Grant Media U.S. TRADEMARK APPLICATION NO CASEY ANTHONY - N/A 9/27/2011 8:59:21 AM

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1 To: Subject: Sent: Sent As: Grant Media U.S. TRADEMARK APPLICATION NO CASEY ANTHONY - N/A 9/27/2011 8:59:21 AM 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 MARK: CASEY ANTHONY CORRESPONDENT ADDRESS: GRANT MEDIA GRANT MEDIA RD ST SAN FRANCISCO, CA * * CLICK HERE TO RESPOND TO THIS LETTER: APPLICANT: Grant Media CORRESPONDENT S REFERENCE/DOCKET NO: N/A CORRESPONDENT ADDRESS: johnr@grant-media.net

2 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, 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 ; 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 , (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 (e); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, , 217 USPQ 505, (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 She is not connected with the services sold by the

3 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, (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, (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 (b), ; 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 ). TMEP 813, (a), (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); (2) A bona fide intention to use the mark in commerce under Section 1(b);

4 (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 (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 (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 (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 (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 (b); see 37 C.F.R (e)(1).

5 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 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 See TMEP 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 et seq., et seq. /Patty Evanko/ Trademark Attorney Law Office (questions only) TO RESPOND TO THIS LETTER: Go to Please wait hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, For questions about the Office action itself, please contact the assigned trademark examining attorney. communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by . All informal 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 Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call For more information on checking status, see TO UPDATE CORRESPONDENCE/ ADDRESS: Use the TEAS form at

22 To: Subject: Sent: Sent As: Attachments: Grant Media U.S. TRADEMARK APPLICATION NO CASEY ANTHONY - N/A 9/27/2011 8:59:24 AM ECOM117@USPTO.GOV IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION Your trademark application (Serial No ) 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 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 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 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 notification, or otherwise attempt to your response, as the USPTO does NOT accept ed responses. Instead, please use the Trademark Electronic Application System Response to Office Action form.

NOTICE OF ABANDONMENT MAILING DATE: Nov 3, 2011

Side - 1 NOTICE OF ABANDONMENT MAILING DATE: Nov 3, 2011 The trademark application identified below was abandoned in full because a response to the Office Action mailed on Mar 17, 2011 was not received