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. 87911358 BOSE(Standard Characters, see http://uspto.report/TM/87911358/mark.png) has been amended as follows:

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

TMEP section 1212.09(a) provides that "an intent-to-use applicant who has used the mark on related goods or services may file a claim of acquired distinctiveness under §2(f) before filing an allegation of use, if the applicant can establish that, as a result of the applicant’s use of the mark on other goods or services, the mark has become distinctive of the goods or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and services in the intent-to-use application when use in commerce begins." [citation omitted]

 

The Trademark Trial and Appeal Board set forth the showing that must be made in order for an intent-to-use applicant to claim acquired distinctiveness in the case of In re Rogers:

"The required showing is essentially twofold. First, applicant must establish, through the appropriate submission, the acquired distinctiveness of the same mark in connection with specified other goods and/or services in connection with which the mark is in use in commerce. All of the rules and legal precedent pertaining to such a showing in a use-based application are equally applicable in this context . . . . Second, applicant must establish, through submission of relevant evidence rather than mere conjecture, a sufficient relationship between the goods or services in connection with which the mark has acquired distinctiveness and the goods or services recited in the intent-to-use application to warrant the conclusion that the previously created distinctiveness will transfer to the goods or services in the application upon use."  In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999) .

The BOSE trademark has been in use for more than 50 years in connection with loudspeakers, as evidenced by U.S. Registration No. 991,271, and for more than 17 years in connection with headphones.  See Exhibits A (printout of Applicant’s web site) and B (copy of TSDR printouts for Reg. Nos. 991,271 and 3,863,254).  It is one of the best known audio brands in the United States and throughout the world.  Bose is a sponsor of the National Football League (see Exhibit C, printout of  http://www.bose.com/en_us/better_with_bose/nfl.html  ), and its advertisements are seen by millions of viewers of NFL games every week.  The BOSE trademark is visible on the headsets that the coaches wear on the sidelines.  Bose is also a sponsor of the U.S. Ski and Snowboard Team.  See Exhibit D, printout of http://www.bose.com/en_us/better_with_bose/USSA.html .

Through extensive use and advertising, Bose has become one of the best known brands in the consumer audio industry.  See Exhibits E (printout of Wikipedia entry for Bose Corporation) and F (articles mentioning the well-known status of the BOSE brand). 

There is little question that the BOSE mark has acquired distinctiveness with respect to loudspeakers and headphones.  Therefore, the only other showing that must be made is that there is a sufficient relationship between loudspeakers and headphones and the goods claimed in this application, namely, “Cases for eyeglasses and sunglasses; Eyeglass frames; Eyewear; Sunglasses.”  The goods that Bose intends to sell are sunglasses and frames that have loudspeakers built in so that the wearer can hear personal audio without covering his or her ears with headphones.  In fact, Bose recently demonstrated such a product at the South by Southwest festival in Austin, Texas earlier this year.  (See Exhibit G, printout of CNET article about Bose augmented reality glasses, http://www.cnet.com/news/bose-yes-that-bose-will-develop-augmented-reality-glasses/ .)  Accordingly, the goods claimed in the Application are unquestionably related to the products that Bose is already selling.  Further, even if the goods were not as closely related, when a mark is as famous as the BOSE mark is, it increases the likelihood that customers who come into contact with the same mark in connection with different goods will believe that they emanate from the same source.  Finally, it bears mentioning that Bose has expanded into areas outside consumer audio, so customers who know about the company will be likely to believe that Bose may be involved in producing goods outside the consumer audio area.  For example, Bose has produced vibration-reducing seats for big rig trucks and educational kits for children.  (See Exhibits E and Exhibit H, printout of BOSEBUILD web site.)

For all of the reasons discussed herein, Bose submits that it has met its burden to establish a claim of acquired distinctiveness pursuant to Section 2(f), and requests that the Examining Attorney approve the Application for publication.

EVIDENCE
Evidence in the nature of Exhibit A - Printout of Applicant's web site Exhibit B - Printout of TSDR status pages of Applicant's U.S. Trademark Registrations Exhibit C - Printout of Applicant's web site re: NFL Sponsorship Exhibit D - Printout of Applicant's web site re U.S. Ski & Snowboard Team Sponsorship Exhibit E - Printout of Wikipedia page regarding the Applicant Exhibit F - Articles discussing well-known nature of the BOSE brand Exhibit G - CNET article re the Applicant's introduction of augmented reality glasses Exhibit H - Printout of the Applicant's BOSEbuild.com web site has been attached.
Original PDF file:
evi_13968812-20180827134929877204_._Office_Action_Response_-_BOSE_cl._10_-_Exhibit_A.pdf
Converted PDF file(s) ( 11 pages)
Evidence-1
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Original PDF file:
evi_13968812-20180827134929877204_._Office_Action_Response_-_BOSE_cl._10_-_Exhibit_B_pt_1.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_13968812-20180827134929877204_._Office_Action_Response_-_BOSE_cl._10_-_Exhibit_B_pt_2.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_13968812-20180827134929877204_._Office_Action_Response_-_BOSE_cl._10_-_Exhibit_C.pdf
Converted PDF file(s) ( 20 pages)
Evidence-1
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Original PDF file:
evi_13968812-20180827134929877204_._Office_Action_Response_-_BOSE_cl._10_-_Exhibit_D.pdf
Converted PDF file(s) ( 7 pages)
Evidence-1
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Original PDF file:
evi_13968812-20180827134929877204_._Office_Action_Response_-_BOSE_cl._10_-_Exhibit_E.pdf
Converted PDF file(s) ( 13 pages)
Evidence-1
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Original PDF file:
evi_13968812-20180827134929877204_._Office_Action_Response_-_BOSE_cl._10_-_Exhibit_F_pt_1.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
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Original PDF file:
evi_13968812-20180827134929877204_._Office_Action_Response_-_BOSE_cl._10_-_Exhibit_F_pt_2.pdf
Converted PDF file(s) ( 6 pages)
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Original PDF file:
evi_13968812-20180827134929877204_._Office_Action_Response_-_BOSE_cl._10_-_Exhibit_F_pt_3.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
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Original PDF file:
evi_13968812-20180827134929877204_._Response_to_Office_Action_-_BOSE_eyewear_Ex_G.pdf
Converted PDF file(s) ( 5 pages)
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Original PDF file:
evi_1-13968812-20180827134929877204_._Office_Action_Response_-_BOSE_cl._10_-_Exhibit_H.pdf
Converted PDF file(s) ( 5 pages)
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ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, BASED ON EVIDENCE
The mark has become distinctive of the goods/services, as demonstrated by the attached evidence.

Original PDF file:
e2f-13968812-134929877_._Office_Action_Response_-_BOSE_cl._10_-_Exhibit_C.pdf
Converted PDF file(s) ( 20 pages)
2(f) evidence-1
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Original PDF file:
e2f-13968812-134929877_._Office_Action_Response_-_BOSE_cl._10_-_Exhibit_D.pdf
Converted PDF file(s) ( 7 pages)
2(f) evidence-1
2(f) evidence-2
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Original PDF file:
e2f-13968812-134929877_._Office_Action_Response_-_BOSE_cl._10_-_Exhibit_E.pdf
Converted PDF file(s) ( 13 pages)
2(f) evidence-1
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Original PDF file:
e2f-13968812-134929877_._Office_Action_Response_-_BOSE_cl._10_-_Exhibit_F_pt_1.pdf
Converted PDF file(s) ( 2 pages)
2(f) evidence-1
2(f) evidence-2
Original PDF file:
e2f-13968812-134929877_._Office_Action_Response_-_BOSE_cl._10_-_Exhibit_F_pt_2.pdf
Converted PDF file(s) ( 6 pages)
2(f) evidence-1
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Original PDF file:
e2f-13968812-134929877_._Office_Action_Response_-_BOSE_cl._10_-_Exhibit_F_pt_3.pdf
Converted PDF file(s) ( 3 pages)
2(f) evidence-1
2(f) evidence-2
2(f) evidence-3

SECTION 2(f) Claim of Acquired Distinctiveness, based on Active Prior Registration(s)
The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 991271, 3863254 and others


SIGNATURE(S)
Response Signature
Signature: /Michelle Brownlee/     Date: 08/27/2018
Signatory's Name: Michelle Brownlee
Signatory's Position: Trademark Counsel

Signatory's Phone Number: 508-766-6276

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 87911358
Internet Transmission Date: Mon Aug 27 14:12:45 EDT 2018
TEAS Stamp: USPTO/ROA-XXX.XX.XX.X-201808271412453909
30-87911358-610887b5b96abcd238cec385c2e8
da12b62c4b0836f2e58d621d275499497188-N/A
-N/A-20180827134929877204