UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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

 

 

INTRODUCTION

 

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  The consent requirement and corrected signature requirement are withdrawn.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.

 

This Office action is supplemental to and supersedes the previous Office action issued on March 20, 2017 in connection with this application.  The assigned trademark examining attorney inadvertently omitted a refusal of registration relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, a Section 2(a) False Connection refusal is necessary due to the connection of Tom Oberheim with the identified goods, and a Section 2(c) Lack of Consent refusal is necessary due to the lack of consent from Tom Oberheim.

 

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).

 

Under Trademark Act Section 2(a), the registration of a mark that “consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols” is prohibited.  In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013).  To establish that an applied-for mark falsely suggests a connection with a person or an institution, the following is required:

 

(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}.

 

If applicant’s goods are of a type that the named person or institution sells or uses, and the named party is sufficiently famous, then it may be inferred that purchasers of the goods would be misled into making a false connection of sponsorship, approval, support or the like with the named party.  See, e.g., In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1647-48 (TTAB 2015) (holding ROYAL KATE used with applicant’s consumer products, including fashion products, suggested a connection with Kate Middleton would be inferred because evidence showed that Kate Middleton, by virtue of being the wife of Prince William of the British Royal family, has become a celebrity and fashion trend-setter the media reports on, including the clothes she wears, what she does, and what she buys); In re Cotter & Co., 228 USPQ 202, 204-05 (TTAB 1985) (holding WESTPOINT used with applicant’s firearms suggested sponsorship, approval, support or the like from West Point because evidence showed that West Point is a well-known U.S. Military Academy).

 

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).

 

For purposes of Section 2(c), a name in a mark identifies a particular living individual if the person bearing the name will be associated with the mark as used on the goods because:  “(1) the person is so well known that the public would reasonably assume a connection between the person and the goods; or (2) the individual is publicly connected with the business in which the mark is used.”  In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1650 (TTAB 2015); see In re Hoefflin, 97 USPQ2d 1174, 1175-76 (TTAB 2010); Krause v. Krause Publ’ns, Inc., 76 USPQ2d 1904, 1909-10 (TTAB 2005).

 

A determination that a person is publicly connected with the business in which the mark is being used may be based on evidence that the named individual is well known in the relevant field of goods, is associated in some manner with the applicant (e.g., the named individual is a corporate officer or partner of the applicant), and/or is actually connected to the goods at issue (e.g., the named individual invented the identified goods in the application), and, as a result, the relevant public will recognize or perceive the name as identifying that particular individual.  See Krause v. Krause Publ’ns Inc., 76 USPQ2d 1904, 1909-10 (TTAB 2005); In re Sauer, 27 USPQ2d 1073, 1075 (TTAB 1993); TMEP §1206.02. 

 

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.

 

Section 2(c) applies not only to the full name of an individual, but also to any first name, surname, shortened name, pseudonym, stage name, title, or nickname that identifies a particular living individual.  In re Hoefflin, 97 USPQ2d 1174, 1177-78 (TTAB 2010) (holding registration of the marks OBAMA PAJAMA, OBAMA BAHAMA PAJAMAS, and BARACK’S JOCKS DRESS TO THE LEFT barred under Section 2(c) in the absence of consent to register, because the marks create a direct association with President Barack Obama). 

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 10/11/2017 FOR U.S. APPLICATION SERIAL NO. 87262808

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 10/11/2017 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.