Offc Action Outgoing

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: 6/9/2010

 

This letter responds to the applicant's communication filed on March 22, 2010, and to the revocation of attorney and change in correspondence address filed on May 16, 2010, and signed by David M. Kelley.  The refusal to register based on a likelihood of confusion is hereby withdrawn.  This action is non-final.

 

 

I. The May 16, 2010 revocation  

 

Based on a September 5, 2007, associate power of attorney filed by the applicant, David M. Kelly, and the attorneys at Finnegan, Henderson, et al were added as associate powers of attorney, but the correspondence address was explicitly stated to remain as Steve W. Ackerman at Disney Enterprises and is the correspondence address currently of record.  Only the applicant can revoke a power of attorney. Only the applicant or the practitioner who designated an associate power of attorney can revoke an associate power of attorney.  The May 16, 2010, revocation is of no effect since it was not signed by the appropriate party.  See TMEP §605.03

 

 

II. The March 22, 2010 response from applicant

 

 

IDENTIFICAITON OF GOODS

 

There appears to be some confusion on the part of both the Examining Attorney and the applicant as to the current operative identification of goods.  The Office action of September 20, 2009, incorrectly characterized the identification of goods, for which the Office apologizes.  Yet, the applicant’s statement of the identification as of June 8, 2008, also appears inaccurate.  Looking at the prosecution history, the application was divided and the applicant was advised, in a letter from the ITU/Divisional unit, dated February 10, 2009, that the Child application serial no. 78980821 contains the following:

 

Pre-recorded audio cassettes, audio discs, and compact discs and laser video discs featuring music, stories, games, and activities for children; pre-recorded CD-ROMs featuring music, stories, games, and activities for children; computer software; pre-recorded DVDs, digital-video discs, and digital versatile discs featuring animated and live action entertainment, motion picture films, television shows, stories, games, music, and activities for children; motion picture films; pre-recorded video cassettes featuring animated and live action entertainment, motion picture films, television shows, stories, and music in International Class 9.

 

The applicant now appears to be proposing to amend the identification to:

 

Pre-recorded audio discs, and compact discs featuring music; pre-recorded DVDs, digital video discs, and digital versatile discs featuring animated entertainment, motion picture films, and music in International Class 9.

 

This identification of goods is unacceptable as indefinite because the subject matter of the “motion picture films” needs to be clarified.  That the pre-recorded media contains motion picture films leaves as indefinite the subject matter.  The identification informs that the goods contain motion picture films, but the subject matter is not revealed.  TMEP §1402.01.  The applicant may adopt the following identification, if accurate:

 

Pre-recorded audio discs, and compact discs featuring music; pre-recorded DVDs, digital video discs, and digital versatile discs featuring, music, animated entertainment, and motion picture films featuring ______ (specify subject matter e.g. live action entertainment, adventure, comedy and animation) in International Class 9

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

 

DESCRIPTIVENESS

 

The refusal to register based on descriptiveness is continued based on the evidence and argument in the prior office actions.

 

Applicant previously amended the application to assert acquired distinctiveness based on five years’ use in commerce.  However, because the applied-for mark is highly descriptive of applicant’s goods, the allegation of five years’ use is insufficient to show acquired distinctiveness.  In re Kalmbach Publ’g Co., 14 USPQ2d 1490 (TTAB 1989); TMEP §1212.05(a). 

 

Evidence of acquired distinctiveness may include specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, affidavits, and any other evidence that establishes the distinctiveness of the mark as an indicator of source.  See 37 C.F.R. §2.41(a); In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et seq.  The Office will decide each case on its own merits.  Here, PETER PAN is a work in the public domain.  Therefore, a showing of acquired distinctiveness based on length of use is insufficient. 

 

If additional evidence is submitted, the following factors are generally considered when determining acquired distinctiveness:  (1) length and exclusivity of use of the mark in the United States by applicant; (2) the type, expense and amount of advertising of the mark in the United States; and (3) applicant’s efforts in the United States to associate the mark with the source of the goods and/or services, such as unsolicited media coverage and consumer studies.  See In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005).  A showing of acquired distinctiveness need not consider all of these factors, and no single factor is determinative.  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212 et seq.

 

While the above information was provided for the sake of thoroughness it is noted that no amount of secondary meaning can rescue a generic designation.  Such a designation cannot become a trademark under any circumstances.  At best such evidence could establish some de facto secondary meaning, but such secondary meaning is not accorded legal significance.  See In re BOC Group, Inc., 223 USPQ 462 (TTAB 1984); Miller Brewing Company v. G. Heileman Brewing Company, 561 F.2d 75, 195 USPQ 281 (7th Cir. 1977);  Reese Publishing v. Hampton International Communications, 620 F.2d 7, 205 USPQ 585 (2d Cir. 1980).

 

In view of the nature of the mark the applicant is advised that at this time, while this is not a refusal based on genericness, the applicant is advised that the mark may be generic.

 

 

DOES NOT FUNCTION AS A MARK

 

Registration continues to be refused because the applied-for mark, as used on the specimen of record, does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re Remington Prods., Inc., 3 USPQ2d 1714 (TTAB 1987); TMEP §§904.07(b); 1202 et seq.

 

In the prior Office action, the applicant was advised that the applied-for mark, as shown on the specimen, does not function as a trademark.  The applicant’s proposed mark is PETER PAN.  As stated in the Final Office Action dated December 19, 2007, PETER PAN is a creative work in the public domain.  Upon viewing the applicant’s proposed mark consumers would believe that the wording refers only to the famous work of J.M. Barrie and not exclusively to the source of the applicant’s media products.  Previously provided were various examples of the wide use of the title PETER PAN to refer to the works of J.M Barrie.  See attachments to Office action of September 20, 2009.

 

The specimen of record, along with any other relevant evidence of record, is reviewed to determine whether an applied-for mark is being used as a trademark.  In re Bose Corp., 546 F.2d 893, 192 USPQ 213 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455 (TTAB 1998).  Not every word, design, symbol or slogan used in the sale or advertising of goods and/or services functions as a mark, even though it may have been adopted with the intent to do so.  A designation cannot be registered unless purchasers would be likely to regard it as a source-indicator for the goods.  In re Manco, Inc., 24 USPQ2d 1938 (TTAB 1992); TMEP §1202.

 

 

Applicant’s Arguments and substitute specimen of March 22, 2010

 

Substitute Specimen

 

The substitute specimen comprises a label that the applicant describes as being featured on the cover of the products.  The specimen depicts a white label on a DVD of “Pirates of the Caribbean”. 

 

The earlier specimens were unacceptable, because the proposed mark would be merely perceived as identifying subject matter rather than the source of applicant’s goods.  The substitute specimen is unacceptable for a different reason, but nevertheless unacceptable.

 

Registration is refused because the applied-for mark, as used on the specimen of record, identifies only the name of a particular character in a creative work; it does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re Caserta, 46 USPQ2d 1088 (TTAB 1998); TMEP §§904.07(b), 1202.10.

 

The name of a character is registrable as a trademark only where the record shows that it is used in a manner that would be perceived by consumers as identifying the goods in addition to identifying the character.  In re Caserta, 46 USPQ2d at 1090; see TMEP §1202.10.  In this case, the specimen shows the applied-for mark used only as the name of a character and not as a trademark for applicant’s goods because the wording Peter Pan as used on these specimen merely identifies the name of the illustrated character above the wording.  Consumers would not see “Peter Pan” serving as a source indicator for the goods, but merely as the name of the popular Peter Pan character depicted immediately above.

 

Descriptiveness

 

The applicant also appears to be now arguing that the mark is not descriptive because the “PETER PAN mark is not used to identify a character or story featured in the covered products, but is instead used to denote a line of DVDs sold by applicant, including those associated with Applicant’s HANNAH MONTANA, SLEEPING BEAUTY, NATIONAL TREASURE, PRIATES OF THE CARIBEAN, and HIGH SCHOOL MUSCIAL films.  The applicant argues that the mark would not be descriptive for these goods since they do not feature or contain a Peter Pan character. (Applicant’s March 22, 2010, response at page 3.)

 

Such an argument is not persuasive. The identification of goods is broad so that it includes goods which do feature the Peter Pan character.  That some of the goods may not contain or feature the Peter Pan character does not avoid the refusal.  “A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.”  In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b).  It is enough if the term describes only one significant function, attribute or property.  In re Oppedahl, 373 F.3d at 1173, 71 USPQ2d at 1371; TMEP §1209.01(b).

 

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

 

 

 

 

 

 

 

/Shaunia P. Carlyle/

Trademark Attorney

Law Office 110

571-272-9374

 

 

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 REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 78980821) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 6/9/2010 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=78980821&doc_type=OOA&mail_date=20100609 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

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

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 6/9/2010 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

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

 

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.