`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
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`Submission
`Attachments
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`Filer's Name
`Filer's e-mail
`
`Signature
`Date
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`
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`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.
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`Serial No: 85/781,180 & 85/781,188
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`Filed: November 16, 2012
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`Marks: YOUTH PRIDE CHORUS
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`and
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`Our Refs: 846505 & 857400
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`APPLICANT’S REPLY BRIEF
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`
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`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
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`Attorneys for Applicant
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`
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`EXAMINER: Odessa Bibbins
`Law Office: 118
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`I.
`I.
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`ARGUMENT .......................................................................................................................1
`ARGUMENT ..................................................................................................................... ..1
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`TABLE OF CONTENTS
`TABLE OF CONTENTS
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`A.
`A.
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`B.
`B.
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`C.
`C.
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`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
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`I I .
`I I .
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`CONCLUSION ....................................................................................................................7
`CONCLUSION .................................................................................................................. ..7
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`
`
`ii
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`
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`Cases
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`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
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`15 U.S.C. § 1052(f) ......................................................................................................................... 4
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`Rules
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`T.M.E.P. § 1212.01 ......................................................................................................................... 4
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`T.M.E.P. § 1212.05(d) .................................................................................................................... 4
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`T.M.E.P. § 710.01(b) ...................................................................................................................... 2
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`ii
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`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
`
`
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`APPLICANT’S REPLY BRIEF
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`I.
`
`ARGUMENT
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`Applicant Big Apple Performing Arts, Inc. (“BAPA”) respectfully submits the following
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`Reply in response to the Examining Attorney’s May 4, 2015 Appeal Brief (the “Examiner’s
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`Brief”) supporting the USPTO’s final refusal, on descriptiveness grounds, to register Application
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`Serial Nos. 85/781,180 and 85/781,188 for the YOUTH PRIDE CHORUS and YOUTH PRIDE
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`CHORUS (Stylized) marks (the “Applications”). Applicant submits this Reply in order to clarify
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`the record for the Board, as the Examiner’s Brief materially misrepresents Applicant’s evidence
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`of acquired distinctiveness and perpetuates a flawed methodology for concluding that
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`Applicant’s YOUTH PRIDE CHORUS marks are so highly descriptive that they are incapable of
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`indicating source or origin without additional evidence of acquired distinctiveness.
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`1
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`A.
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`THE EXAMINER’S METHOD FOR CONCLUDING THAT “YOUTH
`PRIDE CHORUS” IS SO HIGHLY DESCRIPTIVE IS FLAWED
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`Throughout the record, the Examiner steadfastly relies on a single entry on
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`Wikipedia.com as the definitive authority for the meaning of “Youth Pride,” a movement in the
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`LGBTIQA community.1 With respect to evidence taken from the online Wikipedia®
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`encyclopedia, at www.wikipedia.org, the Board has noted that “[t]here are inherent problems
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`regarding the reliability of Wikipedia entries because Wikipedia is a collaborative website that
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`permits anyone to edit the entries,” and has stated the following:
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`[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.
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`In re IP Carrier Consulting Grp., 84 U.S.P.Q.2d 1028, 1032–33 (T.T.A.B. 2007).
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`Given its inherent limitations, any information obtained from Wikipedia should be treated
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`as having limited probative value. T.M.E.P. § 710.01(b). If the examining attorney relies upon
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`Wikipedia evidence and makes it of record, then additional supportive and corroborative
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`evidence from other sources should also be made of record, especially when issuing final actions.
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`Id.
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`The “other sources” relied upon by the Examiner to substantiate the Wikipedia reference
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`consist of a reference to some third-party organizations that include the term “Youth Pride” in
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`1 See, e.g., Examiner’s Reply at 6.
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`2
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`
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`their names. In its papers, Applicant has rebutted the Examiner’s evidence by showing that
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`“youth pride” is not found in dictionaries, that “pride” has multiple meanings and that “youth
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`pride chorus” leads singularly to Applicant’s services. That other third parties have decided to
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`incorporate the phrase “Youth Pride” into their distinctive names as well does not render “Youth
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`Pride Chorus” so highly descriptive for Applicant’s services that the extensive evidence
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`Applicant has submitted of acquired distinctiveness should be disregarded. Consumers simply
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`do not use “youth pride chorus” to describe a vocal ensemble comprised of LGBTIQA youth.
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`Nonetheless, under the Examiner’s logic, YOUTH PRIDE CHORUS is just as highly descriptive
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`as THE SCIENTIFIC APPROACH, BLINDSANDDRAPERY.COM, ANNAPOLIS TOURS,
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`and PAINT PRODUCTS CO.2 The Examiner fundamentally misses the point that “Youth Pride”
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`is not so common an expression in the lexicon of the U.S. consuming public—or even the
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`LGBTIQA lexicon for that matter—that, when combined with the term “Chorus,” is incapable of
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`distinguishing Applicant’s services particularly given the extensive evidence of acquired
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`distinctiveness submitted by Applicant.
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`B.
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`THE EXAMINER ERRS BY REQUIRING THAT EXCLUSIVE AND
`CONTINUOUS USE OF A MARK BE CALCULATED AS OF THE
`FILING DATE OF AN APPLICATION
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`The Examiner’s Brief suggests that Applicant misled the USPTO in its 2(f) Declarations.
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`Specifically, the Examiner claims that Applicant could not have possibly claimed at least ten
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`years of substantially exclusive and continuous use of the YOUTH PRIDE CHORUS word mark
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`on September 12, 2013—the date of Applicant’s 2(f) Declaration—because Applicant filed the
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`word mark application on November 16, 2012 claiming first use back to April 30, 2003,
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`amounting to only nine years, six months, and 17 days as of “the statement.”3 (Examiner’s
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`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.”
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`3
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`Reply at 8.) Citing to no authority, the Examiner now introduces a novel rule for calculating the
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`period of time for an applicant’s claim of substantially exclusive and continuous use in a 2(f)
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`declaration.4 This is clear error. The plain language of the Lanham Act is instructive:
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`…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….
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`15 U.S.C. § 1052(f) (emphasis added); T.M.E.P. § 1212.05(d); see also id. § 1212.01
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`(“Facts based on events that occurred subsequent to the filing date of the application may
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`be considered.”).
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`Applicant’s declaration, dated September 12, 2013, validly claims at least 10 years of
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`substantially exclusive and continuous use of the YOUTH PRIDE CHORUS mark immediately
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`before the date on which the claim of distinctiveness is made (i.e. between April 20, 2003 and
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`September 12, 2013). (Criswell Decl. ¶ 8) (emphasis added).
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`The Examiner’s Brief also mischaracterizes Applicant’s statements in its 2(f) Declaration
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`in support of the YOUTH PRIDE CHORUS (Stylized) application. The Examiner claims that
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`Applicant could only have claimed in its Declaration 4 years, 1 month, and 16 days of use, i.e.
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`the time between Applicant’s first use date of September 30, 2008 and the filing date of
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`November 16, 2012. (Examiner’s Reply at 8.) Since the Examiner’s actions refusing
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`registration were based on the descriptiveness of the literal element of the mark, i.e. “YOUTH
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`PRIDE CHORUS,” and not the mark’s distinctive stylization, Applicant’s 2(f) Declaration
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`addresses the extent of Applicant’s use of the literal element (i.e. between first use of April 30,
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`2003 and the date of Applicant’s Declaration, September 12, 2013). As such, Applicant validly
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`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.
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`4
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`claimed at least ten years of substantially exclusive and continuous use of its YOUTH PRIDE
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`CHORUS mark underlying the stylized format.
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`C.
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`THE EXAMINER’S REPLY MISCHARACTERIZES APPLICANT’S
`EVIDENCE OF ACQUIRED DISTINCTIVENESS IN A NUMBER OF
`MATERIAL RESPECTS
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`The Examiner’s Reply mischaracterizes the quantum, quality, and content of Applicant’s
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`acquired distinctiveness evidence, specifically in the following ways.
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`The Examiner’s Reply erringly claims that “[t]here is no information in any of the above
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`articles [in Applicant’s submissions] that conveys to purchasing consumers that YOUTH
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`PRIDE CHORUS is used to identify the origin, Big Apple Performing Arts, Inc., of the
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`services.”5 (Examiner’s Reply at 12.) First, the Examiner’s assertion is unsupported by the
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`record as numerous articles submitted in the Applications show that YOUTH PRIDE CHORUS
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`is affiliated with the New York City Gay Men’s Chorus, another service of Applicant. Second,
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`the authority relied upon by the Examiner does not stand for the proposition that an Applicant’s
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`evidence of acquired distinctiveness must specifically identify the owner of record for the
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`applied-for mark.
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`Second, the Examiner again cherry-picks from the record in order to minimize
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`Applicant’s acquired distinctiveness evidence. Specifically, the Examiner focuses on the 5,000
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`palm cards, 2 performances per year over the last 10 years, and 2,000 tickets at Applicant’s
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`inaugural concert, see Examiner’s Reply at 12, but ignores the more than 126,000 views of its
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`Youth Pride Chorus channel and the more than 103,000 views of Applicant’s “It Gets Better”
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`video on YouTube. See Applicant’s Appeal Brief at 5. The Examiner also ignores the extent of
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`Applicant’s social media following, the unsolicited media mentions, Applicant’s use of its mark
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`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).
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`5
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`
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`at events of prominence in the LGBTIQA community and within the LGBTIQA choral
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`movement itself. Thus, when the Examiner states that the 2,000 tickets sold at Applicant’s
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`inaugural concert “[are] not supported by a numeric reference which ties this effort to an increase
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`in sales and concurrently an increase in recognition by the consuming public of the mark,
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`YOUTH PRIDE CHORUS, as the source of the services,”6 such statements are unsupported by
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`the record. While the record does not include an increase in ticket sales, per se, the record does
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`reflect that the relevant consuming public—consumers interested in entertainment by an
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`LGBTIQA vocal ensemble group—have come to identify YOUTH PRIDE CHORUS singularly
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`with Applicant.7
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`Lastly, the Examiner dismisses the affidavits from leaders from the LGBTIQA youth
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`vocal ensemble movement. (Examiner’s Reply at 12-13.) However, the declarants are all deeply
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`involved in the LGBTIQA vocal ensemble movement and therefore represent the views of the
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`trade. They are also consumers of Applicant’s Services. Nonetheless, the views expressed by
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`the trade should be given greater weight than the Examiner is willing to give them. See, e.g., In
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`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)
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`(deeming retailer’s statement that he has been in contact with many purchasers of loudspeaker
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`systems of whom a substantial number would recognize the depicted design as originating with
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`applicant competent evidence of secondary meaning); see also In re Flex-O-Glass, Inc., 194
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`U.S.P.Q. 203, 206 (T.T.A.B. 1977) (“[T]he fact that the affidavits may be similar in format and
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`expression is of no particular significance ... since the affiants have sworn to the statements
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`contained therein.”)
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`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.”)
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`6
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`I I . CONCLUSION
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`BAPA submits that its arguments and evidence demonstrate that, to the extent that its
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`marks YOUTH PRIDE CHORUS and YOUTH PRIDE CHORUS (stylized) are considered
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`merely descriptive of Applicant’s Services, the evidence of acquired distinctiveness submitted by
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`Applicant was more than sufficient to establish that the YOUTH PRIDE CHORUS marks are
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`entitled to registration on the Principal Register under Section 2(f). For the reasons set forth in
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`this Reply, and all other papers submitted previously at the PTO and Board, BAPA respectfully
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`requests that this Board reverse the refusal and allow this application to proceed to registration.
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`Dated: May 26, 2015
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`Respectfully submitted,
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`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
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`CERTIFICATE OF TRANSMISSION
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`This is to certify that this APPLICANT’S REPLY BRIEF was filed electronically with
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`the Trademark Trial and Appeal Board via transmission through ESTTA on May 26, 2015.
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`
`
`/s/ Alberto Garcia
` Alberto Garcia