Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be partially abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  October 16, 2020

 

The statement of use has been reviewed by the assigned trademark examining attorney.  The applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Failure to Function as to the Sound Recordings in International Class 9

Registration is refused as to the goods in International Class 9 (i.e., “Compact discs featuring music; Downloadable music files,” in International Class 9) because the applied-for mark, as used on the specimen of record, merely identifies the name of a featured performer on a sound recording; it does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re Polar Music Int’l AB, 714 F.2d 1567, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983); In re Arnold, 105 USPQ2d 1953, 1957 (TTAB 2013).  Sound recordings include musical and other performances presented in recorded or electronic form.  See TMEP §1202.09(a).

                                                      

The applicant may respond to this refusal by satisfying one of the following:

 

(1) Submitting evidence that (a) the name is used on a series of sound recordings, and (b) the name is promoted and recognized by others as the source of the series of sound recordings.  See In re Arnold, 105 USPQ2d at 1958; TMEP §1202.09(a)-(a)(ii)(A).  Evidence of a series includes copies or photographs of at least two different CD covers or similar packaging for recorded works that show the name sought to be registered.  TMEP §1202.09(a)(i); see In re Polar Music Int’l AB, 714 F.2d at 1572, 221 USPQ at 318.  Evidence that the name is promoted and recognized by others as a source of the series includes advertising that promotes the name as the source of the series, third-party reviews showing use of the name by others to refer to the series, and/or declarations from the sound recording industry, retailers, and purchasers showing recognition of the name as an indicator of the source of a series of recordings.  TMEP §1202.09(a)(ii)(A); cf. In re First Draft, Inc., 76 USPQ2d 1183, 1191 (TTAB 2005); In re Scholastic, Inc., 23 USPQ2d 1774, 1777-78 (TTAB 1992).

 

(2) Submitting evidence that (a) the name is used on a series of sound recordings, and (b) the performer controls the quality of the recordings and controls the use of the name, such that the name has come to represent an assurance of quality to the public.  See In re Polar Music Int’l AB, 714 F.2d at 1572, 221 USPQ at 318; In re Arnold, 105 USPQ2d at 1958; TMEP §1202.09(a)-(a)(ii), (a)(ii)(B).  Evidence of a series includes copies or photographs of at least two different CD covers or similar packaging for recorded works that show the name sought to be registered.  TMEP §1202.09(a)(i); see In re Polar Music Int’l AB, 714 F.2d at 1572, 221 USPQ at 318.  Evidence of control over the quality of the recordings and use of the name includes licensing contracts or similar documentation.  TMEP §1202.09(a)(ii)(B); see In re Polar Music Int’l AB, 714 F.2d at 1568-72, 221 USPQ at 316-18.  However, if the sound recordings are recorded directly under applicant’s control, applicant may submit solely as evidence of control the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The applicant produces the goods and controls their quality.”  TMEP §1202.09(a)(ii)(B); see 37 C.F.R. §2.193(e)(1).

 

            NOTE:  In this case, the applicant has submitted specimens that show use of the proposed mark on a series of sound recordings.  Accordingly, to be registrable on the Principal Register, the applicant must satisfy the requirements listed in (b) under either (1) or (2) above.

 

Further, amending the application to seek registration on the Supplemental Register would normally be an alternative.  However, because the application contains services in Class 41, that are properly registrable on the Principal Register, the applicant may not amend the entire application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47, 2.75(a); TMEP §§816, 1202.09(a).

 

NOTE: The applicant may not withdraw the statement of use.  37 C.F.R. §2.88(f); TMEP §1109.17.

 

Refusal Only Applies to International Class 9

The stated refusal refers to International Class 9 only and does not bar registration in International Class 41.

 

The applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)  Deleting the class to which the refusal pertains;

 

(2)  Filing a Request to Divide Application form (form #3) to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the class to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, the applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).

 

Partial Abandonment - Advisory

If the applicant does not respond to this Office action within the six-month period for response, International Class 9 will be deleted from the application.  The application will then proceed with International Class 41 only.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

Hiring a Private U.S.-Licensed Trademark Attorney - Advisory

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information. 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

If the applicant has any questions or needs assistance with the present application, please telephone the assigned examining attorney.

 

 

/Jeffery C. Coward/

Trademark Examining Attorney

Law Office 106

Phone: (571) 272-9148

E-mail: jeffery.coward@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 16, 2020 for

U.S. Trademark Application Serial No. 88244055

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Jeffery C. Coward/

Trademark Examining Attorney

Law Office 106

Phone: (571) 272-9148

E-mail: jeffery.coward@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 16, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”