To: | FOX MEDIA LLC (FoxTrademarks@fox.com) |
Subject: | U.S. Trademark Application Serial No. 88145464 - FOX SQUARE - 81362021 |
Sent: | April 28, 2020 01:45:06 PM |
Sent As: | ecom125@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88145464
Mark: FOX SQUARE
|
|
Correspondence Address:
|
|
Applicant: FOX MEDIA LLC
|
|
Reference/Docket No. 81362021
Correspondence Email Address: |
|
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: April 28, 2020
The statement of use has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Specimen Refusal – Services Not Shown
Specifically, applicant’s identified services are “Organizing, promoting and conducting exhibitions, fairs, shows and events for business purposes; arranging and conducting special events for business purposes.” However, the first, second and third specimen files appear to show no specific services, and the final specimen file appears to show the provision of information regarding live music concerts (a Class 41 service).
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, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response option. Applicant may respond to this refusal by submitting, for each applicable international class, 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 the mark in actual use in commerce for the goods and/or services identified 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.
Applicant may not withdraw the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For an overview of 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.
Applicant should note the following additional ground for refusal.
Mark on Drawing Differs From Mark on Specimen
Mark shown on drawing does not match mark on specimen. Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 35, 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 second specimen file displays the mark as FOX NATION ALL AMERICAN CHRISTMAS AT FOX SQUARE. However, the drawing displays the mark as FOX SQUARE. The mark on the specimen does not match the mark in the drawing because the specimen shows the applied-for mark, FOX SQUARE, integrated into a larger phrase or slogan; it does not show the applied-for mark as a separable phrase. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Response option. 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. 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)(1), (c); TMEP §1301.04(a), (h)(iv)(C).
Any web page printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
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, amending the mark on the drawing to agree with the mark on the specimen would be a material alteration because the additional wording present on the specimen creates a different commercial impression in the mark when compared with the mark drawing. In other words, the mark on the specimen does not create the impression of being essentially the same mark as the mark in the original application.
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 using the online Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
Applicant should note the following additional ground for refusal.
Sections 1, 2, 3 and 45 Refusal – Failure to Function as a Service Mark
The applied-for mark, as shown on the last specimen file, does not function as a service mark because, as presented next to the name of individual musicians/performers and dates of performance, and as part of the phrase “Live from FOX Square,” the specimen appears to show the applied-for mark used to provide information about the venue or location of various concerts. As presented, the mark 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.
Not every designation used in the advertising or performance of services functions as a service mark, even though it may have been adopted with the intent to do so. In re Keep A Breast Found., 123 USPQ2d at 1879 (quoting Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973)); see TMEP §1301.02. A designation can only be registered when purchasers would be likely to regard it as a source-indicator for the services. TMEP §1301.02; see In re Moody’s Investors Serv. Inc., 13 USPQ2d 2043, 2047-49 (TTAB 1989).
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
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Leslie Ann Thomas-Riggs/
Leslie Ann Thomas-Riggs
Trademark Examining Attorney
USPTO, Law Office 125
(571) 272-5469
leslie.thomas-riggs@uspto.gov
RESPONSE GUIDANCE