Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86524610 FENIX(Standard Characters, see http://uspto.report/TM/86524610/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant requests that the refusal to accept the specimen as filed be withdrawn.  Applicant is submitting additional specimens showing the manner of use of the mark.  The specimens do show the mark as identifying the services, even if they may refer to a person.

 

Virtually identical statement of use specimens for other applications for Class 41 have been accepted for applicant for other wrestling character marks.  See, e.g. Serial Nos. 86/481,919, 86/482,048 and 86/481,986.  Specimens have been accepted consistently for wrestling character names simply showing specimens which reference particular the owner and the character name or specific exhibitions.  See e.g., Reg. Nos. 5,154,405 and 5,129,411.

 

The cited In re Mancino case is not applicable here.  In the Mancino case, the applicant known as "BOOM BOOM" submitted specimens which only showed the applicant’s ring record, nickname, and participation in boxing matches.  However, those specimens did not necessarily associate his name with any specific use of the name, other than as an individual.

 

On the other hand in the referenced In re Carson case the TTAB found that a group of advertisements for “Johnny Carson in concert” demonstrated technical service mark use of the name in close association with a clear reference to entertainment services to be performed by Johnny Carson, even though some of the specimens did not.  The specimens showed the use of the name in conjunction with a reference to services and information as to the location and times of performances, cost of tickets and places where tickets could be purchased.  TMEP 1301.02(b).  That technical service mark use is more analogous to the situation here.  It is inherent in the specimens submitted that the character FENIX is a wrestler by the image. 

 

The statement at the bottom of the originally submitted specimen implies that a character of applicant is to appear in “The All-New Season Wednesdays 8 PM ET” with the time and name of the network, El Rey.  "The All-New Season" references the wrestling show Lucha Underground and the name FENIX serves to advertise those services of the series in a technical service mark sense.  

In the first newly submitted specimen, the mark appears vertically in italics and simply appears as a brand.  It is not clear that it even references an individual, but it is clear that it is associated with the Lucha Underground television series on the El Rey Network.

 

In the second newly submitted specimen, a poster used to promote the Lucha Underground television series, FENIX is used as a mark, along with others, to advertise the Lucha Underground wrestling event presented by the El Rey Network.  

 

In the third newly submitted specimen, a wrestling match is promoted using the mark FENIX along with several other luchadors whose characters and stories are developed and controlled by applicant.

 

The character marks of applicant are more than simply names of individuals.  The characters are part of a continuing story matrix told by the Lucha Underground series of applicant, controlled by the applicant.  That story content overarches any single wrestler and goes beyond the wrestling matches themselves.  The wrestling matches, in some respects are simply the backdrop for telling the stories of the wrestlers.

 

In view of the foregoing, applicant requests that the specimens be accepted and that the mark be registered. 

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment services, namely, an ongoing television series featuring sports entertainment broadcast over television, satellite, audio and video media and via a global computer network; entertainment services, namely, live events featuring wrestling contests and exhibitions; entertainment services, namely, performances by a professional wrestler and entertainer; providing wrestling news, information and non-downloadable video via a global computer network
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

In International Class 041, the mark was first used at least as early as 09/23/2014 and first used in commerce at least as early as 09/23/2014 .

Proposed: Class 041 for Entertainment services, namely, an ongoing television series featuring sports entertainment broadcast over television, satellite, audio and video media and via a global computer network; entertainment services, namely, live events featuring wrestling contests and exhibitions; entertainment services, namely, performances by a professional wrestler and entertainer; providing wrestling news, information and non-downloadable video via a global computer network
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

In International Class 041, the mark was first used at least as early as 09/23/2014 . and first used in commerce at least as early as 09/23/2014 .

Applicant hereby submits one(or more) specimen(s) for Class 041 .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
JPG file(s):
Specimen File1
Original PDF file:
SPU0-162206197165-20170314133236898985_._Fenix_Poster_1.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU0-162206197165-20170314133236898985_._Fenix_Poster_2.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Douglas Gardner/      Date: 03/14/2017
Signatory's Name: Douglas Gardner
Signatory's Position: CFO
Signatory's Phone Number: -


Response Signature
Signature: /paul d. supnik/     Date: 03/14/2017
Signatory's Name: Paul D. Supnik
Signatory's Position: Attorney at law, California bar member

Signatory's Phone Number: 310-859-0100

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 86524610
Internet Transmission Date: Tue Mar 14 15:06:08 EDT 2017
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20170314150608
622336-86524610-580c5ca12244836ae6a46465
95c272166b42f1fece77bbee6a9e8a2d27c7a83a
-N/A-N/A-20170314145822640081