To: | MUSIC Group IP Ltd. (RussT.docketing@SeedIP.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87262808 - OBERHEIM - 790106.204 |
Sent: | 10/11/2017 6:16:26 PM |
Sent As: | ECOM111@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87262808
MARK: OBERHEIM
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: MUSIC Group IP Ltd.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 10/11/2017
This Office action is in response to applicant’s communication filed on September 19, 2019. The amended identification and amended entity type are acceptable and are entered into the record. The consent requirement and corrected signature requirement are withdrawn. The Section 2(e)(4) surname refusal is continued.
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising these issues.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Section 2(a) Refusal – False Connection
• NEW ISSUE: Section 2(c) Refusal – Lack of Consent
SECTION 2(a) REFUSAL – FALSE CONNECTION
Registration is refused because the applied-for mark consists of matter which may falsely suggest a connection with Tom Oberheim. Although Tom Oberheim is not connected with the goods provided by applicant under the applied-for mark, Tom Oberheim is so famous that consumers would presume a connection. Trademark Act Section 2(a), 15 U.S.C. §1052(a); see TMEP §1203.03, (c). See generally Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Cotter & Co., 228 USPQ 202 (TTAB 1985); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985).
(1) The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution.
(2) The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution.
(3) The person or institution identified in the mark is not connected with the goods sold by applicant under the mark.
(4) The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods.
In re Pedersen, 109 USPQ2d at 1188-89; In re Jackson Int’l Trading Co., 103 USPQ2d 1417, 1419 (TTAB 2012); TMEP §1203.03(c)(i); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983) (providing foundational principles for the current four-part test used to determine the existence of a false connection).
In accordance with the above list:
1) The wording “OBERHEIM” is identical to the surname of synthesizer pioneer Tom Oberheim. See Wikipedia evidence attached to the March 20, 2017 Office action.
2) Attached evidence from Merriam-Webster’s Dictionary and the Colubmia Gazetter shows that “OBERHEIM” does not appear in a dictionary or gazetteer; thus, this term appears to have no recognized meaning or significance other than as a surname. Of the 223 results for “OBERHEIM” in the Lexis surname database, Tom Oberheim is the only “OBERHEIM” with public notoriety, especially in the area of applicant’s identified goods.
3) Applicant stated in the September 19, 2017 response that “OBERHEIM is not the name of anyone connected with Applicant,” thus Tom Oberheim is not connected to applicant’s goods.
4) Tom Oberheim is sufficiently famous as the creator of a line of iconic synthesizers that a connection to Tom Oberheim would be presumed when “OBERHEIM” is used on the synthesizer and musical instrument goods identified in the application.
Evidence from Wikipedia attached to the March 20, 2017 Office action shows that Tom Oberheim “is an audio engineer and electronics engineer best known for designing effects processors, analog synthesizers, sequencers, and drum machines.” Additional attached evidence from Wikipedia shows that in 1969 Tom Oberheim founded Oberheim Electronics, “a manufacturer of audio synthesizers and a variety of other electronic musical instruments.” These goods are identical to those identified by applicant. Additional attached evidence from NAMM – the National Association of Music Merchants – shows Tom Oberheim’s recognition in the synthesizer realm, as well as his enduring association with the equipment by describing him as “the inventor of the first polyphonic music synthesizer, who played a vital role in the establishment of MIDI standards back in the early 1980s. The Oberheim Company created a long list of innovative products, which remain sought-after as vintage instruments” {emphasis added}.
Here, Tom Oberheim has been manufacturing synthesizers and other electronic musical instruments identical to applicant’s goods since 1969. Attached evidence from Red Bull Music Academy shows an lecture from Tom Oberheim where Mr. Oberheim is recognized for shaping popular music with his ubiquitous “OBERHEIM”-branded synthesizers: “Tom Oberheim went on to shape the development of music equipment – and the sound of popular music – like very few other people. Actually, for a time in the ’80s it seemed like it was just about impossible to have a hit without an Oberheim DMX or OB–Xa, as anyone from Run DMC to Van Halen relied heavily on those machines” {emphasis added}. Additional attached evidence from Vintage Synth Explorer shows the lasting association of Tom Oberheim’s name with synthesizer equipment in describing the Oberheim OB-Xa synthesizer as “a massive analog synthesizer with a very familiar and classic Oberheim sound.”
Thus, the application is refused registration under Section 2(a) of the Trademark Act because the mark “OBERHEIM” used in connection with applicant’s goods creates a false association with Tom Oberheim.
SECTION 2(c) REFUSAL – LACK OF CONSENT
Registration is refused because the applied-for mark consists of or comprises a name identifying a particular living individual whose written consent to register the mark is not of record. Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §1206; see In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1649-50 (TTAB 2015); In re Hoefflin, 97 USPQ2d 1174, 1175-76 (TTAB 2010).
Here, Tom Oberheim has been manufacturing popular synthesizers since 1969.
In the September 19, 2019 response, applicant argued that consent should not be required since the mark did not include a first name or initials.
The refusal under Section 2(c) will be withdrawn if applicant provides both of the following:
(1) A statement that the name shown in the mark identifies Tom Oberheim, a living individual whose consent is of record.
(2) A written consent, personally signed by the individual whose name appears in the mark, authorizing applicant to register the identifying matter as a trademark with the USPTO; for example, an applicant may use, if applicable, the following: “I, Tom Oberheim, consent to the use and registration of my name as a trademark with the USPTO.”
See TMEP §§813, 813.01(a), 1206.04(a).
Applicant is advised that the written consent must include a statement of the party’s consent to applicant’s registration, and not just the use, of the identifying matter as a trademark. See Krause v. Krause Publ’ns, Inc., 76 USPQ2d 1904, 1912-13 (TTAB 2005); In re New John Nissen Mannequins, 227 USPQ 569, 571 (TTAB 1985); TMEP §1206.04(a).
ASSISTANCE
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusals and/or requirements in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
Applicant has already responded to the issues raised in the previous March 20, 2017 Office action, and applicant must respond to all new issues raised in this Office action within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
J. Ian Dible
/J. Ian Dible/
Examining Attorney
Law Office 111
(571) 272-0209
ian.dible@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.