To: | Nightmare Emporium, LLC (katrina@povlegal.com) |
Subject: | U.S. Trademark Application Serial No. 88352307 - NE - N/A |
Sent: | August 13, 2019 02:05:14 PM |
Sent As: | ecom126@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88352307
Mark: NE
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Correspondence Address:
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Applicant: Nightmare Emporium, LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: August 13, 2019
This Office action is supplemental to and supersedes the previous Office action issued on June 3, 2019 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal: a title of a single work refusal under Trademark Act Sections 1, 2, & 45. See TMEP §§706, 711.02.
In a previous Office action dated June 3, 2019, 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, and for a specimen-drawing matching refusal. In addition, applicant was required to satisfy the following requirement: clarify the mark description.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: mark description is clarified. See TMEP §713.02.
The following refusal has also been obviated: specimen-drawing matching refusal. See id.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Sections 1, 2, & 45 Refusal – Title of a Single Work
Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
NEW ISSUE: SECTIONS 1, 2, & 45 REFUSAL – TITLE OF A SINGLE WORK
Applicant was previously refused registration in International Class 41 because the specimen did not show a direct association between the applied-for mark and the identified services. Response options for overcoming that refusal, if any, were set forth in the prior Office action. Applicant, however, responded to such refusal by submitting substitute specimens for the refused international class that does not show proper use of the applied-for mark in commerce for the reasons immediately stated below.
Registration is refused because the applied-for mark, as used on the specimen of record, is used only as the title of a single creative work, namely, the title of a specific film festival; 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 Posthuma, 45 USPQ2d 2011, 2013-14 (TTAB 1998) (citing In re Cooper, 254 F.2d 611, 612-16, 117 USPQ 396, 398-400 (C.C.P.A. 1958)); TMEP §§904.07(b), 1301.02(d). Specifically, the substitute specimens only show details for a single film festival that takes place over a period of three days.
Single creative works include works in which the content does not change significantly from one performance to another, such as a theatrical play, musical, or opera. TMEP §1202.08(a); see In re Posthuma, 45 USPQ2d at 2013-14 (citing In re Scholastic, Inc., 23 USPQ2d 1774, 1776 (TTAB 1992)).
Applicant may respond to this refusal by submitting evidence that the applied-for mark is used to identify a series, rather than a single work. See TMEP §1301.02(d). The name of a series of creative works may be registrable if the designation serves to identify and distinguish the source of the series. See In re Posthuma, 45 USPQ2d at 2013-14; TMEP §§1202.08(c), 1301.02(d); cf. In re Scholastic, Inc., 23 USPQ2d at 1777-78. Evidence of a series includes ticket stubs or advertising for different theatrical or musical performances (not for the same show) that show the mark as a source identifier for the series as well as distinguish the mark from the individual titles of the works. See TMEP §§1202.08(c), 1301.02(d).
If applicant cannot satisfy the requirement for evidence of a series, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), and the refusal will be withdrawn. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use along with evidence of use on a series. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. If the same specimen is submitted with an allegation of use without further evidence of a series, the same refusal will issue.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action
/Diana Zarick/
Diana Zarick
Trademark Examining Attorney
Law Office 126
(571) 270-5013
diana.zarick@uspto.gov
RESPONSE GUIDANCE