| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85979209 |
| LAW OFFICE ASSIGNED | LAW OFFICE 107 |
| MARK SECTION | |
| MARK FILE NAME | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85979209 |
| LITERAL ELEMENT | FMJ |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
The Examiner has refused registration of the mark FMJ on the ground that the applied-for mark, as used on the specimen of record, is merely a decorative or ornamental feature of Applicant’s goods in Class 21 and Class 25 and does not function as a trademark. Applicant respectfully disagrees with the Examiner's assertion, and submits that the mark, as used on the goods in question, clearly functions as a trademark for the reasons stated below. The Examiner asserts that, pursuant to TMEP §1202.03(a), the overall commercial impression of the proposed mark is not that of a trademark, but rather, as merely ornamental with no particular trademark significance, and further, that the large size, central location, and dominance of the proposed mark, as applied to the goods, indicates that the Applicant's use is merely ornamental. Notwithstanding the Examiner's assertion to the contrary, Applicant submits that its mark has considerable trademark significance as an indication of secondary source, and is therefore registrable under TMEP §1202.03(b). It is well-settled that matter which comprises part of the aesthetic ornamentation of goods, such as t-shirts, may nevertheless be registered as a trademark for such goods if it also serves a source-indicating function. In re Pro-Line Corp., 28 U.S.P.Q.2d 1141 (TTAB 1993); In re Dimitriâs Inc., 9 U.S.P.Q.2d 1666 (TTAB 1988). Such matter may be found to serve a source-indicating function, and thus registrable, if, for example, it names the secondary source of the goods or if, at the time of its first use as ornamentation, it was already a recognized trademark of applicant for services or other goods. In re Astro-Gods Inc., 223 U.S.P.Q. 621 (TTAB 1984); In re Paramount Pictures Corp., 213 U.S.P.Q. 1111 (TTAB 1982); In re Olin Corp., 181 U.S.P.Q. 182 (TTAB 1973) (emphasis added). As the Board stated in Olin: The ornamentation of a t-shirt can be of a special nature which inherently tells the purchasing public the source of the t-shirt, not the source of manufacture but the secondary source. Thus, the name New York University... albeit it will serve as ornamentation on a t-shirt will also advise the purchaser that the university is the secondary source of that shirt. It is not imaginable that Columbia University will be the source of an N.Y.U. t-shirt. Where the shirt is distributed by other than the university, the university’s name on the shirt will indicate the sponsorship or authorization by the university. In the case before us, the t-shirt is ornamented with applicant’s trademarks, and considering the nature of t-shirts, that particular ornamentation can serve as an indication of a secondary source of origin... we conclude that the mark serves as an identifier of a secondary source and as such is registrable. [emphasis added] In re Olin Corp., 181 U.S.P.Q. at 182-83. In Paramount Pictures, supra, the mark MORK & MINDY was held registrable for decals, mainly on the basis of its significance as a indicator of source. The Board stated that, while the names MORK & MINDY were certainly part of the ornamentation of the decals, they also acted as an indication of the source or origin of the underlying Mork & Mindy television series. In this case, Applicant’s mark, FMJ are the initials for the name of Applicant’s television series FULL METAL JOUSTING and the initials are stylized in a manner to look like a shield – as the show is about jousting. The FMJ logo is used throughout the show, including (i) on the competitors clothing, (ii) on flags at the competition, (iii) on the fence rails at the compeititon, (iv) on t-shirts worn by the handlers, and (v) as an onscreen “bug” when the contestants are interviewed (see Exhibit A). Applicant’s micosite home page for the show uses the initials to refer to the interactive game “FMJ Interactive” (see Exhibit B). A consumer viewing the FMJ design on the Class 25 specimen will immediately understand that such “ornamention” on the goods also serves as an indication of a source of orgin given that the same design is heavily featured throughout the television series and related goods and services. Thus, similar to the Olin case above, the submitted specimen should be considered acceptable for demonstrating its source-identifying function. To show that a proposed mark that is used on the goods in an arguably decorative or ornamental manner also serves a source-indicating function, TMEP §1202.03(c) provides that the applicant may submit evidence that the proposed mark would be recognized as a mark through its use with goods or services other than those being refused as ornamental, e.g., by demonstrating ownership of a U.S. trademark registration on the Principal Register of the same mark for other goods or services. Accordingly, Applicant submits that it is the owner of U.S. Registration No. 4176827 in Classes 9 & 41 for the underlying word mark, FULL METAL JOUSTING, in connection with the television series and related goods. A copy the registration certificate is attached hereto as Exhibit C. Although not identical to the current mark, the registration is clearly linked to the current application and should provide suitable evidence that Applicant’s FMJ (logo) mark serves a source-indicating function. Applicant submits that all questions are now answered, and respectfully requests that the Examiner pass the application to publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| JPG FILE(S) | \\TICRS\EXPORT16\IMAGEOUT 16\859\792\85979209\xml5\ ROA0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\859\792\85979209\xml5\ROA0003.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\859\792\85979209\xml5\ROA0004.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\859\792\85979209\xml5\ROA0005.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\859\792\85979209\xml5\ROA0006.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\859\792\85979209\xml5\ROA0007.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\859\792\85979209\xml5\ROA0008.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\859\792\85979209\xml5\ROA0009.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\859\792\85979209\xml5\ROA0010.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\859\792\85979209\xml5\ROA0011.JPG | |
| ORIGINAL PDF FILE | evi_1-2162231717-152925333_._FMJ__SHIELD_LOGO__-_Exhibit_C.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT16\IMAGEOUT16\859\792\85979209\xml5\ROA0012.JPG |
| DESCRIPTION OF EVIDENCE FILE | Exhibits A, B and C |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /monica b. richman/ |
| SIGNATORY'S NAME | Monica B. Richman |
| SIGNATORY'S POSITION | Attorney of record, New York bar member |
| SIGNATORY'S PHONE NUMBER | 212.768.5367 |
| DATE SIGNED | 07/22/2013 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jul 22 16:28:31 EDT 2013 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.X-2 0130722162831567256-85979 209-50010fec70f4beb59d3e7 d56363ddd2e7ed7fecb9772cf 215c51df327dd91e42-N/A-N/ A-20130722152925333975 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
The Examiner has refused registration of the mark FMJ on the ground that the applied-for mark, as used on the specimen of record, is merely a decorative or ornamental feature of Applicant’s goods in Class 21 and Class 25 and does not function as a trademark. Applicant respectfully disagrees with the Examiner's assertion, and submits that the mark, as used on the goods in question, clearly functions as a trademark for the reasons stated below.
The Examiner asserts that, pursuant to TMEP §1202.03(a), the overall commercial impression of the proposed mark is not that of a trademark, but rather, as merely ornamental with no particular trademark significance, and further, that the large size, central location, and dominance of the proposed mark, as applied to the goods, indicates that the Applicant's use is merely ornamental.
Notwithstanding the Examiner's assertion to the contrary, Applicant submits that its mark has considerable trademark significance as an indication of secondary source, and is therefore registrable under TMEP §1202.03(b). It is well-settled that matter which comprises part of the aesthetic ornamentation of goods, such as t-shirts, may nevertheless be registered as a trademark for such goods if it also serves a source-indicating function. In re Pro-Line Corp., 28 U.S.P.Q.2d 1141 (TTAB 1993); In re Dimitriâs Inc., 9 U.S.P.Q.2d 1666 (TTAB 1988). Such matter may be found to serve a source-indicating function, and thus registrable, if, for example, it names the secondary source of the goods or if, at the time of its first use as ornamentation, it was already a recognized trademark of applicant for services or other goods. In re Astro-Gods Inc., 223 U.S.P.Q. 621 (TTAB 1984); In re Paramount Pictures Corp., 213 U.S.P.Q. 1111 (TTAB 1982); In re Olin Corp., 181 U.S.P.Q. 182 (TTAB 1973) (emphasis added). As the Board stated in Olin:
The ornamentation of a t-shirt can be of a special nature which inherently tells the purchasing public the source of the t-shirt, not the source of manufacture but the secondary source. Thus, the name New York University... albeit it will serve as ornamentation on a t-shirt will also advise the purchaser that the university is the secondary source of that shirt. It is not imaginable that Columbia University will be the source of an N.Y.U. t-shirt. Where the shirt is distributed by other than the university, the university’s name on the shirt will indicate the sponsorship or authorization by the university. In the case before us, the t-shirt is ornamented with applicant’s trademarks, and considering the nature of t-shirts, that particular ornamentation can serve as an indication of a secondary source of origin... we conclude that the mark serves as an identifier of a secondary source and as such is registrable. [emphasis added]
In re Olin Corp., 181 U.S.P.Q. at 182-83. In Paramount Pictures, supra, the mark MORK & MINDY was held registrable for decals, mainly on the basis of its significance as a indicator of source. The Board stated that, while the names MORK & MINDY were certainly part of the ornamentation of the decals, they also acted as an indication of the source or origin of the underlying Mork & Mindy television series.
In this case, Applicant’s mark, FMJ are the initials for the name of Applicant’s television series FULL METAL JOUSTING and the initials are stylized in a manner to look like a shield – as the show is about jousting. The FMJ logo is used throughout the show, including (i) on the competitors clothing, (ii) on flags at the competition, (iii) on the fence rails at the compeititon, (iv) on t-shirts worn by the handlers, and (v) as an onscreen “bug” when the contestants are interviewed (see Exhibit A). Applicant’s micosite home page for the show uses the initials to refer to the interactive game “FMJ Interactive” (see Exhibit B).
A consumer viewing the FMJ design on the Class 25 specimen will immediately understand that such “ornamention” on the goods also serves as an indication of a source of orgin given that the same design is heavily featured throughout the television series and related goods and services. Thus, similar to the Olin case above, the submitted specimen should be considered acceptable for demonstrating its source-identifying function.
To show that a proposed mark that is used on the goods in an arguably decorative or ornamental manner also serves a source-indicating function, TMEP §1202.03(c) provides that the applicant may submit evidence that the proposed mark would be recognized as a mark through its use with goods or services other than those being refused as ornamental, e.g., by demonstrating ownership of a U.S. trademark registration on the Principal Register of the same mark for other goods or services. Accordingly, Applicant submits that it is the owner of U.S. Registration No. 4176827 in Classes 9 & 41 for the underlying word mark, FULL METAL JOUSTING, in connection with the television series and related goods. A copy the registration certificate is attached hereto as Exhibit C. Although not identical to the current mark, the registration is clearly linked to the current application and should provide suitable evidence that Applicant’s FMJ (logo) mark serves a source-indicating function.
Applicant submits that all questions are now answered, and respectfully requests that the Examiner pass the application to publication.
