Professional Documents
Culture Documents
net)
Subject: U.S. TRADEMARK APPLICATION NO. 85367412 - CASEY ANTHONY
- N/A
Sent: 9/27/2011 8:59:21 AM
Sent As: ECOM117@USPTO.GOV
Attachments: Attachment - 1
Attachment - 2
Attachment - 3
Attachment - 4
Attachment - 5
Attachment - 6
Attachment - 7
Attachment - 8
Attachment - 9
Attachment - 10
Attachment - 11
Attachment - 12
Attachment - 13
Attachment - 14
Attachment - 15
CORRESPONDENT’S REFERENCE/DOCKET
NO:
N/A
CORRESPONDENT E-MAIL ADDRESS:
johnr@grant-media.net
OFFICE ACTION
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.
The following is required for a showing of false connection under Trademark Act Section 2(a):
(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 sold or
services performed by applicant under the mark; and
(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 Peter S. Herrick, P.A., 91 USPQ2d 1505, 1507 (TTAB 2009); In re MC MC S.r.l., 88 USPQ2d 1378,
1379 (TTAB 2008); TMEP §1203.03(e); see also 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) (providing foundational
principles for the current four-part test used to determine the existence of a false connection).
As set forth in the attached representative Internet articles, Casey Anthony is the name of a person who
was involved in a highly public murder trial in 2010. She is not connected with the services sold by the
applicant under the mark. Moreover, due to her fame, purchasers would presume a connection between
Casey Anthony and the entertainment services.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by
submitting evidence and arguments in support of registration.
Consent
The applied-for mark contains the name “Casey Anthony” and appears to identify a particular living
individual; however, the application does not include this named party’s written consent to registration of
the name as a trademark/service mark. Written consent is required for registration of a mark containing a
name, including a pseudonym, stage name or nickname, or signature, if the name or signature identifies a
particular living individual. Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).
Therefore, applicant must clarify whether this name/signature identifies a particular living individual and,
if so, provide a written consent from this individual, as explained further below. 37 C.F.R. §2.61(b);
TMEP §§813, 1206.04(a).
If the name or signature in the mark does not identify a particular living individual, then applicant
must submit a statement that the name “Casey Anthony”does not identify a living individual. TMEP
§§813.01(b), 1206.05; see 37 C.F.R. §2.61(b).
If the name or signature in the mark does identify a particular living individual, then applicant must
submit the following:
(1) A statement that the name “Casey Anthony” identifies a living individual whose consent is of
record.
(2) A written consent, personally signed by the individual whose name or signature appears in the
mark, authorizing applicant to register the name as a trademark and/or service mark with the
USPTO (e.g., “I consent to the use and registration by Grant Media of my name “Casey
Anthony” as a trademark and/or service mark with the USPTO”).
Failure to respond to this inquiry is a sufficient basis for refusing registration. See In re Cheezwhse.com,
Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP , 67 USPQ2d 1699, 1701 (TTAB
2003); TMEP §814.
No Filing Basis
Applicant has not specified a filing basis for the application. An application must specify and meet the
requirements of at least one filing basis. 37 C.F.R. §2.32(a)(5); TMEP §806.
(1) Use of the mark in commerce under Trademark Act Section 1(a);
(2) A bona fide intention to use the mark in commerce under Section 1(b);
(3) A claim of priority under Section 44(d) that is based on an earlier-filed foreign
application, and that has been filed within six months of the filing date of the foreign
application; and/or
(4) A foreign registration of a mark in applicant’s country of origin under Section 44(e).
Therefore, applicant must (1) amend the application to specify at least one filing basis, and (2) satisfy all
the requirements for the basis or bases asserted. TMEP §806.
Depending on the circumstances, applicant may be entitled to assert more than one of the above bases.
When claiming more than one basis, applicant must (1) satisfy all requirements for each basis claimed; (2)
state that more than one basis is being asserted; and (3) list separately each basis, followed by the goods or
services to which that basis applies. 37 C.F.R. §2.34(b)(2); TMEP §806.02(a).
Although multi-basis applications are permitted, applicant cannot assert both use in commerce and intent
to use for the same goods or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b).
(2) The date of first use of the mark anywhere on the goods or in connection with the
services;
(3) The date of first use of the mark in commerce as a trademark or service mark;
(4) One “specimen” that shows the mark used on the goods, or in connection with the
services, for each class of goods and services (i.e., shows how applicant actually uses the mark
in commerce). If a specimen was not submitted with the initial application, applicant must
submit the following statement: “ The specimen was in use in commerce at least as early as
the application filing date;” and
(5) Verification, in an affidavit or signed declaration under 37 C.F.R. §2.20, of the above
statements and dates of use.
Applicant has had a bona fide intention to use the mark in commerce on or in connection
with the goods or services listed in the application as of the filing date of the application.
Applicant must clarify the identification of services by replacing the word “namely” with the subject
matter of the entertainment shows. See TMEP §1402.01. For example, the wording “current events and
entertainment news” would be an acceptable subject matter.
For assistance with identifying and classifying goods and/or services in trademark applications, please see
the online searchable Manual of Acceptable Identifications of Goods and Services at
http://tess2.uspto.gov/netahtml/tidm.html. See TMEP §1402.04.
An applicant may amend an identification of services only to clarify or limit the services; adding to or
broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.,
1402.07 et seq.
/Patty Evanko/
Trademark Attorney
Law Office 117
571-272-9404
patty.evanko@uspto.gov (questions only)
All informal e-mail communications relevant to this application will be placed in the official
application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant
or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint
applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does
not miss crucial deadlines or official notices, check the status of the application every three to four months
using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov/. Please keep a
copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-
9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.
PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24
hours of this e-mail notification.
2. Respond within 6 months, calculated from 9/27/2011 (or sooner if specified in the Office letter), using
the Trademark Electronic Application System Response to Office Action form. If you have difficulty
using the USPTO website, contact TDR@uspto.gov.
3. Contact the examining attorney who reviewed your application with any questions about the content of
the office letter:
/Patty Evanko/
Trademark Attorney
Law Office 117
571-272-9404
patty.evanko@uspto.gov (questions only)
WARNING
Failure to file any required response by the applicable deadline will result in the ABANDONMENT
of your application.
Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the
USPTO does NOT accept e-mailed responses. Instead, please use the Trademark Electronic
Application System Response to Office Action form.
*** User:pevanko ***
# Total Dead Live Live Status/ Search
Marks Marks Viewed Viewed Search
Docs Images Duration
01 1 0 1 1 0:02 85367412[SN]
02 4906 N/A 0 0 0:43 *{"ck"}a{"sz"}{v}*[bi,ti] not dead[ld]
03 209 N/A 0 0 0:04 *anthon*[bi,ti] not dead[ld]
04 1 N/A 0 0 0:02 2 and 3 not dead[ld]
05 209 0 209 162 0:03 3 not dead[ld]
06 250 N/A 0 0 0:36 *{"ck"}ase{"ey"}*[bi,ti] or *{"ck"}asie*[bi,ti]
07 103 0 103 82 0:04 6 not dead[ld]
PHONE 4084098654
EMAIL ADDRESS johnr@grant-media.net
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
LEGAL ENTITY INFORMATION
TYPE limited liability company
STATE/COUNTRY WHERE LEGALLY
ORGANIZED
California
CORRESPONDENCE INFORMATION
NAME Grant Media
FIRM NAME Grant Media
STREET 2544 3rd Street
CITY San Francisco
STATE California
COUNTRY United States
ZIP/POSTAL CODE 94107
PHONE 4084098654
EMAIL ADDRESS johnr@grant-media.net
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
FEE INFORMATION
NUMBER OF CLASSES 1
FEE PER CLASS 325
*TOTAL FEE DUE 325
*TOTAL FEE PAID 325
SIGNATURE INFORMATION
SIGNATURE /jo/
SIGNATORY'S NAME John Oswald
SIGNATORY'S POSITION VP
DATE SIGNED 07/10/2011
PTO Form 1478 (Rev 9/2006)
OMB No. 0651-0009 (Exp 12/31/2011)
The applicant, Grant Media, a limited liability company legally organized under the laws of California,
having an address of
2544 3rd Street
San Francisco, California 94107
United States
requests registration of the trademark/service mark identified above in the United States Patent and
Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051
et seq.), as amended, for the following:
For specific filing basis information for each item, you must view the display within the Input Table.
International Class 041: Entertainment in the nature of an on-going special variety, news, music or
comedy show featuring namely broadcast over television, satellite, audio, and video media
A fee payment in the amount of $325 has been submitted with the application, representing payment for 1
class(es).
Declaration
The undersigned, being hereby warned that willful false statements and the like so made are punishable by
fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and
the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is
properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to
be the owner of the trademark/service mark sought to be registered, or, if the application is being filed
under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce;
to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right
to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to
be likely, when used on or in connection with the goods/services of such other person, to cause confusion,
or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and
that all statements made on information and belief are believed to be true.