Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88574745

DATE:                                11/20/2019

NAME:                               mdall

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
        email                               Attorney/Applicant

     Requested Law Library search           Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        DO NOT PRINT           Added design code in TRADEUPS
     Description of the mark
     Translation statement                  Re-imaged standard character
                                            drawing
     Negative translation statement             
     Consent of living individual           Contacted TM MADRID ID/CLASS
                                            about misclassified definite ID
     Changed TRADEUPS to:

 X   OTHER:

From: Lott, Maureen D.
Sent: Wednesday, November 20, 2019 5:38 PM
To: emily_cosentino@verizon.net
Subject: Our discussion on Trademark Application No. 88574745 for FROGMAN

 

Hi Emily,

 

Per our discussion, here a link to the Trademark Manual of Examining Procedure (TMEP) so that you can review information on registering character names: http://tmep.gov.uspto.report/RDMS/TMEP/current#/current/d1e2.html  In particular see Section 1202.10.  You may also wish to review Section 904 on specimens (examples of use of the mark in commerce).  You may also like to see Video No. 8 on specimens here: http://www.gov.uspto.report/trademarks-getting-started/process-overview/trademark-information-network

 

As you know, the issue at hand isn’t whether or not your specimens (examples of the mark being used) are of the type typically accepted, the issue is whether, as used on the specimens, the mark appears to be just a character name or to also function as a Trademark to indicate the source or origin of the goods/services.  You indicated that you are thinking of submitting additional specimens of use, namely, photos of the spines of your books, which show FROGMAN used as a trademark (and where the mark would not be perceived merely as a character name).  If so, you may submit a response form attaching them as substitute specimens. 

 

PLEASE NOTE:  That would seem fine for Class 16 (which cover the tangible/physical books).  However, the downloadable books in Class 9 would obviously not have physical covers or bindings.  So, additional information/items would be necessary as to the downloadable items in Class 9.  Please note that each class of goods is treated separately and proper usage is needed for each class.  Please note that if you feel the refusal is in error, you can present arguments against the refusal too.

 

HOW TO SUBMIT A SPECIMEN AFTER SETTING UP YOUR LOGIN ACCOUNT

 

1. Access the response form at http://teas.gov.uspto.report/office/roa/
2. Enter the Serial Number and select CONTINUE
3. Answer YES to the question that asks if you are submitting a substitute specimen (I think it is question 2) and answer yes to the question asking if you need a declaration (I think it is Question 10)
4. On the next page, under SPECIMEN FILE, attach a photo of your substitute specimen and check the box that says “The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application" [for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use].”
5. Follow the form directions for submitting an electronic signature for the declaration and the response and submit the form

 

LOGIN ACCOUNT

 

Please note that the Office now requires applicants to set up secure logins to submit documents and responses (that is to protect applicants so someone else cannot make unauthorized changes to your application record).   Please see  http://www.gov.uspto.report/about-us/news-updates/teas-login-requirement regarding setting up a login account so you can file responses and such.

 

I hope that helps!

 

/Maureen/

 

 

 

Maureen Dall Lott

Trademark Examining Attorney, Law Office 105

U.S. Patent and Trademark Office

maureen.lott@uspto.gov

571-272-9714