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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA674205
`ESTTA Tracking number:
`05/26/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`85781180
`Big Apple Performing Arts, Inc.
`YOUTH PRIDE CHORUS
`PHILLIP A ROSENBERG
`KILPATRICK TOWNSEND & STOCKTON LLP
`1114 AVENUE OF THE AMERICAS, THE GRACE BUILDING, 21ST FLOOR
`NEW YORK, NY 10036-7703
`UNITED STATES
`NYTrademarks@KilpatrickTownsend.com, prosen-
`berg@kilpatricktownsend.com, agarcia@kilpatricktownsend.com
`Reply Brief
`--Applicant_s Reply Brief - YOUTH PRIDE CHORUS YOUTH PRIDE CHORUS
`(Stylized) in Class 41 (Ref 84650.pdf(57282 bytes )
`Phillip A. Rosenberg
`NYTrademarks@KilpatrickTownsend.com, prosen-
`berg@kilpatricktownsend.com, agarcia@kilpatricktownsend.com
`/Phillip A. Rosenberg/
`05/26/2015
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
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`Applicant: Big Apple Performing Arts, Inc.
`
`Serial No: 85/781,180 & 85/781,188
`
`Filed: November 16, 2012
`
`Marks: YOUTH PRIDE CHORUS
`
`and
`
`Our Refs: 846505 & 857400
`
`
`
`APPLICANT’S REPLY BRIEF
`
`
`
`
`Jason M. Vogel, Esq.
`Phillip A. Rosenberg, Esq.
`KILPATRICK TOWNSEND & STOCKTON LLP
`The Grace Building
`1114 Avenue of the Americas
`New York, New York 10036
`Tel.:
`(212) 775-8700
`Fax:
`(212) 775-8800
`
`Attorneys for Applicant
`
`
`
`EXAMINER: Odessa Bibbins
`Law Office: 118
`
`
`
`
`
`
`

`
`I.
`I.
`
`ARGUMENT .......................................................................................................................1
`ARGUMENT ..................................................................................................................... ..1
`
`TABLE OF CONTENTS
`TABLE OF CONTENTS
`
`A.
`A.
`
`B.
`B.
`
`C.
`C.
`
`THE EXAMINER’S METHOD FOR CONCLUDING THAT
`THE EXAMINER’S METHOD FOR CONCLUDING THAT
`“YOUTH PRIDE CHORUS” IS SO HIGHLY DESCRIPTIVE IS
`“YOUTH PRIDE CHORUS” IS SO HIGHLY DESCRIPTIVE IS
`FLAWED .................................................................................................................2
`FLAWED ............................................................................................................... ..2
`
`THE EXAMINER ERRS BY REQUIRING THAT EXCLUSIVE
`THE EXAMINER ERRS BY REQUIRING THAT EXCLUSIVE
`AND CONTINUOUS USE OF A MARK BE CALCULATED AS
`AND CONTINUOUS USE OF A MARK BE CALCULATED AS
`OF THE FILING DATE OF AN APPLICATION ..................................................3
`OF THE FILING DATE OF AN APPLICATION ................................................ ..3
`
`THE EXAMINER’S REPLY MISCHARACTERIZES
`THE EXAMINER’S REPLY MISCHARACTERIZES
`APPLICANT’S EVIDENCE OF ACQUIRED
`APPLICANT’S EVIDENCE OF ACQUIRED
`DISTINCTIVENESS IN A NUMBER OF MATERIAL
`DISTINCTIVENESS IN A NUMBER OF MATERIAL
`RESPECTS ..............................................................................................................5
`RESPECTS ............................................................................................................ ..5
`
`I I .
`I I .
`
`CONCLUSION ....................................................................................................................7
`CONCLUSION .................................................................................................................. ..7
`
`
`
`ii
`
`

`
`Cases
`
`TABLE OF AUTHORITIES
`
`In re Bose Corp.,
`216 U.S.P.Q. 1001 (T.T.A.B. 1983),
`aff’d, 227 U.S.P.Q. 1 (Fed. Cir. 1985) ................................................................................ 6
`
`In re Chevron Intellectual Prop. Group LLC,
`96 U.S.P.Q.2d 2026 (TTAB 2010) ..................................................................................... 5
`
`In re Flex-O-Glass, Inc.,
`194 U.S.P.Q. 203 (T.T.A.B. 1977) ..................................................................................... 6
`
`In re IP Carrier Consulting Grp.,
`84 U.S.P.Q.2d 1028 (T.T.A.B. 2007) ................................................................................. 2
`
`Statutes
`
`15 U.S.C. § 1052(f) ......................................................................................................................... 4
`
`Rules
`
`T.M.E.P. § 1212.01 ......................................................................................................................... 4
`
`T.M.E.P. § 1212.05(d) .................................................................................................................... 4
`
`T.M.E.P. § 710.01(b) ...................................................................................................................... 2
`
`
`
`ii
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
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`Applicant: Big Apple Performing Arts, Inc.
`
`Serial No: 85/781,180 & 85/781,188
`
`Filed: November 16, 2012
`
`Marks: YOUTH PRIDE CHORUS
`
`and
`
`Our Refs: 846505 & 857400
`
`
`
`APPLICANT’S REPLY BRIEF
`
`I.
`
`ARGUMENT
`
`Applicant Big Apple Performing Arts, Inc. (“BAPA”) respectfully submits the following
`
`Reply in response to the Examining Attorney’s May 4, 2015 Appeal Brief (the “Examiner’s
`
`Brief”) supporting the USPTO’s final refusal, on descriptiveness grounds, to register Application
`
`Serial Nos. 85/781,180 and 85/781,188 for the YOUTH PRIDE CHORUS and YOUTH PRIDE
`
`CHORUS (Stylized) marks (the “Applications”). Applicant submits this Reply in order to clarify
`
`the record for the Board, as the Examiner’s Brief materially misrepresents Applicant’s evidence
`
`of acquired distinctiveness and perpetuates a flawed methodology for concluding that
`
`Applicant’s YOUTH PRIDE CHORUS marks are so highly descriptive that they are incapable of
`
`indicating source or origin without additional evidence of acquired distinctiveness.
`
`1
`
`

`
`A.
`
`THE EXAMINER’S METHOD FOR CONCLUDING THAT “YOUTH
`PRIDE CHORUS” IS SO HIGHLY DESCRIPTIVE IS FLAWED
`
`Throughout the record, the Examiner steadfastly relies on a single entry on
`
`Wikipedia.com as the definitive authority for the meaning of “Youth Pride,” a movement in the
`
`LGBTIQA community.1 With respect to evidence taken from the online Wikipedia®
`
`encyclopedia, at www.wikipedia.org, the Board has noted that “[t]here are inherent problems
`
`regarding the reliability of Wikipedia entries because Wikipedia is a collaborative website that
`
`permits anyone to edit the entries,” and has stated the following:
`
`[T]he Board will consider evidence taken from Wikipedia so long as the non-
`offering party has an opportunity to rebut that evidence by submitting other
`evidence that may call into question the accuracy of the particular Wikipedia
`information. Our consideration of Wikipedia evidence is with the recognition of
`the limitations inherent with Wikipedia (e.g., that anyone can edit it and submit
`intentionally false or erroneous information)....
`
`As a collaborative online encyclopedia, Wikipedia is a secondary source of
`information or a compilation based on other sources. As recommended by the
`editors of Wikipedia, the information in a particular article should be
`corroborated. The better practice with respect to Wikipedia evidence is to
`corroborate the information with other reliable sources, including Wikipedia’s
`sources.
`
`In re IP Carrier Consulting Grp., 84 U.S.P.Q.2d 1028, 1032–33 (T.T.A.B. 2007).
`
`Given its inherent limitations, any information obtained from Wikipedia should be treated
`
`as having limited probative value. T.M.E.P. § 710.01(b). If the examining attorney relies upon
`
`Wikipedia evidence and makes it of record, then additional supportive and corroborative
`
`evidence from other sources should also be made of record, especially when issuing final actions.
`
`Id.
`
`The “other sources” relied upon by the Examiner to substantiate the Wikipedia reference
`
`consist of a reference to some third-party organizations that include the term “Youth Pride” in
`
`
`1 See, e.g., Examiner’s Reply at 6.
`
`2
`
`

`
`their names. In its papers, Applicant has rebutted the Examiner’s evidence by showing that
`
`“youth pride” is not found in dictionaries, that “pride” has multiple meanings and that “youth
`
`pride chorus” leads singularly to Applicant’s services. That other third parties have decided to
`
`incorporate the phrase “Youth Pride” into their distinctive names as well does not render “Youth
`
`Pride Chorus” so highly descriptive for Applicant’s services that the extensive evidence
`
`Applicant has submitted of acquired distinctiveness should be disregarded. Consumers simply
`
`do not use “youth pride chorus” to describe a vocal ensemble comprised of LGBTIQA youth.
`
`Nonetheless, under the Examiner’s logic, YOUTH PRIDE CHORUS is just as highly descriptive
`
`as THE SCIENTIFIC APPROACH, BLINDSANDDRAPERY.COM, ANNAPOLIS TOURS,
`
`and PAINT PRODUCTS CO.2 The Examiner fundamentally misses the point that “Youth Pride”
`
`is not so common an expression in the lexicon of the U.S. consuming public—or even the
`
`LGBTIQA lexicon for that matter—that, when combined with the term “Chorus,” is incapable of
`
`distinguishing Applicant’s services particularly given the extensive evidence of acquired
`
`distinctiveness submitted by Applicant.
`
`B.
`
`THE EXAMINER ERRS BY REQUIRING THAT EXCLUSIVE AND
`CONTINUOUS USE OF A MARK BE CALCULATED AS OF THE
`FILING DATE OF AN APPLICATION
`
`The Examiner’s Brief suggests that Applicant misled the USPTO in its 2(f) Declarations.
`
`Specifically, the Examiner claims that Applicant could not have possibly claimed at least ten
`
`years of substantially exclusive and continuous use of the YOUTH PRIDE CHORUS word mark
`
`on September 12, 2013—the date of Applicant’s 2(f) Declaration—because Applicant filed the
`
`word mark application on November 16, 2012 claiming first use back to April 30, 2003,
`
`amounting to only nine years, six months, and 17 days as of “the statement.”3 (Examiner’s
`
`
`2 See generally Office Action; see also Second Office Action; see also Examiner’s Reply.
`3 Here, the Examiner identifies the filing date of the Application as “the statement.”
`
`3
`
`

`
`Reply at 8.) Citing to no authority, the Examiner now introduces a novel rule for calculating the
`
`period of time for an applicant’s claim of substantially exclusive and continuous use in a 2(f)
`
`declaration.4 This is clear error. The plain language of the Lanham Act is instructive:
`
`…The Director may accept as prima facie evidence that the mark has become
`distinctive, as used on or in connection with the applicant's goods in commerce,
`proof of substantially exclusive and continuous use thereof as a mark by the
`applicant in commerce for the five years before the date on which the claim of
`distinctiveness is made….
`
`15 U.S.C. § 1052(f) (emphasis added); T.M.E.P. § 1212.05(d); see also id. § 1212.01
`
`(“Facts based on events that occurred subsequent to the filing date of the application may
`
`be considered.”).
`
`Applicant’s declaration, dated September 12, 2013, validly claims at least 10 years of
`
`substantially exclusive and continuous use of the YOUTH PRIDE CHORUS mark immediately
`
`before the date on which the claim of distinctiveness is made (i.e. between April 20, 2003 and
`
`September 12, 2013). (Criswell Decl. ¶ 8) (emphasis added).
`
`The Examiner’s Brief also mischaracterizes Applicant’s statements in its 2(f) Declaration
`
`in support of the YOUTH PRIDE CHORUS (Stylized) application. The Examiner claims that
`
`Applicant could only have claimed in its Declaration 4 years, 1 month, and 16 days of use, i.e.
`
`the time between Applicant’s first use date of September 30, 2008 and the filing date of
`
`November 16, 2012. (Examiner’s Reply at 8.) Since the Examiner’s actions refusing
`
`registration were based on the descriptiveness of the literal element of the mark, i.e. “YOUTH
`
`PRIDE CHORUS,” and not the mark’s distinctive stylization, Applicant’s 2(f) Declaration
`
`addresses the extent of Applicant’s use of the literal element (i.e. between first use of April 30,
`
`2003 and the date of Applicant’s Declaration, September 12, 2013). As such, Applicant validly
`
`
`4 Applicant cannot find any authority validating the Examiner’s method of calculating the period of substantially
`exclusive and continuous use in a 2(f) declaration.
`
`4
`
`

`
`claimed at least ten years of substantially exclusive and continuous use of its YOUTH PRIDE
`
`CHORUS mark underlying the stylized format.
`
`C.
`
`THE EXAMINER’S REPLY MISCHARACTERIZES APPLICANT’S
`EVIDENCE OF ACQUIRED DISTINCTIVENESS IN A NUMBER OF
`MATERIAL RESPECTS
`
`The Examiner’s Reply mischaracterizes the quantum, quality, and content of Applicant’s
`
`acquired distinctiveness evidence, specifically in the following ways.
`
`The Examiner’s Reply erringly claims that “[t]here is no information in any of the above
`
`articles [in Applicant’s submissions] that conveys to purchasing consumers that YOUTH
`
`PRIDE CHORUS is used to identify the origin, Big Apple Performing Arts, Inc., of the
`
`services.”5 (Examiner’s Reply at 12.) First, the Examiner’s assertion is unsupported by the
`
`record as numerous articles submitted in the Applications show that YOUTH PRIDE CHORUS
`
`is affiliated with the New York City Gay Men’s Chorus, another service of Applicant. Second,
`
`the authority relied upon by the Examiner does not stand for the proposition that an Applicant’s
`
`evidence of acquired distinctiveness must specifically identify the owner of record for the
`
`applied-for mark.
`
`Second, the Examiner again cherry-picks from the record in order to minimize
`
`Applicant’s acquired distinctiveness evidence. Specifically, the Examiner focuses on the 5,000
`
`palm cards, 2 performances per year over the last 10 years, and 2,000 tickets at Applicant’s
`
`inaugural concert, see Examiner’s Reply at 12, but ignores the more than 126,000 views of its
`
`Youth Pride Chorus channel and the more than 103,000 views of Applicant’s “It Gets Better”
`
`video on YouTube. See Applicant’s Appeal Brief at 5. The Examiner also ignores the extent of
`
`Applicant’s social media following, the unsolicited media mentions, Applicant’s use of its mark
`
`
`5 Citing to In re Chevron Intellectual Prop. Group LLC, 96 U.S.P.Q.2d 2026, 2031 (TTAB 2010) (finding evidence
`of acquired distinctiveness deficient in part because of the lack of advertisements promoting recognition of pole
`spanner design as a service mark).
`
`5
`
`

`
`at events of prominence in the LGBTIQA community and within the LGBTIQA choral
`
`movement itself. Thus, when the Examiner states that the 2,000 tickets sold at Applicant’s
`
`inaugural concert “[are] not supported by a numeric reference which ties this effort to an increase
`
`in sales and concurrently an increase in recognition by the consuming public of the mark,
`
`YOUTH PRIDE CHORUS, as the source of the services,”6 such statements are unsupported by
`
`the record. While the record does not include an increase in ticket sales, per se, the record does
`
`reflect that the relevant consuming public—consumers interested in entertainment by an
`
`LGBTIQA vocal ensemble group—have come to identify YOUTH PRIDE CHORUS singularly
`
`with Applicant.7
`
`Lastly, the Examiner dismisses the affidavits from leaders from the LGBTIQA youth
`
`vocal ensemble movement. (Examiner’s Reply at 12-13.) However, the declarants are all deeply
`
`involved in the LGBTIQA vocal ensemble movement and therefore represent the views of the
`
`trade. They are also consumers of Applicant’s Services. Nonetheless, the views expressed by
`
`the trade should be given greater weight than the Examiner is willing to give them. See, e.g., In
`
`re Bose Corp., 216 U.S.P.Q. 1001, 1005 (T.T.A.B. 1983), aff’d, 227 U.S.P.Q. 1 (Fed. Cir. 1985)
`
`(deeming retailer’s statement that he has been in contact with many purchasers of loudspeaker
`
`systems of whom a substantial number would recognize the depicted design as originating with
`
`applicant competent evidence of secondary meaning); see also In re Flex-O-Glass, Inc., 194
`
`U.S.P.Q. 203, 206 (T.T.A.B. 1977) (“[T]he fact that the affidavits may be similar in format and
`
`expression is of no particular significance ... since the affiants have sworn to the statements
`
`contained therein.”)
`
`6 See Examiner’s Reply at 12.
`7 It is unclear whether the Examiner agrees with Applicant that the relevant consuming public in this instance are
`consumers of LGBTIQA youth vocal ensemble services. See Examiner’s Reply at 13 (“Lastly, applicant argues the
`general consuming public is not the relevant segment of the purchasing public. The trademark examining attorney
`respectfully disagrees. The average or general consumer of entertainment and educational services provided by
`applicant is the relevant segment of the purchasing public.”)
`
`6
`
`

`
`I I . CONCLUSION
`
`BAPA submits that its arguments and evidence demonstrate that, to the extent that its
`
`marks YOUTH PRIDE CHORUS and YOUTH PRIDE CHORUS (stylized) are considered
`
`merely descriptive of Applicant’s Services, the evidence of acquired distinctiveness submitted by
`
`Applicant was more than sufficient to establish that the YOUTH PRIDE CHORUS marks are
`
`entitled to registration on the Principal Register under Section 2(f). For the reasons set forth in
`
`this Reply, and all other papers submitted previously at the PTO and Board, BAPA respectfully
`
`requests that this Board reverse the refusal and allow this application to proceed to registration.
`
`Dated: May 26, 2015
`
`Respectfully submitted,
`
`KILPATRICK TOWNSEND & STOCKTON LLP
`
`By:
`
`/s/ Phillip A. Rosenberg
`Jason M. Vogel, Esq.
`Phillip A. Rosenberg, Esq.
`
`
`
`The Grace Building
`1114 Avenue of the Americas
`New York, New York 10036
`Tel.:
`(212) 775-8700
`Fax:
`(212) 775-8800
`
`Attorneys for Applicant
`
`7
`
`

`
`
`
`
`
`CERTIFICATE OF TRANSMISSION
`
`This is to certify that this APPLICANT’S REPLY BRIEF was filed electronically with
`
`the Trademark Trial and Appeal Board via transmission through ESTTA on May 26, 2015.
`
`
`
`/s/ Alberto Garcia
` Alberto Garcia

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