To: | Kiss Catalog, Ltd. (wcox@gordonherlands.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86692384 - KISS - N/A |
Sent: | 11/6/2015 11:47:57 AM |
Sent As: | ECOM109@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86692384
MARK: KISS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Kiss Catalog, Ltd.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 11/6/2015
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communications filed on September 24, 2105 and October 14, 2015. Applicant provided additional evidence in an effort to overcome the refusal under Sections 1, 2 and 45 of the Trademark Act. The additional evidence does not show evidence of a series of works. Accordingly, for the reasons set forth below, the refusal is now made FINAL under Trademark Act Sections 1, 2, and 45 for failure to function as a trademark as used on the specimens of record. See 15 U.S.C. §§1051, 1052, 1127; 37 C.F.R. §2.63(b).
Refusal – Portion of a Title of a Single Work - FINAL
Registration is refused because the applied-for mark, as used on the specimen of record, is used only as a portion of a title of a single creative work, namely, a portion of a title of a specific book; 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 Scholastic, Inc., 23 USPQ2d 1774, 1776-79 (TTAB 1992); TMEP §§904.07(b), 1202.08; cf. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162-63, 64 USPQ2d 1375, 1378-79 (Fed. Cir. 2002); In re Cooper, 254 F.2d 611, 615-16, 117 USPQ 396, 399-400 (C.C.P.A. 1958).
Single creative works include works in which the featured content does not change significantly, whether that work is in printed, recorded, or electronic form. TMEP §1202.08(a); see Mattel, Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1143-44 (TTAB 2011) (holding that LAUGH & LEARN, with design, was merely the title of a single work, where the mark was used as the title of a pre-recorded VHS tape and DVD, the VHS tape and DVD contained the same featured program, and the DVD contained “minor enhancements” such as bloopers and previews).
Applicant may respond to this refusal by submitting evidence that the applied-for mark (1) is used on a series of creative works, (2) creates a separate commercial impression apart from the complete title, and (3) is promoted or recognized as a mark for the series. See In re Scholastic, Inc., 23 USPQ2d at 1776-78; TMEP §§1202.08(d) et seq.
Evidence of a series includes copies of at least two different book covers or packaging for recorded works (not two copies of the same work), with the mark used in all the titles. TMEP §1202.08(d)(ii). Evidence that a portion of a title is promoted or recognized as a mark for a series includes advertising that promotes that portion of the title as the source of the series, third-party reviews showing use of that portion of the title by others to refer to the series, and/or declarations from publishers, retailers, purchasers, or readers showing recognition of that portion of the title as an indicator of the source of a series of written works. See In re Scholastic, Inc., 23 USPQ2d at 1776-78; TMEP §1202.08(d)(iii).
Applicant submitted a copy of a second book in an effort to show evidence of a series of books. Although both books feature the band KISS, it does not appear that the books are part of a series. The first specimen shows a book entitled “KISS The Early Years” written by Gene Simmons and Paul Stanley and the second specimen shows a book entitled “KISS Behind the Mask The Official Authorized Biography” by David Lear and Ken Sharp. The books are written by different authors. Additionally, there is no additional evidence to show that the portion of the title is promoted or recognized as a mark for a series. Both books are about the band “KISS”. Consumers would see the word “KISS” as a portion of the title. Also, consumers would see the word “KISS” as indicating the subject matter of the book, namely, the band KISS. Furthermore, it appears that the books were published several years apart and by different publishers. This also imparts the impression that the books are not part of a series but rather two separate books written about the band KISS. The first specimen shows a book that was published in 2002 by Three Rivers Press. The second specimen shows a book published in 2008 by Grand Central Publishing. See the attached screenshots from Amazon.com.
If applicant cannot satisfy the above evidentiary requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), and the refusal will be withdrawn. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use along with the evidence listed above. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. If the same specimen is submitted with an allegation of use without the additional evidence described above, the same refusal will issue.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “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 filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).
This refusal is FINAL.
Proper Response to Final Action
(1) A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
Advisory: Information for TEAS Plus and TEAS RF Applicants
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
/Kathleen Lorenzo/
Examining Attorney
Law Office 109
(571) 272-5883
kathleen.lorenzo@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.