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"Johnny Football" trademark application office action

"Johnny Football" trademark application office action

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Published by Darren Adam Heitner
The U.S. Patent and Trademark Office has some concerns with Johnny Manziel's trademark application.
The U.S. Patent and Trademark Office has some concerns with Johnny Manziel's trademark application.

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Published by: Darren Adam Heitner on Sep 14, 2013
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09/14/2013

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To:
JMAN2 Enterprises, LLC ( jjordan@jbwlawfirm.com
 
)
Subject:
U.S. TRADEMARK APPLICATION NO. 85839336 - JOHNNYFOOTBALL - N/A
Sent:
5/22/2013 3:41:40 PM
Sent As:
ECOM104@USPTO.GOV
Attachments:
Attachment - 1Attachment - 2Attachment - 3Attachment - 4Attachment - 5Attachment - 6Attachment - 7Attachment - 8Attachment - 9Attachment - 10Attachment - 11Attachment - 12Attachment - 13Attachment - 14
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

U.S. APPLICATIONSERIAL NO.
 85839336
MARK:
JOHNNY FOOTBALL
*85839336*

CORRESPONDENT ADDRESS:
 VIRGIL J. JORDAN J. BENNETT WHITE, P.C. 1011 PRUITT PL TYLER, TX 75703-1124 
 
CLICK HERE TO RESPOND TO THIS LETTER
http://www.uspto.gov/trademarks/teas/response_forms.jsp

APPLICANT:
JMAN2 Enterprises, LLC

CORRESPONDENT’S REFERENCE/DOCKET NO:
 N/A
 CORRESPONDENT E-MAIL ADDRESS:
 jjordan@jbwlawfirm.com
OFFICE ACTION
 
STRICT DEADLINE TO RESPOND TO THIS LETTER
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTOMUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER
WITHIN 6 MONTHS
OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE:5/22/2013
TEASPLUSAPPLICANTSMUSTSUBMITDOCUMENTSELECTRONICALLYORSUBMITFEE:
Applicants who filed their application online using the reduced-fee TEAS Plus application mustcontinue to submit certain documents online using TEAS, including responses to Office actions.
See
37C.F.R. §2.23(a)(1).For a complete list of these documents, see TMEP §819.02(b).In addition, suchapplicants must accept correspondence from the Office via e-mail throughout the examination process andmust maintain a valid e-mail address.37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a).TEAS Plusapplicants who do not meet these requirements must submit an additional fee of $50 per international classof goods and/or services.37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.In appropriate situations and whereall issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendmentwill not incur this additional fee.The referenced application has been reviewed by the assigned trademark examining attorney.Applicantmust 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 OFFICE’S DATABASE OF MARKSThe trademark examining attorney has searched the Office’s database of registered and pending marksand has found no similar registered mark that would bar registration under Trademark Act Section 2(d).TMEP §704.02;
see
15 U.S.C. §1052(d).However, marks in prior-filed pending applications may presenta bar to registration of applicant’s mark.SECTION 2(c) – CONSENTRegistration is refused because the applied-for mark consists of or includes a name, portrait, or signatureidentifying 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, e.g.
,
In re Hoefflin
, 97 USPQ2d 1174(TTAB 2010).The refusal under Section 2(c) will be withdrawn if applicant provides the following:(1)A statement that the name shown in the mark identifies Johnathan Paul Manziel, a livingindividual 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 JOHNNYFOOTBALL identifies the {pseudonym/stage name/title and name/nickname} of Johnathan PaulManziel, a living individual whose consent is of record; and
 
(2)A written consent, personally signed by the individual whose name, signature, or portraitappears in the mark, authorizing applicant to register the identifying matter as a trademark and/orservice mark with the USPTO (e.g., “I, Johnathan Paul Manziel, consent to the use andregistration by JMAN2 Enterprises, LLC, of my name as a trademark and/or service mark with theUSPTO”).
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 toapplicant’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
, 227USPQ 569, 571 (TTAB 1985);
Reed v. Bakers Eng’g & Equip. Co.
, 100 USPQ 196, 199 (PTO 1954);TMEP §1206.04(a).For purposes of Section 2(c), a name in a mark identifies a particular living individual if the personbearing the name will be associated with the mark as used on the goods or services because he or she (1) is“so well known that the public would reasonably assume [a] connection” or (2) is “publicly connectedwith the business in which the mark is being used.
 In re Hoefflin
, 97 USPQ2d 1174, 1175-76 (TTAB2010);
see also Krause v. Krause Publ’ns, Inc.
, 76 USPQ2d 1904, 1909-10 (TTAB 2005);
In re Sauer 
, 27USPQ2d 1073, 1075 (TTAB 1994).A determination that a person is publicly connected with the business in which the mark is being used maybe based on evidence that he or she is well known in the relevant field of goods or services, is associatedwith the entity using the mark (e.g., the named individual is a corporate officer or partner of the applicant),and/or is actually connected to the goods or services at issue (e.g., the named individual invented theidentified goods in the application).
See Krause v. Krause Publ’ns Inc.
, 76 USPQ2d 1904, 1909-10(TTAB 2005);
In re New John Nissen Mannequins
, 227 USPQ 569, 570 (TTAB 1985);
Reed v. Bakers Eng’g & Equip. Co.
, 100 USPQ 196, 199-200 (PTO 1954); TMEP §1206.02. In the present case, thename JOHNNY FOOTBALL is well-known in the field of football. See the enclosed excerpt fromWikipedia.org.Section 2(c) applies not only to full names, but also to any first name, surname, shortened name,pseudonym, stage name, title, or nickname that identifies a particular living individual.
See 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 Section2(c) in the absence of consent to register, because the marks create a direct association with PresidentBarack 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 consentto register, because BO is the nickname of a well-known athlete and thus use of the mark would lead tothe assumption that he was associated with the goods),
aff’d per curiam
, 26 F.3d 140 (Fed. Cir. 1994);
Inre Steak & Ale Rests. of Am., Inc.
, 185 USPQ 447, 448 (TTAB 1975) (affirming a Section 2(c) refusal of the mark PRINCE CHARLES because the wording identifies a particular well-known living individualwhose consent was not of record).Applicant should note the following additional ground for refusal.SECTIONS 1, 2 AND 45 REFUSAL – MERELY ORNAMENTAL

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