Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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 27, 2020

 

 

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:

 

• Prior-Filed Application
• Section 2(a) Refusal – False Association
• Information Required
• Section 2(c) Refusal – Name of Individual
• TEAS Plus Status Lost – Additional Fee Required  
• Response Guidelines

 

I.                   PRIOR-FILED APPLICATION

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting registered marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

The filing date of pending U.S. Application Serial No. 88873695 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Applicant should note the following refusal.

 

II.                SECTION 2(a) FALSE ASSOCIATION REFUSAL

 

Registration is refused because the applied-for mark consists of or includes matter that may falsely suggest a connection with Joseph Maldonado-Passage also known as “Joe Exotic”.  See evidence attached and discussed below. Trademark Act Section 2(a), 15 U.S.C. §1052(a).  Although Mr. Maldonado-Passage does not appear to be connected with the goods provided by applicant under the applied-for mark, “Joe Exotic” is so well-known that consumers would presume a connection.  See id.

 

Trademark Act Section 2(a) prohibits registration of “matter which may . . . falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols.”  15 U.S.C. § 1052(a).  To establish that an applied-for mark falsely suggests a connection with a person or an institution, the following is required:

 

(1)        The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution.

 

(2)        The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution.

 

(3)        The person or institution identified in the mark is not connected with the goods that are sold or will be sold or services that are performed or will be performed by applicant under the mark.

 

(4)        The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods and/or services.

 

In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *3 (TTAB 2020) (citing Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983); In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1643 (TTAB 2015); In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013)).

 

Here, the terms “Joe Exotic” refer to the identity or nickname of another person, Joseph Maldonado-Passage and would be recognized as pointing uniquely and unmistakably to him.  The terms at issue need not be the actual, legal name of the party falsely associated with applicant’s mark to be unregistrable under Section 2(a).  TMEP §1203.03; see, e.g., Hornby v. TJX Cos., 87 USPQ2d 1411, 1417, 1424 (TTAB 2008) (finding TWIGGY to be the nickname of professional model Lesley Hornby); Buffett v. Chi‑Chi’s, Inc., 226 USPQ 428, 429-30 (TTAB 1985) (finding MARGARITAVILLE to be the persona of singer Jimmy Buffett).  The term must, however, be so uniquely and unmistakably associated with the named party as to constitute that party’s name or identity.  TMEP §1203.03; see, e.g., In re Cotter & Co., 228 USPQ 202, 204-05 (TTAB 1985); Buffett v. Chi‑Chi’s, Inc., 226 USPQ at 429.

 

In this case, the attached evidence from Today, Wikipedia, Business Insider, CNN Entertainment, Heart, Click Orlando, KHQA, and the various articles from major U.S. Newspapers shows the moniker “Joe Exotic” refers to a well-known nickname of Joseph Maldonado-Passage.  See also Star Tribune, The New Yorker, and PopSugar.  The attached evidence also demonstrates that the wording “Joe Exotic” would be perceived to point uniquely and unmistakably to Mr. Maldonado-Passage, as his nickname “Joe Exotic” has been used widely in mainstream media.  See Newsday, Tampa Bay Times, Star Tribune, The San Francisco Chronicle, Heart, and CNN.  “[A] nickname or an informal reference, even one created by the public, can qualify as an entity's ‘identity,’ thereby giving rise to a protectable interest,” as in this case. See Bos. Athletic Ass'n v. Velocity, LLC, 117 USPQ2d 1492, 1496 (TTAB2015). Thus, because Joe Exotic is self-proclaimed title and a title that the media and viewership use to refer to Joseph Maldonado-Passage, the mark sought to be registered, Joe Exotic, is the same as, or a close approximation of, the name or identity previously used by another person.

 

Furthermore, here, there is no evidence in the record that the owner of the mark “Tiger King, LLC” is connected to Mr. Maldonado-Passage, and his fame is such that a connection would be presumed when this name is used in connection with these goods. 

 

In view of all of the factors discussed above, the applied-for mark must be refused registration pursuant to Section 2(a) of the Trademark Act since the mark appears to falsely suggest a connection with Joseph Maldonado-Passage.  Trademark Act Section 2(a), 15 U.S.C. §1052(a), bars the registration on either the Principal or the Supplemental Register of a designation that consists of or comprises matter which, with regard to persons, institutions, beliefs, or national symbols, falsely suggests a connection with them.

 

Applicant should note the inquiry stated below.

 

III.             INFORMATION REQUIRED

 

Due to the renown of the institution or person named in the mark, and the fact that there is no information in the application record regarding a connection with applicant, applicant must specify whether the person or institution named in the mark has any connection with applicant’s goods and/or services, and if so, must describe the nature and extent of that connection.  See 37 C.F.R. §2.61(b); TMEP §1203.03(c)(i).  Applicant must also furnish any additional documents or evidence to substantiate the current and ongoing connection between the applicant and the person named in the mark; merely providing conclusory statements will not satisfy this requirement.

 

Applicant should note the refusal stated below.

 

IV.             SECTION 2(c) REFUSAL – NAME OF A LIVING INDIVIDUAL

 

Registration is refused because the applied-for mark consists of or comprises a name, portrait, or signature identifying a particular living individual whose written consent to register the mark is not of record.  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §1206; see In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *7-9 (TTAB 2020); In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1649-50 (TTAB 2015).

 

For purposes of Section 2(c), a name in a mark identifies a particular living individual if the person bearing the name will be associated with the mark as used on the goods or services because:  “(1) the person is so well known that the public would reasonably assume a connection between the person and the goods or services; or (2) the individual is publicly connected with the business in which the mark is used.”  In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1650 (TTAB 2015); see In re Hoefflin, 97 USPQ2d 1174, 1175-76 (TTAB 2010); Krause v. Krause Publ’ns, Inc., 76 USPQ2d 1904, 1909-10 (TTAB 2005).

 

In this case, the person is so well known that the public would reasonably assume a connection between the person and the goods. 

 

The applied-for mark Joe Exotic refers to Joseph Maldonado-Passage.  Section 2(c) applies not only to the full name of an individual, but also to any first name, surname, shortened name, pseudonym, stage name, title, or nickname that identifies a particular living individual.  In re Nieves & Nieves LLC, 113 USPQ2d 1629, 1639 (TTAB 2015) (holding registration of the mark PRINCESS KATE barred under Section 2(c) in the absence of consent to register, because the mark “points uniquely and unmistakably to Kate Middleton,” the Duchess of Cambridge, whose identity is renowned); In re Hoefflin, 97 USPQ2d 1174, 1177-78 (TTAB 2010) (holding registration of the marks OBAMA PAJAMA, OBAMA BAHAMA PAJAMAS, and BARACK’S JOCKS DRESS TO THE LEFT barred under Section 2(c) in the absence of consent to register, because the marks create a direct association with President Barack Obama); In re Sauer, 27 USPQ2d 1073, 1074-75 (TTAB 1993) (holding registration of a mark containing BO, used in connection with a sports ball, barred under Section 2(c) in the absence of consent to register, because BO is the nickname of the well-known athlete BO JACKSON and thus use of the mark would lead to the assumption that he was associated with the goods), aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994). 

 

Thus, the applied-for mark, Joe Exotic, who is also known as Joe Exotic and Joseph Maldonado-Passage, refers to a particular living individual, the star or focal person in a documentary. See e.g. Yahoo (showing an estimated 64 million viewers watched the docuseries featuring Joseph Maldonado-Passage); see also Star Tribune, The New Yorker, and PopSugar (showing that the public and journalists commonly refer to “Joe Exotic” as the nickname for Joseph Maldonado-Passage).   Additionally, “[w]ell-known individuals such as celebrities and world-famous political figures are entitled to the protection of Section 2(c) without having to evidence a connection with the involved goods or services.”  In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *8 (TTAB 2020) (citing In re Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010); In re Masucci, 179 USPQ 829, 830 (TTAB 1973)).  Therefore, because Joseph Maldonado-Passage is well known as Joe Exotic, when applicant’s mark is used on its goods, consumers and the general public are likely to presume his connection to the goods and a thus consent statement is required.

 

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 Joseph Maldonado-Passage, 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 “Joe Exotic” identifies the nickname of Joseph Maldonado-Passage, 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, Joseph Maldonado-Passage, 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).

 

Applicant should note the requirement stated below.

 

V.                TEAS PLUS STATUS LOST – ADDITIONAL FEE REQUIRED

 

Processing fee required.  Applicant must submit an additional processing fee of $125 per class because the application as originally filed did not meet the TEAS Plus application filing requirements.  See 37 C.F.R. §2.22(c); TMEP §§819.01-.01(q), 819.04.  Specifically, applicant failed to meet the following requirement:  a consent to register the mark from the person identified in the mark (or conversely, if appropriate, a statement that the name or portrait in the mark does not identify a living individual) was not provided.

 

The additional processing fee is required regardless of whether applicant satisfies these application requirements.

 

Accordingly, the application will no longer be treated as TEAS Plus; it is now considered a TEAS Standard application.  See 37 C.F.R. §2.22(c); TMEP §819.04.

 

Applicant should note the response guidelines stated below.

 

VI.             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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Amer Raja/

Amer Raja

Examining Attorney

Law Office 121

(571) 270 5936

amer.raja@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.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 27, 2020 for

U.S. Trademark Application Serial No. 90133163

 

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. 

 

 

/Amer Raja/

Amer Raja

Examining Attorney

Law Office 121

(571) 270 5936

amer.raja@uspto.gov

 

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 December 27, 2020, 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.”