To: | Miller, Stephen W. (tmiller@vestedlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88142966 - CAPTAIN HEARTLESS - N/A |
Sent: | May 07, 2020 08:08:45 PM |
Sent As: | ecom122@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88142966
Mark: CAPTAIN HEARTLESS
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Correspondence Address: 221 E. WALNUT STREET, SUITE 227
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Applicant: Miller, Stephen W.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
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: May 07, 2020
Registration is refused because the applied-for mark, as used on the specimen of record, identifies only the name of a particular character; it does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1053, 1127; see In re Hechinger Inv. Co. of Del., 24 USPQ2d 1057, 1059 (TTAB 1991); In re McDonald’s Corp., 229 USPQ 555, 555 (TTAB 1985); TMEP §§904.07(b), 1301.02(b).
The name of a character is registrable as a service mark only where the record shows that it is used in a manner that would be perceived by consumers as identifying the services in addition to identifying the character. In re Fla. Cypress Gardens Inc., 208 USPQ 288, 292 (TTAB 1980); TMEP §1301.02(b). In this case, the specimen shows the applied-for mark used only to identify the name of a character and not as a service mark for applicant’s services because the submitted “Comic book cover” invites readers to “Witness His Uncanny Origin!”
Response option. Applicant may respond to this refusal by submitting a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use and (b) shows proper service mark use for the services in the statement of use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior to expiration of the filing deadline for filing a statement of use.” The substitute specimen cannot be accepted without this statement.
Examples of specimens. Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Applicant may not withdraw the statement of use. 37 C.F.R. §2.88(f); TMEP §1109.17.
For more information about this response option and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
RESPONSE GUIDELINES
How to respond. Click to file a response to this nonfinal Office action.
/Louis Kolodner/
Examining Attorney
Law Office 122
(571) 272-7562
Louis.Kolodner@uspto.gov
RESPONSE GUIDANCE