UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

 

RESPONSE TIME LIMIT:  To avoid abandonment, the Office must receive a proper response to this Office action within six-months of the mailing or e-mailing date.  If applicant responds to the issues below within two months of the above mailing or e-mailing  date, this case will be given priority handling.  TMEP §708.01.

 

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.

 

QUESTIONS:  Please contact the assigned trademark examining attorney with any questions.

 

 

Serial Number  78/695557

 

The following were discussed in communication with Mr. Eli Bard on January 24, 2007.  Applicant must respond to each refusal and/or requirement raised below.

 

Title of a Single Work

Although Applicant states that its specimen is part of a series of comic book publications, Applicant has not provided evidence to support this claim.  Consequently, registration is refused because the proposed mark, as used on the specimen of record, is used only as the title of a single creative work, namely, the title of a specific comic book; it does not function as a trademark to identify and distinguish Applicant’s goods from those of others and to indicate their source.  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); see In re Scholastic, Inc., 23 USPQ2d 1774, (TTAB 1992); TMEP §1202.08.  Single creative works include works in which the content does not change, whether that work is in printed, recorded or electronic form.

 

Applicant may respond to this refusal by submitting evidence that the proposed mark is used to identify a series, rather than a single work.  The name for a series of creative works indicates that each work in the series comes from the same source as the others.  Scholastic, 23 USPQ2d at 1776.  Evidence of a series includes copies of at least two different book covers or packaging for prerecorded works (not two copies of the same work) showing the mark as a source identifier for the series as well as distinguishing the mark from the individual titles of the works.  Id.

 

Format of Applicant’s Response

Please note that there is no required format or form for responding to this Office action.  However, Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) Applicant's telephone number.

 

When responding to this Office action, Applicant must make sure to respond in writing to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then Applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register.  If there are other requirements, then Applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

 

If Applicant has questions, please contact the assigned examining attorney.

 

 

/ameetajordan/

Ameeta Jordan

Trademark Examining Attorney

Law Office 105

Phone:  (571) 272-8866

 

 

 

 

 

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