PR-Teas-Response to Post Reg Office Act

Global Format; No Form Number (Rev 8/2009)

OMB No. 0651-0055 (Exp. 07/31/2018)

---

Global Format; No Form Number (Rev 8/2009)

OMB No. 0651-0055 (Exp. 07/31/2018)

Response to Office Action for Post-Registration Matters

To the Commissioner for Trademarks:

The following is submitted for registration number. 3112828 :

FORM INFORMATION

The Examining Attorney has objected that the specimen submitted “does not show use of the registered mark in commerce.  It appears to be a website of the registered mark, and does not show the mark actually used in commerce on the goods or in the sale or advertising of the services.”  Registrant respectfully requests that the Examining Attorney reconsider and withdraw this objection.

As Registrant explained in a voicemail and email on August 30, 2011, the specimen is a web page that clearly shows use of the mark within the meaning of TMEP § 904.03(i) regarding “Electronic Displays.”

TMEP § 904.03(i) provides:

A website page that displays a product, and provides a means of ordering the product, can constitute a “display associated with the goods,” as long as the mark appears on the web page in a manner in which the mark is associated with the goods, and the web page provides a means for ordering the goods. See In re Sones, 590 F.3d 1282, 93 USPQ2d 1118 (Fed. Cir. 2009). Web pages that display the trademarks in association with a picture of the goods or a sufficient description of them to understand what they are, and provide for online ordering of such goods are, in fact, electronic displays associated with the goods. In Sones, the Federal Circuit held that although a visual depiction of the goods “is an important consideration in determining whether a submitted specimen sufficiently associates a mark with the source of the goods,” a picture of the goods on the web page is not mandatory. Id. at 1288, 93 USPQ2d at 1123. A textual description may suffice where “the actual features or inherent characteristics of the goods are recognizable from the textual description, given that the more standard the product is, the less comprehensive the textual description need be.” Id. at 1289, 93 USPQ2d at 1124.

 On the specimen submitted with Registrant’s Section 8 & 15 declarations, the mark SOUNDBRIDGE appears in the title “SOUNDBRIDGE PRODUCTS AND ACCESSORIES as well as in the caption “Extra SoundBridge Remote Control” next to a picture of that remote control.  SOUNDBRIDGE is also mentioned in the description of the products next to a photo of each product.  The prices are listed, and next to each product offered for sale is a button stating “Buy Now” which links the user to the online store.  The online store is again referred to in the “View Cart” button near the top right of the page.  The page also mentions “Free Shipping” and a “30 day Money Back Guarantee” in a starburst on the top left of the page.

Thus, the specimen fulfills § 904.03(i) requirements to be an electronic displays associated with the goods, as follows:

1.         It is a website page;

2.         that displays a product;

3.         that provides a means (via a link) of online ordering of the product; and

4.         the mark appears on the web page in a manner in which the mark is associated with a picture of the goods.

“Such web pages are not merely advertising, because in addition to showing or describing the goods, they provide a link for ordering the goods.  In effect, the website is an electronic retail store, and the web page is a shelf-talker or banner which encourages the consumer to buy the product.  A consumer using the link on the web page to purchase the goods is the equivalent of a consumer seeing a shelf-talker and taking the item to the cashier in a store to purchase it.  The web page is, thus, a point-of-sale display by which an actual sale is made.  In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004).”  Id.

For the foregoing reasons, Registrant respectfully requests that the Examining Attorney withdraw this objection and approve the declarations and specimen as filed.

SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.

Submission Signature
Signature: /elp/     Date: 01/04/2012
Signatory's Name: E. Lynn Perry
Signatory's Position: Attorney of Record, California Bar Member
Signatory's Phone Number: 415-524-8683

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 trademark owner'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 trademark owner in this matter: (1) the trademark owner 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 trademark owner has filed a power of attorney appointing him/her in this matter; or (4) the trademark owner'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: 78445640
Internet Transmission Date:
TEAS Stamp: USPTO/TRS-XXX.XXX.XXX.XXX-20120104195603
949043-3112828-20120104192111871511-N/A-
N/A-20120104192111871511