Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA660031
`ESTTA Tracking number:
`03/09/2015
`
`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, 21ST FLOOR, THE GRACE BUILDING
`NEW YORK, NY 10036-7703
`UNITED STATES
`NYTrademarks@KilpatrickTownsend.com, prosen-
`berg@kilpatricktownsend.com, agarcia@kilpatricktownsend.com
`Appeal Brief
`Applicant's Appeal Brief (Youth Pride).pdf(193054 bytes )
`EXH. 1 (Part 1 of 3 - YPC).pdf(4656612 bytes )
`-EXH. 1 (Part 2 of 3 - YPC).pdf(2490506 bytes )
`-EXH. 1 (Part 3 of 3 - YPC).pdf(3878908 bytes )
`Exhibit 2 (YPC).pdf(3062292 bytes )
`EXH. 3 (part 1 of 2).pdf(3029585 bytes )
`EXH. 3 (part 2 of 2).pdf(1729651 bytes )
`Exhibit 4 (YPC).pdf(3065177 bytes )
`Exhibit 5 (YPC).pdf(1035009 bytes )
`Exhibit 6 (YPC).pdf(635586 bytes )
`Exhibit 7 (YPC).pdf(654568 bytes )
`Phillip A. Rosenberg
`NYTrademarks@KilpatrickTownsend.com, prosen-
`berg@kilpatricktownsend.com, agarcia@kilpatricktownsend.com
`/Phillip A. Rosenberg/
`03/09/2015
`
`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
`
`
`
`
`
`:
`:
`:
`:
`:
`:
`:
`:
`:
`
`
`Applicant: Big Apple Performing Arts, Inc.
`
`Serial No: 85/781,180
`
`Filed: November 16, 2012
`
`Mark: YOUTH PRIDE CHORUS
`
`Our Ref: 99993.846505
`
`APPLICANT’S APPEAL 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
`
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ...............................................................................................................1
`
`APPLICANT .....................................................................................................................1
`
`III.
`
`PROCEDURAL HISTORY .................................................................................................2
`
`IV. DESCRIPTION OF BAPA’S ACQUIRED DISTINCTIVENESS EVIDENCE ................4
`
`V.
`
`ARGUMENT .....................................................................................................................10
`
`A.
`
`THE YOUTH PRIDE CHORUS MARK HAS PLAINLY
`ACQUIRED DISTINCTIVENESS AND IS ENTITLED TO
`REGISTRATION ON THE PRINCIPAL REGISTER UNDER
`SECTION 2(F). ......................................................................................................10
`
`1.
`
`2.
`
`The relevant segment of the purchasing public has come to
`view Applicant’s YOUTH PRIDE CHORUS as an
`indicator of source. .....................................................................................10
`
`BAPA’s YOUTH PRIDE CHORUS Mark is not so highly
`descriptive that further evidence of acquired distinctiveness
`is required...................................................................................................14
`
`V I . CONCLUSION ..................................................................................................................19
`
`
`
`
`
`ii
`
`

`
`TABLE OF AUTHORITIES
`
`
`
`Cases
`Centaur Commc’ns, Ltd. v. A/S/M Commc’ns, Inc.,
`4 U.S.P.Q.2d 1541 (2d Cir. 1987)..................................................................................... 11
`Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc.,
`103 U.S.P.Q.2d 1937 (2d Cir. 2012)................................................................................. 12
`In re Redken Labs., Inc.,
`170 U.S.P.Q. 526 (T.T.A.B. 1971) ............................................................................. 15, 17
`In re Rolled Alloys, Inc.,
`Serial No. 85223044, 2014 WL 2967635 (T.T.A.B. June 3, 2014) ............................ 12, 16
`In re Steelbuilding.com,
`75 U.S.P.Q.2d 1420 (Fed. Cir. 2007)................................................................................ 13
`Inwood Labs. v. Ives Labs.,
`456 U.S. 844 (1982) .......................................................................................................... 11
`Paddington Corp. v. Attiki Imp. & Distrib.,
`996 F.2d 577 (2d Cir.1993)............................................................................................... 11
`Wal-Mart Stores, Inc. v. Samara Brothers, Inc.,
`529 U.S. 205, 54 U.S.P.Q.2d 1065, 1066 (U.S. 2000) ..................................................... 11
`
`Other Authorities
`37 C.F.R. § 2.41(a)........................................................................................................................ 12
`T.M.E.P. § 1212.03 ....................................................................................................................... 12
`J. Thomas McCarthy,
`MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 15:46 (4th ed. 2015) .......... 11
`
`
`
`
`
`iii
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`:::::::::
`
`Applicant: Big Apple Performing Arts, Inc.
`
`Serial No: 85/781,180
`
`Filed: November 16, 2012
`
`Mark: YOUTH PRIDE CHORUS
`
`Our Ref: 9993.846505
`
`APPLICANT’S APPEAL BRIEF
`
`
`
`
`I.
`
`INTRODUCTION
`
`Applicant Big Apple Performing Arts, Inc. (“BAPA”) respectfully requests the Board to
`
`reverse the final refusal of Application Serial No. 85/781,180 to register the YOUTH PRIDE
`
`CHORUS mark (the “Application”). The Examining Attorney’s determination that BAPA’s
`
`arguments and evidence of acquired distinctiveness are insufficient to establish secondary
`
`meaning in the YOUTH PRIDE CHORUS mark when used in connection with the services
`
`recited in the application (“Applicant’s Services”) is erroneous and unsupported by the record.
`
`II.
`
`APPLICANT
`
`BAPA’s Youth Pride Chorus, founded in 2003, harnesses the power of the performing
`
`arts to galvanize lesbian, gay, bisexual, transgender, and straight young people ages 13-22 as
`
`agents of change. See Declaration of Peter Criswell (“Criswell Decl. ¶ 2”), annexed as Exhibit
`
`1.1 Through its YOUTH PRIDE CHORUS services, BAPA fights homophobia, bullying, and all
`
`forms of hate by boldly asserting the joy, diversity, strength, and pride of today's youth. Id.
`
`YOUTH PRIDE CHORUS singers discover their own power by empowering others in schools,
`
`
`1 Originally submitted in connection with BAPA’s ROA dated September 13, 2013.
`1
`
`US2008 6421527 3
`
`
`
`
`

`
`online, and the general public through electrifying performances. Id. YOUTH PRIDE
`
`CHORUS services are a program of BAPA and the Lesbian, Gay, Bisexual & Transgender
`
`Community Center.
`
`
`
`Id.
`
` A
`
`sample
`
`screenshot
`
`from BAPA’s website,
`
`www.youthpridechorus.org, is shown immediately below. See also Exhibit 2.2
`
`
`
`III. PROCEDURAL HISTORY
`
`Applicant filed a use-based application for the YOUTH PRIDE CHORUS mark for
`
`Applicant’s Services on November 16, 2012, claiming a first use in commerce date of April 30,
`
`2003. On March 13, 2013, an initial Office Action (the “OA”) raised several issues. Relevant to
`
`this appeal, the OA refused registration on the ground that the YOUTH PRIDE CHORUS mark
`
`is merely descriptive for the applied-for services, namely, “Entertainment services, namely,
`
`provision of live music concerts in the nature of chorus singing; production of shows, namely,
`
`choral performances; educational services, namely, providing educational speakers and live
`
`programs in the field of issues affecting gay, lesbian, bi sexual and transgendered communities;
`
`2 Originally submitted to the USPTO as Exhibit A to the Criswell Declaration in connection with BAPA’s ROA.
`2
`
`
`
`

`
`teacher training in the field of performing arts programs; consulting in the field of performing
`
`arts program design and development.”
`
`BAPA’s September 13, 2013 response (the “ROA”) argued that the YOUTH PRIDE
`
`CHORUS is inherently distinctive, and in the alternative, YOUTH PRIDE CHORUS had
`
`acquired distinctiveness through BAPA’s substantial, exclusive and continuous use of the mark
`
`in commerce for at least ten (10) years. As additional evidence of acquired distinctiveness,
`
`BAPA provided the USPTO with information about its ticket sales, advertising, unsolicited
`
`media mentions, and further evidence of exposure of the YOUTH PRIDE CHORUS mark to the
`
`relevant consuming public. The Examining Attorney’s October 5, 2013 second Office Action
`
`maintained the descriptiveness refusal (the “Second Refusal”), claiming that BAPA’s YOUTH
`
`PRIDE CHORUS mark is so highly descriptive that the extensive evidence provided by BAPA
`
`to the USPTO in support of its claim of acquired distinctiveness was insufficient to prove
`
`secondary meaning in its YOUTH PRIDE CHORUS mark.
`
`On April 7, 2014, BAPA filed a second Response to Office Action (the “Second
`
`Response”) that provided further arguments and evidence in support of its acquired
`
`distinctiveness claim. Specifically, BAPA submitted a list of other organizations in the lesbian,
`
`gay, bisexual, transgender, intersex, queer/questioning, and allied (LGBTIQA) choral movement,
`
`all of which use marks and names that do not include the combination of “YOUTH PRIDE
`
`CHORUS”. On May 7, 2014, the Examining Attorney issued her final Office Action (“Final
`
`Refusal”), claiming that BAPA’s cumulative evidence of acquired distinctiveness was still
`
`insufficient to prove secondary meaning in its YOUTH PRIDE CHORUS mark.
`
`BAPA then filed a notice of appeal with the Board on November 7, 2014, along with a
`
`concurrent Request for Reconsideration (the “RFR”) providing additional evidence for the
`
`Examining Attorney’s consideration, and specifically declarations from the Executive Director
`
`
`
`3
`
`

`
`of GALA Choruses, the leading trade organization of the North American LGBTIQA choral
`
`movement, and from representatives of sister LGBTIQA vocal ensemble groups, each providing,
`
`as representatives from the relevant group of consumers and BAPA’s trade, their view that the
`
`YOUTH PRIDE CHORUS mark had acquired substantial distinctiveness in the marketplace.
`
`Despite this extensive evidence, the Examining Attorney erroneously maintained the final refusal
`
`and denied Applicant’s Request for Reconsideration (the “Reconsideration Letter”).
`
`IV. DESCRIPTION OF BAPA’S ACQUIRED DISTINCTIVENESS EVIDENCE
`
`In support of its acquired distinctiveness claim, BAPA provided the USPTO (the
`
`“Office”) with two sworn declaration from BAPA’s Executive Director, Peter Criswell. See
`
`Exhibit 1; see also Second Declaration of Peter Criswell (“Second Criswell Decl.”), annexed as
`
`Exhibit 3.3 Through the Criswell Declarations, BAPA submitted the following evidence
`
`demonstrating that the relevant purchasing public has come to view YOUTH PRIDE CHORUS
`
`as an indicator of origin:
`
`1. Over ten (10) years of exclusive, substantial and continuous use of YOUTH
`PRIDE CHORUS in interstate commerce. (Criswell Decl. ¶ 5.)
`2. YOUTH PRIDE CHORUS services provided at nationally attended events
`with significant importance to the LGBTIQA community, including the
`GLAAD Media Awards, GLSEN’s Respect Awards, Broadway Backwards,
`and with Cyndi Lauper on her True Colors Tour and her Home for the
`Holidays concert benefitting homeless youth. (Criswell Decl. ¶ 3.)
`3. The initial YOUTH PRIDE CHORUS concert at Carnegie Hall sold
`approximately 2,000 tickets. (Criswell Decl. ¶ 4.)
`4. Applicant routinely advertises its YOUTH PRIDE CHORUS performances
`in Time Out New York which has an approximate circulation of 147,000
`recipients. (Criswell Decl. ¶ 4.)
`5. Applicant broadcasts e-mail updates, notifications and news prominently
`displaying its YOUTH PRIDE CHORUS mark to approximately 5,000
`recipients each year. (Criswell Decl. ¶ 4.)
`6. The Center, a non-profit organization affiliated with Applicant, broadcasts
`e-mail updates, notifications and news that include updates on services
`offered under Applicant’s YOUTH PRIDE CHORUS mark to over 20,000
`recipients each year. (Criswell Decl. ¶ 4.)
`
`
`3 Originally submitted to the Office in connection with the Second Response.
`4
`
`
`
`

`
`7. Applicant, through its members, distributes at least 5,000 palm cards
`prominently displaying Applicant’s YOUTH PRIDE CHORUS mark to
`advertise for every YOUTH PRIDE CHORUS concert. (Criswell Decl. ¶
`4.)
`8. Applicant has performed YOUTH PRIDE CHORUS concerts at the Gay
`and Lesbian Association of Choruses (GALA) Festival twice (2008 and
`2012) reaching 4,000 consumers from different cities across the United
`States. (Criswell Decl. ¶ 4.)
`9. Applicant has performed two (2) YOUTH PRIDE CHORUS concerts per
`year for the last ten (10) years. Each concert sells 300 tickets. It is
`estimated that 6,000 guests have attended a YOUTH PRIDE CHORUS
`concert during the last ten (10) years. (Criswell Decl. ¶ 4.)
`10. Applicant’s YOUTH PRIDE CHORUS performances featuring “We’re Not
`Gonna Take It” and “Generations” were discussed in NYC Up Magazine and
`Out Magazine, reaching thousands of consumers. (Criswell Decl. ¶ 4.)
`11. Applicant’s Youth Pride Chorus Facebook page enjoys 1,371 “likes”.
`(Criswell Decl. ¶ 5.)
`12. Applicant’s Youth Pride Chorus Twitter account enjoys 496 followers.
`(Criswell Decl. ¶ 5.)
`13. Applicant’s Youth Pride Chorus channel on YouTube has been viewed
`126,821 times. (Criswell Decl. ¶ 5.)
`14. Applicant’s YOUTH PRIDE CHORUS YouTube video, “It Gets Better,”
`has been viewed 103,382 times. (Criswell Decl. ¶ 5.)
`15. Applicant’s video on YouTube about YOUTH PRIDE CHORUS has been
`viewed 2,096 times. (Criswell Decl. ¶ 5.)
`16. Applicant has enjoyed at least forty-eight (48) unsolicited media mentions,
`articles, and interviews about its YOUTH PRIDE CHORUS events,
`including placement in The New York Times, New York Daily News, Time
`Out New York, Out Magazine, Playbill.com, NY1, and New York Magazine.
`(Criswell Decl. ¶¶ 5-6.)
`
`
`As Exhibit B to the Criswell Declaration, BAPA provided print-outs from social media profiles
`
`and online publications demonstrating the breadth and depth of exposure of the YOUTH PRIDE
`
`CHORUS mark to the relevant consumers. In addition, BAPA provided a schedule summarizing the
`
`evidence in Exhibit B, reproduced immediately below:
`
`Page
`of Ex B
`
`1
`
`4
`
`7
`
`7
`
`
`
`
`URL/Source
`
`Where Mentioned
`
`Date
`
`Notes
`
`https://www.facebook.com/YouthPrideChorus
`
`Facebook Profile
`
`https://twitter.com/YouthPrideNYC
`
`http://www.youtube.com/user/YouthPrideChor
`us
`
`Twitter Profile
`
`YouTube Profile
`
`2003-2013
`
`2006-2013
`
`2009-2013
`
`www.youtube.com/watch?v=F9tSmwqpWQM
`
`Youtube
`
`10/6/2010
`
`1,371 Likes
`
`496 Followers
`
`YOUTH PRIDE CHORUS
`Channel has enjoyed
`126,821 views.
`YOUTH PRIDE CHORUS
`video, “It Gets Better”
`enjoys
`103,382 views
`
`5
`
`

`
`URL/Source
`
`Where Mentioned
`
`Date
`
`Notes
`
`www.youtube.com/watch?v=Dw2wnwUcR7Q
`
`Youtube
`
`2/21/2011
`
`http://www.youtube.com/watch?v=I86iwfyrZO
`c
`
`Home for the Holidays
`
`12/1/2012
`
`New York Daily News
`
`New York Daily News
`
`10/7/2003
`
`New York Times
`
`New York Times
`
`12/8/2006
`
`Home News Tribune
`
`Home News Tribune
`
`5/23/2008
`
`http://www.newyorkchoralconsortium.org/cho
`ruses.html
`
`NY Choral Consortium
`
`2012
`
`http://www.van.org/choirsbylocale.htm
`
`Vocal Area Network
`
`2013
`
`New York Daily News
`
`New York Daily News
`
`1/26/2013
`
`https://www.songkick.com/concerts/14978399
`-youth-pride-chorus-at-kitchen
`
`Songkick
`
`1/26/2013
`
`http://events.nydailynews.com/new_york_ny/
`events/show/297702007-youth-pride-chorus
`
`NY Daily News
`
`1/26/2013
`
`http://www.timeout.com/newyork/gay-
`lesbian/youth-pride-chorus-the-dreamer-and-
`the-woman-in-the-moon
`http://events.nydailynews.com/new_york_ny/
`events/show/323934203-youth-pride-chorus
`
`Time Out NY
`
`5/9/2013
`
`NY Daily News
`
`5/18/2013
`
`http://bhsecconnect.edublogs.org/events/yout
`h-pride-chorus/
`
`Bard HS Early College
`
`11/28/2013
`
`Youth Pride Chorus
`
`Rosie's Theater Kids
`
`5/1/2011
`
`Youth Pride Chorus
`
`GALA Festival 2008
`
`7/1/2008
`
`Youth Pride Chorus
`
`GLAAD Media Awards
`
`3/13/2010
`
`Youth Pride Chorus
`
`GLSEN Respect
`Awards
`
`6/18/2010
`
`
`
`6
`
`YOUTH PRIDE CHORUS
`video about Youth Pride
`Chorus enjoys
`2,096 views
`YOUTH PRIDE CHORUS
`performance onstage with
`Cyndi Lauper
`516 views
`Concert bulletin board
`advertising YOUTH PRIDE
`CHORUS show.
`Upcoming holiday events
`highlighting YOUTH PRIDE
`CHORUS performance at
`Carnegie Hall.
`Article about YOUTH PRIDE
`CHORUS performance.
`
`Listed YOUTH PRIDE
`CHORUS as a member
`chorus
`YOUTH PRIDE CHORUS listed
`as a local chorus in
`Manhattan
`Publicity for YOUTH PRIDE
`CHORUS performance at
`The Kitchen.
`YOUTH PRIDE CHORUS
`Winter concert 2013 at The
`Kitchen.
`YOUTH PRIDE CHORUS
`performed "Inner Space" at
`The Kitchen.
`Advertises upcoming YOUTH
`PRIDE CHORUS concert.
`
`Listed YOUTH PRIDE
`CHORUS spring concert
`2013 in events section of
`newspaper.
`Advertising upcoming
`YOUTH PRIDE CHORUS
`performance at Bard High
`School.
`YOUTH PRIDE CHORUS
`collaboration project with
`Rosie’s Theatre Kids
`YOUTH PRIDE CHORUS
`performed at GALA in
`Miami, FL.
`YOUTH PRIDE CHORUS
`performed at the GLAAD
`Media Awards.
`YOUTH PRIDE CHORUS
`performed at Gay, Lesbian
`and Straight Education
`Network (GLSEN) benefit
`event.
`
`Page
`of Ex B
`
`7
`
`
`7
`
`
`9
`
`11
`
`16
`
`21
`
`23
`
`48
`
`50
`
`51
`
`52
`
`54
`
`55
`
`58
`
`
`60
`
`
`61
`
`
`62
`
`
`
`
`

`
`As Exhibit C to the Criswell Declaration, BAPA also provided examples of unsolicited
`
`media attention exposing the consuming public to the YOUTH PRIDE CHORUS mark,
`
`including the following schedule summarizing the evidence in Exhibit C, reproduced immediately
`
`URL/Source
`
`Where Mentioned
`
`Date
`
`Notes
`
`below:
`
`Page
`of Ex C
`
`1
`
`3
`
`5
`
`10
`
`12
`
`14
`
`16
`
`20
`
`25
`
`28
`
`31
`
`35
`
`37
`
`39
`
`
`
`Out Magazine article
`
`Out Magazine
`
`12/1/2003
`
`http://www.playbill.com/news/article/83006-
`NYC-Gay-Mens-Chorus-Offers-a-Twisted-
`Holiday-Dec-12
`
`Playbill.com
`
`12/1/2003
`
`http://gaycitynews.com/gcn_251/7days.html
`
`Gay City News
`
`12/21/2003
`
`http://www.youtube.com/watch?v=yDvaJw0ay
`9o
`
`NY1
`
`1/1/2004
`
`http://www.theaterscene.net/ts/articles.nsf/%
`28AlphaN%29/29A1708C66258F1585256F6D00
`68172E
`New York Times
`
`NYCGMC Holiday
`Concert 2004
`
`12/16/2004
`
`New York Times
`
`12/20/2004
`
`The Intelligencer
`
`The Intelligencer
`
`3/19/2005
`
`http://www.newhopepa.com/events/2005/040
`5.htm
`
`New Hope, PA
`Calendar of Events
`
`4/17/2005
`
`US State News
`
`US State News
`
`6/10/2005
`
`http://nymag.com/guides/gaypride/15-18.htm
`
`NY Magazine
`
`6/17/2005
`
`http://thevillager.com/villager_168/inachoruso
`ftheirown.html
`
`The Villager
`
`7/19/2006
`
`Chelsea Now
`
`12/1/2006
`
`http://www.lawrencelerner.com/content/Articl
`es/FEATURES/CN2006-12-
`1_ChelseaBluesMan.pdf
`http://vimeo.com/16150022
`
`Vimeo
`
`http://bonusroundblog.blogspot.com/2007/06/
`youth-pride-chorus-documentary.html
`
`Bonus Round
`
`7
`
`3/1/2007
`
`6/1/2007
`
`An article that discusses and
`introduces YOUTH PRIDE
`CHORUS.
`YOUTH PRIDE CHORUS
`mentioned as taking part in
`NYCGMC holiday concert
`2003 at Carnegie Hall.
`
`An article that mentions
`YOUTH PRIDE CHORUS
`performance at The Center.
`News clip on NY1 television
`station covering New York
`City covering YOUTH PRIDE
`CHORUS services.
`YOUTH PRIDE CHORUS
`performance with NYCGMC
`at Carnegie Hall
`Newspaper music review
`featuring YOUTH PRIDE
`CHORUS performances.
`Article about Safe Havens
`for queer youth, and
`advertises upcoming YOUTH
`PRIDE CHORUS concert.
`
`YOUTH PRIDE CHORUS
`performance of "Sing Out
`Loud and Proud" at the
`Stephen Buck's Theatre in
`New Hope, PA, as a benefit
`for Buck's County's Center
`for LGBTQA youth.
`Article covering an event
`that featured YOUTH PRIDE
`CHORUS performance.
`YOUTH PRIDE CHORUS
`performance with NYC Gay
`Men’s Chorus at Skirball
`Theatre, New York.
`Discussion of YOUTH PRIDE
`CHORUS group in a “Chorus
`of Their Own, Gay Youth
`Find a Voice.”
`Article about upcoming
`YOUTH PRIDE CHORUS
`concert at Merkin Hall.
`Video about YOUTH PRIDE
`CHORUS.
`Advertises YOUTH PRIDE
`CHORUS upcoming concert
`at New World Stages.
`
`

`
`Page
`of Ex C
`48
`
`51
`
`54
`
`56
`
`58
`
`65
`
`68
`
`70
`
`71
`
`81
`
`83
`
`86
`
`87
`
`88
`
`90
`
`93
`
`103
`
`111
`
`
`
`URL/Source
`
`Where Mentioned
`
`Date
`
`Notes
`
`http://www.broadwayworld.com/article/New-
`York-City-Gay-Mens-Chorus-Presents-Vibrate-
`64-20080506
`
`http://blog.ladybunny.net/2009_11_01_archiv
`e.html
`
`Broadway World
`
`5/6/2008
`
`Lady Bunny Blog
`
`11/28/2009
`
`http://www.flickr.com/photos/thecenternyc/4
`543360045/
`
`Flickr
`
`4/22/2010
`
`http://queernewyorkblog.blogspot.com/2010/
`04/nyc-lgbt-community-center-solidarity.html
`
`Queer New York
`
`4/22/2010
`
`http://www.cbsnews.com/2100-201_162-
`6961928.html
`
`CBS News
`
`10/20/2010
`
`http://www.democraticunderground.com/disc
`uss/duboard.php?az=view_all&address=385x51
`8946
`http://www.yesmagazine.org/happiness/youth
`-pride-chorus
`
`Democratic
`Underground
`
`10/26/2010
`
`Yes! Magazine
`
`11/15/2010
`
`http://www.rayriggs.net/Visioning--Youth-
`Pride-Chorus.html
`
`Raymond L. Rigoglioso
`Consulting Services for
`Nonprofits
`
`1/1/2011
`
`http://www.gaytravellersnetwork.com/events/
`harmony-new-york-city-gay
`
`Harmony
`
`2/28/2011
`
`http://www.safeschoolscoalition.org/RG-
`teachers_music.html
`
`Safe Schools Coalition
`
`6/20/2011
`
`http://www.winterseve.org/WE09Kids.html
`
`http://www.nextmagazine.com/content/youth-
`pride-chorus-brings-audience-tears-new-york-
`gay-mens-chorus-annual-benefit-harmony
`
`http://www.nextmagazine.com/content/not-
`only-does-youth-pride-chorus-know-who-
`doobie-brothers-are-they-sing-their-hits-pretty
`
`Winter's Eve @ Lincoln
`Square
`
`11/28/2011
`
`Next Magazine
`
`2/29/2012
`
`Next Magazine
`
`4/30/2012
`
`http://www.mrny.com/special_events/new_ga
`rdenparty_2012.htm
`
`Garden Party @ the
`Center
`
`6/18/2012
`
`GALA Choruses
`
`7/7/2012
`
`N/A
`
`N/A
`
`N/A
`
`http://www.tresonamultimedia.com/gala/prod
`uct/Youth-Pride-Chorus-Live-from-Stage-
`Theatre---Alive/92821
`http://en.wikipedia.org/wiki/LGBT_culture
`
`Wikipedia
`
`http://harrisburgmenschorus.org/media_pages
`/it_gets_better_-_choral_tributes
`
`Harrisburg Gay Men's
`Chorus
`
`http://lgbteach.org/?paged=13
`
`LGBTeach
`
`8
`
`Mentions YOUTH PRIDE
`CHORUS as part of "Vibrate"
`performance.
`
`Advertises upcoming YOUTH
`PRIDE CHORUS winter
`concert 2009.
`YOUTH PRIDE CHORUS sings
`"True Colors" at The Center
`after rainbow flag was
`vandalized.
`Mentions YOUTH PRIDE
`CHORUS performance at the
`solidarity event at the
`Center after the rainbow
`flag was vandalized.
`Mentions release of YOUTH
`PRIDE CHORUS "It gets
`better" video.
`Reposted YOUTH PRIDE
`CHORUS video, "It Gets
`Better".
`Reposted YOUTH PRIDE
`CHORUS video, "It Gets
`Better".
`Case Study on Youth Pride
`Chorus.
`
`Article discussing YOUTH
`PRIDE CHORUS performance
`at Harmony, at Christie's.
`Third-party posting of video
`of YOUTH PRIDE CHORUS
`concert at Lucille Lortel
`Theatre.
`YOUTH PRIDE CHORUS
`performance at Samsung
`Experience.
`Review of YOUTH PRIDE
`CHORUS performance at
`Harmony 2012.
`
`Review of YOUTH PRIDE
`CHORUS Spring concert
`2012 at The Kitchen.
`
`Discussion of YOUTH PRIDE
`CHORUS performance at
`The Center's 29th Garden
`Party.
`Discussion of YOUTH PRIDE
`CHORUS performances in
`Denver, CO
`Article on LGBT Culture that
`mentions YOUTH PRIDE
`CHORUS.
`Reposted YOUTH PRIDE
`CHORUS video, "It Gets
`Better".
`Reposted YOUTH PRIDE
`CHORUS video, "It Gets
`Better".
`
`

`
`URL/Source
`
`Where Mentioned
`
`Date
`
`Notes
`
`http://www.broadwaycares.org/page.aspx?pid
`=786&frtid=77
`
`Broadway Cares
`
`N/A
`
`Discussion of YOUTH PRIDE
`CHORUS performance at
`Broadway Backwards 5.
`
`To identify the relevant consuming public for its services, and the exposure of the
`
`Page
`of Ex C
`117
`
`
`
`YOUTH PRIDE CHORUS mark to the relevant consumers, BAPA previously submitted to the
`
`Office that it is a member organization of the Gay and Lesbian Association of Choruses
`
`(“GALA”), www.galachoruses.org, which leads the North American LGBTIQA choral
`
`movement. See Second Criswell Decl. ¶ 3. More than 170 choruses and their 8,000 members
`
`participate in GALA programs. Id. GALA’s signature event is its quadrennial Festival, which
`
`brings together over 130 choruses and 5,000 singers for the world’s largest LGBTIQA choral
`
`performing arts event. Id. Not only has Applicant performed vocal ensemble performances
`
`under the YOUTH PRIDE CHORUS mark twice before the largest gathering of the most
`
`enthusiastic group of consumers for Applicant’s Services, see Criswell Decl. ¶ 4, but other young
`
`persons’ vocal ensemble groups use different marks to distinguish their services from
`
`Applicant’s Services because they recognize the source-identifying function of YOUTH PRIDE
`
`CHORUS. See Second Criswell Decl. ¶ 6.
`
`Lastly, and perhaps most importantly, BAPA submitted, as well, declarations from Robin
`
`Godfrey, Elven Hickmon, and Christopher Verdugo, who all occupy leadership roles in the
`
`LGBTIQA youth choral ensemble sector, annexed as Exhibit 4.4 Each of these leaders in the
`
`LGBTIQA young persons’ vocal ensemble trade recognize BAPA’s YOUTH PRIDE CHORUS
`
`ensemble as the founding—if not the oldest—young persons’ vocal ensemble in the LGBTIQA
`
`vocal ensemble movement. See id. In the course of their work in the trade, each for more than
`
`five (5) years, they have come to recognize YOUTH PRIDE CHORUS as a mark that is
`
`associated exclusively with Applicant and Applicant’s Services, and in their opinions, the
`
`4 Originally submitted as Exhibits A through C in connection with the RFR.
`9
`
`
`
`

`
`YOUTH PRIDE CHORUS mark has become well-known to the LGBTIQA choral arts sector
`
`and consumers of such services. See id.
`
`V.
`
`ARGUMENT
`
`The Examining Attorney argues that because “Youth Pride” is an extension of the gay
`
`pride and LGBT movement, “Youth Pride” describes “a feature of BAPA’s services which
`
`feature LGBTIQ [lesbian, gay, bisexual, transgender, intersex, and questioning] members.” OA
`
`at 3-6. To support her position that YOUTH PRIDE CHORUS is so highly descriptive and that
`
`BAPA has failed to show sufficient evidence of acquired distinctiveness, the Examining
`
`Attorney relies on third party web sites that use the terms “Youth Pride” in association with
`
`different services or celebrations in the LGBTIQ community. See id. However, the Examining
`
`Attorney errs by requiring BAPA to show acquired distinctiveness of its YOUTH PRIDE
`
`CHORUS among the general consuming public, instead of the relevant segment of the
`
`purchasing public, i.e. consumers interested in LGBTIQA young persons’ vocal ensemble
`
`services. For the reasons set forth in this Brief, the relevant segment of the purchasing public is
`
`likely to view BAPA’s YOUTH PRIDE CHORUS mark as indicating source in a single party,
`
`BAPA.
`
`A.
`
`THE YOUTH PRIDE CHORUS MARK HAS PLAINLY ACQUIRED
`DISTINCTIVENESS AND IS ENTITLED TO REGISTRATION ON THE
`PRINCIPAL REGISTER UNDER SECTION 2(F).
`
`1.
`
`The relevant segment of the purchasing public has come to view
`Applicant’s YOUTH PRIDE CHORUS as an indicator of source.
`
`
`BAPA submits that the mark “YOUTH PRIDE CHORUS” has attained secondary
`
`meaning through BAPA’s use of the mark for over the past 12 years, performing at prominent
`
`events in the LGBTIQA community, performing before the LGBTIQA vocal ensemble
`
`community at trade events, collaborating with other LGBTIQA vocal ensemble groups, and
`
`
`
`10
`
`

`
`attracting unsolicited media attention in publications of LGBTIQA interest. A mark has acquired
`
`distinctiveness if it is shown to have developed secondary meaning, which occurs when, “in the
`
`minds of the public, the primary significance of a [mark] is to identify the source of the product
`
`rather than the product itself.” Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205,
`
`211, 54 U.S.P.Q.2d 1065, 1066 (U.S. 2000) (quoting Inwood Labs. v. Ives Labs., 456 U.S. 844,
`
`851 n.11 (1982)).
`
`“While the ‘focus’ of secondary meaning is ‘the consuming public,’ it need not be proven
`
`among the general public if a product is targeted at only a specific segment of the general
`
`public.” J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 15:46
`
`(4th ed. 2015). To establish acquired distinctiveness, therefore, “it is only necessary to show that
`
`a substantial segment of the relevant group of consumers made the requisite association between
`
`the product and the producer.” Centaur Commc’ns, Ltd. v. A/S/M Commc’ns, Inc., 4 U.S.P.Q.2d
`
`1541, 1544 (2d Cir. 1987)5 (secondary meaning for the title of a marketing trade magazine was
`
`proven as to a segment defined as “executives in the international marketing and advertising
`
`community in the United States”). “Importantly, to determine whether a mark has secondary
`
`meaning, ‘it is not always the general public’s understanding but—depending upon the
`
`product—often only a segment of consumers that need be examined.” Christian Louboutin S.A.
`
`v. Yves Saint Laurent Am. Holdings, Inc., 103 U.S.P.Q.2d 1937, n.23 (2d Cir. 2012) (red
`
`contrasting color of women’s shoe soles had achieved secondary meaning among those in the
`
`market for very high fashion, high-heeled shoes); see also In re Rolled Alloys, Inc., No.
`
`85223044, 2014 WL 2967635 (T.T.A.B. June 3, 2014) (reversing refusal to register ROLLED
`
`
`5 Superseded by statute on other grounds as recognized in Paddington Corp. v. Attiki Imp. & Distrib., 996 F.2d 577
`(2d Cir.1993)
`
`
`
`11
`
`

`
`ALLOYS for specialty metals and metal alloys on the ground that the mark had acquired
`
`distinctiveness among a “niche sector of the steel industry”) (non-precedential).
`
`Just as the market for Louboutin’s luxury red-soled shoes and the market for Rolled
`
`Alloys’ metal alloys is not the casual purchaser, the relevant segment of the purchasing public
`
`for Applicant’s Services is consumers of LGBTIQA vocal ensemble services. The most relevant
`
`consumers for BAPA’s services may well be the members of the GALA Choruses, who hail
`
`from 130 choruses and number approximately 5,000. They convene semi-annually to perform
`
`vocal ensembles for mutual enjoyment and empowerment.
`
`BAPA has submitted sufficient evidence for its acquired distinctiveness claim among the
`
`relevant segment of the purchasing public.6 As reflected in the Criswell Declaration, BAPA has
`
`performed YOUTH PRIDE CHORUS services at nationally attended events with significant
`
`importance to the LGBTIQA community, including the GLAAD Media Awards, GLSEN’s
`
`Respect Awards, Broadway Backwards, and with Cyndi Lauper on her True Colors Tour and her
`
`Home for the Holidays concert benefitting homeless youth. (Criswell Decl. ¶ 3.) YOUTH
`
`PRIDE CHORUS performances featuring “We’re Not Gonna Take It” and “Generations” were
`
`discussed in NYC Up Magazine and Out Magazine, reaching thousands of consumers. (Criswell
`
`Decl. ¶ 4.) BAPA’s YOUTH PRIDE CHORUS YouTube video, “It Gets Better,”7 has been
`
`viewed 103,382 times. (Criswell Decl. ¶ 5.) Additionally, BAPA has submitted declarations
`
`
`6 Acceptable evidence for an acquired distinctiveness claim include declarations or other appropriate evidence
`showing duration, extent and nature of use in commerce, advertising expenditures, typical advertisements, and
`letters or statements from the trade or public, or other appropriate evidence tending to show that the mark
`distinguishes the services. 37 C.F.R. § 2.41(a); T.M.E.P. § 1212.03. Additional acceptable evidence includes sales
`success and unsolicited media coverage. In re Steelbuilding.com, 75 U.S.P.Q.2d 1420, 1424 (Fed. Cir. 2007).
`
` 7
`
` In September 2010, syndicated columnist and author Dan Savage created a YouTube video with his partner Terry
`Miller to inspire hope for young people facing harassment. In response to a number of students taking their own
`lives after being bullied in school, they wanted to create a personal way for supporters everywhere to tell LGBT
`youth that, yes, it does indeed get better. “The It Gets Better Project”™ has become a worldwide movement,
`inspiring more than 50,000 user-created videos viewed more than 50 million times. See
`http://www.itgetsbetter.org/pages/about-it-gets-better-project/ for further details.
`12
`
`
`
`

`
`from leaders in the LGBTIQA young person