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Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov ESTTA Tracking number: ESTTA1131700 Filing date: 05/05/2021 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 88631285 Applicant Hot Girl Trademark Holdings, LLC Applied for Mark HOT GIRL SEMESTER Correspondence WILLIAM A WOOTEN Address WOOTEN LAW OFFICE 120 COURT SQUARE EAST COVINGTON, TN 38019 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected], [email protected] 901-475-1050 Submission Applicant's brief Attachments HOT GIRL SEMESTER TTAB Applicant Brief Final.pdf(4323404 bytes ) Appealed class Class 009. First Use: 0 First Use In Commerce: 0 All goods and services in the class are appealed, namely: Musical sound record- ings; audio-visual recordings, namely, compact discs, phonograph records, DVDs and downloadable MP3recordings, all featuring music and sound tracks; downloadable musical sound recordings; downloadable video recordings featur- ing music; magnets; decorative magnets; novelty magnets; mouse pads; com- pact disc cases and covers in the nature of sleeves; fitted carrying cases for storage and transportation, namely, cases for compact discs, tablet computers, mobile phones and cellular phones; protective covers and cases for cell phones, laptops and portable media players; downloadable music files, ring tones, mas- ter ring tones, ringback tones, graphics, and electronic game software via the in- ternetand wireless devices; downloadable wireless entertainment, namely, ring tones, master ring tones, ringback tones, screen savers software, images for use as screen savers and wallpaper for mobile phones Filer's Name R. Dale Hutcherson Filer's email [email protected], [email protected], wa- [email protected], [email protected] Signature /R. Dale Hutcherson/ Date 05/05/2021 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Serial Nos. 88631285, 88631287, 88631290 Mark: HOT GIRL SEMESTER Applicant: Hot Girl Trademark Holdings, LLC Examining Attorney: Katherine S. Chang Law Office 115 APPLICANT’S EX PARTE APPEAL BRIEF Serial Nos. 88631285, 88631287, 88631290; Applicant’s Ex Parte Appeal Brief 1 TABLE OF CONTENTS TABLE OF AUTHORITIES……………………………………………………………………4 STATEMENT OF FACTS & PROSECUTION HISTORY…………………………………..5 SUMMARY OF EVIDENCE……………………………………………………………………9 ARGUMENT……………………………………………………………………………………11 A. Applicant’s Mark Functions as a Source Identifier……………………………………...11 B. Evidence in the Marketplace…………………………………………………………….21 C. The HOT GIRL SEMESTER Phrase Was Non-Existent Prior to Applicant……………24 CONCLUSION…………………………………………………………………………………26 EXHIBIT 1 EXHIBIT 2 EXHIBIT 3 EXHIBIT 4 EXHIBIT 5 EXHIBIT 6 EXHIBIT 7 EXHIBIT 8 EXHIBIT 9 EXHIBIT 10 EXHIBIT 11 EXHIBIT 12 EXHIBIT 13 EXHIBIT 14 Serial Nos. 88631285, 88631287, 88631290; Applicant’s Ex Parte Appeal Brief 2 TABLE OF CONTENTS (cont.) EXHIBIT 15 EXHIBIT 16 EXHIBIT 17 EXHIBIT 18 EXHIBIT 19 EXHIBIT 20 EXHIBIT 21 EXHIBIT 22 EXHIBIT 23 EXHIBIT 24 EXHIBIT 25 Serial Nos. 88631285, 88631287, 88631290; Applicant’s Ex Parte Appeal Brief 3 TABLE OF AUTHORITIES Cases D.C. Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016) In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 215 (CCPA 1976) In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227 (CCPA 1960) In re Boston Beer Co., 47 USPQ2d 1914 (TTAB 1998), aff’d, 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) In re Champion Int’l Corp., 183 USPQ 318 (TTAB 1974) In re Clairol Inc., 173 USPQ 355, 457 F.2d 509 (CCPA 1972) In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 4 USPQ2d 1141, 1143 (Fed. Cir. 1987) In re Morganroth, 208 USPQ 284 (TTAB 1980) In re Paramount Pictures Corporation, 213 USPQ 1111, 1115 (TTAB 1982) In re Remington Products Inc., 3 USPQ2d 1714, 1715 (TTAB 1987) In re The Signal Companies, Inc., 228 USPQ 956, 957 (TTAB 1986) In re Trek 2000, 97 USPQ2d 1106 (TTAB 2010) In re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1459 (TTAB 1998) In re Waverly Inc., 27 USPQ2d 1620, 1623 (TTAB 1993) Maidenform, Inc. v. Munsingwear, Inc., 195 U.S.P.Q. 297 (S.D.N.Y. 1977) Plastilite Corp. v. Kassnar Imports, 508 F.2d 824, 184 USPQ 348, 350 (CCPA 1975) Statutes and Rules Trademark Act § 45, 15 U.S.C. § 1127 Trademark Act § 2, 15 U.S.C. § 1052 TMEP § 1202.03 Serial Nos. 88631285, 88631287, 88631290; Applicant’s Ex Parte Appeal Brief 4 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In re Application of ) Hot Girl Trademark Holdings, LLC ) Examining Attorney: Katherine S. Chang Application Serial Nos.: ) 88631285, 88631287, 88631290 ) Law Office 115 Filed: September 25, 2019 ) For: HOT GIRL SEMESTER ) UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 APPLICANT’S EX PARTE APPEAL BRIEF Pursuant to a Notice of Appeal filed with the Trademark Trial and Appeal Board on February 8, 2021, the Applicant, Hot Girl Trademark Holdings, LLC (“Applicant”), hereby appeals from the Examining Attorney’s final refusal and reconsideration letter denying registration of the above-identified marks, dated March 1, 2021, and respectfully requests that the Trademark Trial and Appeal Board reverse the Examining Attorney’s decision on the grounds that the Applicant’s marks function as a source identifier and, therefore, function as a trademark worthy of registration on the principal register. STATEMENT OF FACTS & PROSECUTION HISTORY Applicant is an entity owned and operated by a world-famous individual, Megan Pete, famously known in the marketplace as “Megan Thee Stallion” and “Hot Girl Meg” related to her music and entertainment career as well as her well-known and admired personas. Applicant has obtained world-renowned notoriety in regard to her “Hot Girl” persona and is perceived by the relevant public as the sole source and creator of all things “Hot Girl.” Applicant has further obtained Notices of Allowance on various other HOT GIRL-related marks, including, HOT GIRL Serial Nos. 88631285, 88631287, 88631290; Applicant’s Ex Parte Appeal Brief 5 MEG (Trademark Serial No. 88631261), HOT GIRL SUMMER (Trademark Registration Nos. 88631278 and 88631279 in international classes 038 and 041), HOT GIRL SEMESTER (Trademark Registration No. 88631293 and 88631297 in international classes 038 and 041), REAL HOT GIRL SHIT (Trademark Serial No. 88720351) as well as publication of HOT GIRL, I DO HOT SHIT (Trademark Serial No. 88957514). Applicant now seeks registration on the Principal Register of its mark(s), HOT GIRL SEMESTER, for “magnets; decorative magnets; novelty magnets; mouse pads; compact disc cases and covers; fitted carrying cases for storage and transportation, namely, cases for compact discs, tablet computers, mobile phones and cellular phones; protective covers and cases for cell phones, laptops and portable media players; downloadable wireless entertainment, namely, screen savers and images and wallpaper” in International Class 009 (a partial refusal—other goods that were not refused in international class 009 include, “Musical sound recordings; audio-visual recordings, namely, compact discs, phonograph records, DVDs and downloadable MP3 recordings, all featuring music and sound tracks; downloadable musical sound recordings; downloadable video recordings featuring music; downloadable music files, ring tones, master ring tones, ringback tones, graphics, and electronic game software via the internet and wireless devices; downloadable wireless entertainment, namely, ring tones, master ring tones, ringback tones”), “Posters; calendars; temporary tattoo transfers; iron-on and plastic transfers; printed sheet music; postcards; scrapbooks; stationery; note pads; desk pads; bookmarks; address and appointment books; daily planners; autograph books; desk top and personal organizers; organizers for stationery use; stationery-type portfolios; book markers; money clips; holders for desk accessories; holders for writing utensils; letter openers; pen and pencil holders; pens; pencils; extensions and attachments for pencils; pen and pencil sets; highlighting pens and Serial Nos. 88631285, 88631287, 88631290; Applicant’s Ex Parte Appeal Brief 6 markers; erasers; drawing rulers; pencil sharpeners; bookends; book covers; checkbook covers; coin and photograph albums; brag books; leather book covers; decorative paper centerpieces and pencil-top ornaments; globes; paperweights; coasters made of paper; clip boards; printed holograms; tour books, namely, books in the field of entertainment tours; printed concert programs; event programs and albums” in International Class 016, and “Clothing, namely, shirts, long-sleeved shirts, t-shirts, undershirts, night shirts, rugby shirts, polo shirts, jerseys, cardigans, bottoms, pants, shorts, boxer shorts, tops, tank tops, tankinis, sweat shirts, hooded sweat shirts, sweat jackets, sweat shorts, sweat pants, sweaters, vests, pullovers, jackets, turtlenecks, swimwear, beachwear, caps being headwear, hats, visors being headwear, headbands, wrist bands as clothing, sweat bands, headwear, ear muffs, aprons, scarves, belts, bandanas, neckwear, neck bands, underwear, briefs, singlets, socks, loungewear, robes, underclothes, pajamas, sleepwear, gloves, rainwear, footwear, shoes, flip-flops, and slippers” in International Class 025 (hereinafter collectively referred to as the “Application”). The three
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