PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`ARGUMENT(S)
`
`The table below presents the data as entered.
`
`Entered
`
`86175505
`
`LAW OFFICE 107
`
`http://tsdr.uspto.gov/img/86175505/large
`
`SPORTSLINE.COM
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`CBS Interactive Inc. (the "Applicant"), responds to the Office Action Letter from the Patent and Trademark Office dated May 2, 2014 and
`respectfully requests reconsideration of its application for the mark SPORTSLINE.COM (the ?Mark?) filed on January 27, 2014 for foam
`drink holders in Class 21 (the ?Application?) in light of the following. The Examining Attorney has refused registration of the Mark under the
`Trademark Act Sections 1, 2 and 45, U.S.C. Sections 1051, 1052 and 1127, based on a finding that the Mark ?would be perceived as merely a
`decorative or ornamental feature of the goods because the size and placement of the mark is indicative of decorative material, and the goods
`themselves, foam drink holders, are of the type typically used as promotional materials by businesses to promote other services. Further, the
`mark as it appears on the specimen would be perceived as the domain name where applicant?s website would appear on the Internet, rather
`than as an indicator of the source of the goods.? The Examining Attorney has suggested that the Applicant may overcome the refusal to
`register in various ways such as by the submission of evidence of use of the Mark on other goods or services sufficient to demonstrate that the
`public would recognize the Applicant as the secondary source or sponsor of the goods as provided for in T.M.E.P. Section 1202.03(c). As is
`more fully set forth below and in the accompanying Affidavit, Applicant respectfully submits factual evidence and legal support for the
`conclusions that the Mark is indeed used an indicator of the source of the goods identified in the Application (and goods and services
`associated therewith). As seen in exhibit 1of the Affidavit of Thomas Knapp SportsLine.com is the owner of the four registered trademarks
`which date back as far as 1975. Copies of printouts of these registrations from the USPTO TEAS database are attached to the affidavit. As also
`noted in the accompanying affidavit of Thomas Knapp CBS Interactive Inc. and SportsLine.com Inc. are both subsidiaries of CBS
`Corporation. All of the above cited registrations are owned by the applicant?s sister company SportsLine.com Inc. To clarify the record CBS
`Interactive is, along with the filing of this response, recording an assignment of this application form CBS Interactive to SportsLine.com Inc.
`As is commonplace in promotional and accessory merchandise, all use of the Mark is clearly tied the longstanding use of SPORTSLINE and
`SPORTSLINE.COM as the source. See Affidavit at paragraph 16. Applicant's use of the Mark is therefore not "ornamental" in a trademark
`sense. In In re Paramount Pictures Corp., 213 U.S.P.Q. 1111 (TTAB 1982), the TTAB recognized this use of tie-in merchandise as a means of
`developing a secondary source: We think it is significant that it is a common merchandising technique in this country to license the use of
`character names and images as trademarks for a variety of products collateral to the product of services in respect of which the name or images
`are primarily known. Thus while purchasers may be accustomed to seeing characters? names and images as part of the ornamentation of
`decals, T-shirts and the like, they are also accustomed to seeing characters? names and images used as trademarks to indicate source of origin.
`In In re Olin Corporation, 181 U.S.P.Q. 182 (TTAB 1973), the TTAB reversed the refusal to register based on a finding that the mark was
`ornamental or decorative, and stated: The ?ornamentation? of a T-shirt can be of a special nature which inherently tells the purchasing public
`the source of the T-shirt, not the source of the manufacturer but the secondary source. Thus, the name ?New York University? and an
`illustration of the Hall of Fame, albeit it will serve as ornamentation on a T-shirt will also advise the purchaser that the university is the
`secondary source of that shirt. It is not imaginable that Columbia University will be the source of a New York University T-shirt. Where that
`shirt is distributed by other than the university, the university?s name on the shirt will indicate sponsorship or authorization by the university.
`[m]ore importantly, we think it is significant that it is a common merchandising technique in this country to license the use of character names
`and images as trademarks for a variety of products collateral to the product or services in respect of which the name or images are primarily
`known. Thus, while purchasers may be accustomed to seeing characters' names and images as part of the ornamentation of decals, T-shirts and
`the like, they are also accustomed to seeing characters' names and images used as trademarks to indicate source of origin. In Paramount,
`applying the test set forth in Olin, the Board found that "the paired names 'MORK & MINDY,' while certainly part of the ornamentation of the
`
`
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`ARGUMENT(S)
`
`The table below presents the data as entered.
`
`Entered
`
`86175505
`
`LAW OFFICE 107
`
`http://tsdr.uspto.gov/img/86175505/large
`
`SPORTSLINE.COM
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`CBS Interactive Inc. (the "Applicant"), responds to the Office Action Letter from the Patent and Trademark Office dated May 2, 2014 and
`respectfully requests reconsideration of its application for the mark SPORTSLINE.COM (the ?Mark?) filed on January 27, 2014 for foam
`drink holders in Class 21 (the ?Application?) in light of the following. The Examining Attorney has refused registration of the Mark under the
`Trademark Act Sections 1, 2 and 45, U.S.C. Sections 1051, 1052 and 1127, based on a finding that the Mark ?would be perceived as merely a
`decorative or ornamental feature of the goods because the size and placement of the mark is indicative of decorative material, and the goods
`themselves, foam drink holders, are of the type typically used as promotional materials by businesses to promote other services. Further, the
`mark as it appears on the specimen would be perceived as the domain name where applicant?s website would appear on the Internet, rather
`than as an indicator of the source of the goods.? The Examining Attorney has suggested that the Applicant may overcome the refusal to
`register in various ways such as by the submission of evidence of use of the Mark on other goods or services sufficient to demonstrate that the
`public would recognize the Applicant as the secondary source or sponsor of the goods as provided for in T.M.E.P. Section 1202.03(c). As is
`more fully set forth below and in the accompanying Affidavit, Applicant respectfully submits factual evidence and legal support for the
`conclusions that the Mark is indeed used an indicator of the source of the goods identified in the Application (and goods and services
`associated therewith). As seen in exhibit 1of the Affidavit of Thomas Knapp SportsLine.com is the owner of the four registered trademarks
`which date back as far as 1975. Copies of printouts of these registrations from the USPTO TEAS database are attached to the affidavit. As also
`noted in the accompanying affidavit of Thomas Knapp CBS Interactive Inc. and SportsLine.com Inc. are both subsidiaries of CBS
`Corporation. All of the above cited registrations are owned by the applicant?s sister company SportsLine.com Inc. To clarify the record CBS
`Interactive is, along with the filing of this response, recording an assignment of this application form CBS Interactive to SportsLine.com Inc.
`As is commonplace in promotional and accessory merchandise, all use of the Mark is clearly tied the longstanding use of SPORTSLINE and
`SPORTSLINE.COM as the source. See Affidavit at paragraph 16. Applicant's use of the Mark is therefore not "ornamental" in a trademark
`sense. In In re Paramount Pictures Corp., 213 U.S.P.Q. 1111 (TTAB 1982), the TTAB recognized this use of tie-in merchandise as a means of
`developing a secondary source: We think it is significant that it is a common merchandising technique in this country to license the use of
`character names and images as trademarks for a variety of products collateral to the product of services in respect of which the name or images
`are primarily known. Thus while purchasers may be accustomed to seeing characters? names and images as part of the ornamentation of
`decals, T-shirts and the like, they are also accustomed to seeing characters? names and images used as trademarks to indicate source of origin.
`In In re Olin Corporation, 181 U.S.P.Q. 182 (TTAB 1973), the TTAB reversed the refusal to register based on a finding that the mark was
`ornamental or decorative, and stated: The ?ornamentation? of a T-shirt can be of a special nature which inherently tells the purchasing public
`the source of the T-shirt, not the source of the manufacturer but the secondary source. Thus, the name ?New York University? and an
`illustration of the Hall of Fame, albeit it will serve as ornamentation on a T-shirt will also advise the purchaser that the university is the
`secondary source of that shirt. It is not imaginable that Columbia University will be the source of a New York University T-shirt. Where that
`shirt is distributed by other than the university, the university?s name on the shirt will indicate sponsorship or authorization by the university.
`[m]ore importantly, we think it is significant that it is a common merchandising technique in this country to license the use of character names
`and images as trademarks for a variety of products collateral to the product or services in respect of which the name or images are primarily
`known. Thus, while purchasers may be accustomed to seeing characters' names and images as part of the ornamentation of decals, T-shirts and
`the like, they are also accustomed to seeing characters' names and images used as trademarks to indicate source of origin. In Paramount,
`applying the test set forth in Olin, the Board found that "the paired names 'MORK & MINDY,' while certainly part of the ornamentation of the
`
`
`
`decal, also indicate source or origin in the proprietor of the Mork & Mindy television series in the same sense as the stylized 'O' in Olin." 213
`USPQ at 1113. The Board noted that "while purchasers may be accustomed to seeing characters' names and images as part of the
`ornamentation of decals, T-shirts and the like, they are also accustomed to seeing characters' names and images used as trademarks to indicate
`source ...." Id. at 1114. See also In re Dial-A Mattress Operating Corp, 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001) (?A mark is
`the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the
`same mark.?) citing Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159, 17 USPQ2d 1866, 1868 (Fed. Cir.1991); In re Flex-O-
`Glass, Inc., 194 USPQ 203, 205-206 (TTAB 1997) (?[P]ersons exposed to applicant?s registered mark ... would, upon encountering
`[applicant?s yellow rectangle and red circle design] ... , be likely to accept it as the same mark or as an inconsequential modification or
`modernization thereof .... [A]pplicant may ?tack on? to its use of the mark in question, the use of the registered mark ... and therefore may
`properly rely upon its registration in support of its claim of distinctiveness herein.?); and Morehouse Mfg Corp. v. J. Strickland & Co.; In re
`Watkins Glen International, Inc., 227 USPQ 727 (TTAB 1985) (stylized checkered flag design registrable for patches and clothing items,
`where applicant had previously registered WATKINS GLEN and checkered flag design (with "WATKINS GLEN" disclaimed) for services);
`In re Expo '74, 189 USPQ 48 (TTAB 1975) (EXPO '74 registrable for handkerchiefs and T-shirts, where applicant, organizer of the 1974
`World's Fair, had previously registered EXPO '74 for other goods and services). The large relative size of the mark on the goods does not
`render it ornamental. As the TTAB noted in In re Lululemon Athletica Canada Inc., 105 USPQ2d 1684 (TTAB 2013) It may have once been
`the practice in the clothing industry to limit logos to small sizes in discrete areas rather than to have them ?emblazoned? across a garment. See
`discussion in TMEP ? 1202.03(a). Based on the evidence reproduced above, however, we find that such is no longer the industry practice, or at
`least no longer the only one. Cf. Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1038 (TTAB 2010) (recognizing that the Board must
`adapt its rules to changes in technology). Accordingly, we reject a per se rule regarding registrability based on the size of a mark on clothing.
`Rather, in considering the commercial impression of marks of this nature, the size of the mark is one consideration along with others, and the
`registrability of each mark must be determined on a case-by-case basis. See, e.g., CITC Industries, Inc. v. Levi Strauss & Co., 216 USPQ 512
`(TTAB 1982)(?We are not saying that a symbol or a design covering the surface of a product cannot perform a trademark function or that it
`somehow loses its origin indicating property when it is so used?); citing Vuitton et Fils S.A. v. J. Young Enterprises, Inc., 210 USPQ at 357.
`Finally, the fact that foam drink holders are often used as promotional items in connection with other goods and services does not make them
`any less eligible for trademark protection if a trademark is placed on them and they are in turn sold or shipped in commerce. While the mark as
`shown on the specimens is for SPORTSLINE.COM, which is also a domain name, that does not make the trademark into a mere unregistrable
`domain name. Given its placement across the product, the mark is clearly intended to promote the SPORTSLINE marks and not serve only as
`a website address. Its secondary significance is also supported by the prior registrations for SPORTSLINE cited in the attached affidavit (See
`TMEP 1215.02(d)(1)). For the foregoing reasons, as well as those set forth in the accompanying affidavit, applicant respectfully requests
`reconsideration of the examining attorney?s decision as set forth in the office action letter dated May 2, 2014 and further requests that the
`refusal to register Applicant?s mark be withdrawn and that the mark be processed for registration.
`
`EVIDENCE SECTION
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)EVIDENCE FILE NAME(S)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)ORIGINAL PDF FILE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)CONVERTED PDF FILE(S)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(17 pages)
`
`evi_129228135154-20141103104643885608_._knapp_affd_final_w_exhibit.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\755\86175505\xml5\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\755\86175505\xml5\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\755\86175505\xml5\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\755\86175505\xml5\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\755\86175505\xml5\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\755\86175505\xml5\ROA0007.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\755\86175505\xml5\ROA0008.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\755\86175505\xml5\ROA0009.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\755\86175505\xml5\ROA0010.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\755\86175505\xml5\ROA0011.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\755\86175505\xml5\ROA0012.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\755\86175505\xml5\ROA0013.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\755\86175505\xml5\ROA0014.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\755\86175505\xml5\ROA0015.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\755\86175505\xml5\ROA0016.JPG
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`
`DESCRIPTION OF EVIDENCE FILE
`
`Affidavit of Thomas Knapp
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\755\86175505\xml5\ROA0017.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\755\86175505\xml5\ROA0018.JPG
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`/rb/
`
`Rebecca Borden
`
`Counsel
`
`212-975-3610
`
`11/03/2014
`
`YES
`
`Mon Nov 03 12:49:07 EST 2014
`
`USPTO/ROA-XXX.XXX.XXX.XXX
`-20141103124907424457-861
`75505-500c86fd2eda2617d25
`dfa5cafee61c4897bab325e52
`1151860f3c3a6d0b0-N/A-N/A
`-20141103104643885608
`
`PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 86175505(cid:160)SPORTSLINE.COM(Standard Characters, see http://tsdr.uspto.gov/img/86175505/large) has been amended as
`follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`CBS Interactive Inc. (the "Applicant"), responds to the Office Action Letter from the Patent and Trademark Office dated May 2, 2014 and
`respectfully requests reconsideration of its application for the mark SPORTSLINE.COM (the ?Mark?) filed on January 27, 2014 for foam drink
`holders in Class 21 (the ?Application?) in light of the following. The Examining Attorney has refused registration of the Mark under the
`Trademark Act Sections 1, 2 and 45, U.S.C. Sections 1051, 1052 and 1127, based on a finding that the Mark ?would be perceived as merely a
`decorative or ornamental feature of the goods because the size and placement of the mark is indicative of decorative material, and the goods
`themselves, foam drink holders, are of the type typically used as promotional materials by businesses to promote other services. Further, the mark
`as it appears on the specimen would be perceived as the domain name where applicant?s website would appear on the Internet, rather than as an
`indicator of the source of the goods.? The Examining Attorney has suggested that the Applicant may overcome the refusal to register in various
`ways such as by the submission of evidence of use of the Mark on other goods or services sufficient to demonstrate that the public would
`recognize the Applicant as the secondary source or sponsor of the goods as provided for in T.M.E.P. Section 1202.03(c). As is more fully set
`forth below and in the accompanying Affidavit, Applicant respectfully submits factual evidence and legal support for the conclusions that the
`Mark is indeed used an indicator of the source of the goods identified in the Application (and goods and services associated therewith). As seen
`in exhibit 1of the Affidavit of Thomas Knapp SportsLine.com is the owner of the four registered trademarks which date back as far as 1975.
`Copies of printouts of these registrations from the USPTO TEAS database are attached to the affidavit. As also noted in the accompanying
`affidavit of Thomas Knapp CBS Interactive Inc. and SportsLine.com Inc. are both subsidiaries of CBS Corporation. All of the above cited
`registrations are owned by the applicant?s sister company SportsLine.com Inc. To clarify the record CBS Interactive is, along with the filing of
`this response, recording an assignment of this application form CBS Interactive to SportsLine.com Inc. As is commonplace in promotional and
`accessory merchandise, all use of the Mark is clearly tied the longstanding use of SPORTSLINE and SPORTSLINE.COM as the source. See
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`
`Affidavit at paragraph 16. Applicant's use of the Mark is therefore not "ornamental" in a trademark sense. In In re Paramount Pictures Corp., 213
`U.S.P.Q. 1111 (TTAB 1982), the TTAB recognized this use of tie-in merchandise as a means of developing a secondary source: We think it is
`significant that it is a common merchandising technique in this country to license the use of character names and images as trademarks for a
`variety of products collateral to the product of services in respect of which the name or images are primarily known. Thus while purchasers may
`be accustomed to seeing characters? names and images as part of the ornamentation of decals, T-shirts and the like, they are also accustomed to
`seeing characters? names and images used as trademarks to indicate source of origin. In In re Olin Corporation, 181 U.S.P.Q. 182 (TTAB 1973),
`the TTAB reversed the refusal to register based on a finding that the mark was ornamental or decorative, and stated: The ?ornamentation? of a T-
`shirt can be of a special nature which inherently tells the purchasing public the source of the T-shirt, not the source of the manufacturer but the
`secondary source. Thus, the name ?New York University? and an illustration of the Hall of Fame, albeit it will serve as ornamentation on a T-
`shirt will also advise the purchaser that the university is the secondary source of that shirt. It is not imaginable that Columbia University will be
`the source of a New York University T-shirt. Where that shirt is distributed by other than the university, the university?s name on the shirt will
`indicate sponsorship or authorization by the university. [m]ore importantly, we think it is significant that it is a common merchandising technique
`in this country to license the use of character names and images as trademarks for a variety of products collateral to the product or services in
`respect of which the name or images are primarily known. Thus, while purchasers may be accustomed to seeing characters' names and images as
`part of the ornamentation of decals, T-shirts and the like, they are also accustomed to seeing characters' names and images used as trademarks to
`indicate source of origin. In Paramount, applying the test set forth in Olin, the Board found that "the paired names 'MORK & MINDY,' while
`certainly part of the ornamentation of the decal, also indicate source or origin in the proprietor of the Mork & Mindy television series in the same
`sense as the stylized 'O' in Olin." 213 USPQ at 1113. The Board noted that "while purchasers may be accustomed to seeing characters' names and
`images as part of the ornamentation of decals, T-shirts and the like, they are also accustomed to seeing characters' names and images used as
`trademarks to indicate source ...." Id. at 1114. See also In re Dial-A Mattress Operating Corp, 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir.
`2001) (?A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would
`consider them both the same mark.?) citing Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159, 17 USPQ2d 1866, 1868 (Fed.
`Cir.1991); In re Flex-O-Glass, Inc., 194 USPQ 203, 205-206 (TTAB 1997) (?[P]ersons exposed to applicant?s registered mark ... would, upon
`encountering [applicant?s yellow rectangle and red circle design] ... , be likely to accept it as the same mark or as an inconsequential modification
`or modernization thereof .... [A]pplicant may ?tack on? to its use of the mark in question, the use of the registered mark ... and therefore may
`properly rely upon its registration in support of its claim of distinctiveness herein.?); and Morehouse Mfg Corp. v. J. Strickland & Co.; In re
`Watkins Glen International, Inc., 227 USPQ 727 (TTAB 1985) (stylized checkered flag design registrable for patches and clothing items, where
`applicant had previously registered WATKINS GLEN and checkered flag design (with "WATKINS GLEN" disclaimed) for services); In re Expo
`'74, 189 USPQ 48 (TTAB 1975) (EXPO '74 registrable for handkerchiefs and T-shirts, where applicant, organizer of the 1974 World's Fair, had
`previously registered EXPO '74 for other goods and services). The large relative size of the mark on the goods does not render it ornamental. As
`the TTAB noted in In re Lululemon Athletica Canada Inc., 105 USPQ2d 1684 (TTAB 2013) It may have once been the practice in the clothing
`industry to limit logos to small sizes in discrete areas rather than to have them ?emblazoned? across a garment. See discussion in TMEP ?
`1202.03(a). Based on the evidence reproduced above, however, we find that such is no longer the industry practice, or at least no longer the only
`one. Cf. Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1038 (TTAB 2010) (recognizing that the Board must adapt its rules to changes in
`technology). Accordingly, we reject a per se rule regarding registrability based on the size of a mark on clothing. Rather, in considering the
`commercial impression of marks of this nature, the size of the mark is one consideration along with others, and the registrability of each mark
`must be determined on a case-by-case basis. See, e.g., CITC Industries, Inc. v. Levi Strauss & Co., 216 USPQ 512 (TTAB 1982)(?We are not
`saying that a symbol or a design covering the surface of a product cannot perform a trademark function or that it somehow loses its origin
`indicating property when it is so used?); citing Vuitton et Fils S.A. v. J. Young Enterprises, Inc., 210 USPQ at 357. Finally, the fact that foam
`drink holders are often used as promotional items in connection with other goods and services does not make them any less eligible for trademark
`protection if a trademark is placed on them and they are in turn sold or shipped in commerce. While the mark as shown on the specimens is for
`SPORTSLINE.COM, which is also a domain name, that does not make the trademark into a mere unregistrable domain name. Given its
`placement across the product, the mark is clearly intended to promote the SPORTSLINE marks and not serve only as a website address. Its
`secondary significance is also supported by the prior registrations for SPORTSLINE cited in the attached affidavit (See TMEP 1215.02(d)(1)).
`For the foregoing reasons, as well as those set forth in the accompanying affidavit, applicant respectfully requests reconsideration of the
`examining attorney?s decision as set forth in the office action letter dated May 2, 2014 and further requests that the refusal to register Applicant?s
`mark be withdrawn and that the mark be processed for registration.
`
`EVIDENCE
`Evidence in the nature of Affidavit of Thomas Knapp has been attached.
`Original PDF file:
`evi_129228135154-20141103104643885608_._knapp_affd_final_w_exhibit.pdf
`Converted PDF file(s) ( 17 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`
`
`
`Evidence-9
`Evidence-10
`Evidence-11
`Evidence-12
`Evidence-13
`Evidence-14
`Evidence-15
`Evidence-16
`Evidence-17
`
`SIGNATURE(S)
`Response Signature
`Signature: /rb/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 11/03/2014
`Signatory's Name: Rebecca Borden
`Signatory's Position: Counsel
`
`Signatory's Phone Number: 212-975-3610
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an
`associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not
`currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently
`filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or
`Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`Serial Number: 86175505
`Internet Transmission Date: Mon Nov 03 12:49:07 EST 2014
`TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20141103124907
`424457-86175505-500c86fd2eda2617d25dfa5c
`afee61c4897bab325e521151860f3c3a6d0b0-N/
`A-N/A-20141103104643885608
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Re: Trademark Application No. 86175505 for SPORTSLINE.COM in International class 21
`
`AFFIDAVIT OF THOMAS KNAPP
`
`1, Thomas Knapp of the City of Fort Lauderdale, in the State of Florida, United States of
`
`America, MAKE OATH AND SAY AS FOLLOWS:
`
`1.
`
`I
`
`am Vice President, Business
`
`and Legal Affairs of SportsLine.com Inc.
`
`(“SportsLine.com” and “my Company”), and have held this position since April 2007. I
`
`have been employed by my Company since April 1999, and held the positions of
`
`Manager of Business Affairs, Senior Counsel, and Deputy General Counsel before
`
`assuming my current position. Since April 2007, I have also held the position of Vice
`
`President, Business and Legal Affairs for CBS Interactive Inc. Both SportsLine.com and
`
`CBS Interactive Inc. are subsidiaries of CBS Corporation (“CBS”). My employment
`
`responsibilities include the management of legal
`
`issues and business affairs for my
`
`Company and for the online sports businesses of CBS Interactive Inc.
`
`. By virtue of my position with SportsLine.com and my tenure with CBS Interactive Inc.
`
`(“CBS Interactive”), and having reviewed the business records of SportsLine.com, CBS
`
`Interactive and CBS as they relate to these proceedings,
`
`I have personal knowledge of
`
`the matters set out herein. Where I do not have direct personal knowledge, my evidence
`
`represents my best information and belief.
`
`.
`
`I make this affidavit in support of a response to an office action refusing registration of
`
`the mark SPORTSLINE.COM for foam drink holders in class 21 on the grounds the mark
`
`is mere ornamentation and not source indicative.
`
`
`
`The SPORTSLINE Trademark
`
`4. SportsLine.com is the owner of record of the following Registrations for the trademark
`
`SPORTSLINE (the “Mark”).
`
`Reg No. 1010848 for SPORTSLINE for Promoting the goods and services of others by
`making sports information available to customers of participating businesses through the
`telephone, in class 35. The mark was registered in 1975 claiming use in commerce since
`1973.
`
`Reg.No. 4346674 for SPORTSLINE for online advertising and promotional services;
`promoting the goods and services of others; providing consumer product and services
`information, namely, news,
`information, reviews, and commentary about the goods and
`services of others, via electronic communication networks, the Internet, and portable and
`wireless communication devices in the fields of sports and fantasy sports, in class 35. The
`application claims use in commerce since 1995.
`
`Reg No. 4346676 for SPORTSLINE for Providing online chat rooms and bulletin boards for
`electronic transmission of messages among users in the field of sports and fantasy sports;
`broadcasting services namely transmitting, downloading and streaming digital audio, video,
`graphics, text and data in the field of sports and fantasy sports rendered via the Internet, and
`portable and wireless communication devices,
`in class 38. The application claims use in
`commerce since 1995.
`
`Reg. No. 4346677 for SPORTSLINE for Entertainment services, namely, providing video
`and audio content, namely on-going entertainment programs in the nature of sports and
`fantasy sports news transmitted via a global communication network, video, the Internet,
`websites, podcasts, webcasts, webisodes, blogs, portable and wireless communication
`devices; providing information in the field of sports and fantasy sports via portable and
`wireless
`communication devices, mobile
`phones,
`hand-held devices
`and
`global
`communication devices;
`interactive online newsletter providing sports
`information;
`entertainment services, namely, organizing and coordinating fantasy sports leagues for others
`via a global computer network, electronic communication networks and portable and wireless
`communication devices; providing online content in the field of sport-related information;
`entertainment in the nature of games and contests which may be accessed via the Internet;
`entertaimnent, educational and information services, namely, providing blogs and video
`blogs in the fields of sports and fantasy sports; entertainment services, namely, providing
`webcasts of entertaimnent programming featuring sports and fantasy sports; entertainment
`and education services, namely, providing online computer games in the fields of sports and
`fantasy sports news and information, in class 41. The application claims use in commerce
`since 1995.
`
`Attached as Exhibit “1 ” to my affidavit are particulars of the Registrations.
`
`
`
`5. From the first dates of use, and continuing to the present, the SPORTSLINE Services
`
`have been provided under the SPORTSLINE trademark through SportsLine.com and its
`
`predecessors and current
`
`licensee CBS Interactive,
`
`in the normal course of trade.
`
`SportsLine.com and CBS Interactive share
`
`the
`
`same Directors, President, and
`
`management team. At all
`
`times therein SportsLine.com has retained control of the
`
`character and quality of the SPORTSLINE Services provided in association with the
`
`SPORTSLINE trademark by CBS Interactive.
`
`The SPORTSLINE Brand
`
`6. Since 1995, SportsLine.com,
`
`its predecessors and their licensees have delivered the
`
`SPORTSLINE Services to the public through websites, originally solely located at the
`
`web address www.sports1ine.com (the “SPORTSLINE URL”).
`
`. The SPORTSLINE URL has been before during and after the Relevant Period
`
`extensively and regularly used by the public to access the SPORTSLINE Website, which
`
`is a testimony to the enduring reputation of the trade-mark SPORTSLINE among users of
`
`the SPORTSLINE Services.
`
`. A predecessor to SportsLine.com, SportsLine U.S.A., launched the SPORTSLINE brand
`
`and Services
`
`in June 1995 to consumers through direct
`
`internet access to the
`
`SPORTSLINE website located at http://www.sportsline.com.
`
`. SportsLine U.S.A. Inc. armounced the formal launch of the SPORTSLINE Services on
`
`August 16th 1995, via press conferences at the Waldorf—Astoria hotel in New York. The
`
`press conferences featured demonstrations of the innovative nature of the Services such
`
`as proprietary contests, and real-time live chats with sports celebrities, along with the
`
`most comprehensive and up-to-the-minute sports scores, highlights and information.
`
`Notable spokesmen for the Services included NFL Hall of Fame legend “Broadway” Joe
`
`
`
`Namath and 1995 Baseball Hall of Fame inductee Mike Schmidt. NBC sportscaster Bob
`
`Costas hosted the presentations.
`
`. In the mid-l990’s, the worldwide web was still developing as a platform for offering
`
`consumer services. The SPORTSLINE Services offered under the SPORTSLINE trade-
`
`mark helped to pioneer the provision of innovative online delivery of sports-related
`
`information and associated games and contests online. To promote the SPORTSLINE
`
`Services, SportsLine U.S.A. Inc. (until November 19, 1999 afier which its name was
`
`changed to SportsLine.com, Inc.) forged alliances with a variety of celebrity sports
`
`personalities with international reputations in their fields,
`
`including Arnold Palmer,
`
`Shaquille O’Neal, Pete Sampras, Monica Seles, Joe Montana, John Daly, Michael Jordan,
`
`Wayne Gretzky, and Tiger Woods. SportsLine.com also forged alliances with preeminent
`
`athletic leagues and associations,
`
`including the NFL,
`
`the NBA, the PGA Tour,
`
`the
`
`NCAA, as well as various players’ associations.
`
`.The SPORTSLINE Services were accessed through the SPORTSLINE URL,
`
`the
`
`SPORTSLINE branded site and were extremely well received by consumers, with the
`
`SPORTSLINE Services ranking as the #1 sports service on the Web by Interactive Sports
`
`Wire in November 1995.
`
`.In March 1997, SportsLine.com forged a marketing alliance with CBS, which among
`
`other things, provided it with access to the information, archival, and production
`
`resources of CBS. When the marketing alliance commenced, SportsLine.com retained its
`
`customer base for
`
`the SPORTSLINE Services by continuing to maintain the
`
`SPORTSLINE URL. At that time, SportsLine.com also established the tertiary domain
`
`name “cbs.sportsline.com” and later, “cbssports.com”, as additional URLs to access the
`
`SPORTSLINE Services. While primary branding of
`
`the website
`
`changed to
`
`CBSSports.com in 2007, the SPORTSLINE trade-mark continued to be displayed on the
`
`popular Fantasy Sports page [www.cbssports.com/fantasy] to confirm to consumers that
`
`it was continuing to provide the well-recognized SPORTSLINE Services. Many
`
`
`
`customers and website visitors through the Relevant Period and until today continue to
`
`access the SPORTSLINE Services using the original address www.sp0rtsline.com.
`
`. In November 1997, SportsLine.com completed its initial public offering and raised t
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