| PTO- 1957 |
| Approved for use through 11/30/2023. OMB 0651-0050 |
| U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 90693523 |
| LAW OFFICE ASSIGNED | LAW OFFICE 114 |
| MARK SECTION | |
| MARK | mark |
| LITERAL ELEMENT | DMX |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| OWNER SECTION (current) | |
| NAME | TONI P INC. |
| INTERNAL ADDRESS | Suite 403S |
| MAILING ADDRESS | 1013 Centre Road |
| CITY | Wilmington |
| STATE | Delaware |
| ZIP/POSTAL CODE | 19805 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| XXXX | |
| OWNER SECTION (proposed) | |
| NAME | TONI P INC. |
| INTERNAL ADDRESS | Suite 403S |
| MAILING ADDRESS | 1013 Centre Road |
| CITY | Wilmington |
| STATE | Delaware |
| ZIP/POSTAL CODE | 19805 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| XXXX | |
| OWNER DOMICILE ADDRESS(NEW) | |
| *ADDRESS | XXXX |
| *CITY | XXXX |
| *STATE (Required for U.S. applicants) |
XXXX |
| *COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | XXXX |
| *ZIP/POSTAL CODE (Required for U.S. and certain international addresses) |
XXXX |
| ARGUMENT(S) | |
|
The Examining Attorney bases her Section 2(d) refusal on the basis of relatedness between footwear and clothing items such as t-shirts. Applicant respectfully disagrees. When the goods and services in question are well known or otherwise generally recognized as having a common source of origin, the burden of establishing relatedness is easier to satisfy. In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082 (Fed. Cir. 2014). For example, relatedness would generally be recognized when the services clearly include or encompass the goods in the identification, such as when the services are "brewpubs" and the goods are "beer" or when the services are "electronic transmission of data and documents via computer terminals" and the goods are "facsimile machines, computers, and computer software." In re Coors Brewing Co., 343 F.3d 1340, 1347, 68 USPQ2d 1059, 1064 (Fed. Cir. 2003); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002). However, when the relatedness of the goods and services is not evident, well known, or generally recognized, "something more" than the mere fact that the goods and services are used together must be shown. In re St. Helena Hosp., 774 F.3d at 754, 113 USPQ2d at 1087 (finding that substantial evidence did not support relatedness of hospital-based residential weight and lifestyle program and printed materials dealing with physical activity and fitness). Therefore, when comparing services such as "restaurant services" with less apparently related goods such as "beer," or "cooking classes" with "kitchen towels," "something more"—beyond the fact that the goods are used in the provision of the services—must be shown to indicate that consumers would understand such services and goods to emanate from the same source. Although the Court in Coors found evidence of "a few registrations" covering both the goods and services at issue insufficient, see In re Coors Brewing Co., 343 F.3d at 1346, 68 USPQ2d at 1063, examples of actual use of a mark for both the goods and services at issue and/or evidence of a large number of third-party registrations covering both the goods and services at issue may suffice. When such evidence is not readily available through searches of electronic resources, examining attorneys should consider issuing an information request under 37 C.F.R. §2.61(b), asking whether the applicant provides both the goods and services at issue and inquiring whether the applicant is aware of others who provide both the goods and services at issue, and if so, requesting additional information about them. Here, the Examining Attorney cited four well-known retailers that sell footwear and other clothing items. Such evidence is insufficient under Coors to support the Section 2(d) refusal. |
|
| ADDITIONAL STATEMENTS SECTION | |
| NAME(S), PORTRAITS(S), SIGNATURE(S) OF INDIVIDUAL(S) | The name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual. |
| MISCELLANEOUS STATEMENT | 1. The individual identified in the mark is in fact deceased; accordingly, the name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual. 2. Toni P, Inc. was and is a furnishing entity for certain goods and services of the world-renown rapper and entertainer Earl Simmons, professionally known as DMX. Toni P, Inc. was 100% owned by Mr. Simmons at all times prior to his death on April 9, 2021. All shares of Toni P, Inc. remain in the name of Mr. Simmons, and have not yet been transferred to the Estate of Earl Simmons currently venued in Westchester County, New York. |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | TIMOTHY C. MATSON |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | tmatson@foxrothschild.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | tabdowhelan@foxrothschild.com; ipdocket@foxrothschild.com |
| DOCKET/REFERENCE NUMBER | 188129.00002 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Timothy C. Matson |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | tmatson@foxrothschild.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | tabdowhelan@foxrothschild.com; ipdocket@foxrothschild.com |
| DOCKET/REFERENCE NUMBER | 188129.00002 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Timothy C. Matson/ |
| SIGNATORY'S NAME | Timothy C. Matson |
| SIGNATORY'S POSITION | Attorney of Record |
| SIGNATORY'S PHONE NUMBER | 612-607-7064 |
| DATE SIGNED | 07/12/2022 |
| ROLE OF AUTHORIZED SIGNATORY | Authorized U.S.-Licensed Attorney |
| SIGNATURE METHOD | Signed directly within the form |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Jul 12 19:11:19 ET 2022 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XXX.XXX- 20220712191119799116-9069 3523-800b3903df66c7ea9910 a368a89a13c4d5493454f2b84 91a687fa23bdbaa7e91-N/A-N /A-20220712185649106175 |
| PTO- 1957 |
| Approved for use through 11/30/2023. OMB 0651-0050 |
| U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number |
The Examining Attorney bases her Section 2(d) refusal on the basis of relatedness between footwear and clothing items such as t-shirts. Applicant respectfully disagrees.
When the goods and services in question are well known or otherwise generally recognized as having a common source of origin, the burden of establishing relatedness is easier to satisfy. In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082 (Fed. Cir. 2014). For example, relatedness would generally be recognized when the services clearly include or encompass the goods in the identification, such as when the services are "brewpubs" and the goods are "beer" or when the services are "electronic transmission of data and documents via computer terminals" and the goods are "facsimile machines, computers, and computer software." In re Coors Brewing Co., 343 F.3d 1340, 1347, 68 USPQ2d 1059, 1064 (Fed. Cir. 2003); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002).
However, when the relatedness of the goods and services is not evident, well known, or generally recognized, "something more" than the mere fact that the goods and services are used together must be shown. In re St. Helena Hosp., 774 F.3d at 754, 113 USPQ2d at 1087 (finding that substantial evidence did not support relatedness of hospital-based residential weight and lifestyle program and printed materials dealing with physical activity and fitness). Therefore, when comparing services such as "restaurant services" with less apparently related goods such as "beer," or "cooking classes" with "kitchen towels," "something more"—beyond the fact that the goods are used in the provision of the services—must be shown to indicate that consumers would understand such services and goods to emanate from the same source. Although the Court in Coors found evidence of "a few registrations" covering both the goods and services at issue insufficient, see In re Coors Brewing Co., 343 F.3d at 1346, 68 USPQ2d at 1063, examples of actual use of a mark for both the goods and services at issue and/or evidence of a large number of third-party registrations covering both the goods and services at issue may suffice. When such evidence is not readily available through searches of electronic resources, examining attorneys should consider issuing an information request under 37 C.F.R. §2.61(b), asking whether the applicant provides both the goods and services at issue and inquiring whether the applicant is aware of others who provide both the goods and services at issue, and if so, requesting additional information about them.
Here, the Examining Attorney cited four well-known retailers that sell footwear and other clothing items. Such evidence is insufficient under Coors to support the Section 2(d) refusal.