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. 88000692 PORSCHE TAYCAN. SOUL, ELECTRIFIED.(Standard Characters, see http://uspto.report/TM/88000692/mark.png) has been amended as follows:

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

This responds to the Office Action dated May 6, 2020, in which the Examining Attorney refused registration of the above mark because he believes that the mark, as used on the specimen of record, does not function as a service mark to identify and distinguish Applicant's services from those of others and to indicate the source of Applicant's services. Applicant respectfully requests that the Examining Attorney reconsider and withdraw his refusal of registration because as shown below, Applicant's mark does function as a service mark to identify and distinguish Applicant's services from those of others and to indicate the source of Applicant's services. As shown in the record, Applicant submitted its Statement of Use on April 7, 2020. Accompanying the Statement of Use was an advertisement that Applicant ran in DuPont Registry, a well-known publication that specializes in luxury automobiles, real estate and yachts. At the top left corner of the advertisement appears the following sentence: "From the people who brought you your dream car: your next one." Below this sentence appears a second sentence namely, "Experience true electrified performance." Both sentences provide descriptive information to the reader about Applicant and its vehicles. In addition, the sentences appear in standard sentence format with only the first word of the sentence being capitalized and a period appearing at the end of each sentence. Therefore, when the reader sees the sentences, they immediately understand that Applicant is offering a new vehicle and that the vehicle is electric. Appearing below the second sentence is the arbitrary slogan, "Porsche Taycan. Soul, Electrified." Unlike the prior sentences, the slogan does not convey any descriptive information about Applicant or its products. In addition, the first letter of each word in the slogan is capitalized. A photo of a sports car appears below the arbitrary slogan and below the sports car appear the names and addresses of eleven authorized and licensed Porsche dealers who operate retail shops where viewers of the advertisement may purchase a sports car. The Examining Attorney objected to the advertisement because he believes that "the applied for mark appears in standard, non-descript, font and is similarly positioned to other non-trademark wording such as, 'Experience true electrified performance.'" However, no provision of the Lanham Act requires a mark to be used in all capital letters, or in a font that differs from its surrounding text. Applicant's mark appears on a separate line from the descriptive sentences included in the advertisement. In addition, the first letter of each word of the mark is capitalized. Further, the mark is arbitrary whereas the sentences above the mark convey descriptive information about Applicant and its vehicles. Therefore, the mark immediately conveys to the viewer that it is a service mark being used to identify and distinguish Applicant's services from those of others and to indicate the source of Applicant's services. Applicant recognizes that the determination of whether a designation functions as a mark depends upon the commercial impression by the relevant public. However, the fact that the text of the advertisement and the service mark appear in the same font is not sufficient to conclude that potential purchasers do not recognize the mark as a service mark. Applicant is the owner of multiple other registrations covering retail store services featuring automobiles and the US Trademark Office has always accepted substantially similar advertisements as evidence of use for the marks, including for the following marks: 1. Reg. No. 3,647,970 for FOUR, UNCOMPROMISED. 2. Reg. No. 4,052,827 for ENGINEERED FOR MAGIC. EVERY DAY. 3. Reg. No. 2,123,126 for PORSCHE. THERE IS NO SUBSTITUTE. With regard to Reg. No. 3,647,970, Applicant submitted the attached Exhibit A as its evidence of use when filing its most recent Combined Declaration of Use and Application for Renewal. The Examining Attorney will note that "Four, Uncompromised." appears on the second line next to the non-trademark wording "Learn More." and below "The Panamera." "Four, Uncompromised." appears in standard, non-descript, font and is similarly positioned next to other non-trademark wording. However, notwithstanding the foregoing, the US Trademark Office found that the mark functioned as a service mark and issued the Notice of Acceptance and Notice of Renewal. With regard to Reg. No. 4,052,827, Applicant submitted the attached Exhibit B as its evidence of use when filing its Declaration of Use. The Examining Attorney will note that "Engineered for Magic. Every Day." appears below "Porsche @Porsche ? now" in standard, non-descript, font. In addition, the mark is similarly positioned above the following non-trademark wording: "The Porsche 911. Adrenaline on Four Wheels. Or Two." "Contact Your Local Authorized Porsche Dealer." However, notwithstanding the foregoing, the US Trademark Office found that the mark functioned as a service mark and issued the Notice of Acceptance of Declaration of Use. With regard to Reg. No. 2,123,126, Applicant submitted the attached Exhibit C as its evidence of use when filing its most recent Combined Declaration of Use and Application for Renewal. The Examining Attorney will note that "Porsche. There Is No Substitute." appears in standard, non-descript, font on the same line and immediately after the non-trademark wording: "Now available at your authorized Porsche dealer." In addition, the mark appears on the line below "0-60 just got 30 horsepower faster." and above the statement "Porsche Tequipment 911 Powerkit." However, notwithstanding the foregoing, the US Trademark Office found that the mark functioned as a service mark and issued the Notice of Acceptance and Notice of Renewal. Applicant submits that its use of "Porsche Taycan. Soul, Electrified." in the advertisement accompanying the Statement of Use is no different than the manner in which "Four, Uncompromised.", "Engineered for Magic. Every Day.", and "Porsche. There Is No Substitute." were used in the advertisements submitted in connection with Reg. Nos. 3,647,970, 4,052,827, or 2,123,126. Therefore, Applicant respectfully requests that the Examining Attorney reconsider and withdraw his refusal of registration and approve the above application for registration.

EVIDENCE
Evidence has been attached: Exhibit A is a copy of the specimen submitted in connection with Reg. No. 3,647,970 Exhibit B is a copy of the specimen submitted in connection with Reg. No. 4,052,827 Exhibit C is a copy of the specimen submitted in connection with Reg. No. 2,123,126.
Original PDF file:
evi_260330161ba00b87a89e8 eb83fcb1-2020072315384621 5589_._2020.07.22_-_Exhib it_A_-_Ad_for_FOUR__UNCOM PROMISED._.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3
Original PDF file:
evi_260330161ba00b87a89e8 eb83fcb1-2020072315384621 5589_._20.07.22_-_Exhibit _B_-_Ad_-_ENGINEERED_FOR_ MAGIC._EVERY_DAY..pdf
Converted PDF file(s) ( 1 page) Evidence-1
Original PDF file:
evi_260330161ba00b87a89e8 eb83fcb1-2020072315384621 5589_._.07.22_-_Exhibit_C _-_Ad_for_PORSCHE._THERE_ IS_NO_SUBSTITUTE..pdf
Converted PDF file(s) ( 1 page) Evidence-1

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 6019549.

Correspondence Information (current):
      Jana L. France
      PRIMARY EMAIL FOR CORRESPONDENCE: docketing@fisherbroyles.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jana.france@fisherbroyles.com

The docket/reference number is 1233.T192US.
Correspondence Information (proposed):
      Jana L. France
      PRIMARY EMAIL FOR CORRESPONDENCE: docketing@fisherbroyles.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jana.france@fisherbroyles.com

The docket/reference number is 1233.T192US.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Jana L. France/     Date: 07/23/2020
Signatory's Name: Jana L. France
Signatory's Position: Attorney of Record, Member MN Bar

Signatory's Phone Number: 763.208.9847

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Jana L. France
   FISHERBROYLES, LLP
   
   4505 JEWEL LN N
   PLYMOUTH, Minnesota 55446
Mailing Address:    Jana L. France
   FISHERBROYLES, LLP
   4505 JEWEL LN N
   PLYMOUTH, Minnesota 55446
        
Serial Number: 88000692
Internet Transmission Date: Thu Jul 23 15:55:25 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:X:XXXX:XXXX:XXX
X:XXXX-20200723155525016622-88000692-740
6c8ebcc065111ec37ef20dd51d6d1e68c2f02df0
54bf45ea3c5ebfab8c35-N/A-N/A-20200723153
846215589