USPTO Rejection of Casey Anthony Trademark Application

8/3/2019 USPTO Rejection of Casey Anthony Trademark Application

http://slidepdf.com/reader/full/uspto-rejection-of-casey-anthony-trademark-application 1/29

To: Grant Media ( [email protected])

Subject: U.S. TRADEMARK APPLICATION NO. 85367412 - CASEY ANTHONY

- N/A

Sent: 9/27/2011 8:59:21 AM

Sent As: [email protected]

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

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

APPLICATION SERIAL NO. 85367412

MARK: CASEY ANTHONY

*85367412* CORRESPONDENT ADDRESS:

GRANT MEDIA

GRANT MEDIA

2544 3RD ST

SAN FRANCISCO, CA 94107-3113

CLICK HERE TO RESPOND TO THIS LETTER:http://www.uspto.gov/trademarks/teas/response_forms.jsp

APPLICANT: Grant Media

CORRESPONDENT’S REFERENCE/DOCKET

NO:

N/A

CORRESPONDENT E-MAIL ADDRESS:

[email protected]



OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTERTO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST

RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE

ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE: 9/27/2011

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.

Search of the Office Records

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).

Refusal to Register-False Connection

Registration is refused because the applied-for mark consists of or includes matter which may falsely

suggest a connection with Casey Anthony. Although Casey Anthony is not connected with the goods

and/or services provided by applicant under the applied-for mark, Casey Anthony is so famous that

consumers would presume a connection. Trademark Act Section 2(a), 15 U.S.C. §1052(a); see TMEP

§§1203.03, 1203.03(e). See generally Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co. , 703

F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Cotter & Co., 228 USPQ 202 (TTAB 1985); Buffett v.

Chi-Chi’s, Inc. , 226 USPQ 428 (TTAB 1985).

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.

Applicant must respond to the requirement(s) set forth below.

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 applicantmust 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 theUSPTO (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”).

TMEP §§813, 813.01(a), 1206.04(a); see 37 C.F.R. §2.61(b).

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 therequirements of at least one filing basis. 37 C.F.R. §2.32(a)(5); TMEP §806.

An application may be filed based on any of the following:

(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).

15 U.S.C. §§1051(a)-(b), 1126(d)-(e); 37 C.F.R. §2.34(a)(1)-(a)(4); TMEP §806.01(a)-(d).

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).

Requirements for Applications Based on Use

An application based on use of the mark in commerce must include the following:

(1) The following statement: “ The mark is in use in commerce, as defined by 15

U.S.C. §1127, and was in use in such commerce on or in connection with the goods or

services listed in the application as of the application filing date;”

(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.

See 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1), 2.59(a), 2.193(e)(1); TMEP §806.01(a).

Requirements for Applications Based on Intent-to-Use

An application based on a bona fide intention to use the mark in commerce must include the following

statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:

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.

15 U.S.C. §1051 b 3 B ; 37 C.F.R. §2.34 a 2 ; TMEP §806.01 b ; see 37 C.F.R. §2.193 e 1 .



Identification of Services

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

[email protected] (questions only)

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please

wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of

the application. For technical assistance with online forms, e-mail [email protected]. Forquestions

about the Office action itself, please contact the assigned trademark examining attorney.E-mail

communications will not be accepted as responses to Office actions; therefore, do not respond to this

Office action by e-mail.

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 byan individual applicant

orsomeone 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/ .

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at

http://www.uspto.gov/teas/eTEASpageE.htm .



To: Grant Media ( [email protected])

Subject: U.S. TRADEMARK APPLICATION NO. 85367412 - CASEY ANTHONY

- N/A

Sent: 9/27/2011 8:59:24 AM

Sent As: [email protected]

Attachments:

IMPORTANT NOTICE REGARDING YOUR TRADEMARK

APPLICATION

Your trademark application (Serial No. 85367412) has been reviewed. The

examining attorney assigned by the United States Patent and Trademark Office

(“USPTO”) has written a letter (an “Office Action”) on 9/27/2011 to which you

must respond. Please follow these steps:1. Read the Office letter by clicking on this link OR go to

http://tmportal.uspto.gov/external/portal/tow and enter your serial number to access the Office

letter.

PLEASE NOTE: TheOffice letter may not beimmediately available but will beviewable within24

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 [email protected].

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

[email protected] (questions only)

WARNINGFailure 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]

Session started 9/27/2011 7:17:50 AM

Session finished 9/27/2011 7:39:57 AM

Total search duration 1 minutes 34 seconds

Session duration 22 minutes 7 seconds

Defaut NEAR limit=1ADJ limit=1

Sent to TICRS as Serial Number: 85367412



PTO Form 1478 (Rev 9/2006)

OMB No. 0651-0009 (Exp 12/31/2011)

Trademark/Service Mark Application, Principal Register

Serial Number: 85367412

Filing Date: 07/10/2011

The table below presents the data as entered.

Input Field Entered

SERIAL NUMBER 85367412

MARK INFORMATION

*MARK Casey Anthony

STANDARD CHARACTERS YES

USPTO-GENERATED IMAGE YES

LITERAL ELEMENT Casey Anthony

MARK STATEMENT

The mark consists of standard characters,

without claim to any particular font, style,

size, or color.

REGISTER Principal

APPLICANT INFORMATION

*OWNER OF MARK Grant Media

*STREET 2544 3rd Street

*CITY San Francisco

*STATE

(Required for U.S. applicants)California

*COUNTRY United States

*ZIP/POSTAL CODE

(Required for U.S. applicants only)94107

PHONE 4084098654

EMAIL ADDRESS [email protected]

AUTHORIZED TO COMMUNICATE VIA EMAIL Yes

LEGAL ENTITY INFORMATION

TYPE limited liability company

STATE/COUNTRY WHERE LEGALLY



ORGANIZEDCalifornia

GOODS AND/OR SERVICES AND BASIS INFORMATION

INTERNATIONAL CLASS 041

*IDENTIFICATION

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

NO FILING BASIS SPECIFIED BASIS REQUIRED

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 [email protected]

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)

Trademark/Service Mark Application, Principal Register

Serial Number: 85367412Filing Date: 07/10/2011

To the Commissioner for Trademarks:

MARK:Casey Anthony(Standard Characters, see mark )

The literal element of the mark consists of Casey Anthony.The mark consists of standard characters, without claim to any particular font, style, size, or color.

The applicant, Grant Media, a limited liability company legally organized under the laws of California,having an address of

2544 3rd StreetSan Francisco, California 94107

United Statesrequests registration of the trademark/service mark identified above in the United States Patent andTrademark 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

The applicant has not specified a filing basis.

The applicant's current Correspondence Information:

Grant Media

Grant Media

2544 3rd Street

San Francisco, California 94107

4084098654(phone)

[email protected] (authorized)

A fee payment in the amount of $325 has been submitted with the application, representing payment for 1class(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, andthe 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 tobe the owner of the trademark/service mark sou ht to be re istered, or, if the a lication is bein 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.

Signature: /jo/Date Signed: 07/10/2011

Signatory's Name: John Oswald

Signatory's Position: VP

RAM Sale Number: 16485

RAM Accounting Date: 07/11/2011

Serial Number: 85367412

Internet Transmission Date: Sun Jul 10 13:55:05 EDT 2011

TEAS Stamp: USPTO/BAS-99.126.183.34-2011071013550505

3759-85367412-4802a947b48239fb1442c7290d

fb36e-CC-16485-20110710134549506384

USPTO Rejection of Casey Anthony Trademark Application

Documents

Transcript of USPTO Rejection of Casey Anthony Trademark Application