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Alex Reese
Alex Reese, Lawyer
Category: Intellectual Property Law
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Experience:  Experienced in intellectual property law
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My trademark for "creepypasta" in the field of books is

Customer Question

My trademark for "creepypasta" in the field of books is currently in a review period. I've noticed that someone else has tried to trademark "creepypasta" for films and television, but their application has currently been suspended due to me filing first.
What does this mean? I'm concerned that their movie or TV series could present some sort of confusion. Assuming there are no problems and my trademark is registered, will I have any options when it comes to protecting my brand? This is a link to the other
applicant's suspension letter http://tsdr.uspto.gov/documentviewer?caseId=sn86576618&docId=SUL20150629181129#docIndex=0&page=1 Link to his status http://tsdr.uspto.gov/#caseNumber=86576618&caseType=SERIAL_NO&searchType=statusSearch Link to mine http://tsdr.uspto.gov/#caseNumber=86544158&caseType=SERIAL_NO&searchType=statusSearch
Submitted: 1 year ago.
Category: Intellectual Property Law
Customer: replied 1 year ago.
Apologies for the formatting. I'll try to post the links again.My Status: http://tsdr.uspto.gov/#caseNumber=86544158&caseType=SERIAL_NO&searchType=statusSearchHis Status: http://tsdr.uspto.gov/#caseNumber=86576618&caseType=SERIAL_NO&searchType=statusSearchHis Letter: http://tsdr.uspto.gov/documentviewer?caseId=sn86576618&docId=SUL20150629181129#docIndex=0&page=1
Expert:  montysimmons replied 1 year ago.
I will take a look at it and get back to you.
Expert:  montysimmons replied 1 year ago.
Ok, According to USPTO records: Chris ToscanoSerial Number: 86544158Trademark: "Creepypasta"Class of Goods: 16 : Books in the field of horrorFiling date: 24 February 2015,Filing Basis: Intent to useWho Filed: Chris ToscanoLocation:***** Los Angeles CALIFORNIA 90025 Terry CastleSerial Number: 86576618Trademark: "CreepyPasta"Class of Goods: 41 : Entertainment, namely, a continuing horror show broadcast over television, satellite, audio, and video mediaFiling date: 25 March 2015,Filing Basis: 1B Intent to useWho Filed: Terry CastleLocation: 141 N. Orange Drive Los Angeles CALIFORNIA 90036 COMMENTSOK, on 24 February 2015 Chris Toscano (who I assume is you) filed a trademark application for "Creepypasta" in the field of horror books. Then, one month later, Terry Castle, who apparently lives/works 6 miles from Chris Toscano, filed a trademark application for "CreepyPasta" in the filed of Horror shows (broadcast tv, satellite, audio, and video media) - everything but books.It seems very likely that Chris and Terry know each other and probably worked on the "Creepypasta" idea together (at first). There was a disagreement, probably as to who created/owns what, and the two stopped working together. Chris files a trademark application for "Creepypasta" and Terry finds out and files his own trademark for "CreepyPasta".Both file on an intent to use basis - which means neither have actually used the mark yet but intend to. Well, Chris basically beat Terry to the punch on the trademark issue and will own the mark "creepypasta" if there are no other issues. Chris does not have to do anything at the moment with regard to the trademark application. At the moment Chris' "Mark" has been published for opposition, and if there is no opposition, Chris will get his notice of allowance in 2-3 months. Then Chris will have 6 months to file a "Statement of Use" or request an extension. Extension cost $150 each (and you can request up to 5). Filing a "Statement of Use" cost $150. So hopefully Chris has a product by then to which Chris can associate the mark with in commerce. Then Chris can file his Statement of Use. Again, you can file for up to 5 six month extensions (about 3 years). Other (Possible) IssuesCould be that someone else owns the mark or similar. I have found none yet.Interestingly there was a Comic Book called "Creepy" and it was registered in 1966 but expired in 1985. In 1992 Harris Publications, Inc. registered "Creepy" for a Comic Book which was canceled on 1 November 2003 for failure to file a declaration under Section 8.Harris Publications Inc. is an American consumer-magazine publisher in New York City, New York, that publishes over 75 titles, including Juicy, Dog News, 0-60, Guns & Weapons for Law Enforcement, Small Business Opportunities, Exercise & Health,Celebrity Hairstyles, and many more. Possible ActionsI wold be inclined to file a trademark application for: "Creepy" in Class 16 and perhaps 41 IdentificationClass 16 : Books in the field of horror, magazine issued periodically of the comic book typeClass 41 : Entertainment, namely, a continuing horror show broadcast over television, satellite, audio, and video media Now eventually you will have to prove you are actually using the mark in commerce to identify the source of goods/services identified above. So if you cannot provide the above identified goods/services you will eventually lose the mark. But you can always drop off items from the mark later if you wish CopyrightI would also recommend you look at registering your copyrights in your works. If you do it yourself it only cost $45 per application.see: www.copyright.gov/
Customer: replied 1 year ago.
We actually do not know eachother. Chris (me) is a young author who has been publishing for a year. Terry(I've done my digging) is a Hollywood producer. We've never once met and I'm sure she wasn't even aware of my existence. Our location is purely coincidental."Creepypasta" is an Internet buzzword that means spooky stories. I'veven grown my audience by writing "creepypastas" on the internet and have published 5 books in the past year.The plan is to publish a comic book and Goosebumps style book series under the trademark I filed for. I became aware of a number of Hollywood projects interested in the name after I filed, including one being produced by the SyFy channel and one being done by Clive Barker. Terry probably found out about this and looked into the trademark.The comic is being worked on and will be out in the fall. As long as I pay my dues I don't have to worry?
Expert:  montysimmons replied 1 year ago.
That is interesting. Two people 6 miles apart file for the same trademark a month apart and such is by chance. Talk about a long shot. You are correct, just keep paying your extensions or file for a statement of use.For $150 you can setup your own website using Register.com and you could offer you books for sale under the BRAND "CreepyPasta".Such is what I would do and I would file for the trademark "Creepy" right away for comic books. I would want "Creepy" and "Creepypasta". Well worth the $300 (file yourself. I could do if for as an additional service for $200 more if you need help. Otherwise file yourself. If you need for information just let me know.
Customer: replied 1 year ago.
I'm trying to give you a rating, but for some reason the website won't allow it. I do have a follow up question about The trademark that Terry Castle filed for. According to the USPTO's website it's still ACTIVE. Does that mean I need to wait for it to get to the Official Gazette to dispute her trademark or will it most likely not even make it there?
Expert:  montysimmons replied 1 year ago.
It is unlikely Terry's trademark application will go any further.

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