Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

---

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88162371 I SOLEMNLY SWEAR THAT I AM UP TO NO GOOD(Standard Characters, see http://uspto.report/TM/88162371/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

In an Office action dated March 12, 2019, the Examining Attorney has refused registration of Applicant’s mark Ser. No. 88/162371—I SOLEMNLY SWEAR THAT I AM UP TO NO GOOD (“Applicant’s Mark”) on the basis that (i) Applicant’s Mark falsely suggests a connection with J.K. Rowling and (ii) Applicant’s Mark is an informational slogan and does not function as a source-identifying trademark.  Applicant respectfully disagrees. 

Applicant is the studio behind the Harry Potter films which are based on the Harry Potter book series written by J.K. Rowling. Applicant has produced and distributed all eight Harry Potter movies since 2001, including the movie the Examining Attorney has cited,Harry Potter and the Prisoner of Azkaban; see evidence attached in Exhibit A. Applicant also owns all trademarks for the HARRY POTTER brand, the fact of which is noted on Ms. Rowling’s website, http://www.jkrowling.com/legal/; see attached Exhibit B.  A selection of trademark Office records which indicate that Applicant owns trademark registrations for HARRY POTTER and related marks are attached in Exhibit C.  As the owner of the HARRY POTTER and related trademarks with the right to use and exploit the same, Applicant’s use of the mark I SOLEMNLY SWEAR THAT I AM UP TO NO GOOD does not create a false connection or association with J.K. Rowling.

Applicant also respectfully disagrees with the Examining Attorney’s assessment that its mark is merely an informational slogan and incapable of functioning as a trademark. The Examining Attorney acknowledges that “evidence shows that [Applicant’s Mark] has been recognized as one of the most famous quotes to come out of the Harry Potter universe.” In addition, all of the evidence the Examining Attorney has provided purportedly to show that the mark does not function as a trademark, actually reinforces the argument that Applicant’s Mark functions as a source-identifying trademark, as all of the evidence can be traced back to a single source—the HARRY POTTER brand and series.

For the reasons stated above, Applicant respectfully requests that the refusal be withdrawn and Applicant’s Mark proceed to publication.

EVIDENCE
Evidence in the nature of Exhibits showing Applicant's legitimate association to J.K. Rowling. has been attached.
Original PDF file:
evi_16816119215-20190911151611224297_._Exhibit_A.pdf
Converted PDF file(s) ( 24 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Evidence-23
Evidence-24
Original PDF file:
evi_16816119215-20190911151611224297_._Exhibit_B.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_16816119215-20190911151611224297_._Exhibit_C.pdf
Converted PDF file(s) ( 11 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11

The applicant's current attorney information: Megan L. Martin. Megan L. Martin of WARNER BROS. ENTERTAINMENT INC., is located at

      BRIDGE BUILDING NORTH, 5TH FLOOR
      4000 WARNER BLVD.
      BURBANK, California 91522
      US
The docket/reference number is 18/02709/LA.

The email address is ustrademarks@warnerbros.com

The applicants proposed attorney information: Megan L. Martin. Other appointed attorneys are Patrick T. Perkins, Brian A. Rupp, Christopher I. Jackson. Megan L. Martin of WARNER BROS. ENTERTAINMENT INC., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      BRIDGE BUILDING NORTH, 5TH FLOOR
      4000 WARNER BLVD.
      BURBANK, California 91522
      United States
The docket/reference number is 18/02709/LA.

The email address is ustrademarks@warnerbros.com

Megan L. Martin submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: MEGAN L. MARTIN. MEGAN L. MARTIN of WARNER BROS. ENTERTAINMENT INC., is located at

      BRIDGE BUILDING NORTH, 5TH FLOOR
      4000 WARNER BLVD.
      BURBANK, California 91522
      US
The docket/reference number is 18/02709/LA.

The email address is ustrademarks@warnerbros.com

The applicants proposed correspondence information: Megan L. Martin. Megan L. Martin of WARNER BROS. ENTERTAINMENT INC., is located at

      BRIDGE BUILDING NORTH, 5TH FLOOR
      4000 WARNER BLVD.
      BURBANK, California 91522
      United States
The docket/reference number is 18/02709/LA.

The email address is ustrademarks@warnerbros.com

SIGNATURE(S)
Response Signature
Signature: /mlm/     Date: 09/11/2019
Signatory's Name: Megan L. Martin
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 818-954-1103

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    MEGAN L. MARTIN
   WARNER BROS. ENTERTAINMENT INC.
   BRIDGE BUILDING NORTH, 5TH FLOOR
   4000 WARNER BLVD.
   BURBANK, California 91522
Mailing Address:    Megan L. Martin
   WARNER BROS. ENTERTAINMENT INC.
   BRIDGE BUILDING NORTH, 5TH FLOOR
   4000 WARNER BLVD.
   BURBANK, California 91522
        
Serial Number: 88162371
Internet Transmission Date: Wed Sep 11 16:32:53 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201909111632539
84720-88162371-610aaa73f115cfe26188fc4c1
2aebce911ab3b6a12145eab4cddebd7a3bf99a-N
/A-N/A-20190911151611224297