In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American Greetings Corporation, 226 USPQ 365 (TTAB 1985).  In viewing the term SUPERNATURAL in relation to goods in which the main characters have an other-worldly mission, encounter creatures that most people believe only exist in folklore, superstition and nightmares and hunt down every evil supernatural force they encounter along the way, it is clear that SUPERNATURAL is descriptive of a major theme of the series.

 

If the applicant has any questions, please telephone the assigned examining attorney.

 

 

 

/Ellen Awrich/

Trademark Examining Attorney

Law Office 116

571-272-9123

ellen.awrich@uspto.gov

 

 

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.