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 |
88237049 |
LAW OFFICE ASSIGNED |
LAW OFFICE 119 |
MARK SECTION |
MARK |
http://uspto.report/TM/88237049/mark.png |
LITERAL ELEMENT |
DR. ROBERT |
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) |
In the Office Action mailed March 15, 2019, the Examining Attorney did not raise any substantive objections. However, the
Examining Attorney inquired whether DR. ROBERT is a living individual. Applicant submits that DR. ROBERT is not a living individual.
Accordingly, no consent is required.
The Examining Attorney also inquired as to the status of Applicant’s foreign registration. Applicant submits hereto a copy of the foreign registration and an
English translation. Applicant submits this perfects the Section 44(e) basis. Further, Applicant has deleted the intent to use basis
and wishes to rely solely on its foreign registration.
Finally, the Examining Attorney requested amendments to the goods in Class 9. Applicant has made of record the amendments proposed by the Examining
Attorney.
Applicant notes that a search of the U.S. Patent and Trademark Office’s records did not reveal any pending or registered marks that would bar registration under
Section 2(d) of the Trademark Act.
Applicant submits that it has responded to all issues raised in the Office Action. If the Examining Attorney has any questions,
the Examining Attorney is encouraged to contract the undersigned.
|
GOODS AND/OR SERVICES SECTION (009)(current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Musical instruments amplifiers, electrical amplifiers for use with musical instruments, audio amplifiers, volume control pedals for use
with sound amplifiers, electronic effect pedals for use with sound amplifiers, sound effects pedals for musical instruments |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
3727155 |
FOREIGN APPLICATION COUNTRY |
Spain |
FOREIGN FILING DATE |
07/06/2018 |
GOODS AND/OR SERVICES SECTION (009)(proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
Musical instruments amplifiers, electrical amplifiers for use with musical instruments, audio
amplifiers, volume control pedals for use with sound amplifiers, electronic effect pedals for use with sound amplifiers, sound effects pedals for musical instruments; Musical instrument amplifiers, electrical amplifiers for use with musical instruments, audio amplifiers, volume control pedals for use with sound amplifiers, electronic effect pedals for use
with sound amplifiers, sound effects pedals for musical instruments |
FINAL DESCRIPTION |
Musical instrument amplifiers, electrical amplifiers for use with musical instruments, audio amplifiers, volume control pedals for use
with sound amplifiers, electronic effect pedals for use with sound amplifiers, sound effects pedals for musical instruments |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
3727155 |
FOREIGN APPLICATION COUNTRY |
Spain |
FOREIGN FILING DATE |
07/06/2018 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await
the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained. |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
3727155 |
FOREIGN REGISTRATION
COUNTRY |
Spain |
FOREIGN REGISTRATION
DATE |
01/17/2019 |
FOREIGN EXPIRATION DATE |
07/06/2028 |
DATE FOREIGN REGISTRATION
RENEWED
(if applicable) |
07/06/2028 |
FOREIGN REGISTRATION FILE NAME(S) |
ORIGINAL PDF FILE |
FRU0-1732271934-170802219_._Foreign_Registration_DURCT003.014TUS.pdf |
CONVERTED PDF FILE(S)
(4 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\882\370\88237049\xml6\ROA0002.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\882\370\88237049\xml6\ROA0003.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\882\370\88237049\xml6\ROA0004.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\882\370\88237049\xml6\ROA0005.JPG |
STANDARD CHARACTERS
OR EQUIVALENT |
YES |
GOODS AND/OR SERVICES SECTION (015)(current) |
INTERNATIONAL CLASS |
015 |
DESCRIPTION |
Pedals for musical instruments; musical instruments |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
3727155 |
FOREIGN APPLICATION COUNTRY |
Spain |
FOREIGN FILING DATE |
07/06/2018 |
GOODS AND/OR SERVICES SECTION (015)(proposed) |
INTERNATIONAL CLASS |
015 |
DESCRIPTION |
Pedals for musical instruments; musical instruments |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
3727155 |
FOREIGN APPLICATION COUNTRY |
Spain |
FOREIGN FILING DATE |
07/06/2018 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await
the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained. |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
3727155 |
FOREIGN REGISTRATION
COUNTRY |
Spain |
FOREIGN REGISTRATION
DATE |
01/17/2019 |
FOREIGN EXPIRATION DATE |
07/06/2028 |
DATE FOREIGN REGISTRATION
RENEWED
(if applicable) |
07/06/2028 |
FOREIGN REGISTRATION FILE NAME(S) |
ORIGINAL PDF FILE |
FRU1-1732271934-170802219_._Foreign_Registration_DURCT003.014TUS.pdf |
CONVERTED PDF FILE(S)
(4 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\882\370\88237049\xml6\ROA0006.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\882\370\88237049\xml6\ROA0007.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\882\370\88237049\xml6\ROA0008.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\882\370\88237049\xml6\ROA0009.JPG |
STANDARD CHARACTERS
OR EQUIVALENT |
YES |
ADDITIONAL STATEMENTS SECTION |
NAME(S), PORTRAITS(S), SIGNATURE(S) OF INDIVIDUAL(S) |
The name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual. |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark
Rules of Practice. |
RESPONSE SIGNATURE |
/SRH/ |
SIGNATORY'S NAME |
Stacey R. Halpern |
SIGNATORY'S POSITION |
Attorney of record, California bar member |
SIGNATORY'S PHONE NUMBER |
949 760 0404 |
DATE SIGNED |
07/24/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Wed Jul 24 17:18:54 EDT 2019 |
TEAS STAMP |
USPTO/ROA-XXX.XXX.XX.XX-2
0190724171854941551-88237
049-620e8d3386a68848a74ec
db11042ec443927aa9e32fada
c67716b86788832b1-N/A-N/A
-20190724170802219396 |
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.
88237049 DR. ROBERT(Standard Characters, see http://uspto.report/TM/88237049/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
In the Office Action mailed March 15, 2019, the Examining Attorney did not raise any substantive objections. However, the
Examining Attorney inquired whether DR. ROBERT is a living individual. Applicant submits that DR. ROBERT is not a living individual.
Accordingly, no consent is required.
The Examining Attorney also inquired as to the status of Applicant’s foreign registration. Applicant submits hereto a copy of the foreign registration and an
English translation. Applicant submits this perfects the Section 44(e) basis. Further, Applicant has deleted the intent to use basis
and wishes to rely solely on its foreign registration.
Finally, the Examining Attorney requested amendments to the goods in Class 9. Applicant has made of record the amendments proposed by the Examining
Attorney.
Applicant notes that a search of the U.S. Patent and Trademark Office’s records did not reveal any pending or registered marks that would bar registration under
Section 2(d) of the Trademark Act.
Applicant submits that it has responded to all issues raised in the Office Action. If the Examining Attorney has any questions,
the Examining Attorney is encouraged to contract the undersigned.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Musical instruments amplifiers, electrical amplifiers for use with musical instruments, audio amplifiers, volume control pedals for use with sound amplifiers, electronic
effect pedals for use with sound amplifiers, sound effects pedals for musical instruments
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.
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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, 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 or services that meet the certification standards of the applicant, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Spain application number 3727155 filed 07/06/2018]. 15 U.S.C.Section 1126(d), as amended.
Proposed:
Tracked Text Description: Musical instruments amplifiers, electrical amplifiers for use with musical instruments, audio amplifiers, volume control pedals for use
with sound amplifiers, electronic effect pedals for use with sound amplifiers, sound effects pedals for musical instruments;
Musical instrument amplifiers,
electrical amplifiers for use with musical instruments, audio amplifiers, volume control pedals for use with sound amplifiers, electronic effect pedals for use with sound amplifiers, sound effects
pedals for musical instrumentsClass 009 for Musical instrument amplifiers, electrical amplifiers for use with musical instruments, audio amplifiers, volume control pedals for use with sound
amplifiers, electronic effect pedals for use with sound amplifiers, sound effects pedals for musical instruments
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.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
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, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Spain application number 3727155 filed 07/06/2018]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the
foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Spain registration number 3727155 registered 01/17/2019 with a
renewal date of 07/06/2028 and an expiration date of 07/06/2028 ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-1732271934-170802219_._Foreign_Registration_DURCT003.014TUS.pdf
Converted PDF file(s) ( 4 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard
character equivalent.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 015 for Pedals for musical instruments; musical instruments
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.
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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, 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 or services that meet the certification standards of the applicant, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Spain application number 3727155 filed 07/06/2018]. 15 U.S.C.Section 1126(d), as amended.
Proposed: Class 015 for Pedals for musical instruments; musical instruments
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.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
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, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Spain application number 3727155 filed 07/06/2018]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the
foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Spain registration number 3727155 registered 01/17/2019 with a
renewal date of 07/06/2028 and an expiration date of 07/06/2028 ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-1732271934-170802219_._Foreign_Registration_DURCT003.014TUS.pdf
Converted PDF file(s) ( 4 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard
character equivalent.
ADDITIONAL STATEMENTS
Name(s), Portrait(s), Signature(s) of individual(s)
The name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual.
SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the
Trademark Rules of Practice.
Response Signature
Signature: /SRH/ Date: 07/24/2019
Signatory's Name: Stacey R. Halpern
Signatory's Position: Attorney of record, California bar member
Signatory's Phone Number: 949 760 0404
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: 88237049
Internet Transmission Date: Wed Jul 24 17:18:54 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2019072417185494
1551-88237049-620e8d3386a68848a74ecdb110
42ec443927aa9e32fadac67716b86788832b1-N/
A-N/A-20190724170802219396