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. 88338757 LAYNE(Standard Characters, see http://uspto.report/TM/88338757/mark.png) has been amended as follows:

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

 

            As to the issues in the Office Action of May 22, 2019, Applicant requests the following amendment be entered and responds as follows:

AMENDMENT

1.         Applicant has amended her recitation of services to read as follows:

Entertainment information; entertainment services in the nature of live musical performances; entertainment services, namely, providing non-downloadable music and music videos via the internet; entertainment, namely, personal appearances by a musician; providing a website featuring entertainment information, news, non-downloadable videos, and non-downloadable audio recordings, all in the field of music, and entertainment information relating to licensed merchandise in the field of music exclusively for non-business and non-commercial transactions and purposes in Class 41.

THE APPLICATION SHOULD BE PUBLISHED FOR OPPOSITION

I.          THE WORDING RELATING TO “LICENSED MERCHANDISE” IS ACCEPTABLE

            In the Office Action dated May 22, 2019, the Examining Attorney stated that the wording "providing a website featuring information, news, non-downloadable videos, and non-downloadable audio recordings, all in the field of music, and information relating to licensed merchandise in the field of music exclusively for non-business and non-commercial transactions and purposes" must be clarified because it is "too broad and could include services in other international classes."  (Office Action at 2.)   Specifically, the Examining Attorney has required that the word “entertainment” precede “information” and that “licensed merchandise” be changed to “licensed musical texts.”

            Applicant has amended the application to include the Examining Attorney's suggested wording with respect to the addition of the word “entertainment.”   However, Applicant disagrees with the the Examining Attorney’s other amendment, namely, that "merchandise" be changed to "musical texts," because Applicant does not believe “musical texts” to be common wording that is generally understood.   To the extent the terminology “musical texts” is in common use in the modern language or otherwise exists in a relevant context, Applicant does not believe such terminology to accurately reflect her intended services.

            Further, descriptions of services containing language analogous to "providing information relating to licensed merchandise" in Class 41 have been accepted many times by the Office.  A search of the Trademark Electronic Search System (TESS) yields at least 58 live registrations wherein the description of services includes wording equivalent to "providing information relating to merchandise," or similar language generally consistent with Applicant’s meaning, in Class 41.  Attached as Exhibit A are true and correct copies of such registrations issued by the Office. 

II.        CONCLUSION

            Applicant has amended the description of services to the extent such amendment is appropriate, and has provided arguments and evidence against further amendments.  Having responded to the issues raised in the Office Action, Applicant requests that the amendment be entered and that the mark be passed to publication.

 

SMRH:4822-9100-1246.1

EVIDENCE

Original PDF file:
evi_12146203103-20191122183657386228_._Class_41_-_Ex._A_-_LAYNE.pdf
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CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment information; entertainment services in the nature of live musical performances; entertainment services, namely, providing non-downloadable music and music videos via the internet; entertainment, namely, personal appearances by a musician; providing a website featuring information, news, nondownloadable videos, and nondownloadable audio recordings, all in the field of music, and information relating to licensed merchandise in the field of music exclusively for non-business and non-commercial transactions and purposes
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 09/30/2012 and first used in commerce at least as early as 09/30/2012 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Entertainment information; entertainment services in the nature of live musical performances; entertainment services, namely, providing non-downloadable music and music videos via the internet; entertainment, namely, personal appearances by a musician; providing a website featuring information, news, nondownloadable videos, and nondownloadable audio recordings, all in the field of music, and information relating to licensed merchandise in the field of music exclusively for non-business and non-commercial transactions and purposes; providing a website featuring entertainment information, news, nondownloadable videos, and nondownloadable audio recordings, all in the field of music, and entertainment information relating to licensed merchandise in the field of music exclusively for non-business and non-commercial transactions and purposesClass 041 for Entertainment information; entertainment services in the nature of live musical performances; entertainment services, namely, providing non-downloadable music and music videos via the internet; entertainment, namely, personal appearances by a musician; providing a website featuring entertainment information, news, nondownloadable videos, and nondownloadable audio recordings, all in the field of music, and entertainment information relating to licensed merchandise in the field of music exclusively for non-business and non-commercial transactions and purposes
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 09/30/2012 and first used in commerce at least as early as 09/30/2012 , and is now in use in such commerce.
The applicant's current attorney information: Jill M. Pietrini. Jill M. Pietrini of SHEPPARD MULLIN RICHTER & HAMPTON LLP, is located at

      1901 AVENUE OF THE STARS, SUITE 1600
      LOS ANGELES, California 90067
      US
The docket/reference number is 65TD-290318.

The phone number is 310-228-3700.

The fax number is 310-228-3701.

The applicants proposed attorney information: Jill M. Pietrini. Jill M. Pietrini of SHEPPARD MULLIN RICHTER & HAMPTON LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1901 AVENUE OF THE STARS, SUITE 1600
      LOS ANGELES, California 90067
      United States
The docket/reference number is 65TD-290318.

The phone number is 310-228-3700.

The fax number is 310-228-3701.

The email address is TrademarksCC@sheppardmullin.com

Jill M. Pietrini submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: JILL M. PIETRINI. JILL M. PIETRINI of SHEPPARD MULLIN RICHTER & HAMPTON LLP, is located at

      1901 AVENUE OF THE STARS, SUITE 1600
      LOS ANGELES, California 90067
      US
The docket/reference number is 65TD-290318.

The phone number is 310-228-3700.

The fax number is 310-228-3701.

The email address is trademarksCC@sheppardmullin.com; rwalsh@sheppardmullin.com; RLHudson@sheppardmullin.com

The applicants proposed correspondence information: Jill M. Pietrini. Jill M. Pietrini of SHEPPARD MULLIN RICHTER & HAMPTON LLP, is located at

      1901 AVENUE OF THE STARS, SUITE 1600
      LOS ANGELES, California 90067
      United States
The docket/reference number is 65TD-290318.

The phone number is 310-228-3700.

The fax number is 310-228-3701.

The email address is TrademarksCC@sheppardmullin.com

SIGNATURE(S)
Response Signature
Signature: /jillpietrini/     Date: 11/22/2019
Signatory's Name: Jill M. Pietrini
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: (310) 228-3700

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:    JILL M. PIETRINI
   SHEPPARD MULLIN RICHTER & HAMPTON LLP
   
   1901 AVENUE OF THE STARS, SUITE 1600
   LOS ANGELES, California 90067
Mailing Address:    Jill M. Pietrini
   SHEPPARD MULLIN RICHTER & HAMPTON LLP
   1901 AVENUE OF THE STARS, SUITE 1600
   LOS ANGELES, California 90067
        
Serial Number: 88338757
Internet Transmission Date: Fri Nov 22 18:51:36 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201911221851364
31175-88338757-70052465dd44634eea7968833
1ce3e4563fc02e76e58ed032ba3cc3257e5c60a4
-N/A-N/A-20191122183657386228