Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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 03, 2020

 

Introduction

 

This Office action is in response to applicant’s communication filed on March 6, 2020.

 

In a previous Office action dated October 4, 2019, the trademark examining attorney issued a partial refusal as to applicant’s identified creative works (that is, applicant’s “printed matter and paper goods, namely, books featuring characters from animated, action adventure, comedy and/or drama features,” “children’s activity books,” “posters,” “framed art prints” and “stand-up pictures made of cardboard”) based on the mark NIFFLER being merely a character name.  

 

In its March 6, 2020 response, applicant deleted all of the creative work goods identified above except “stand-up figures made of cardboard.” 

 

Accordingly, the trademark examining attorney maintains and now makes FINAL the character name refusal as to applicant’s “stand-up figures made of cardboard”.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

Summary of Issues Made Final that Applicant Must Address:

 

• Character Name Refusal – Partial Refusal
• Partial Abandonment Advisory

 

Character Name Refusal – Partial Refusal

 

THIS REFUSAL ONLY APPLIES TO THE GOODS SPECIFIED BELOW

 

Registration is refused because the applied-for mark NIFFLER identifies only the name of a particular character in a creative work; 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 Caserta, 46 USPQ2d 1088 (TTAB 1998); TMEP §§904.07(b), 1202.10.

 

The name of a character is registrable as a trademark only where the record shows that it is used in a manner that would be perceived by consumers as identifying the goods in addition to identifying the character.  In re Caserta, 46 USPQ2d at 1090; see TMEP §1202.10. 

 

Marks that merely identify a character in a creative work, whether used in a series or in a single work, are not registrable. In re Scholastic Inc., 223 USPQ 431, 431 (TTAB 1984) (holding THE LITTLES, used in the title of each book in a series of children's books, does not function as a mark where it merely identifies the main characters in the books). Cf. In re Caserta, 46 USPQ2d 1088, 1090-91 (TTAB 1998) (holding FURR-BALL FURCANIA, used as the principal character in a single children's book, does not function as a mark even though the character's name appeared on the cover and every page of the story); In re Frederick Warne & Co. , 218 USPQ 345, 347-48 (TTAB 1983) (holding an illustration of a frog used on the cover of a single book served only to depict the main character in the book and did not function as a trademark). TMEP §1202.10.

 

To overcome a refusal of registration on the ground that the proposed mark merely identifies a character in a creative work, the applicant may submit evidence that the character name does not merely identify the character in the work. For example, the applicant may submit evidence showing use of the character name as a mark on the spine of the book, or on displays associated with the goods, in a manner that would be perceived as a mark. TMEP §1202.10.

 

A refusal of registration on the ground that the mark merely identifies a character in a creative work can be made regardless of whether the creative work is the sole item in the identification of goods/services or is listed with other items. If the record contains information or if the examining attorney learns from another source that the mark identifies a character in a creative work and there are multiple items in the identification, the examining attorney should issue a partial refusal as to the relevant goods/services. A partial refusal is a refusal that applies only to certain goods/services, or to certain classes. TMEP §1202.10.

 

Example: An application for "children’s books, pencils, and coloring books" would be partially refused if the examining attorney determined, either from the application or from another source, that the mark identified a character in the children's books. The use of the same mark on other non-creative matter such as the pencils and coloring books does not overcome the refusal. TMEP §1202.10.

 

The article attached to the previous Office action “Fantastic Beasts Niffler lookalike born at Australia Zoo” from http://ew.com/article/2016/11/22/fantastic-beasts-niffler-lookalike-born-australia-zoo/ discusses a particular fictional animal in the Fantastic Beasts books and movies called a Niffler that “bears a striking resemblance to a real-life animal called the short-beaked echidna….”

 

In this case, applicant identifies the following goods, as amended: “pens; book marks; [and] stand-up figures made of cardboard.”

 

The substitute specimens include a specimen featuring a stand-up figure made of cardboard that is of the actual NIFFLER characters.

 

Accordingly, the evidence of record shows that the mark NIFFLER on applicant’s remaining creative work “stand-up figures made of cardboard”  is merely a photo of the NIFFLER character in the Fantastic Beasts creative work series and will not be seen as a trademark indicating the actual source of this creative work.

 

This refusal does not apply to applicant’s non-creative works, namely, applicant’s pens and bookmarks.

 

Applicant did not submit any arguments in its response.

 

Accordingly, the partial refusal is maintained as final on the merits.

 

Partial Abandonment Advisory

 

If applicant does not respond to this Office action within the six-month period for response, the following goods will be deleted from the application:  stand-up figures made of cardboard.  The application will then proceed with the following goods only:  pens; book marks.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

Response Options

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

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).

 

 

/Parker Howard/

Examining Attorney

USPTO

Law Office 117

(571) 272-6548

Parker.Howard@uspto.gov

 

 

RESPONSE GUIDANCE

 

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on April 03, 2020 for

U.S. Trademark Application Serial No. 88170508

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Parker Howard/

Examining Attorney

USPTO

Law Office 117

(571) 272-6548

Parker.Howard@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from April 03, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”