UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/580505
APPLICANT: Louis, Gregory
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: ALOUD
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/580505
Registration is refused because the proposed mark, as used on the specimen of record, solely identifies the featured performer(s) on the sound recordings and does not function as a trademark for the goods themselves. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; In re Spirer, 225 USPQ 693 (TTAB 1985); Cf. In re Polar Music International AB, 714 F.2d 1567, 221 USPQ 315 (Fed. Cir. 1983); TMEP §§1202 et seq.
Applicant may respond to this refusal by (1) submitting evidence that the mark has been used on at least two recordings, and (2) amending the identification of goods to state that the sound recordings comprise a series.
If applicant is unable to demonstrate use on a series, then applicant may wish to respond to this refusal by amending to the Supplemental Register. TMEP §1202.09(a).
As stated above, the applicant may respond to the refusal by amending the identification of goods to indicate that the goods comprise a series. Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. Section 2.71(a); TMEP section 1402.06. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification. The applicant may adopt the following identification, if accurate:
Series of phonograph records, prerecorded audio and video compact discs and prerecorded audio and video cassettes, all featuring music
Although the examining attorney has refused registration on the Principal Register, the applicant may amend the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. Section 1091; 37 C.F.R. Sections 2.47 and 2.75(a); TMEP sections 801.02(b) and 816 et seq.
Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. Section 2.76 or statement of use under 37 C.F.R. Section 2.88 has been timely filed. 37 C.F.R. Section 2.47(c); TMEP section 1102.03. When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use. 37 C.F.R. Section 2.75(b); TMEP section 206.01.
A trademark on the Supplemental Register is merely considered "capable" of being a trademark -- there has been no determination that it is a trademark. Nevertheless, registration on the Supplemental Register does permit:
1. use of the federal registration symbol;
2. use of the trademark as a bar to registration of confusingly similar trademarks filed by others;
3. registration abroad based on U.S. rights; and
4. the registrant may bring suit in federal court.
Section 44(d) Basis Invalid: Application Not Filed Within 6 Month Priority Period
Applicant must delete the Section 44(d) basis from the application. Although applicant claimed priority under Trademark Act Section 44(d), 15 U.S.C. §1126(d), as the basis for filing, applicant did not file in the United States within six months of the foreign filing, as Section 44(d) requires. Therefore, this basis for filing is invalid, and applicant is not entitled to priority. TMEP §1003.02.
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
/Elizabeth Pignatello/
Trademark Examining Attorney
Law Office 105
(703) 308-9105 Ext. 224
(703) 872-9825 fax
How to respond to this Office Action:
You may respond using the Office's Trademark Electronic Application System (TEAS) (visit http://www.gov.uspto.report/teas/index.html and follow the instructions therein), but you must wait until at least 72 hours after receipt of the e-mailed office action. PLEASE NOTE: For those with applications filed pursuant to Section 66(a) of the Trademark Act, all responses to Office actions that include amendments to the identifications of goods and/or services must be filed on paper, using regular mail (or hand delivery) to submit such response. TEAS cannot be used under these circumstances. If the response does not include an amendment to the goods and/or services, then TEAS can be used to respond to the Office action.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.