To: | Thrilling Nostalgia LLC (docketing@lkglobal.com) |
Subject: | U.S. Trademark Application Serial No. 88086433 - ANTHEM - 357.0004 |
Sent: | November 06, 2019 05:10:23 PM |
Sent As: | ecom115@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88086433
Mark: ANTHEM
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Correspondence Address:
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Applicant: Thrilling Nostalgia LLC
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Reference/Docket No. 357.0004
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this office action.
Issue date: November 06, 2019
The assigned trademark examining attorney has reviewed the statement of use. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Registration Refused – Title Of A Single Work
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 comic 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 may not withdraw the statement of use. 37 C.F.R. §2.88(f); TMEP §1109.17.
The Marks In The Drawing And Specimen Do Not Match
Registration is refused because the specimen does not show the mark in the drawing in use in commerce, which is required in the statement of use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match. That is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimen displays the mark as NATIONAL ANTHEM. However, the drawing displays the mark as ANTHEM. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by submitting a different specimen (a verified “substitute” specimen) that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the statement of use, and (b) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use.
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. Specifically, the terms ANTHEM and NATIONAL ANTHEM have different commercial impressions because the latter term refers to the Star Spangled Banner while the former is a more general term.
In addition, applicant may not respond by withdrawing the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For more information about drawings and instructions on how to satisfy this response option online using the Trademark Electronic Application System (TEAS) form, see the drawing webpage.
TEAS Plus Application Requirements
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 email correspondence address; and (3) agree to receive correspondence from the USPTO by email 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 $125 per 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 or email without incurring this additional fee.
Applicant is invited to contact the assigned examining attorney with any questions regarding this action.
/Katherine S. Chang/
Trademark Examining Attorney
Law Office 115
571-270-1528
katherine.chang@uspto.gov
RESPONSE GUIDANCE
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