Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87696245 NUMI(Standard Characters, see http://uspto.report/TM/87696245/mark.png) has been amended as follows:

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

My mark, Numi, does not have likelihood of confusion with N.U.M.I. N.U.M.I is an acronym that stands for ?NEVER UNDERESTIMATE MY INTELLIGENCE? that was registered on 1/24/2017 by a man in his 40s who claims to use the name across a broad spectrum including CPR, other businesses, and live musical performances (according to what I have gained from speaking with him directly, and doing some research on the Internet). However, the only thing he has trademarked N.U.M.I for is ?entertainment services in the nature of live musical performances?. It is clear that there is not a focus for the use of this name, as he intends to use it for numerous purposes ? many of which have not been legally verified or are related to his trademark application. Even if he has happened to perform live and we both have the same name, his market, target audience, and product is completely different from mine. There are also no results that show up when I search for ?Numi rapper? except for a rapper based in Europe. The letter I received states that there is confusion because ?artists providing live musical performances often also provide musical recordings?. However, the owner of the N.U.M.I trademark only registered for ?entertainment services in the nature of live musical performances? in Class 41, and serious live performances (especially those intended to make profit) generally occur AFTER an artist has recorded and published their sound recordings. This can be seen with thousands of established underground artists and even major artists like Beyonce and Rihanna. Artists release singles, projects, and albums to get fans excited for their live performances and tours. Without focusing on the music and making sure it is distributed, it is likely that your name will not grow as much. If he intends to be a serious artist and reach similar people as me, he would have focused on the importance of sound recordings and filed for that first. Without quality sound recordings distributed on the Internet, an artist will most likely be performing locally because in order to have a successful turn out for a show elsewhere, people need to be familiar with your name and music already. If you do not distribute your recordings then you cannot reach them. The logic here is flawed. If it were true that our trademarks have a likelihood of confusion just because ?artists providing live musical performances often also provide musical recordings?, then there would be no point for anyone to file under International Class 9 for sound recordings and other products after filing for ?entertainment services in the nature of live performances? in International Class 41. The letter is making the claim that N.U.M.I?s single trademark is enough to cover all areas including sound and video recordings, which is false and defeats the whole purpose of trademarking different products in different classes. Thus, since the owner does not have his mark trademarked for sound recordings or anything of the sort, he does not have precedence over sound recordings, and might not perform major musical works in live environments (or have a large supporting audience that will financially support his services, due to him not prioritizing sound recordings). Every serious artist or performer knows that quality sound recordings are severely important. We are in two different sectors. I am a young R&B and pop singer-songwriter with a product that is different in nature; my target audience is a lot younger as well. The types of people supporting my products and his services will not confuse us with each other. Considering how there are other Numi products dominating search engines (e.g. Numi tea, Numi toilets), people will have to be specific when searching for a particular Numi. No one is going to search for an older rapper's show from Texas and expect to find sound and video recordings of a young woman singing R&B and pop. One will not search for ?Numi female R&B singer? and expect to find entertainment services of a man with a new rap career. Our motives are undoubtedly different from each other. To conclude, we are in two different sectors, with my intentions of using the mark being very clear. The owner of the N.U.M.I trademark supposedly has several different goals outside of entertainment related to the name, but has only trademarked for entertainment services for live performances. His trademark stresses nothing about actual recordings, and stating that ?artists providing live musical performances often also provide musical recordings? is an assumption that should be reversed. If this argument still does not suffice, I would like to keep this application live so that I can file to claim the ?Numi? trademark under Class 41 for ?entertainment services in the nature of live musical performances?, as I know that I have precedence over the name. I have been using it my whole life. Finally, the attached ?Internet evidence? (Bruno Mars, Chris Stapleton, Dua Lipa, John Mayer, Kane Brown, Kendrick Lamar, and Shawn Mendes) provided does not use the mark NUMI in any way, shape, or form.

EVIDENCE
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CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Audio and video recordings featuring music and artistic performances; musical sound recordings; audio tapes, audio and compact discs, CD-ROMs, video tapes, video discs, DVDs, MP3s all featuring music; downloadable music and music files via a global computer network and wireless devices; video recordings featuring music, modeling, and fashion
Original Filing Basis:
Proposed:
Tracked Text Description: Audio and video recordings featuring music and artistic performances; musical sound recordings; audio tapes, audio and compact discs, CD-ROMs, video tapes, video discs, DVDs, MP3s all featuring music; audio tapes, audio and compact discs, multimedia software recorded on CD-ROMs, video tapes, video discs, DVDs, downloadable MP3 files and MP3 recordings all featuring music; downloadable music and music files via a global computer network and wireless devices; downloadable music sound recordings and music files via a global computer network and wireless devices; video recordings featuring music, modeling, and fashionClass 009 for Audio and video recordings featuring music and artistic performances; musical sound recordings; audio tapes, audio and compact discs, multimedia software recorded on CD-ROMs, video tapes, video discs, DVDs, downloadable MP3 files and MP3 recordings all featuring music; downloadable music sound recordings and music files via a global computer network and wireless devices; video recordings featuring music, modeling, and fashion
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. The mark was first used at least as early as 04/10/2005 and first used in commerce at least as early as 02/28/2015 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 009 . The specimen(s) submitted consists of Where and how consumers expect to see the trademark: "Numi" mark in iTunes store, Apple Music, Spotify; the mark used in Youtube titles, on-screen, and in descriptions. Screenshots of older music distributions using the mark that have recently been taken down for branding purposes (e.g. "Abstract Love" and "Rounds" released in commerce before filing date of application). Specimens showing "Hit Me Up" and Spotify are solely examples of the mark seen on real profile - as some of the older music that was removed from the stores are no longer displayed. .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1
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Specimen File9

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Naomi Campbell, AKA Numi, a citizen of United States, having an address of
      
      6223 Joaquin Murieta Ave Unit B6223 Joaquin Murieta Ave Unit B
      Newark, California 94560
      United States

      XXXX (authorized)
      408-854-0864
Proposed: Campbell, Naomi, a citizen of United States, having an address of
      6223 Joaquin Murieta Ave Unit B
      6223 Joaquin Murieta Ave Unit B
      Newark, California 94560
      United States
      XXXX (authorized)
      408-854-0864

ADDITIONAL STATEMENTS
Translation
The English translation of Numi in the mark is Numi.


SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /naomi campbell/      Date: 05/28/2018
Signatory's Name: Naomi Campbell
Signatory's Position: Owner

Response Signature
Signature: /naomi campbell/     Date: 05/28/2018
Signatory's Name: Naomi Campbell
Signatory's Position: Owner

The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either: (1) the owner/holder ; or (2) a person(s) with legal authority to bind the owner/holder; and if an authorized U.S. attorney or Canadian attorney/agent previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of his/her prior representative to withdraw.

        
Serial Number: 87696245
Internet Transmission Date: Mon May 28 19:22:20 EDT 2018
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20180528192220
401667-87696245-610f029ca4e9cd4eaa5c56b2
5260bd6fc6fe6ec660f48d5641af765dbedee1c8
0-N/A-N/A-20180528170749842191