Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA956476
`
`Filing date:
`
`02/25/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
`
`86803751
`
`Imaginif, Inc.
`
`Applied for Mark
`
`HICCUP
`
`Correspondence
`Address
`
`JOHN S. ZANGHI
`FAY SHARPE LLP
`THE HALLE BLDG 5TH FL1228 EUCLID AVE
`CLEVELAND, OH 44115
`UNITED STATES
`jzanghi@faysharpe.com, docketing@faysharpe.com
`216-363-9000
`
`Submission
`
`Attachments
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Appeal Brief
`
`Appeal Brief002.pdf(6193337 bytes )
`
`John S. Zanghi
`
`jzanghi@faysharpe.com
`
`/John S. Zanghi/
`
`02/25/2019
`
`

`

`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of
`
`:
`
`Imaginif, Inc.
`
`For the Mark
`
`Serial No.
`
`Filing Date
`
`: HICCUP
`
`:
`
`86/803,751
`
`: October 29, 2015
`
`Examining Attorney
`
`: Khanh M. Le
`
`Law Office
`
`Last Office Action
`
`Attorney Docket No.
`
`:
`
`:
`
`:
`
`116
`
`June 27, 2018
`
`IMAG 500018US01
`
`Cleveland, OH 44115
`February 25, 2019
`
`Attention: TTAB
`Commissioner for Trademarks
`PO. Box 1451
`
`Alexandria, VA 22313—1451
`
`BRIEF FOR APPLICANT
`
`

`

`fiACKQRQQND
`
`The pending application for HICCUP was filed under Section 1(b) and received
`
`U.S. Trademark Application Serial No. 86/803,751 with a filing date of October 29, 2015.
`
`The application originally identified the following services:
`
`events;
`live
`theatrical presentations;
`live
`International Class 041:
`entertainment services, namely, providing non-downloadable prerecorded
`online theatrical presentations; television appearances by an entertainer;
`photography services; digital
`imaging services; portrait photography;
`children's
`theatrical
`services,
`namely,
`presentation of
`live
`show
`performances; presentation of live show performances directed to children;
`entertainment in the nature of theater productions.
`
`The trademark examining attorney found no conflicting marks that would bar
`
`registration under Trademark Act Section 2(d). However, the Examining Attorney found
`
`that certain wording in the identification of services required clarification, i.e., “live events”
`
`and “television appearances by an entertainer.” November 17, 2015, Office Action, TSDR
`
`p.2.
`
`Applicant filed a Response to the Office Action, including an amendment to the
`
`identification of services. December 2, 2015, Response to Office Action, TSDR p.2.
`
`Following a telephone conference with counsel for Applicant, the identification of services
`
`was further amended and now recites:
`
`International Class 041: Live theatrical presentations; entertainment
`services in the nature of live theater performances; entertainment services,
`namely,
`providing
`nondownloadable
`prerecorded
`online
`theatrical
`presentations; entertainment services, namely, live television appearances
`by an entertainer; photography services; digital imaging services; portrait
`photography; children's theatrical services, namely, presentation of live
`show performances; presentation of live show performances directed to
`children; entertainment in the nature of theater productions.
`
`

`

`December 3, 2015, Examiner’s Amendment, TSDR p.1. A Notice of Publication issued.
`
`on February 17, 2016.
`
`On November 3, 2017, Applicant
`
`filed a Statement of Use,
`
`including two
`
`specimens of use. The Examining Attorney, however,
`
`issued a rejection, citing the
`
`following reasons: (1) Failure to Function as a Services Mark Refusal, (2) Specimen of
`
`Use Requirement, and (3) Mark in Drawing Does Not Match Mark in Specimens of Use.
`
`December 5, 2017, Office Action.
`
`Applicant filed a response, arguing that the applied-for mark HICCUP functions as
`
`a service mark, that the specimen of use requirement has been met, and that the mark in
`
`the drawing matches the mark in each of the specimens of use. The Examining Attorney
`
`then withdrew the following refusal and requirement: (1) Failure to Function as a Services
`
`Mark Refusal and (2) Specimen of Use Requirement. However, the requirement for a
`
`specimen that features the mark as it is shown in the drawing was made FlNAL under
`
`Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv),
`
`2.56(a), 2.63(b); TMEP §§904, 904.07(a), 1301.04(g)(i). June 27, 2018, Final Office
`
`Action, TSDR p.2.
`
`AR MENT
`
`Registration of the HICCUP mark has been refused under 37 C.F.R. §2.51 on the
`
`ground that the mark as depicted on the drawing disagrees with the mark as it appears in
`
`the specimens. The Examining Attorney maintains that the drawing in this §1 application
`
`displays the mark as HICCUP, and the specimens display the mark as “Hiccup Hangout,”
`
`“The Hiccup Family,” “Rhubarb Hiccup,” “Sylvester Hiccup,” “Boyzenberry Hiccup” and
`
`

`

`“Hiccup Clan.”
`
`Applicant contends that the mark is registrable for at least the following reason.
`
`The HICCUP mark depicted in the drawings makes a separate and distinct commercial
`
`impression apart from the HICCUP HANGOUT or THE HICCUP FAMILY text used on the
`
`specimens.
`
`Although the mark on the drawing must be a complete mark under a §1 application,
`
`an applicant has some latitude in selecting the mark it wants to register. See TMEP
`
`§807.12(d). The mere fact that two or more elements form a composite mark does not
`
`necessarily mean that those elements are inseparable for registration purposes. Id. An
`
`applicant may apply to register any element of a composite mark if that element presents,
`
`or will present, a separate and distinct commercial impression apart from any other matter
`
`with which the mark is or will be used on the specimen. Id. The determinative factor is
`
`whether the subject matter in question makes a separate and distinct commercial
`
`impression apart from the other element(s). See In re Chemical Dynamics Inc., 839 F.2d
`
`1569, 5 USPQZd 1828 (Fed. Cir. 1988); In re Servel, Inc., 181 F.2d 192, 85 USPQ 257
`
`(C.C.P.A. 1950);
`
`In re Miller Sports Inc., 51 USPQZd 1059 (TTAB 1999);
`
`In re Boyd
`
`Coffee Co., 25 USPQ2d 2052 (TTAB 1993);
`
`In re Raychem Corp., 12 USPQ2d 1399
`
`(TTAB 1989). “It all boils down to a judgment as to whether that designation for which
`
`registration is sought comprises a separate and distinct ‘trademark’ in and of itself.” See
`
`1 J.T. McCarthy, Trademarks and Unfair Competition §19259 (4th ed. 2017).
`
`The applied-for mark is HICCUP, which is employed with entertainment services.
`
`Although there is a lot of online material on these services, the applicant has “culled out
`
`exactly that element which serves to distinguish [the] product from others.” See McCarthy
`
`

`

`§19z59. HICCUP is part of Mr. Kringle’s Inventionasium. As explained on Applicant’s
`
`website, for families seeking an innovative holiday activity, Kringle’s Inventionasium offers
`
`a fully immersive interactive experience and boasts one of the “Best Santas in the US.”
`
`Guests are invited to assist Mr. Kringle in the evaluation and creation of toys. Guests can
`
`meet with various characters, including Mr. Kringle himself and the Hiccup family. The
`
`Inventionasium experience also includes Kringle’s Toy Shoppe, where guests may
`
`purchase Kringle’s unique toys, novelties, ornaments and decor.
`
`Such usage speaks to the variety of different ways in which the HICCUP mark can
`
`be employed with other terms.
`
`In this manner, the use of the HICCUP mark can be
`
`employed in conjunction with various members of the Hiccup clan and is consistent with
`
`the versatility of the services upon which the HICCUP mark is utilized.
`
`One specimen specifically notes that children can meet members of Kringle’s
`
`family in the Hiccup Hangout. As described in the advertising, kids should “[k]eep a look
`
`out for dancing chandeliers and some unexpected surprises!”
`
`The dictionary meaning of “hangout,” which can be “a favorite place for spending
`
`time” or “a place frequented for entertainment or for socializing” is instructive here.
`
`Merriam-Webster
`
`Online
`
`Dictionary,
`
`available
`
`at
`
`https://www.merriam—
`
`webster.com/dictionam/hangout. (A copy of the definition is attached hereto as Exhibit A).
`
`Thus, the use of the term “hangout” here simply refers to a place where members of the
`
`Hiccup clan can be found and the entertainment services are performed.
`
`Another specimen describes special appearances from the Hiccup family. Also
`
`instructive here is the dictionary meaning of “family,” which can be “a group of individuals
`
`living under one roof and usually under one head” or “HOUSEHOLD.” Merriam-Webster
`
`

`

`Online Dictionary, available at https://www.merriam-webster.com/dictionam/family.
`
`(A
`
`copy of the definition is attached hereto as Exhibit B). Thus, the use of the term “family”
`
`here simply refers to the members of the Hiccup family, such as Rhubarb Hiccup,
`
`Sylvester Hiccup, Razberry Hiccup, Boyzenberry Hiccup, and others.
`
`It seems likely that descriptive terms such as “hangout” and “family” in a trademark
`
`application for the listed services would require a disclaimer. Thus, “Hiccup” is clearly the
`
`dominant, or most significant, feature of the marks.
`
`Further evidence of the HICCUP mark as a separate and distinct commercial
`
`impression is its use in commerce. The HICCUP mark is employed in a variety of sales
`
`channels, including the internet. These sales channels cater to a wide variety of holiday-
`
`related services. Thus, the HICCUP name arguably can be employed with many different
`
`descriptive terms. Accordingly, HICCUP is separate and distinguishable, and HICCUP
`
`functions in and of itself as a trademark.
`
`The Trademark board has a history of allowing marks that are separate and
`
`distinguishable to be registered separately. As noted in In re Servel, “[w]e repeat that we
`
`do not think that Congress intended to confer upon the Commissioner of Patents authority
`
`to say to an applicant how much or how little of the embellishments appearing in
`
`connection with what may be called the essential feature of a trademark form an actual
`
`part of the trademark” 181 F.2d 192, 85 U.S.P.Q. 257 (C.C.P.A. 1950). It is the applicant
`
`that must choose the portion of the mark to be culled out and submitted for registration.
`
`

`

`CONCLUSION
`
`For at least the foregoing reasons, Applicant respectfully submits that the HICCUP
`
`mark makes a makes a separate and distinct commercial impression from the HICCUP
`
`HANGOUT or THE HICCUP FAMILY text on the sample advertising. Thus, the HICCUP
`
`mark has been properly submitted and is now in condition for registration.
`
`Accordingly, Applicant respectfully requests that the Trademark Trial and Appeal
`
`Board reverse the Examiner’s decision refusing registration.
`
`Respectfully submitted,
`
`FAY SHARPE LLP
`,~‘
`
`y J
`
`ohn S. Zanghi
`1228 Euclid Avenue, Fifth Floor
`Cleveland, OH 44115
`(216) 363-9000
`Attorneys for Applicant
`
`

`

`EXHIBITA
`
`

`

`2/25/2019
`
`Hangout | Definition of Hangout by Merriam-Webster
`
`Nksfiani
`Webster
`
`SINCE 1828
`Menu
`
`
`
`Follow:W Inner mm Imam
`
`hangout
`llflllll
`hangout | \ 'halj-‘al‘l!
`
`_\
`
`Definition of hangout
`(Entry 1 of2)
`
`: a favorite place for spending time also : a place frequented for entertainment or for socializing
`hang out
`
`m D
`
`efinition of hang out (Entry 2 of 2)
`
`lW : to protrude and droop a dog with its tongue hanging out
`2W informal : to spend time idly or in relaxing or socializing just hanging out by the pool My mother told me not to hang out in bars because the sort of people
`I would meet there were the sort ofpeople who hang out in bars.— Calvin Trillin Traditionally, most owners [of sports teams] are rich egomaniacs eager to hang out with
`athletes and get their names in the paper.v George Vecsey
`3 mm : to display (something) outside as an announcement to the public hang out a sign/banner —used chiefly in the phrase hang out a/ane’s shingle in the
`figurative sense "to start a business, begin working professionally" Publishing was not as complicated in business
`when young Alfred Knopf hung out his
`shingle nearly 70 years ago— John F, Baker Back their big LA. law firms rarely hired Jews
`. So Sterling hung out a shingle in Boyle Heights and became a tireless
`advocate for his old neighbors, handling everything from divorces to personal injury cases.— Franz Lidz
`
`https:llwww.merriam-webster.cornldictionary/hangout
`
`1/3
`
`

`

`Hangout |
`
`Definition of Hangout by Merriam-Webster
`
`2/25/2019
`‘l’jmm‘l’mmmmJ’mmngm
`Keep scrolling for more
`
`Synonyms for hangout
`Synonyms: Noun
`
`haunt. nurlieu. mums. man, aluminum nomainssmund
`We
`
`Examples of hangout in a Sentence
`Noun
`
`The park was their favorite hangout. a favorite hangout of the golden-agers is the local community center
`Recent Examples on the Web: Noun
`
`The Nebraska Republican Party released videos that show Krist at Billy‘s Restaurant, a popular Lincoln hangout for legislators and lobbyists. ~Wlhe
`W.WWWWW,MPm which Promises to he a new neighborhood hangout for the Seaport
`district. HWWW.MSJ&B
`These example sentences are selected automatically from various online news sources to reflect cunent
`not represent the opinion of Merriam-Webster or its editors.mm.
`See More
`
`usage of the word 'hangout.‘ Views expressed in the examples do
`
`First Known Use of hangout
`Noun
`
`circa 1893, in the meaning defined am;
`Verb
`
`14th century, in the meaning defined at 85118.1
`Keep scrolling for more
`
`Learn More about hangout
`Share hangout
`
`GIG)
`Resources for hangout
`
`@CDWMYWM
`From the Editors at Merriam-Webster
`
`wjmagel976108568
` ' gs
`
` gs
`
`Wading:
`
`Dictionary Entries near hangout
`hanganuhsad
`haugnne‘flteadjrubam
`MSW—Wm
`inseam
`balsam
`
`hansamnushinsl:
`
`httpszllwww.merriam-webster.comldictionary/hangout
`
`2/3
`
`

`

`Hangout | Definition of Hangout by Merriam-Webster
`
`2/25/2019
`hangout
`
`Statistics for hangout
`Last Updated
`22 Feb 2019
`
`Look-up Popularity
`Bottom 50% of words
`
`Time Traveler for hangout
`
`The first known use of hangout was in the 14th century
`WWW,
`Keep scrolling for more
`
`More Definitions for hangout
`hangout
`MM
`
`English Language Learners Definition of hangout
`informal : a place where a person spends a lot oftime
`
`mummnmmmmmmgmmm
`hangout
`mm
`hangout | \ ‘lmJ-Vaut
`
`_\
`
`Kids Definition of hangout
`: a favorite place for spending time
`Keep scrolling for more
`
`More from Merriam-Webster on hangout
`
`Rhyming Dictionary:Wng
`
`Nglish: ngmmmm
`
`Comments on hangout
`
`What made you want to look up hangout? Please tell us where you read or heard it (including the quote. If possible}
`muesli.
`
`https:l/www.merriam-webster.com/dicfionarylhangout
`
`3/3
`
`

`

`EXHIBIT B
`
`

`

`2125/2019
`
`Merriam-
`Webster
`
`SINCE IBZB
`Menu
`
`Family | Definition of Family by Merriam-Webster
`
`
`
`MORE
`WMWW
`-W
`e W
`
`[mm mm mm Imam
`family
`
`X Qd
`
`ictionary thesaurus
`
`Follow: Eagebmk mm mmW
`
`_,
`
`'fa-m:-\
`
`family
`
`m f
`
`am-i-ly | \ 'fam-le
`plural families
`
`Definition offamily
`(Entry 1 of 2)
`
`la : the basic unit in society traditionally consisting of two parents rearing their children also : any ofvarious social unis ditfering from but regarded as equivalent to the
`traditional family a single-parent family
`b : spouse and children want to spend more time with my family
`2 : a group of individuals living under one roof and usually under one head : Md
`3a : a group ofpersons ofmmmm ancestry :nlm
`b : a people or group ofpeoples regarded as deriving from a common stock : m
`4a : a group ofpeople united by certain convictions or a common affiliation : My;
`b : the staffofI high official (such as the President)
`5 : a group of things related by common characteristics: such as
`a : a closely related series of elements or chemical compounds
`b : a group of soils with similar chemical and physical properties (such as texture, pH, and mineral content) that comprise a category ranking above the series and below
`the subgroup in soil classification
`c : a group ofrelated languages descended from a single ancestral language
`6a : a group ofulm plants or animals forming a category ranking above a genus and below an order and usually comprising several to many genera
`
`https://www.merriam-webster.com/dictionary/family
`
`1/5
`
`

`

`2/25/2019
`b in livestock breeding
`
`Family | Definition of Family by Merriam-Webster
`
`(l) : theW or line of a particular individual especially ofsome outstanding female
`(2) : an identifiable strain within a breed
`7 : a set of curves or surfaces whose equations differ only in parameters
`8 : a unit of a crime syndicate (such as the Mafia) operating within a geographical area
`family
`adiectin
`
`Definition offamily (Entry 2 of 2)
`
`l : ofor relating to a family (seeW4)
`2 : designed or suitable for both children and adults family restaurants family movies
`
`Keep scrolling for more
`
`Other Words from family
`Noun
`
`familyhood\ ‘fam-le-Ihud
`
`.
`
`'fa-mc- \ noun
`
`Synonyms forfamily
`Synonyms: Noun
`
`mmmmmmmmmuorm).mmm.MemMmm
`WW9
`
`What is a family?
`
`The answer to the question “what doesfamily mean?" is both ditficult to answer and highly subjective. The word has shitted its meaning considerably since it entered
`our language, currently contains many different senses, and in at least one ofthese senses may signify different things to different people. The earliest uses
`offamily denoted "a group of persons in the service of an individual," a sense that is now archaic. Although this early meaning may seem far afield from the way that
`servants and relatives.
`most of us usefamilytoday, it is not surprising when we consider that the word comes from the Latinfamilia, which meant “household," a designation that included both
`
`In modern usefamily may refer to one of a number ofdifferent groups of people or things collectively, such as chemical compounds, related languages, plants and
`animals, and people who may or may not share ancestry. Family is often encountered in legal use, but even within the jargon of the law it is not restricted to a single
`meaning. In many legal contextsfamily denotes "individuals related by blood, marriage, or adoption," but in others the definition may be somewhat broader.
`encompassing groups of individuals not related by these things.
`
`Examples offamily in a Sentence
`Noun
`
`The disappearance ofdecent-paying low-skilledjobs over the last 30 years makes it virtually impossible for a young high-school dropout to successfufly support
`a familyon a legitimate income. 7 Karen De Mtt, fissure, August 1994 A defendant in a racketeering trial was described yesterday as a Mafia captain who had carried
`out a plot to kill three rivals in the Bonanno crime family. a Arnold H. Lubasch, New York Times, 30 Apr. 1987
`See More
`
`Recent Examples on the Web: Noun
`
`But those early-moming classes feel like afamily —Wyflmmfimm," |§ Egh. 2912 Born from War Wernher vorr Braun,
`the second of three children in a somewhat prominentfamily, already had a passion for the fantastic. aWyflmmmm.mmflm;fim
`WWW
`
`These example sentences are selected automatically from various online news sources to reflect current usage of the word ‘family.' Views expressed in the examples do
`not represent the opinion of Merriam-Webster or its editorsW.
`See More
`
`First Known Use offamily
`Noun
`
`l5th century, in the meaning defined at we]
`Adjective
`1602, in the meaning defined at magi
`
`History and Etymology forfamily
`
`https://www.men'iarn-webster.comldictionarylfamily
`
`2/5
`
`

`

`2/25/2019
`Noun and Adjective
`
`Family | Definition of Family by Merriam-Webster
`
`Middle Englishfamilie, from Lafinfamilia household (including servants as well as kin ofthe householder), from[annulus servant
`Keep scrolling for more
`
`Learn More aboutfamily
`Sharefamily
`
`@169
`Resumes forfamily
`
`@®Wysmmmmmi
`From the Editors at Merriam-Webster
`ulnsmmsoma
`
`mmmmmmflx
`
`WM(W)WX
`W211?
`bjmage984761760
`
`WWW!
`
`WWW):
`Wymmm
`
`Dictionary Entries nearfamily
`E
`.
`.
`Milena
`
`flmillum:
`
`familx
`familulhmm:
`familulm
`familyjilzls
`
`Statistics for family
`Last Updmd
`24 Feb 2019
`
`Look-up Popularily
`Top 1% oflookups
`Time Truvclcr for/Emily
`
`The first known use offamily was in the 15th century
`WWW
`Keep scrolling for more
`More Definitions forfamily
`family
`mu
`
`https:llwww.merriam-webster.com/dictionary/family
`
`3/5
`
`

`

`2/25/2019
`
`Family | Definition of Family by Merriam-Webster
`
`English Language Learners Definition offamily
`(Entry 1 of 2)
`: a group of people who are related to each other
`: a person's children
`: a group of related people including people who lived in the past
`family
`Mien/in
`
`English Language Learners Definition offamily (Entry 2 of 2)
`: of or relating to a family
`: designed or suimble for both children and adults
`
`family | \ ’fa-ma—le
`plural families
`
`‘, ‘fam-le\
`
`Kids Definition offamily
`1 :
`a social group made up ofparents and their children
`2 :
`a group ofpeople who come from the same ancestor You resemble your mother’s side of thefamily.
`3 : a group ofpeople living together : household
`4 : a group of things sharing certain characteristics afamily of languages
`5 : a group of related living things (as plants or animals) that ranks above the genus and below the order in scientific classification Domestic cats, lions. and tigers are
`some of the members of the catfamily.
`family
`noun
`family I \ 'fam-(s—fli
`plural families
`
`_\
`
`Medical Definition offamily
`
`1 : the basic unit in society traditionally consisting of two parents rearing their children also : any of various social units differing from but regarded as equivalent to the
`traditional family a single-parent family
`2 : a group ofrelated plants or animals forming a category ranking above a genus and below an order and usually comprising several to many genera
`Other Words fromfamily
`family adjective
`Keep scrolling for more
`family
`noun
`family | \ 'fam-lé, 'fa-mo-
`plural families
`
`_\
`
`Legal Definition offamily
`I
`: a group of individuals related by blood, marriage, or adoption
`2 : a group ofusually related individuals who live together under common household authority and especially who have reciprocal duties to each other
`Note: The interpretation ofthe wordfamily in a law context depends upon the area ofthe law concerned (as contract or zoning law), the purpose of the document (as a
`statute or contract) in which it is used, and the facts of the case. Ofien for zoning purposes, the occupants of a group home are considered a family if the organization is
`like that of a family or if the home is going to be a permanent rather than a transitional residence for the occupants.
`Other Words fromfamily
`
`familial \ fs-‘mil-yal
`Keep scrolling for more
`
`\ adjective
`
`More from Merriam-Webster onfamily
`
`Thesaums:WWW/x
`Spanish Central: Wand);
`
`https:l/www.merriam-webster.com/dictionary/family
`
`4/5
`
`

`

`2/25/2019
`Ngh'sh:Wadymmm
`
`Britannica English:Waummm
`Britannica.com: Encyflnmmmtx
`
`Comments on lam/1y
`
`Family | Definition of Family by Merriam-Webster
`
`What made you want to look up family? Please tell us where you read or heard it (Including the quote. if possible).
`W
`
`https:lIwww.merriam-webstemom/dictionary/family
`
`5/5
`
`