PTO Form 1957 (Rev 9/2005)
OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER78889858
LAW OFFICE ASSIGNEDLAW OFFICE 102
MARK SECTION (no change)
ARGUMENT(S)

Dear Ms. Eisinger;

     We are in receipt of your Office Action wherein you advise that the Applicant's mark is being refused registration on a basis of likelihood of confusion.  We respectfully disagree and provide you with the following information.

     The Applicant is hereby deleting "racks for loudspeakers and amplifiers" from its description of goods for class 9 which it believes will extinguish any likelihood of confusion argument between the Registrant's marks (Reg. Nos. 3073028 and 3035511) and the Applicant's mark.  We believe that the design marks of the Registrant are easily distinguished from Applicant's word mark TANTRUM based on appearance.  This distinction coupled with  the now clear distinction between the Applicant's goods and the Registrant's goods extinguishes any likelihood of confusion. 

     With regard to cited Reg. No. 2703265, we respectfully disagree that any likelihood of confusion exists between the Registrant's mark, TEMPER TANTRUM, and the Applicant's mark, TANTRUM.  Although the marks both incorporate TANTRUM, the Registrant's mark adds an additional word which distinguishes the marks based on sound and appearance.  We believe it is important that the word TEMPER is not disclaimed from the Registrant's mark.  Accordingly, we do not believe that the marks are confusingly similar.  We also believe there is an important distinction between the goods offered by the Registrant and those offered by the Applicant.  The Registrant's goods are exclusively for women and we suspect are sold in department stores and other stores which target women.  Applicant's apparel will bear the TANTRUM mark to connote the other products sold under that mark by Applicant and will target consumers of those other products.  Applicant's apparel will be sold alongside its other products which are in classes 8, 9, 15 and 26.  It is unlikely that the Applicant's goods will be sold in the same channel of trade as the apparel offered by Registrant.  It is foreseen that Applicant's apparel will be sold in its stores and via its online retail store, not in department stores or boutiques targeting women only.  In light of the distinctions between the marks, the apparel and the channels of trade, we believe no likelihood of confusion exists between the Applicant's mark and that of the Registrant. 

GOODS AND/OR SERVICES SECTION (009)(current)
INTERNATIONAL CLASS009
DESCRIPTION
Carrying bags, carrying cases and covers for deejay equipment namely audio, visual and special effects equipment, and sound reinforcement and recording equipment namely audio tape recorders, amplifiers, public address systems, digital sound boards for amplifiers, rack equipment, namely racks for loudspeakers and amplifiers, audio cords for use with sound amplifiers electronic effects pedals for use with sound amplifiers, signal processors, racks for loudspeakers and amplifiers, stands for microphones, microphones; computer bags
FILING BASISSection 1(b)
GOODS AND/OR SERVICES SECTION (009)(proposed)
INTERNATIONAL CLASS009
DESCRIPTION
Carrying bags, carrying cases and covers and backpacks adapted for deejay equipment namely audio, visual and special effects equipment, and sound reinforcement and recording equipment namely audio tape recorders, amplifiers, public address systems, and digital sound boards for amplifiers; rack equipment, namely audio cords for use with sound amplifiers electronic effects pedals for use with sound amplifiers, signal processors, stands for microphones, microphones; computer bags; guitar effects processors; cases for mp3 players
FILING BASISSection 1(b)
GOODS AND/OR SERVICES SECTION (015)(current)
INTERNATIONAL CLASS015
DESCRIPTION
Accessories for musical instruments, namely guitar picks, guitar straps, musical instrument stands, microphone stands, guitar strings, straplocks, pick holders, capos, guitar effects mounts, guitar tools, guitar maintenance tools, guitar slides; carrying bags, carrying cases and covers for racks and stands for musical instruments and for musical instruments namely, acoustic and electric stringed instruments, brass and woodwind instruments and all percussion instruments namely, drum kits, drum racks, and hand and ethnic percussion; backpacks, iPod cases
FILING BASISSection 1(b)
GOODS AND/OR SERVICES SECTION (015)(proposed)
INTERNATIONAL CLASS015
DESCRIPTION
Accessories for musical instruments, namely guitar picks, guitar straps, musical instrument stands, guitar strings, straplocks and pick holders for use on guitars and other stringed instruments, capos and guitar slides; carrying bags, carrying cases and covers for racks and stands for musical instruments and for musical instruments namely, acoustic and electric stringed instruments, brass and woodwind instruments and all percussion instruments namely, drum kits, drum racks, and hand and ethnic percussion
FILING BASISSection 1(b)
GOODS AND/OR SERVICES SECTION (025)(current)
INTERNATIONAL CLASS025
DESCRIPTION
Men's and women's active apparel, namely t-shirts, tank tops, sweatshirts, sweat suits, sweaters, fleece tops, jackets, coats, polo shirts, baseball jerseys, shorts, hats, suspenders, athletic footwear, bandanas, bathing suits, bathing trunks, bathrobes, beachwear, belts, buckles, berets, blazers, blouses, capes, capris, cardigans, casual socks, boots, bow ties, boxer shorts, bras, briefs, body suits, bomber jackets, camisoles, chemises, chinos, coveralls, cumberbunds, down-filled jackets, dresses, ear muffs, flannel shirts, gloves, golf shirts, gowns, gym shorts, halter tops, headbands, infant wear, jeans leggings, leotards, lingerie, mittens, moccasins, night shirts, rainwear, rugby shirts, ski wear, sleepwear, undergarments, wristbands
FILING BASISSection 1(b)
GOODS AND/OR SERVICES SECTION (025)(proposed)
INTERNATIONAL CLASS025
DESCRIPTION
Men's and women's active apparel, namely t-shirts, tank tops, sweatshirts, sweat suits, sweaters, fleece tops, jackets, coats, polo shirts, baseball jerseys, shorts, hats, suspenders, athletic footwear, bandanas, bathing suits, bathing trunks, bathrobes, beachwear, belts, berets, blazers, blouses, capes, capris, cardigans, casual socks, boots, bow ties, boxer shorts, bras, briefs, body suits, bomber jackets, camisoles, chemises, chinos, coveralls, cumberbunds, down-filled jackets, dresses, ear muffs, flannel shirts, gloves, golf shirts, gowns, gym shorts, halter tops, headbands, jeans leggings, leotards, lingerie, mittens, moccasins, night shirts, rainwear, rugby shirts, ski wear, sleepwear, undergarments, wristbands and infant wear, namely infant sleepers, infant one-piece clothing, and infant bibs
FILING BASISSection 1(b)
GOODS AND/OR SERVICES SECTION (008)(class added)
INTERNATIONAL CLASS008
DESCRIPTION
Hand tools, namely, guitar tools and guitar maintenance tools
FILING BASISSection 1(b)
GOODS AND/OR SERVICES SECTION (026)(class added)
INTERNATIONAL CLASS026
DESCRIPTIONClothing buckles
FILING BASISSection 1(b)
PAYMENT SECTION
NUMBER OF CLASSES2
FEE PER CLASS325
TOTAL FEES DUE650
SIGNATURE SECTION
DECLARATION SIGNATURE /Mary Vidal Hays/
SIGNATORY'S NAME Mary Vidal Hays
SIGNATORY'S POSITION Attorney
DATE SIGNED 02/19/2007
RESPONSE SIGNATURE /Mary Vidal Hays/
SIGNATORY'S NAME Mary Vidal Hays
SIGNATORY'S POSITION Attorney
DATE SIGNED 02/19/2007
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Mon Feb 19 12:24:35 EST 2007
TEAS STAMP USPTO/ROA-XX.X.XXX.X-2007
0219122435722715-78889858
-3606c3370a71044c097cd79d
51c3e309b10-CC-1710-20070
219112714956112


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. 78889858 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

Dear Ms. Eisinger;

     We are in receipt of your Office Action wherein you advise that the Applicant's mark is being refused registration on a basis of likelihood of confusion.  We respectfully disagree and provide you with the following information.

     The Applicant is hereby deleting "racks for loudspeakers and amplifiers" from its description of goods for class 9 which it believes will extinguish any likelihood of confusion argument between the Registrant's marks (Reg. Nos. 3073028 and 3035511) and the Applicant's mark.  We believe that the design marks of the Registrant are easily distinguished from Applicant's word mark TANTRUM based on appearance.  This distinction coupled with  the now clear distinction between the Applicant's goods and the Registrant's goods extinguishes any likelihood of confusion. 

     With regard to cited Reg. No. 2703265, we respectfully disagree that any likelihood of confusion exists between the Registrant's mark, TEMPER TANTRUM, and the Applicant's mark, TANTRUM.  Although the marks both incorporate TANTRUM, the Registrant's mark adds an additional word which distinguishes the marks based on sound and appearance.  We believe it is important that the word TEMPER is not disclaimed from the Registrant's mark.  Accordingly, we do not believe that the marks are confusingly similar.  We also believe there is an important distinction between the goods offered by the Registrant and those offered by the Applicant.  The Registrant's goods are exclusively for women and we suspect are sold in department stores and other stores which target women.  Applicant's apparel will bear the TANTRUM mark to connote the other products sold under that mark by Applicant and will target consumers of those other products.  Applicant's apparel will be sold alongside its other products which are in classes 8, 9, 15 and 26.  It is unlikely that the Applicant's goods will be sold in the same channel of trade as the apparel offered by Registrant.  It is foreseen that Applicant's apparel will be sold in its stores and via its online retail store, not in department stores or boutiques targeting women only.  In light of the distinctions between the marks, the apparel and the channels of trade, we believe no likelihood of confusion exists between the Applicant's mark and that of the Registrant. 



Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 009 for Carrying bags, carrying cases and covers for deejay equipment namely audio, visual and special effects equipment, and sound reinforcement and recording equipment namely audio tape recorders, amplifiers, public address systems, digital sound boards for amplifiers, rack equipment, namely racks for loudspeakers and amplifiers, audio cords for use with sound amplifiers electronic effects pedals for use with sound amplifiers, signal processors, racks for loudspeakers and amplifiers, stands for microphones, microphones; computer bags
Original Filing Basis: 1(b).
Proposed: Class 009 for Carrying bags, carrying cases and covers and backpacks adapted for deejay equipment namely audio, visual and special effects equipment, and sound reinforcement and recording equipment namely audio tape recorders, amplifiers, public address systems, and digital sound boards for amplifiers; rack equipment, namely audio cords for use with sound amplifiers electronic effects pedals for use with sound amplifiers, signal processors, stands for microphones, microphones; computer bags; guitar effects processors; cases for mp3 players
Filing Basis: 1(b).
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 015 for Accessories for musical instruments, namely guitar picks, guitar straps, musical instrument stands, microphone stands, guitar strings, straplocks, pick holders, capos, guitar effects mounts, guitar tools, guitar maintenance tools, guitar slides; carrying bags, carrying cases and covers for racks and stands for musical instruments and for musical instruments namely, acoustic and electric stringed instruments, brass and woodwind instruments and all percussion instruments namely, drum kits, drum racks, and hand and ethnic percussion; backpacks, iPod cases
Original Filing Basis: 1(b).
Proposed: Class 015 for Accessories for musical instruments, namely guitar picks, guitar straps, musical instrument stands, guitar strings, straplocks and pick holders for use on guitars and other stringed instruments, capos and guitar slides; carrying bags, carrying cases and covers for racks and stands for musical instruments and for musical instruments namely, acoustic and electric stringed instruments, brass and woodwind instruments and all percussion instruments namely, drum kits, drum racks, and hand and ethnic percussion
Filing Basis: 1(b).
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 025 for Men's and women's active apparel, namely t-shirts, tank tops, sweatshirts, sweat suits, sweaters, fleece tops, jackets, coats, polo shirts, baseball jerseys, shorts, hats, suspenders, athletic footwear, bandanas, bathing suits, bathing trunks, bathrobes, beachwear, belts, buckles, berets, blazers, blouses, capes, capris, cardigans, casual socks, boots, bow ties, boxer shorts, bras, briefs, body suits, bomber jackets, camisoles, chemises, chinos, coveralls, cumberbunds, down-filled jackets, dresses, ear muffs, flannel shirts, gloves, golf shirts, gowns, gym shorts, halter tops, headbands, infant wear, jeans leggings, leotards, lingerie, mittens, moccasins, night shirts, rainwear, rugby shirts, ski wear, sleepwear, undergarments, wristbands
Original Filing Basis: 1(b).
Proposed: Class 025 for Men's and women's active apparel, namely t-shirts, tank tops, sweatshirts, sweat suits, sweaters, fleece tops, jackets, coats, polo shirts, baseball jerseys, shorts, hats, suspenders, athletic footwear, bandanas, bathing suits, bathing trunks, bathrobes, beachwear, belts, berets, blazers, blouses, capes, capris, cardigans, casual socks, boots, bow ties, boxer shorts, bras, briefs, body suits, bomber jackets, camisoles, chemises, chinos, coveralls, cumberbunds, down-filled jackets, dresses, ear muffs, flannel shirts, gloves, golf shirts, gowns, gym shorts, halter tops, headbands, jeans leggings, leotards, lingerie, mittens, moccasins, night shirts, rainwear, rugby shirts, ski wear, sleepwear, undergarments, wristbands and infant wear, namely infant sleepers, infant one-piece clothing, and infant bibs
Filing Basis: 1(b).
Applicant hereby adds the following class of goods/services to the application:
New:
Class 008 for Hand tools, namely, guitar tools and guitar maintenance tools
Section 1(b), 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)).
Applicant hereby adds the following class of goods/services to the application:
New:
Class 026 for Clothing buckles
Section 1(b), 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)).

Fees
Fee(s) in the amount of $650 is being submitted.


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: /Mary Vidal Hays/      Date: 02/19/2007
Signatory's Name: Mary Vidal Hays
Signatory's Position: Attorney

Response Signature
Signature: /Mary Vidal Hays/     Date: 02/19/2007
Signatory's Name: Mary Vidal Hays
Signatory's Position: Attorney
        
RAM Sale Number: 1710
RAM Accounting Date: 02/20/2007
        
Serial Number: 78889858
Internet Transmission Date: Mon Feb 19 12:24:35 EST 2007
TEAS Stamp: USPTO/ROA-XX.X.XXX.X-2007021912243572271
5-78889858-3606c3370a71044c097cd79d51c3e
309b10-CC-1710-20070219112714956112