UNITED STATES PATENT AND TRADEMARK OFFICE
`
`(cid:160) (cid:160)(cid:160)(cid:160) SERIAL NO:(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) APPLICANT:(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`Cyberheat, Inc.
`
`78/785768
`
`(cid:160)(cid:160)(cid:160) CORRESPONDENT ADDRESS:
`(cid:160) CYBERHEAT, INC.
`(cid:160) LEGAL DEPARTMENT
`(cid:160) 6614 E. TANQUE VERDE RD.
`(cid:160) TUCSON, AZ 85715
`(cid:160)
`
`HARDPORN
`
`*78785768*
`
`RETURN ADDRESS:(cid:160)
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`Please provide in all correspondence:
`
`(cid:160)1
`
`.(cid:160) Filing date, serial number, mark and
`applicant's name.
`(cid:160)(cid:160)(cid:160)(cid:160)
`2.(cid:160) Date of this Office Action.
`3.(cid:160) Examining Attorney's name and
`(cid:160)(cid:160)(cid:160)(cid:160) Law Office number.
`4. Your
`telephone number and e-mail
`address.
`
`(cid:160) (cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) MARK:(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160) (cid:160)(cid:160)(cid:160)(cid:160)(cid:160) CORRESPONDENT’S REFERENCE/DOCKET NO :(cid:160)(cid:160) N/A
`(cid:160)(cid:160)(cid:160)(cid:160) CORRESPONDENT EMAIL ADDRESS:(cid:160)(cid:160)
`
`OFFICE ACTION
`
`(cid:160)R
`
`ESPONSE TIME LIMIT:(cid:160) TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE
`ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE.(cid:160)(cid:160)
`MAILING/E-MAILING DATE INFORMATION:(cid:160) If the mailing or e-mailing date of this Office action does not appear above, this
`information can be obtained by visiting the USPTO website at http://tarr.uspto.gov/, inserting the application serial number, and viewing the
`prosecution history for the mailing date of the most recently issued Office communication.
`
`Serial Number(cid:160) 78/785768
`
`The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
`
`Search Results Under Trademark Act §2(d)
`
`(cid:160)T
`
`he Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark
`Act Section 2(d), 15 U.S.C. §1052(d).(cid:160) TMEP §704.02.
`
`(cid:160)
`(cid:160)(cid:160)
`(cid:160)
`(cid:160)(cid:160)
`(cid:160)(cid:160)
`

`
`Refusal Under Trademark Act §2(e)(1) – Primarily Merely Descriptive
`
`(cid:160)R
`
`egistration is refused because the proposed mark merely describes some or all of the content of applicant’s services in commerce. (cid:160) Trademark
`
`Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.(cid:160)(cid:160)
`
`A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic,
`function, feature, purpose or use of the relevant goods and/or services.(cid:160) In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);(cid:160) In re Bed
`& Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd.,
`204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).(cid:160) A mark that describes an intended user of a product or service is also merely descriptive
`within the meaning of Section 2(e)(1).(cid:160) Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg.
`Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).
`
`(cid:160)A
`
` mark that combines descriptive terms may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning.(cid:160)
`However, if each component retains its descriptive significance in relation to the goods or services, the combination results in a composite that is
`itself descriptive.(cid:160) In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive of “commercial and industrial
`cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely
`descriptive of computer software for use in development and deployment of application programs on global computer network); In re Putman
`Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE held to be merely descriptive of news and information service
`for the food processing industry); In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) (SCREEN FAX PHONE merely descriptive of “facsimile
`terminals employing electrophoretic displays”); In re Entenmann’s Inc ., 15 USPQ2d 1750 (TTAB 1990), aff’d per curiam, 928 F.2d 411 (Fed.
`Cir. 1991) (OATNUT held to be merely descriptive of bread containing oats and hazelnuts).
`
`(cid:160)I
`
`n this case, the mark is HARDPORN for services in Class 41, namely, providing an adult-content website and personal appearances by adult-
`entertainment performers.(cid:160) Applicant’s recitation of services explains that its website features “performances, related film and video clips,
`photographs, and other visual and editorial content.” (cid:160) Applicant’s mark comprises the two words HARD and PORN strung together. (cid:160) As the
`attached dictionary definitions demonstrate, “harn porn” is a descriptive phrase for sexually graphic audio, video and/or written materials. (cid:160) The
`phrase “hard porn” thus describes audio, video and/or written content that is sexually explicit. (cid:160) The combination of the two words into one
`compound mark does not alter the meaning of the words or create a new and separate impression.
`
`(cid:160)F
`
`or these reasons, the applicant’s mark is highly descriptive of some of its services and must therefore be refused under Trademark Act §2(e)(1).
`
`Refusal: No Evidence of Use With Services in Commerce
`
`(cid:160)A
`
`pplicant must submit a substitute specimen showing use of the mark for the services specified in the application, because no specimen
`currently of record shows use of the mark for any services in trade that are identified in the application.(cid:160) 37 C.F.R. §2.56; TMEP §§904 and 904.1
`et seq.(cid:160) Applicant must also submit a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the
`application,” verified with an affidavit or a signed declaration under 37 C.F.R. §2.20. (cid:160) 37 C.F.R. §2.59(a); TMEP §904.09.
`
`(cid:160)T
`
`he current specimen of record comprises part of a screenshot of a website, which shows the mark appearing by itself.(cid:160) The specimen does not
`show use for applicant’s services because the mark is not shown in connection with any of the services listed in the application.
`
`(cid:160)E
`
`xamples of acceptable specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in
`
`the sale or advertising of the services.(cid:160) TMEP §§904.04 et seq.(cid:160)(cid:160)
`
`If an amendment of the dates-of-use clause is necessary in order to state the correct dates of first use, then applicant must verify the amendment
`
`with a notarized affidavit or a signed declaration in accordance with 37 C.F.R. §2.20.(cid:160) 37 C.F.R. §2.71(c).(cid:160)(cid:160)
`
`The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:
`
`The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18
`U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any
`registration resulting therefrom, declares that the substitute specimen was in use in commerce at least as early as the filing date of
`the application; all statements made of his/her own knowledge are true; and that all statements made on information and belief are
`believed to be true.
`
`(cid:160) (cid:160)
`
`_______________________________
`(Signature)
`
`(cid:160)_
`
`______________________________
`
`(cid:160)(cid:160)
`(cid:160)
`

`
`(Print or Type Name and Position)
`
`(cid:160)_
`
`______________________________
`(Date)
`
`(cid:160)P
`
`ending an adequate response to the above, registration is refused because no specimen of record shows use of the proposed mark as a service
`mark.(cid:160) Trademark Act §§1, 2, and 45, 15 U.S.C. §§1051, 1052 and 1127; TMEP §§904.11 and 1201 et seq.
`
`Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and
`arguments in support of registration.(cid:160) If applicant chooses to respond to the refusals to register, then applicant must also respond to the following
`requirements.
`
`Classification of Services
`
`(cid:160)A
`
`pplicant must correct the classification of the services in the application and amend the application to classify them in International Class 41.(cid:160) (cid:160)
`37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).
`
`Section 2(f) Claim Unsupported: Evidence Required
`
`(cid:160)A
`
`pplicant has included a claim of acquired distinctiveness under Trademark Act §2(f) but has provided no evidence to support that claim.(cid:160) If
`applicant believes that its mark has acquired distinctiveness, that is, that it has become a distinctive source-indicator for the services, then
`applicant may overcome the refusal under §2(e)(1) by seeking registration on the Principal Register under Trademark Act Section 2(f), 15 U.S.C.
`§1052(f).(cid:160) Applicant must establish acquired distinctiveness by a preponderance of the evidence.(cid:160) Yamaha Int’l Corp. v. Hoshino Gakki Co. , 840
`F.2d 1572, 6 USPQ2d 1001 (Fed.Cir. 1988).(cid:160) This evidence may include specific dollar sales under the mark, advertising figures, samples of
`advertising, consumer or dealer statements of recognition of the mark as a source identifier, and any other evidence that establishes the
`distinctiveness of the mark as an indicator of source.(cid:160) See In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant
`Transactions Corp., 201 USPQ 957 (TTAB 1979).(cid:160) This Office will decide each case on its own merits.
`
`(cid:160)T
`
`o determine whether the proposed mark has acquired distinctiveness, the trademark examining attorney will consider the following factors: (1)
`how long applicant has used the mark; (2) the type and amount of advertising of the mark; and (3) applicant’s efforts to associate the mark with
`the goods or services identified in the application.(cid:160) See Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 173 USPQ 820 (S.D.N.Y.
`1972); In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984); 37 C.F.R. §2.41; TMEP §§1212, 1212.01 and 1212.06.
`
`Option: Amendment to Intent-To-Use Basis
`
`(cid:160)I
`
`f applicant cannot comply with the requirement for a specimen of use for the use-in-commerce basis asserted under Trademark Act §1(a), then
`applicant may substitute a different basis for filing if applicant can meet the requirements for the new basis.(cid:160) See TMEP §§806.03 et seq.
`
`(cid:160)I
`
`n this case, applicant may wish to amend the application to assert an intent-to-use basis under §1(b).
`
`(cid:160)A
`
`pplicant must submit the following statement in order to satisfy the application requirements for asserting a basis for registration under §1(b) of
`the Trademark Act:
`
`(cid:160)A
`
`pplicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the
`application as of the filing date of the application.
`
`Trademark Act §1(b), 15 U.S.C. §1051(b).(cid:160) This statement must be verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.(cid:160)
`Trademark Act §1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §§806.01 and 804.02.
`
`Questions
`
`(cid:160)I
`
`f applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark
`examining attorney directly at the number below.
`
`/Rebecca M. Eisinger/
`
`(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)
`

`
`Trademark Attorney
`Law Office 102
`Phone (571) 272-8845
`Fax (571) 273-9102
`
`HOW TO RESPOND TO THIS OFFICE ACTION:
`ONLINE RESPONSE:(cid:160) You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action
`form available on our website at http://www.uspto.gov/teas/index.html.(cid:160) If the Office action issued via e-mail, you must wait 72 hours
`after receipt of the Office action to respond via TEAS.(cid:160) NOTE:(cid:160) Do not respond by e-mail.(cid:160) THE USPTO WILL NOT ACCEPT AN
`E-MAILED RESPONSE.
`REGULAR MAIL RESPONSE:(cid:160) To respond by regular mail, your response should be sent to the mailing return address above, and
`include the serial number, law office number, and examining attorney’s name. (cid:160) NOTE:(cid:160) The filing date of the response will be the date
`of receipt in the Office, not the postmarked date.(cid:160) To ensure your response is timely, use a certificate of mailing.(cid:160) 37 C.F.R. §2.197.
`
`(cid:160)S
`
`TATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval
`(TARR) system at http://tarr.uspto.gov.
`
`(cid:160)V
`
`IEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded
`online at http://portal.uspto.gov/external/portal/tow.
`
`(cid:160)G
`
`ENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at
`http://www.uspto.gov/main/trademarks.htm
`
`(cid:160)F
`
`OR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING
`ATTORNEY SPECIFIED ABOVE.
`
`(cid:160)(cid:160)
`(cid:160)
`

`
`
`
`
`
`
`
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`Your Query of ‘hard porn’ Rqsulted in 1 Matches
`From the AND Concise Dictionary
`Displaying Items 1 through 1
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`deseretnewscom
`
`Sunday, August 8, 2004
`
`Porn is invading home, work
`With sites just dick away, addiction has become big concern
`
`By Jesse Hyde
`Deseret Morning News
`
`Get Your
`
`Transmission
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`The first iime Paul Turner tried to ldll his wife, he halted her cookies laced witl'1 rat poison. When that didn't
`work, he cooked her spaghetizi with mushrooms he believed were poisonous. On his final attempt, he put fish tanlt
`cleaner in her injected medication.
`Turner told Provo police he wanted his pregnant wife dead because, among other things, she wouldn't allow
`hi.m to look at Internet pornography.
`On Jan. 26, supervisors at the Provo River Water Users Association suspended Louis Darrell Kinyon of
`American Fork from his job. At a meeting the next Monday to dismiss the suspension, Kinyon, 49, flew into a rage
`and damaged a candy machine on his way out of the Pleasant Grove office.
`Police were searching for Kinyon in the surrounding neighborhood when he returned to the building, chased
`co—worlters outside and shot his 36—year— old boss, killing hi.m. He then went in a bathroom and shot himselfin the
`face.
`
`en late, some 24 hours
`
`i'm luuin il..=
`
`Kinyon's suspension stemmed from "inappropriate material"
`found on his computer. Kinyon, who has recovered, has been
`charged with capital aggravated murder and 'i'_hird—degree felony
`sex exploitation of a minor.
`The latter cha.rge is related to the material found on his
`computer.
`It wasn't long ago Ending pornography was a chore, especially in
`Utah. Even in big cities, buying pornographic videos or magazines
`required slipping into the back room of a seedy video store. Now on
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`

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`httpzffdeseretnews.ccmfdnfviewffl 1249 595082732? DD.htm|
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`DEIESIEDDE D424‘-19:00 PM
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`the Internet, in motel roonm and on pay—per—view television, porn
`can bejust a click away.
`As pornography has become more accessible, it has also become
`more popular. Last April, 29 million Americans viewed
`pornographic ‘Web sites — there are nearly half a million ofthern —
`accounting for nearly one quarter of all Internet users, according to
`Nielsen;‘,r‘NetRath1gs, an Internet audience measurement and
`analysis agency.
`_
`Rentals of hard-core videos, which show real sex acts, soared from 79 million in 1985 to 759 million in 2001,
`according to Adult Video News. That's an increase of almost 1,000 percent. The porn industry now rakes in about
`$10 billion a year, roughly the same amount Hollywood makes on all major releases at the domestic box office.
`"It's everywhere," says Rory Reid, a therapist who treats sex addicts at Prmm"s Gathering Place. "Sorrre
`people feel like they can't escape it."
`The explosion of porn, and mainstream tolerance, has created a whole new category of addicts, psychologists
`say. Men and women who View porn sometimes become so consumed by it they can't keep it out of the workplace.
`Before'I‘urnerI:riedtopoisonhJ'swife,hisbossattheIMissioriary'I‘rainingCenterofTheChu1'chofJesus
`Christ of Latter—day Saints confronted him about pornography found on a computer.
`‘When Kinyon was suspended for material found on his computer, he snapped.
`"I've m some people who are definitely deserving of the label, people who are really doing themselves
`darnage," says David Tomb, a University of Utah psychology professor who has met with dozens of men
`consumed by porn. "They feel out of control to the point where they are losing their job, their marriage is falling
`apart, their whole life is disassembling because of their need to look at pornography, and they have a lot of the
`same characteristics you see with someone who has a drug addiction."
`Do-cs compulsive viewing of pornography qualify as an addiction? And if it does, is it a harmless wcuatc of time,
`a healthy stimulus. for bored couples, or a dangerous obsession that destroys relationships, ends careers and
`contributes to violence?
`On a recent Tuesday night, a group of admitted sex addicts gathered at an Orem church for a weekly meeting.
`They met in the nursery, a cheery yellow room with pictures of Jerusalem and Noah's Ark taped to the wall.
`Sitting in a circle, the men introduced themselves as "sexaholics" and shared temptations encountered during
`the previous week — both those they overcame and those to which they succumbed. For men who had stayed
`sober from compulsive sexual behavior for a month or longer, there were tokens and hugs.
`Sexallolzic groups in cornsenratiire, largely 1\'l.0l'El10}J Utah Co-u11ty (there are two) attract e:ve:ryo11e Ervoni
`newlyweds obsessed with porn to white haired grandfathers who have lost count of how many prostitutes they
`have bedded. Some of the men have attended these meetings, which use the 12- step program of Alcoholics
`Anonymous, for years.
`For these Linen, p-oruography adilictiuu is a very real thing; it is a habit that has hurt
`job performance.
`Reid, who runs the program for compuhiive sexual behavior at the Gathering Place, said he has counseled
`dosens ofporn addicts. Most are men, he said, and most come in on their own. Others are referred by employers
`
`and affected
`
`

`
`httpzffdeseretnews.comldnlviewffl 1249 595082732? DD.htm|
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`DEIESIEDDE D424‘-19:00 PM
`
`at porn.
`
`such as Noveil that have become aware of the problem.
`"We've had police officers, postal workers. This problem is not discriminatory," Reid said. "You'll get the
`custodian, you'll get the medical doctor and everything in between."
`An estiiznated 6 million Americans surfed porn Web sites while at work in April of last year, according to
`Nielsen,’[NetRatings. A survey of 224 corporations conducted by David Greenfield, author -of the book "Virtual
`Addiction," shows more than 40 percent of all Internet— related workplace
`actions were related to
`Internet pornography.
`Greenfield said he has worked wi.th execulzives who lock themselves in the offiee half the day
`Reid has treated others who stay up all night viewing online porn and come in groggy to work.
`Both Reid and Tomb said their clients find viewing pornography an especially tough habit to break. Reid said
`giving up porn can be as difficult as giving up heroin.
`However, other experts my viewing pornography does not qua-Eify as an addiction.
`"It depends on what we mean by addiction," said Jeffrey Schaler, a former psychology professor at Johns
`Hopkins University who has studied compuhive pornography viewing and addiction. "If we mean some disorder
`or some chemical imbalance, there's no such thing as pornography addiction. If by addiction we mean something
`that people enjoy anduse to cope, then yes, there's such a. thing as addiction."
`Schfi, author of the book "Addiction Is a Choice," said too many people, from alcoholics to self—described
`sexaliolics, use addiction as an excuse for behavior they find inappropriate. With enough willpower, any addiction
`— from heroin use to compulsive pornography consumption — can be overcome, he said.
`OtherpsychoIogists,suchasfl1elateAlCoopeIoftheSanJoseMaJitaland Se:xuali.t_yCe£Ete:rinS¢1ntaCTlaIa,
`Calif., have said that while pornography viewing can reach the point of compulsion, it does not meet the criteria of
`other physical
`" It's not something people can't control," Schaler said. "It's not Hke a seizure"."
`Depending on your tnorab, pornography addiction is either a veicing sin or an annoying waste of time. To
`conservative Christians, pornography has iong been viewed as a gateway to baser sins, such as adultery and rape.
`The recent cases of Paul ‘Turner, who tried to poison his wife, and Louis Darrell Kinyon, who shot his boss,
`Em to support such religious fundamentalist theory.
`"I think it's dangerous when we attribute a criminal act to pornography, and themes obviously other factors
`we're overlooking," Schaler said. "It's more complicated than that.
`"There's no evidence to show pornography caused (Turner and Kinyon] to do these things. People say, 'Well,
`pornography obviously had something to do with it.’ Look, there are tons of people who read pornography and
`don't kill people."
`There is even some debate about whether pornography addiction escalates. Reid said he has clients who have
`been looking at the same ldnd of porn for years, while Tomb said most people hooked on porn seek increasingly
`explicit material.
`"What was previously arousing is no longer arousing. It's almost tilce someone with a heroin addiction needing
`more heroin. They haven't changed the drug, but they've increased the intensity of it," Tomb said. "Soft porn will
`become hard porn. Hard porn will become violent porn."
`Anti— porn activists have long warned that porn causes men to objectify women. If it E not limited, they say,
`
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`0EI20I200E 04:49:00 PM
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`men will beat, cheat, even rape.
`Dcltar Fnancia-1 cmup
`T However, in a recent essay for New York magazine, the feniinnt Naomi Wolf argued that the proliferation of
`DRIVERS
`easy—to—access pornography has not made men into "raving beasts," as many had predicted it would.
`501 LAW: Trucdfirvg Om-In
`"On tl1e contrary," she writes. "The onslaught of porn is respvonsible for deadening maie Hbido in reladon to
`T real women, and leading men to fl fewer and fewer women as 'porn— worthy.’ Far from having to fend off porn-
`""°“’ “'9 J°""‘ »
`crazed young men, young women are worrying that as mere flesh and blood, they can scarcely get, let alone hold,
`— their attention."
`Wolf writes that when she visits college cauiptnses women Lell her they feel like lliey can't (1Jlllpfi.‘.lt2. "For how
`can a real woman . .
`. possibly compete with a cyberfaion of perfection, downloadable and extinguishable at will,
`who comes, so to speak, utterly submissive and tailored to the consumer's least specification?"
`Reidsayshehearsthesamethingfromspousesorpartnersofpornaddictswhoconieinforcounselingatthe
`G