To: TEB CAPITAL MANAGEMENT, INC. (ipprosecution@orrick.

com)
Subject: U.S. Trademark Application Serial No. 88446266 - TOM TERRIFIC - 18653-6014
Sent: August 22, 2019 09:49:39 AM
Sent As: [email protected]
Attachments:

United States Patent and Trademark Office (USPTO)

U.S. Application Serial

Mark: TOM TERRIFIC

Correspondence
Address:
DAVID P. FUAD AND
EILEEN Z. AGHNAMI
ORRICK,
HERRINGTON &
SUTCLIFFE LLP
IP PROSECUTION
DEPARTMENT
2050 MAIN STREET,
SUITE 1100
IRVINE, CA 92614-8255
Applicant: TEB
CAPITAL
MANAGEMENT, INC.

Reference/Docket No.
18653-6014

Correspondence Email
Address:

[email protected]

NONFINAL OFFICE ACTION

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be
abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the
end of this Office action.

Issue date: August 22, 2019

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to
the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

The Office of the Deputy Commissioner for Trademark Examination Policy accepted a Letter of Protest received in connection with this
application. The evidence presented in the letter was forwarded to the trademark examining attorney for consideration. See TMEP §1715.

Based upon this evidence, the trademark examining attorney is taking further action, as specified below. See TMEP §1715.02(b).

SEARCH OF OFFICE’S DATABASE OF MARKS

SUMMARY OF ISSUES:
Section 2(a) Refusal – False Connection
Section 2(c) Refusal – Name of Living Individual

SECTION 2(a) REFUSAL – FALSE CONNECTION

Registration is refused because the applied-for mark consists of or includes matter which may falsely suggest a connection with Tom Seaver.
Trademark Act Section 2(a), 15 U.S.C. §1052(a). Although Tom Seaver is not connected with the goods provided by applicant under the
applied-for mark, Tom Seaver is so well-known that consumers would presume a connection. See id.

Under Trademark Act Section 2(a), the registration of a mark that “consists of or comprises matter that may falsely suggest a connection with
persons, institutions, beliefs, or national symbols” is prohibited. In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013). To establish that an
applied-for mark falsely suggests a connection with a person or an institution, the following is required:

(1) The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another
person or institution.

(2) The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution.

(3) The person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the
mark.

(4) The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution
would be presumed when applicant’s mark is used on its goods.

In re Pedersen, 109 USPQ2d at 1188-89; In re Jackson Int’l Trading Co. , 103 USPQ2d 1417, 1419 (TTAB 2012); TMEP §1203.03(c)(i); see
also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983) (providing
foundational principles for the current four-part test used to determine the existence of a false connection).

In this case, TOM TERRIFFIC makes an association with former American baseball player Tom Seaver. The term at issue need not be the
actual, legal name of the party falsely associated with applicant’s mark to be unregistrable under Section 2(a). TMEP §1203.03; see, e.g.,
Hornby v. TJX Cos., 87 USPQ2d 1411, 1417, 1424 (TTAB 2008) (finding TWIGGY to be the nickname of professional model Lesley Hornby);
Buffett v. Chi‑Chi’s, Inc., 226 USPQ 428, 429-30 (TTAB 1985) (finding MARGARITAVILLE to be the persona of singer Jimmy Buffett). The
term must, however, be so uniquely and unmistakably associated with the named party as to constitute that party’s name or identity. TMEP
§1203.03; see, e.g., In re Cotter & Co., 228 USPQ 202, 204-05 (TTAB 1985); Buffett v. Chi‑Chi’s, Inc., 226 USPQ at 429. Here, the
information and evidence provided in the Letter of Protest, dated August 4, 2019, demonstrates that the mark sought to be registered, TOM
TERRIFIC, is the same as the nickname used to identify Tom Seaver, an American professional baseball player.

In addition, the nickname TOM TERRIFIC points uniquely and unmistakably to Tom Seaver, and the fame or reputation of Tom Seaver as “Tom
Terrific” is such that a connection between Mr. Seaver and the applied-for goods would be presumed. If applicant’s goods are of a type that the
named person or institution sells or uses, and the named party is sufficiently famous, then it may be inferred that purchasers of the goods would
be misled into making a false connection of sponsorship, approval, support or the like with the named party. See, e.g., In re Nieves & Nieves
LLC, 113 USPQ2d 1639, 1647-48 (TTAB 2015) (holding ROYAL KATE used with applicant’s consumer products, including fashion products,
suggested a connection with Kate Middleton would be inferred because evidence showed that Kate Middleton, by virtue of being the wife of
Prince William of the British Royal family, has become a celebrity and fashion trend-setter the media reports on, including the clothes she wears,
what she does, and what she buys); In re Cotter & Co., 228 USPQ 202, 204-05 (TTAB 1985) (holding WESTPOINT used with applicant’s
firearms suggested sponsorship, approval, support or the like from West Point because evidence showed that West Point is a well-known U.S.
Military Academy).

Here, the evidence attached includes references from news articles, encyclopedias, and columns referring to Tom Seaver by the nickname “Tom
Terrific,” thereby establishing that the named party is sufficiently famous for purposes of a false connection. See Letter of Protest, Aug. 4, 2019,
pages 2-35, 67-84. In addition, the evidence includes websites offering trading cards, posters, and printed photographs, the goods identified in
the application, being sold with the nickname “Tom Terrific” in reference to Tom Seaver. See id at 50-54, 60-66, 70-76. Thus, the mark TOM
TERRIFIC points uniquely and unmistakably to the identification of Tom Seaver and the fame of Tom Seaver as “Tom Terrific” is such that a
connection between Mr. Seaver and the applied-for goods is presumed.
Due to the renown of the person named in the mark, and the fact that there is no information in the application record regarding a connection with
applicant, applicant must specify whether the person or institution named in the mark has any connection with applicant’s goods, and if so, must
describe the nature and extent of that connection. See 37 C.F.R. §2.61(b); TMEP §1203.03(c)(i).

Accordingly, the applied-for mark is the nickname of Tom Seaver. Consent to register the nickname by Tom Seaver is not of record, nor is there
any evidence in the record of a connection between applicant and Tom Seaver. Given the fame of the mark and use of the mark in connection
with the applied-for goods, consumers will falsely associate applicant’s mark with Tom Seaver. Therefore, registration is refused under Section
2(a) of the Trademark Act.

Applicant should note the following additional refusal.

SECTION 2(c) REFUSAL – NAME OF LIVING INDIVIDUAL

Registration is refused because the applied-for mark consists of or comprises a name, portrait, or signature identifying a particular living
individual whose written consent to register the mark is not of record. Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §1206; see In re
Nieves & Nieves LLC, 113 USPQ2d 1639, 1649-50 (TTAB 2015); In re Hoefflin, 97 USPQ2d 1174, 1175-76 (TTAB 2010).

In this case, the applied-for mark TOM TERRIFIC is the nickname of Tom Seaver.

For purposes of Section 2(c), a name in a mark identifies a particular living individual if the person bearing the name will be associated with the
mark as used on the goods or services because: “(1) the person is so well known that the public would reasonably assume a connection between
the person and the goods or services; or (2) the individual is publicly connected with the business in which the mark is used.” In re Nieves &
Nieves LLC, 113 USPQ2d 1639, 1650 (TTAB 2015); see In re Hoefflin, 97 USPQ2d 1174, 1175-76 (TTAB 2010); Krause v. Krause Publ’ns,
Inc., 76 USPQ2d 1904, 1909-10 (TTAB 2005).

Section 2(c) applies not only to the full name of an individual, but also to any first name, surname, shortened name, pseudonym, stage name, title,
or nickname that identifies a particular living individual. In re Nieves & Nieves LLC, 113 USPQ2d 1629, 1639 (TTAB 2015) (holding
registration of the mark PRINCESS KATE barred under Section 2(c) in the absence of consent to register, because the mark “points uniquely
and unmistakably to Kate Middleton,” the Duchess of Cambridge, whose identity is renowned); In re Hoefflin, 97 USPQ2d 1174, 1177-78
(TTAB 2010) (holding registration of the marks OBAMA PAJAMA, OBAMA BAHAMA PAJAMAS, and BARACK’S JOCKS DRESS TO
THE LEFT barred under Section 2(c) in the absence of consent to register, because the marks create a direct association with President Barack
Obama); In re Sauer, 27 USPQ2d 1073, 1074-75 (TTAB 1993) (holding registration of a mark containing BO, used in connection with a sports
ball, barred under Section 2(c) in the absence of consent to register, because BO is the nickname of the well-known athlete BO JACKSON and
thus use of the mark would lead to the assumption that he was associated with the goods), aff’d per curiam , 26 F.3d 140 (Fed. Cir. 1994).

In this case, “TOM TERRIFIC” points uniquely and unmistakably to Tom Seaver, a former American professional baseball player. Specifically,
the information and evidence provided in the Letter of Protest, dated August 4, 2019, shows that Tom Seaver is a Hall of Fame baseball player
who is widely referred to and known by the nickname “Tom Terrific.” Because Tom Seaver is so well known by this nickname, the public
would reasonably assume a connection between Mr. Seaver and the applied-for goods. As such, the applied-for mark TOM TERRIFIC is refused
because it identifies a name of a particular living individual whose written consent to register is not of record.

The refusal under Section 2(c) will be withdrawn if applicant provides both of the following:

(1) A statement that the name shown in the mark identifies “Tom Seaver,” a living individual whose consent is of record. If the
name represents that of a pseudonym, stage name, title and name combination, or nickname, applicant must include a statement
that “TOM TERRIFIC” identifies the nickname of “Tom Seaver,” a living individual whose consent is of record.

(2) A written consent, personally signed by the individual whose name, signature, or portrait appears in the mark, authorizing
applicant to register the identifying matter as a trademark and/or service mark with the USPTO; for example, an applicant may
use, if applicable, the following: “I, Tom Seaver, consent to the use and registration of my nickname as a trademark and/or
service mark with the USPTO.”

See TMEP §§813, 813.01(a), 1206.04(a).

Applicant is advised that the written consent must include a statement of the party’s consent to applicant’s registration, and not just the use, of
the identifying matter as a trademark. See Krause v. Krause Publ’ns, Inc. , 76 USPQ2d 1904, 1912-13 (TTAB 2005); In re New John Nissen
Mannequins, 227 USPQ 569, 571 (TTAB 1985); TMEP §1206.04(a).

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support
of registration.
ASSISTANCE

Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining
attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with
additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does
not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.
See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL
REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online
using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office
actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3)
agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b);
TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125
per class of goods. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF
applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional
fee.

How to respond. Click to file a response to this nonfinal Office action

/Elizabeth A. O'Brien/
Examining Attorney
Law Office 105
(571) 272-0046
[email protected]

RESPONSE GUIDANCE
Missing the response deadline to this letter will cause the application to abandon. A response or notice of appeal must be received by
the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA maintenance or unforeseen
circumstances could affect an applicant’s ability to timely respond.

Responses signed by an unauthorized party are not accepted and can cause the application to abandon. If applicant does not have an
attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic
applicant. If applicant has an attorney, the response must be signed by the attorney.

If needed, find contact information for the supervisor of the office or unit listed in the signature block.
 To: TEB CAPITAL MANAGEMENT, INC. ([email protected])
Subject: U.S. Trademark Application Serial No. 88446266 - TOM TERRIFIC - 18653-6014
Sent: August 22, 2019 09:49:40 AM
Sent As: [email protected]
Attachments:

United States Patent and Trademark Office (USPTO)

USPTO OFFICIAL NOTICE

Office Action (Official Letter) has issued

Your trademark application has been reviewed by a trademark examining attorney. As part of that review, the assigned attorney has issued an
official letter that you must respond to by the specified deadline or your application will be abandoned. Please follow the steps below.

(1) Read the official letter.

(2) Direct questions about the contents of the Office action to the assigned attorney below.

/Elizabeth A. O'Brien/
Examining Attorney
Law Office 105
(571) 272-0046
[email protected]

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or
whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

(3) Respond within 6 months (or earlier, if required in the Office action) from August 22, 2019, using the Trademark Electronic Application
System (TEAS). The response must be received by the USPTO before midnight Eastern Time of the last day of the response period. See the
Office action for more information about how to respond.

GENERAL GUIDANCE
· Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical
deadlines.

· Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

· Beware of misleading notices sent by private companies about your application. Private companies not associated with the USPTO use
public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.
All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”