To: | Cosentino, Emily (emily_cosentino@verizon.net) |
Subject: | U.S. Trademark Application Serial No. 88574745 - FROGMAN - N/A |
Sent: | November 16, 2019 07:42:48 PM |
Sent As: | ecom105@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88574745
Mark: FROGMAN
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Correspondence Address:
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Applicant: Cosentino, Emily
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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: November 16, 2019
The referenced application 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.
Search
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Mark Identifies a Character in Applicant’s Books and Would Not Be Perceived as a Trademark
A. Refusal
Registration is refused, however, because the applied-for mark, as used on the specimen of record, 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.
In this case, the specimen shows the applied-for mark used only to identify a character and not as a trademark for applicant’s goods. The mark appears in a title/part of a title of the books. Moreover, the specimens clearly establish that the books are about a child known as “FROGMAN.” For example, the specimens say, in part, “Alex Addision, sixth grade superhero, struggles to hide his new identity as Frogman….”
This case is akin to In re Scholastic Inc., 223 USPQ 431, 431 (TTAB 1984). In that case, it was determined that “THE LITTLES,” as used in the title of each book in a series of children's books, did not function as a mark where it merely identified the main characters in the books. Here, the mark “FROGMAN” is used as a title or portion of a title of each book in applicant’s series of books, and the specimens establish that the mark identifies the main character of the books.
B. Responding
In this regard, 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 point of purchase displays associated with the goods, in a manner that would be perceived as a trademark. TMEP §1202.10. Applicant is reminded that a trademark is something that indicates the source or origin of the goods.
General Response Guidelines
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.
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 goods and/or 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
Please do not hesitate to contact the undersigned with any questions.
/MaureenDallLott/
Maureen Dall Lott
Trademark Examining Attorney, Law Office 105
United States Patent and Trademark Office
571-272-9714
maureen.lott@uspto.gov
RESPONSE GUIDANCE