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To:

Grant Media (johnr@grant-media.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

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

APPLICATION SERIAL NO.

85367412

MARK: CASEY ANTHONY

CORRESPONDENT ADDRESS:

GRANT MEDIA GRANT MEDIA 2544 3RD ST SAN FRANCISCO, CA 94107-3113

APPLICANT:

Grant Media

*85367412*

CLICK HERE TO RESPOND TO THIS LETTER:

http://www.uspto.gov/trademarks/teas/response_forms.jsp

CORRESPONDENT’S REFERENCE/DOCKET NO:

N/A CORRESPONDENT E-MAIL ADDRESS:

johnr@grant-media.net

OFFICE ACTION STRICT DEADLINE TO RESPOND TO THIS LETTER

TO 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 applicant

must submit a statement that the name “Casey Anthony”does not identify a living individual. §§813.01(b), 1206.05; see 37 C.F.R. §2.61(b).

TMEP

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”).

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 the requirements 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);

(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.

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

patty.evanko@uspto.gov (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 TEAS@uspto.gov. For questions 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 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/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/teas/eTEASpageE.htm.

To:

Grant Media (johnr@grant-media.net)

Subject:

U.S. TRADEMARK APPLICATION NO. 85367412 - CASEY ANTHONY - N/A

Sent:

9/27/2011 8:59:24 AM

Sent As:

ECOM117@USPTO.GOV

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: 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 ***

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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

   

STATE/COUNTRY WHERE LEGALLY

 

STANDARD CHARACTERS

*MARK

Casey Anthony

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

*OWNER OF MARK

*STREET

2544 3rd Street

Grant Media

*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

johnr@grant-media.net

AUTHORIZED TO COMMUNICATE VIA EMAIL

Yes

LEGAL ENTITY INFORMATION

APPLICANT INFORMATION

   

GOODS AND/OR SERVICES AND BASIS INFORMATION

   
California
California
ORGANIZED
ORGANIZED
   
   
   
   
   
   
   

PHONE

4084098654

EMAIL ADDRESS

johnr@grant-media.net

AUTHORIZED TO COMMUNICATE VIA EMAIL

Yes

INTERNATIONAL CLASS

*IDENTIFICATION

Entertainment in the nature of an on-going

041

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

SIGNATURE

SIGNATORY'S NAME

John Oswald

/jo/

SIGNATORY'S POSITION

VP

DATE SIGNED

07/10/2011

NUMBER OF CLASSES

FEE PER CLASS

325

1

*TOTAL FEE DUE

325

*TOTAL FEE PAID

325

SIGNATURE INFORMATION

FEE INFORMATION

   

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

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 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

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)

johnr@grant-media.net (authorized)

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.

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