To: | Miller, Stephen W. (swmiller123@earthlink.net) |
Subject: | U.S. Trademark Application Serial No. 88142966 - CAPTAIN HEARTLESS - N/A |
Sent: | April 21, 2021 02:28:35 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:
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Applicant: Miller, Stephen W.
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Reference/Docket No. N/A
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: April 21, 2021
This Office action is in response to applicant’s communication filed on January 12, 2021 (“Applicant’s Response”).
In a previous Office action dated May 7, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: failure to show the applied-for mark in use in commerce with any of the specified services. The trademark examining attorney maintains and now makes FINAL the refusal. See 37 C.F.R. §2.63(b); TMEP §714.04.
FAILURE TO FUNCTION
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 evidence shows “CAPTAIN HEARTLESS” is the title character of applicant’s non-downloadable comic books and graphic novels. Furthermore the specimen submitted in Applicant’s Response merely removes the bottom portion of the specimen included in Applicant’s communication filed April 14, 2020.
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.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Louis Kolodner/
Examining Attorney
Law Office 122
(571) 272-7562
Louis.Kolodner@uspto.gov
RESPONSE GUIDANCE