Response to Office Action

MUSE

Torpack Limited

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)

Response to Office Action

The table below presents the data as entered.

Input Field	Entered
SERIAL NUMBER	87943274
LAW OFFICE ASSIGNED	LAW OFFICE 104
MARK SECTION
MARK	http://tmng-al.gov.uspto.report/resting2/api/img/87943274/large
LITERAL ELEMENT	MUSE
STANDARD CHARACTERS	YES
USPTO-GENERATED IMAGE	YES
MARK STATEMENT	The mark consists of standard characters, without claim to any particular font style, size or color.
ARGUMENT(S)
THE APPLICATION SHOULD BE SUSPENDED A. Request For Suspension Based On Cited Application The Examining Attorney has potentially refused registration on the grounds that Applicant’s mark is likely to be confused with the pending application for the mark MUSE, Serial No. 79/149,123 in Classes 9 and 11, filed by Muse Concept (“Prior Pending Mark”). The Examining Attorney contends that if the Prior Pending Mark registers, Applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with the registered mark. The Examining Attorney has also refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d) on the grounds that Applicant’s mark is likely to be confused with the mark MUSE, Reg. No. 4,678,804 registered by Amused Inc. for “downloadable software in the nature of a mobile application for accessing, aggregating and interacting with content, images and works of art on the lock screen and idle screen of mobile phones, handheld computers and other mobile computing devices, namely, for uploading and downloading electronic files on the lock screen and idle screen of mobile phones, handheld computers and other mobile computing devices” in Class 9 (“Cited Registration”). Applicant elects to not address any specific arguments relating to a likelihood of confusion between its mark and Application Serial No. 79/149,123 or Reg. No. 4,678,804, at this time. The Prior Pending Mark was published for opposition on March 5, 2019. The 30-day opposition deadline does not close until after March 27, 2019. Applicant requests that its application be suspended until there is a final disposition of Application Serial No. 79/149,123 pursuant to TMEP § 716.02(c). B. Amendment to Identification of Goods Applicant has amended its identification of goods as requested by the Examining Attorney. C. Conclusion Applicant requests that the Examining Attorney suspend its application pending the disposition of the Prior Pending Mark, and accept Applicant’s amended identification of goods.
GOODS AND/OR SERVICES SECTION (current)
INTERNATIONAL CLASS	009
DESCRIPTION
Eyewear; eyewear cases; eyewear cords; audio-visual recordings; cases for holding compact discs, DVDs, and other electronic media; downloadable computer wallpaper and screen saver software; downloadable images in the fields of entertainment and music; electronic game programs; headphones and earphones
FILING BASIS	Section 1(b)
GOODS AND/OR SERVICES SECTION (proposed)
INTERNATIONAL CLASS	009
TRACKED TEXT DESCRIPTION
Eyewear; eyewear cases; eyewear cords; ~~audio-visual recordings~~; audio-visual recordings featuring music; cases for holding compact discs, DVDs, and other electronic media; ~~downloadable computer wallpaper and screen saver software~~; downloadable computer screen saver software; downloadable images in the fields of entertainment and music; electronic game programs; headphones and earphones
FINAL DESCRIPTION
Eyewear; eyewear cases; eyewear cords; audio-visual recordings featuring music; cases for holding compact discs, DVDs, and other electronic media; downloadable computer screen saver software; downloadable images in the fields of entertainment and music; electronic game programs; headphones and earphones
FILING BASIS	Section 1(b)
SIGNATURE SECTION
RESPONSE SIGNATURE	/Jill M. Pietrini/
SIGNATORY'S NAME	Jill M. Pietrini
SIGNATORY'S POSITION	Attorney of Record, CA Bar Member
SIGNATORY'S PHONE NUMBER	310-228-3700
DATE SIGNED	03/25/2019
AUTHORIZED SIGNATORY	YES
FILING INFORMATION SECTION
SUBMIT DATE	Mon Mar 25 14:41:32 EDT 2019
TEAS STAMP	USPTO/ROA-XX.XXX.XXX.XXX- 20190325144132253662-8794 3274-62041141e392d7e6ffb7 ddb29ba8642dea255f637dad6 377b7d34990693e3cdee2-N/A -N/A-20190325142524683374

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. 87943274 MUSE(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/87943274/large) has been amended as follows:

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

THE APPLICATION SHOULD BE SUSPENDED

A. Request For Suspension Based On Cited Application

The Examining Attorney has potentially refused registration on the grounds that Applicant’s mark is likely to be confused with the pending application for the mark MUSE, Serial No. 79/149,123 in Classes 9 and 11, filed by Muse Concept (“Prior Pending Mark”). The Examining Attorney contends that if the Prior Pending Mark registers, Applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with the registered mark.

The Examining Attorney has also refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d) on the grounds that Applicant’s mark is likely to be confused with the mark MUSE, Reg. No. 4,678,804 registered by Amused Inc. for “downloadable software in the nature of a mobile application for accessing, aggregating and interacting with content, images and works of art on the lock screen and idle screen of mobile phones, handheld computers and other mobile computing devices, namely, for uploading and downloading electronic files on the lock screen and idle screen of mobile phones, handheld computers and other mobile computing devices” in Class 9 (“Cited Registration”).

Applicant elects to not address any specific arguments relating to a likelihood of confusion between its mark and Application Serial No. 79/149,123 or Reg. No. 4,678,804, at this time. The Prior Pending Mark was published for opposition on March 5, 2019. The 30-day opposition deadline does not close until after March 27, 2019.

Applicant requests that its application be suspended until there is a final disposition of Application Serial No. 79/149,123 pursuant to TMEP § 716.02(c).

B. Amendment to Identification of Goods

Applicant has amended its identification of goods as requested by the Examining Attorney.

C. Conclusion

Applicant requests that the Examining Attorney suspend its application pending the disposition of the Prior Pending Mark, and accept Applicant’s amended identification of goods.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Eyewear; eyewear cases; eyewear cords; audio-visual recordings; cases for holding compact discs, DVDs, and other electronic media; downloadable computer wallpaper and screen saver software; downloadable images in the fields of entertainment and music; electronic game programs; headphones and earphones
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Proposed:
Tracked Text Description: Eyewear; eyewear cases; eyewear cords; ~~audio-visual recordings~~; audio-visual recordings featuring music; cases for holding compact discs, DVDs, and other electronic media; ~~downloadable computer wallpaper and screen saver software~~; downloadable computer screen saver software; downloadable images in the fields of entertainment and music; electronic game programs; headphones and earphonesClass 009 for Eyewear; eyewear cases; eyewear cords; audio-visual recordings featuring music; cases for holding compact discs, DVDs, and other electronic media; downloadable computer screen saver software; downloadable images in the fields of entertainment and music; electronic game programs; headphones and earphones
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

SIGNATURE(S)
Response Signature
Signature: /Jill M. Pietrini/ Date: 03/25/2019
Signatory's Name: Jill M. Pietrini
Signatory's Position: Attorney of Record, CA Bar Member

Signatory's Phone Number: 310-228-3700

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: 87943274
Internet Transmission Date: Mon Mar 25 14:41:32 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201903251441322
53662-87943274-62041141e392d7e6ffb7ddb29
ba8642dea255f637dad6377b7d34990693e3cdee
2-N/A-N/A-20190325142524683374