On January 5, The United States Patent and Trademark Office denied the filing, due to several reasons, including confusion with a previous trademark for ‘Fenix’ owned by Lucha Libre FMV.
REY FENIX TRADEMARK SUMMARY OF ISSUES:
Likelihood of Confusion Refusal
In this case, applicant’s mark is REY FENIX (standard character) for services listed as “Providing wrestling news and information via a global computer network; Entertainment services, namely, wrestling exhibits and performances by a professional wrestler and entertainer” in International Class 41.
Registrant, Lucha Libre FMV LLC, owns a registration for the following mark:
FENIX (standard character) for services listed as “Entertainment services, namely, an ongoing television series featuring sports entertainment broadcast over television, satellite, audio and video media and via a global computer network; entertainment services, namely, live events featuring wrestling contests and exhibitions; entertainment services, namely, performances by a professional wrestler and entertainer; providing wrestling news, information and non-downloadable video via a global computer network” in International Class 41.
Failure to Function as a Service Mark – Identifies Name of Character
Registration is refused because the applied-for mark, as used on the specimen of record, identifies only the name of a particular character; it does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.
The name of a character is registrable as a service mark only where the record shows that it is used in a manner that would be perceived by consumers as identifying the services in addition to identifying the character. In this case, the specimen shows the applied-for mark used only to identify the name of a character and not as a service mark for applicant’s services because it only identifies the name of a particular wrestling character at a wrestling event. As such, it does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services
Name of Living Individual Inquiry
The Consent to Registration submitted in the application, dated 08/28/20, references Application Serial No. 87973, which is an incomplete serial number and does not match the Application Serial Number of the instant application, namely, Application Serial No. 90145924. Accordingly, applicant must resubmit a Consent to Registration that references the instant Application Serial No. 90145924.
Foreign Pro Se Applicant with U.S. Street Address – Requirement for Information & U.S.-licensed Attorney Required
Applicant must either provide documentation to support applicant’s domicile address or appoint a U.S. licensed attorney.
All applications must include the applicant’s domicile address, and domicile dictates whether an applicant is required to have an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory represent the applicant at the USPTO.
An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO
The application record lists applicant as an individual of Mexico and specifies a U.S. street address as applicant’s domicile. It is unclear from the record whether the U.S. street address provided is the place applicant resides and intends to be applicant’s principal home. If the U.S. street address of record is not applicant’s correct domicile address, applicant must provide the applicant’s correct domicile street address.
If applicant amends the application to list a domicile address outside of the United States or its territories, or if applicant elects not to provide documentation to support its U.S. street address as explained below, applicant must appoint a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration..
If the street address of record is applicant’s correct domicile address or if applicant provides a different U.S. street address as the applicant’s domicile address, and applicant elects not to appoint a U.S.-licensed attorney as its representative, then applicant must provide the following documentation to support its U.S. street address.
Lucha Libre FMV filed trademark for the name ‘Fenix’ in May, 2017. Rey Fenix signed consent for the filing in April 2016.
Lucha Libre FMV is owned by Lucha Libre AAA and FactoryMade Ventures, which owns the rights to AAA trademarks outside Mexico. Those groups are currently involved in a legal battle.
Rey Fenix has six-months to submit the proper documentation to continue the filing process. If he cannot provide the required documents, his trademark will be abandoned.
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