Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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PTO Form 1957 (Rev 9/2005)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77000428 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

In response to the Examiner's office action dated June 17, 2008, the Examiner argues that the specimens submitted by Applicant consist of advertising brochures and pictures of the Applicant?s promotional setup at a conference rather than specimens showing use of the mark on the product or at a point of sale. 

 

First, Applicant notes that the photos depicting the logo at the booth were photos taken at a trade show where customers could purchase Applicant's products.  In fact, the purpose of the trade show booth was to close sales of Applicant's products in addition to marketing the products to potential customers.  The booth was not merely a form of advertising or exhibition.  Applicant's products are highly complex professional sound recording and mixing devices that are permanently installed at a customer's location or production truck.  For this reason, sales are conducted in person at the customer's place of business or at large conventions.  Sales are not conducted in a retail establishment.  Within Applicant's industry, such trade shows for high-end professional gear are common methods of selling such products.  Because Applicants products are not lower-priced consumer goods, they are not sold in retail store outlets on a store shelf.  Accordingly, given the substantial cost of Applicant's products, and the manner in which Applicant sells its products to large corporate customers, the photos represent use of the mark on displays associated with the goods at one of their points of sale.

Second, the photos of the product guides are not sales brochures.  Rather, the product guides contain specific information about the product, its specifications, features, size and uses.  Accordingly, Applicant believes the product guides are acceptable specimens showing use of the mark on materials used in connection with the use of the product.  Furthermore, the product guides contain a telephone number to arrange for purchasing Applicant's products.  As noted, Applicant's products are highly complex professional sound recording and mixing devices that are permanently installed in a customer's building.  For this reason, sales are conducted in person at the customer's place of business or at a large trade show/convention.  Sales are not conducted in a retail establishment.

 

Notwithstanding, Applicant also submits additional photos of the product showing the CALREC logo on the product.  The photos show the CALREC logo on the product video monitor.  This logo appears every time the user turns the product on.  Accordingly, such photographs show use of the mark on the product itself.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for sound and audio mixing equipment and instruments, namely, audio mixers; sound and audio processing apparatus and instruments, namely, limiters, compressors, delays, reverberators, equalizers, synchronizers, transducers, encoders and analyzers; video mixing and processing apparatus, namely, embeddors, deembeddors, synchronizers, delays and frame stores; microphones; apparatus and instruments for recording, reproducing, transmission and processing of sound and video, namely, recorders, editors, servers, encoders, decoders and distribution networks
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

In International Class 009, the mark was first used at least as early as 09/08/2006 and first used in commerce at least as early as 09/08/2006.

Proposed: Class 009 for sound and audio mixing equipment and instruments, namely, audio mixers; sound and audio processing apparatus and instruments, namely, limiters, compressors, delays, reverberators, equalizers, synchronizers, transducers, encoders and analyzers; video mixing and processing apparatus, namely, embeddors, deembeddors, synchronizers, delays and frame stores; microphones; apparatus and instruments for recording, reproducing, transmission and processing of sound and video, namely, recorders, editors, servers, encoders, decoders and distribution networks
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

In International Class 009, the mark was first used at least as early as 09/08/2006. and first used in commerce at least as early as 09/08/2006.

Applicant hereby submits a new specimen for Class 009. The specimen(s) submitted consists of Photos of Applicant's product showing the trademark on the product console screen..
For an application based on 1(b), Intent-to-Use, "The substitute specimen(s) was in use in commerce prior to expiration of the filing deadline for filing a Statement of Use (SOU)."
JPG file(s):
Specimen File1
Original PDF file:
SPU0-121451686-150925854_._CarlecSpecimen1.pdf
Converted PDF file(s) (1 page)
Specimen File1

SIGNATURE(S)
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: /dek/      Date: 12/17/2008
Signatory's Name: Daniel E. Kattman
Signatory's Position: Attorney of record

Response Signature
Signature: /dek/     Date: 12/17/2008
Signatory's Name: Daniel E. Kattman
Signatory's Position: Attorney of record

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 77000428
Internet Transmission Date: Wed Dec 17 15:32:02 EST 2008
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.X-20081217153202628
540-77000428-4303c3cbe1c49373580df851c6f
8c68c8-N/A-N/A-20081217150925854499