"Johnny Football" trademark application office action

7/29/2019 "Johnny Football" trademark application office action

1/22

To: JMAN2 Enterprises, LLC ([email protected])

Subject: U.S. TRADEMARK APPLICATION NO. 85839336 - JOHNNY

FOOTBALL - N/A

Sent: 5/22/2013 3:41:40 PM

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

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANTS TRADEMARK APPLICATION

U.S. APPLICATION SERIAL 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 LETTERhttp://www.uspto.gov/trademarks/teas/response_forms.jsp

APPLICANT: JMAN2 Enterprises, LLC

CORRESPONDENTS REFERENCE/DOCKET NO :

N/A

CORRESPONDENT E-MAIL ADDRESS:

[email protected]

OFFICE ACTION
http://www.uspto.gov/trademarks/teas/response_forms.jsphttp://localhost/var/www/apps/conversion/tmp/OOA0015.JPGhttp://localhost/var/www/apps/conversion/tmp/OOA0014.JPGhttp://localhost/var/www/apps/conversion/tmp/OOA0013.JPGhttp://localhost/var/www/apps/conversion/tmp/OOA0012.JPGhttp://localhost/var/www/apps/conversion/tmp/OOA0011.JPGhttp://localhost/var/www/apps/conversion/tmp/OOA0010.JPGhttp://localhost/var/www/apps/conversion/tmp/OOA0009.JPGhttp://localhost/var/www/apps/conversion/tmp/OOA0008.JPGhttp://localhost/var/www/apps/conversion/tmp/OOA0007.jpghttp://localhost/var/www/apps/conversion/tmp/OOA0006.jpghttp://localhost/var/www/apps/conversion/tmp/OOA0005.jpghttp://localhost/var/www/apps/conversion/tmp/OOA0004.jpghttp://localhost/var/www/apps/conversion/tmp/OOA0003.jpghttp://localhost/var/www/apps/conversion/tmp/OOA0002.jpgmailto:[email protected]


2/22

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANTS TRADEMARK APPLICATION, THE USPTOMUST RECEIVE APPLICANTS COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHSOF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE: 5/22/2013

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT

FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must

continue 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 and

must 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 class

of goods and/or services. 37 C.F.R. 2.6(a)(1)(iv); TMEP 819.04. In appropriate situations and where

all issues can be resolved by amendment, responding by telephone to authorize an examiners amendmentwill not incur this additional fee.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 OFFICES DATABASE OF MARKS

The trademark examining attorney has searched the Offices 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 applicants mark.

SECTION 2(c) CONSENT

Registration 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 living

individual 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 JOHNNY

FOOTBALL identifies the {pseudonym/stage name/title and name/nickname} of Johnathan PaulManziel, a living individual whose consent is of record; and


3/22

(2) A written consent, personally signed by the individual whose name, signature, or portrait

appears in the mark, authorizing applicant to register the identifying matter as a trademark and/or

service mark with the USPTO (e.g., I, Johnathan Paul Manziel, consent to the use and

registration by JMAN2 Enterprises, LLC, of my name as a trademark and/or service mark with the

USPTO).

See TMEP 813, 813.01(a), 1206.04(a).

Applicant is advised that the written consent must include a statement of the partys consent to

applicants registration, and not just the use, of the identifying matter as a trademark. See Krause v.

Krause Publns, Inc., 76 USPQ2d 1904, 1912-13 (TTAB 2005); In re New John Nissen Mannequins, 227

USPQ 569, 571 (TTAB 1985); Reed v. Bakers Engg & 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 person

bearing 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 connected

with the business in which the mark is being used. In re Hoefflin, 97 USPQ2d 1174, 1175-76 (TTAB2010); see also Krause v. Krause Publns, Inc., 76 USPQ2d 1904, 1909-10 (TTAB 2005); In re Sauer, 27

USPQ2d 1073, 1075 (TTAB 1994).

A determination that a person is publicly connected with the business in which the mark is being used may

be based on evidence that he or she is well known in the relevant field of goods or services, is associated

with 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 the

identified goods in the application). See Krause v. Krause Publns Inc., 76 USPQ2d 1904, 1909-10

(TTAB 2005); In re New John Nissen Mannequins, 227 USPQ 569, 570 (TTAB 1985); Reed v. Bakers

Engg & Equip. Co., 100 USPQ 196, 199-200 (PTO 1954); TMEP 1206.02. In the present case, the

name 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 BARACKS JOCKS DRESS TO THE LEFT barred under Section

2(c) in the absence of consent to register, because the marks create a direct association with President

Barack 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 consent

to register, because BO is the nickname of a well-known athlete and thus use of the mark would lead to

the assumption that he was associated with the goods), affd 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 individual

whose consent was not of record).

Applicant should note the following additional ground for refusal.

SECTIONS 1, 2 AND 45 REFUSAL MERELY ORNAMENTAL


4/22

Registration is refused because the applied-for mark as used on the specimen of record (1) is merely a

decorative or ornamental feature of applicants clothing; and (2) does not function as a trademark to

indicate the source of applicants clothing and to identify and distinguish applicants clothing from

others. Trademark Act Sections 1, 2, and 45, 15 U.S.C. 1051-1052, 1127; see In re Lululemon Athletica

Can. Inc., 105 USPQ2d 1684, 1689 (TTAB 2013); In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB

1993); TMEP 904.07(b), 1202.03 et seq.

When evaluating a mark that appears to be ornamental, the size, location, dominance, and significance ofthe alleged mark as applied to the goods are all relevant factors in determining the commercial impression

of the applied-for mark. See, e.g., In re Lululemon Athletica Can. Inc., 105 USPQ2d at 1687 (quoting In

re Right-On Co., 87 USPQ2d 1152, 1156 (TTAB 2008)); In re Dimitris Inc., 9 USPQ2d 1666, 1667

(TTAB 1988); TMEP 1202.03(a).

With respect to clothing, consumers may recognize small designs or discrete wording as trademarks,

rather than as merely ornamental features, when located, for example, on the pocket or breast area of a

shirt. See TMEP 1202.03(a). Consumers may not, however, perceive larger designs or slogans as

trademarks when such matter is prominently displayed across the front of a t-shirt. See In re Pro-Line

Corp., 28 USPQ2d at 1142 (holding BLACKER THE COLLEGE SWEETER THE KNOWLEDGE

centered in large letters across most of the upper half of a shirt, to be a primarily ornamental slogan thatwas not likely to be perceived as a source indicator); In re Dimitris Inc., 9 USPQ2d at 1667-68 (holding

SUMO used in connection with stylized depictions of sumo wrestlers and displayed in large lettering

across the top-center portion of t-shirts and caps, to be an ornamental feature of the goods that did not

function as a trademark); TMEP 1202.03(a), (b), (f)(i), (f)(ii).

In this case, the submitted specimen shows the applied-for mark, JOHNNY FOOTBALL, located directly

on the upper-center area of the front of the shirt, where ornamental elements often appear. See TMEP

1202.03(a), (b). Furthermore, the mark is displayed in a relatively large size on the clothing such that it

dominates the overall appearance of the goods.

Therefore, consumers would view the applied-for mark as a decorative or ornamental feature of the goods,rather than as a trademark to indicate the source of applicants goods and to distinguish them from others.

In appropriate circumstances, applicant may overcome this refusal by satisfying one of the following

options:

(1) Submit a different specimen (a verified substitute specimen) that was in actual use in

commerce at least as early as the filing date of the application (or prior to the filing of an

amendment to allege use) and that shows proper trademark use for the identified goods in

International Class 25.

(2) Amend to the Supplemental Register, which is a second trademark register for marks not yet

eligible for registration on the Principal Register, but which may become capable over time of

functioning as source indicators.

(3) Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence

that the applied-for mark has become distinctive of applicants goods; that is, proof that

applicants extensive use and promotion of the mark allowed consumers now directly to
http://www.uspto.gov/trademarks/law/evidence_ornamentalclothing.jsphttp://www.uspto.gov/trademarks/law/suppreg_ornamentalclothing.jsphttp://www.uspto.gov/trademarks/law/suppreg_ornamentalclothing.jsphttp://www.uspto.gov/trademarks/law/suppreg_ornamentalclothing.jsphttp://www.uspto.gov/trademarks/law/substitutespecimen.jsp


5/22

associate the mark with applicant as the source of the goods.

(4) Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof

that the mark is already recognized as a source indicator for other goods or services thatapplicant sells/offers.

(5) Amend the filing basis to intent to use under Section 1(b). This option will later necessitate

additional fee(s) and filing requirements.

For an overview ofall response options referenced above and instructions on how to satisfy each optiononline using the Trademark Electronic Application System (TEAS) form, please go tohttp://www.uspto.gov/trademarks/law/ornamentalclothing.jsp.

PRIOR-FILED APPLICATIONS

The filing dates of pending U.S. Application Serial Nos. 85769563, 85791489, 85791517 and 85814656precede applicants filing date. See attached referenced applications. If one or more of the marks in thereferenced applications register, applicants mark may be refused registration under Trademark Act

Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. 1052(d); 37C.F.R. 2.83; TMEP 1208 et seq. Therefore, upon receipt of applicants response to this Office action,

action on this application may be suspended pending final disposition of the earlier-filed referencedapplications.

In response to this Office action, applicant may present arguments in support of registration by addressingthe issue of the potential conflict between applicants mark and the marks in the referenced applications.

Applicants election not to submit arguments at this time in no way limits applicants right to address this

issue later if a refusal under Section 2(d) issues.

Applicant must respond to the requirement set forth below.

TEAS PLUS

Applicant must submit an additional application processing fee of $50 per class because the application asfiled did not meet the TEAS Plus application filing requirements. See 37 C.F.R. 2.6(a)(1)(iv), 2.22(a),(b); TMEP 819.01 et seq., 819.04. Specifically, applicant failed to meet the following application filing

requirement: a consent to register the mark from the person identified in the mark (or conversely, ifappropriate, a statement that the name or portrait in the mark does not identify a living individual) was not

provided.The additional fee is required even if applicant later corrects these application requirements.

RESPONSE TO OFFICE ACTION

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark

examining attorney. All relevant e-mail communications will be placed in the official application record;however, an e-mail communication will not be accepted as a response to this Office action and will not
http://www.uspto.gov/trademarks/law/ornamentalclothing.jsphttp://www.uspto.gov/trademarks/law/amendingbasis.jsphttp://www.uspto.gov/trademarks/law/secondarysource_ornamentalclothing.jsp


6/22

extend the deadline for filing a proper response. See 37 C.F.R. 2.191; TMEP 304.01-.02, 709.04-.05.

Further, although the trademark examining attorney may provide additional explanation pertaining to the

refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide

legal advice or statements about applicants rights. See TMEP 705.02, 709.06.

/Barney L. Charlon/Trademark Examining Attorney

Law Office 104

(571) 272-9141

(571) 273-9104 (fax)

[email protected]

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 the Trademark Electronic Application System

(TEAS), to allow for necessary system updates of the application. For technical assistance with onlineforms, e-mail [email protected]. 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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keep

a copy of the TSDR status screen. If the status shows no change for more than six months, contact the

Trademark Assistance Center by e-mail at [email protected] or 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/trademarks/teas/correspondence.jsp .
http://www.uspto.gov/trademarks/teas/correspondence.jsphttp://www.uspto.gov/trademarks/process/status/mailto:[email protected]://tsdr.uspto.gov/mailto:[email protected]://www.uspto.gov/trademarks/teas/response_forms.jsp


7/22


8/22


9/22


10/22


11/22


12/22


13/22


14/22


15/22


16/22


17/22


18/22


19/22


20/22


21/22

To: JMAN2 Enterprises, LLC ([email protected])

Subject: U.S. TRADEMARK APPLICATION NO. 85839336 - JOHNNY

FOOTBALL - N/A

Sent: 5/22/2013 3:41:41 PM

Sent As: [email protected]

Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/22/2013 FOR U.S. APPLICATION SERIAL NO. 85839336

Please follow the instructions below:

(1) TO READ THE LETTER: Click on this link or go to http://tsdr.uspto.gov, enter the U.S.

application serial number, and click on Documents.

The Office action may not be immediately viewable, to allow for necessary system updates of the

application, but will be available within 24 hours of this e-mail notification.

(2) TIMELY RESPONSE IS REQUIRED: Please carefully review the Office action to determine (1)

how to respond, and (2) the applicable response time period. Your response deadline will be calculated

from 5/22/2013 (or sooner if specified in the Office action). For information regarding response time

periods, see http://www.uspto.gov/trademarks/process/status/responsetime.jsp.

Do NOT hit Reply to this e-mail notification, or otherwise e-mail your response because the

USPTO does NOT accept e-mails as responses to Office actions. Instead, the USPTO recommends that

you respond online using the Trademark Electronic Application System (TEAS) response form located at

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

(3) QUESTIONS: For questions about the contents of the Office action itself, please contact the

assigned trademark examining attorney. For technical assistance in accessing or viewing the Office action

in the Trademark Status and Document Retrieval (TSDR) system, please e-mail [email protected].

WARNING

Failure to file the required response by the applicable response deadline will result in the
mailto:[email protected]://www.uspto.gov/trademarks/teas/response_forms.jsphttp://www.uspto.gov/trademarks/process/status/responsetime.jsphttp://tsdr.uspto.gov/http://tdr.uspto.gov/view.action?sn=85839336&type=OOA&date=20130522#tdrlinkmailto:[email protected]


22/22

ABANDONMENT of your application. For more information regarding abandonment, see

http://www.uspto.gov/trademarks/basics/abandon.jsp.

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION: Private

companies not associated with the USPTO are using information provided in trademark applications to

mail or e-mail trademark-related solicitations. These companies often use names that closely resemble the

USPTO and their solicitations may look like an official government document. Many solicitations require

that you pay fees.

Please carefully review all correspondence you receive regarding this application to make sure that you are

responding to an official document from the USPTO rather than a private company solicitation. All

official USPTO correspondence will be mailed only from the United States Patent and Trademark

Office in Alexandria, VA; or sent by e-mail from the domain @uspto.gov. For more information on

how to handle private company solicitations, see

http://www.uspto.gov/trademarks/solicitation_warnings.jsp.
http://www.uspto.gov/trademarks/solicitation_warnings.jsphttp://www.uspto.gov/trademarks/basics/abandon.jsp

"Johnny Football" trademark application office action

Documents

Transcript of "Johnny Football" trademark application office action