To: | World Wrestling Entertainment, Inc. (lauren.middlen@wwecorp.com) |
Subject: | U.S. Trademark Application Serial No. 88603666 - TAYNARA - N/A |
Sent: | December 10, 2019 03:25:20 PM |
Sent As: | ecom126@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88603666
Mark: TAYNARA
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Correspondence Address: WORLD WRESTLING ENTERTAINMENT, INC.
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Applicant: World Wrestling Entertainment, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: December 10, 2019
SEARCH OF OFFICE’S DATABASE OF MARKS: 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).
SUMMARY OF ISSUES: The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
I. SECTION 2(c) REFUSAL – NAME OF PARTICULAR LIVING INDIVIDUAL
The attached evidence from WWE.com, IMDB.com, and Wikpedia.org shows that “Taynara” is the stage name of professional wrestler “Taynara Mel de Carvalho”. The applied-for mark TAYNARA therefore identifies a particular living individual. The same evidence also shows that “Taynara Mel de Carvalho” is publically connected with applicant’s business, e.g. “Entertainment services, namely, wrestling exhibitions and performances by a professional wrestler and entertainer rendered live and through broadcast media including television and radio, and via the internet or commercial online service.” A determination that a person is publicly connected with the business in which the mark is being used may be based on evidence that the named individual is well known in the relevant field of goods or services, is associated in some manner with the applicant (e.g., the named individual is a corporate officer or partner of the applicant), and/or is actually connected to the goods or services at issue (e.g., the named individual invented the identified goods in the application), and, as a result, the relevant public will recognize or perceive the name as identifying that particular individual. See Krause v. Krause Publ’ns Inc., 76 USPQ2d 1904, 1909-10 (TTAB 2005); In re Sauer, 27 USPQ2d 1073, 1075 (TTAB 1993); TMEP §1206.02.
Registration of the applied-for mark TAYNARA is, in light of the foregoing, refused under Section 2(c) of the Trademark Act.
Response Options for this Refusal
The refusal under Section 2(c) will be withdrawn if applicant provides both of the following:
(1) A statement that the name shown in the mark identifies “TAYNARA MELO DE CARVALHO”, a living individual whose consent is of record. If the name represents that of a pseudonym, stage name, title and name combination, or nickname, applicant must include a statement that “TAYNARA” identifies the stage name of “TAYNARA MELO DE CARVALHO”, a living individual whose consent is of record.
(2) A written consent, personally signed by the individual whose name, signature, or portrait appears in the mark, authorizing applicant to register the identifying matter as a trademark and/or service mark with the USPTO; for example, an applicant may use, if applicable, the following: “I, TAYNARA MELO DE CARVALHO, consent to the use and registration of my name as a trademark and/or service mark with the USPTO.”
See TMEP §§813, 813.01(a), 1206.04(a).
Applicant is advised that the written consent must include a statement of the party’s consent to applicant’s registration, and not just the use, of the identifying matter as a trademark. See Krause v. Krause Publ’ns, Inc., 76 USPQ2d 1904, 1912-13 (TTAB 2005); In re New John Nissen Mannequins, 227 USPQ 569, 571 (TTAB 1985); TMEP §1206.04(a).
II. AMENDMENT REQUIRED – IDENTIFICATION OF SERVICES
Indefinite and Overbroad Wording in Identification
Suggested Wording for Identification
Applicant may substitute the following wording, if accurate (note that added text is indicated with bold type, deleted text is indicated with a strike through, and suggested text is indicated with braces):
“Entertainment services, namely, wrestling exhibitions and performances by a professional wrestler and entertainer rendered
live and recorded for the purpose of distribution through broadcast media including television and radio, and via the internet or commercial online service;
providing wrestling news and information via a global computer network; providing information in the fields of sports and entertainment via an online community portal; providing a website in the
field of sports entertainment information; fan club services, namely, organizing sporting events in the field of wrestling for wrestling fan club members; organizing social entertainment events for
entertainment purposes for wrestling fan club members; providing online newsletters in the fields of sports entertainment; online journals, namely, blogs, in the field of sports
entertainment” in International Class 41.
Advisories – ID Manual and Scope of Amendments
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
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.
Click HERE to file a response to this non-final Office action
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.
/Carl A. Konschak/
Carl A. Konschak, Esq.
Examining Attorney
Law Office 126
(571) 270-3878
carl.konschak@uspto.gov