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 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:  August 01, 2019

 

This Office action is supplemental to and supersedes the previous Office action issued on 16 July 2019 in connection with this application.  Specifically, this new non-final Office Action is being issued to address a policy decision change recently issued regarding the audio file not matching the provided sheet music and mark description.

 

Applicant must address all issues raised in this Office action. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

• Amended Issue: Requirement – Drawing Does Not Match Specimen
• Requirement – Mark Description
• Advisory – Possible Failure to Function Refusal

 

 

 Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

 

REQUIREMENT – REQUEST FOR INFORMATION – DRAWING DOES NOT MATCH SHEET MUSIC

 

Applicant has provided an audio file of the mark, sheet music for this audio file, and a mark description which states “The mark consists of the series of notes as further described on the musical score sheet music attached in the Miscellaneous Statements section.” However, upon review the audio file does not match the sheet music because there is a metallic, percussive sound which begins on and crescendos upwards from the final quarter note; while the final quarter note is shown in the sheet music, the underlying note(s) which crescendos is not. Therefore, applicant must provide a new mark description and sheet music which matches the audio file provided in the application. TMEP §807.09; See 37 C.F.R. §§ 2.52(e), 2.61(b). 

 

REQUIREMENT – MARK DESCRIPTION

 

The drawing includes a description of the mark that indicates it is a sound mark.  If this is the case, then applicant must submit a more detailed written description of the mark.  37 C.F.R. §2.52(e); TMEP §807.09.  Specifically, applicant must submit 1) a detailed description of the sound, such as musical instruments making the sound 2) the notes of the sound (A, E#, Bb, etc.), 3) the duration of the notes (quarter note, half note, eighth note, etc.), and 4) the octave of each note. 

 

For example, the following description would be acceptable, if accurate:

 

The mark is a sound mark. The mark consists of a {specify instrument producing sound or characterization of sound, e.g., a computer-generated piano} in the key of C Major in four-four time. The first note is {specify notes, such as a Bb4 sixteenth note followed by an A4 sixteenth note followed by a Bb4 sixteenth note followed by a C5 sixteenth note followed by an F5 quarter note, etc.}.

 

 

REQUIREMENT – REQUEST FOR INFORMATION

 

Applicant is advised that applicant must have a bona fide intent to use the applied for sound as a service mark within the definition of the Trademark Act Sections 1, 2, 3, and 45. See 15 U.S.C. §§1051-1053, 1127; 37 C.F.R. §2.63(b). Based on the nature of the applied for mark as a non-traditional device, not commonly used as a source identifier for the applied for services, applicant must provide additional information about applicant’s use of the sound to indicate how this sound acts, or will act, as an inherently distinctive source identifier for the applied for services.  See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); TMEP §§814, 1402.01(e).

 

Is an example of the sound used in advertising the services available?

• If yes, please provide the example.
• If an example is unavailable, please describe in detail how the sound is produced in advertising the services?

 

Factual information about the services must include how they are performed, their salient features, and their prospective customers and channels of trade. 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

 

Advisory – Possible Failure to Function

 

Applicant is advised that, upon consideration of an allegation of use, registration may be refused on the ground that the applied-for mark, as used in the specimen of record, is a nondistinctive sound for the services that is not registrable on the Principal Register.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051-1052, 1127; see Gen. Electric Broad, 199 USPQ 560, 563 (TTAB 1978); see In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009); see In re Powermat Inc., 105 USPQ2d 1789, 1793 (TTAB 2013); TMEP §1202.15.

 

The specimen of record, along with any other relevant evidence of record, is reviewed to determine whether an applied-for mark is being used as a service mark.  In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1458 (TTAB 1998).  Not every word, design, symbol or sound used in the advertising or performance of services functions as a mark, even though it may have been adopted with the intent to do so.  See TMEP §1301.02.  The fact that the sounds is included in the specimen, is not enough in and of itself to make it a service mark.  See In re Manco, Inc., 24 USPQ2d 1938, 1941 (TTAB 1992) (citing In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987)).  The USPTO will not register a sound unless purchasers would be likely to regard it as a source-indicator for the services.  See In re Manco, Inc., 24 USPQ2d at 1941; TMEP §1202.

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

Assistance

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the requirements in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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

 

 

/Joan Blazich/

Examining Attorney

Law Office 122

571-272-7810

joan.blazich@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 August 01, 2019 for

U.S. Trademark Application Serial No. 88463219

 

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. 

 

 

/Joan Blazich/

Examining Attorney

Law Office 122

571-272-7810

joan.blazich@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 August 01, 2019, 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.”