PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 76618300 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

REMARKS

In the Office Action dated June 3, 2005, Applicant notes that a search of the Office records has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d); TMEP § 704.02.

Further, the Examining Attorney stated only one informality, namely, that the recitation of services in International Class 41 is indefinite.  As set forth above, Applicant has amended and reclassified its recitation of services in the application and drawing page in keeping with the Examining Attorney's recommendations.

With respect to formalities, the Examining Attorney initially rejected Applicant's THE OFFICIAL SITE OF ROCK MUSIC mark, stating that the mark is merely descriptive of the services offered under the mark.  Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1); TMEP section 1209 et seq.   Applicant disagrees with the Examining Attorney's conclusion and for the reasons stated below, believes that its mark is not merely descriptive of the services listed.

The Mark is Not Merely Descriptive

                        The Examining Attorney objected to registration of Applicant's mark based on his belief that the mark is merely descriptive of Applicant's services.  Applicant respectfully disagrees with the Examining Attorney's conclusion and for the reasons stated below, believes that its mark is at least suggestive. 

A.                 Applicant's Mark Is Suggestive

A mark is suggestive if it requires consumer "imagination, thought, and perception" to reach a conclusion as to the nature of the goods or services.  A&H Sportswear Inc. v. Victoria's Secret Stores, Inc., 57 U.S.P.Q.2d 1097, 237 F.3d 198, 221-22 (3d Cir. 2000).  Thus,  if a consumer follows a multistage reasoning process in order to ascertain the corresponding product's or service's characteristics, the mark is suggestive. Glamorene Products Corporation v. Boyle-Midway, Inc., 188 U.S.P.Q. 145, 165 (S.D.N.Y. 1975).  For instance, the Glamorene Products court held that the trademark SPRAY 'N VAC for aerosol rug cleaner is not merely descriptive, but rather suggestive of a two-step rug cleaner.  Id. at 164.  In this instance, Applicant's THE OFFICIAL SITE OF ROCK MUSIC mark for online retail store services, electronic mail services, and online computerized services is not merely descriptive, but rather suggestive of an online website offering various services within the field of entertainment, and requires the relevant consumer to use his or her imagination to understand the services offered under the mark. 

Moreover, Applicant's THE OFFICIAL SITE OF ROCK MUSIC does not necessarily describe online computer services.  The term "Official Site" could also imply a specific geographic location where Rock Music was invented or honored, such as the Rock Music Hall of Fame located in Cleveland, Ohio. 

B.                 Relevant Factors Conclude That Applicant's Mark Is Suggestive

Because there is no bright line test for whether a mark is merely descriptive or suggestive, the Court in its analysis has used various factors or questions originally posed by Professor J. Thomas McCarthy.  Washington Foods Inc. v. Kellogg Co., 732 F.Supp. 1417, 14 U.S.P.Q.2d 1577, 1589 (S.D. Ohio 1990); J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §11:71 (4^th ed. 2004).  First, how much imagination is required on the buyer's part to cull a direct message from the mark about the quality, ingredients, or characteristics of the services?  McCarthy at §11:71.  Is some reflection or multi-stage reasoning process necessary to cull some direct information about the product from the term used as a mark?  Id.  If more than a little imagination is necessary and it requires the consumer to engage in a multi-stage reasoning process, then the mark is suggestive.  Here, THE OFFICIAL SITE OF ROCK MUSIC mark does not directly describe Applicant's online retail store services, electronic mail services, and online computerized services.  While Applicant acknowledges that the definition of each individual word may imply that the Mark describes an online website featuring entertainment services, the Examining Attorney must evaluate the mark as a whole.  Association of Cooperative Members, Inc. v. Farmland Industries, Inc., 216 U.S.P.Q. 361 (5^th Cir. 1982), cert. denied, 75 L.Ed. 2d 788, 103 S. Ct. 1428.  Consumers faced with THE OFFICIAL SITE OF ROCK MUSIC mark for the first time may not, on the mark's face, determine that the it signifies a web site featuring rock music. 

Overall, the discussed factors weigh in favor of Applicant's conclusion that its THE OFFICIAL SITE OF ROCK MUSIC mark is suggestive and not merely descriptive.  Therefore, THE OFFICIAL SITE OF ROCK MUSIC mark is inherently distinctive and warrants registration on the Principal Register.

CONCLUSION

For the reasons discussed above, Applicant's THE OFFICIAL SITE OF ROCK MUSIC mark is not merely descriptive.  Accordingly, the mark is proper for registration on the Principal Register and Applicant respectfully submits that its application is now in condition for publication.      

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 038 for Providing electronic mail services over global computer networks, for transmission of message among computer users
Original Filing Basis: 1(a).
Proposed: Class 038 for Providing electronic mail services over global computer networks, for transmission of message among computer users; and streaming of music audio material via a global computer information network
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 041 for Distribution of programming in the field of music via a global computer information network
Original Filing Basis: 1(a).
Proposed: Class 041 for Providing prerecorded music via a global computer information network; and entertainment services, namely, providing a radio program in the field of music via a global computer network

Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /jld/      Date: 12/02/2005
Signatory's Name: Julie L. Dalke
Signatory's Position: Attorney for Applicant

Response Signature

Signature: /jld/     Date: 12/02/2005
Signatory's Name: Julie L. Dalke
Signatory's Position: Attorney for Applicant
        
Serial Number: 76618300
Internet Transmission Date: Fri Dec 02 17:30:25 EST 2005
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-200512021730257
57478-76618300-320d9615dc40b99c157a0c999
7a426cba-N/A-N/A-20051202172607386118