Offc Action Outgoing

FROGMAN

Cosentino, Emily

U.S. Trademark Application Serial No. 88574745 - FROGMAN - N/A

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

 

 

 

 

Correspondence Address: 

COSENTINO, EMILY

155 MILL RUN ROAD

INDIANA, PA 15701

 

 

 

 

Applicant:  Cosentino, Emily

 

 

 

Reference/Docket No. N/A

 

Correspondence Email Address: 

 emily_cosentino@verizon.net

 

 

 

NONFINAL 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).  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.

 

SUMMARY OF ISSUES:

 

  • Refusal under Trademark Act Sections 1, 2 and 45 on the basis that the mark merely identifies a character in applicant’s books and would not be perceived as a trademark.

 

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.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

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

  • 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.  

 

 

 

U.S. Trademark Application Serial No. 88574745 - FROGMAN - N/A

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)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 16, 2019 for

U.S. Trademark Application Serial No. 88574745

 

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. 

 

 

Lott, Maureen D.

 

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 November 16, 2019, 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.”

 

 

 


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