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)

---

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. 88467393 SONGCLIP(Standard Characters, see http://uspto.report/TM/88467393/mark.png) has been amended as follows:

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

Argument

In the Office Action dated September 10, 2019, the Examining Attorney (1) refused registration of the mark under Trademark Act Section 2(e)(1) on the grounds that the mark merely describes Applicant’s goods and services and (2) required amendment to the goods pursuant to 37 C.F.R. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a) and (3) reported that a search of the Office records uncovered no registered or pending marks which would bar registration under Trademark Act § 2(d), 15 U.S.C. §1052(d).

1. Amendment to Goods and Services. As required under the current rules of practice, Applicant has amended its goods to specify that its Class 9 software is downloadable, has clarified the term GIF to specify that these are “files,” and has adjusted its description of API software as required.

Downloadable computer software for use in selecting, combining and pairing music, songs, audio and sounds with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Downloadable application programming interface (API) software for use by others to develop software that allows users to select, combine and pair music, songs, audio and sounds with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Downloadable computer software for use in searching for music, songs, audio, sounds, artists, lyrics, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Downloadable application programming interface (API) software for use by others to develop software that allows users to search for music, songs, audio, sounds, artists, lyrics, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Downloadable computer software for use in downloading, uploading and sharing videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers featuring music, songs, audio or sounds; Downloadable application programming interface (API) software for use by others to develop software that allows users to select, download, upload and share videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers featuring music, songs, audio or sounds; Downloadable computer software for use in recommending music, songs, audio and sounds to pair with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Downloadable application programming interface (API) software for use by others to develop software that recommends music, songs, audio and sounds to pair with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Downloadable computer software for editing, shortening, enhancing, and altering files with effects, words, duration and sounds for music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Downloadable application programming interface (API) software for use by others to develop software for editing, shortening, enhancing, and altering files with effects, words, duration and sounds for music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Downloadable computer software for use in creating and saving combinations of music, songs and audio, with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Downloadable application programming interface (API) software for use by others to develop software for creating and saving combinations of music, songs and audio, with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Downloadable computer software for use in categorizing, organizing, sorting and reporting music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Downloadable application programming interface (API) software for use by others to develop software for categorizing, organizing, sorting and reporting music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Downloadable computer software for use in creating and running challenges, contests and puzzles, using music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Downloadable application programming interface (API) software for use by others to develop software for creating and running challenges, contests and puzzles, using music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Downloadable computer software for use in analyzing, collecting and reporting data on user searches, selections, and sharing; Downloadable application programming interface (API) software for use by others to analyze, collect and report data on user searches, selections, and sharing; Downloadable ring tones, audio, videos, photos, graphics, images and multimedia audio and video files provided via a website and wireless devices.

Applicant has also adjusted its recitation of services to clarify that the GIFs are files, and has adopted the amendments to its website searching and sharing features as suggested by the Examining Attorney:

“Providing temporary use of online non-downloadable software for use in selecting, combining and pairing music, songs, audio and sounds with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in searching for music, songs, audio, sounds, artists, lyrics, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in downloading, uploading and sharing videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers featuring music, songs, audio or sounds; Providing temporary use of online non-downloadable software for use in recommending music, songs, audio and sounds to pair with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for editing, shortening, enhancing, and altering files with effects, words, duration and sounds for music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in creating and saving combinations of music, songs and audio, with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in categorizing, organizing, sorting and reporting music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in creating and running challenges, contests and puzzles, using music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in analyzing, collecting and reporting data on user searches, selections, and sharing; Providing a website featuring a search engine to allow users to search for music, songs, audio, sounds, artists, lyrics, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing a website featuring technology to allow users to upload, download and share electronic files in the nature of music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing and updating a searchable database of licensed and meta-tagged audio, music, or songs.

2. Refusal of Registration Under Trademark Act Section 2(e). The Examining Attorney has refused registration of Applicant’s mark, SONGCLIP, on the grounds that the mark merely describes a feature and/or purpose of Applicant’s goods and/or services under Trademark Act Section 2(e)(1). In support of the refusal, the Examining Attorney has: (a) provided references to Applicant’s website, (b) supplied dictionary definitions for the individual words “song” and “clip,” (c) argued that “the term ‘SONG’ appears in its plural form in applicant’s identification of goods and services, and (d) concluded that “applicant’s mark SONGCLIP is merely descriptive where applicant’s goods and/or services feature a section of[sic] piece of music sung or composed for singing.”

As explained herein, Applicant believes its SONGCLIP mark is not merely descriptive for the many robust and varied functions of its software and services which include API development software, its search and recommendation software and services, its sorting, sharing, and special effects software and services, among others. In addition, the multiple possible interpretations of CLIP, in relation to Applicant’s mark, means that the mark does not convey an immediate, single idea of an ingredient, quality, characteristic, feature, function, purpose or use of the Applicant’s software and services that would meet the test for a merely descriptive mark. Instead, the word CLIP has multiple possible interpretations that requires consumers to stop and consider the mark, the software, or services, and the many possibilities. This mental step and pause for consideration, is indicative of a suggestive mark, not a descriptive one. For these reasons, Applicant believes the mark is registrable on the Principal Register.

Preliminary Observations. It is worth noting at the outset that the Office Action does not reference any dictionary definitions for songclip, and the only references to this term are Applicant’s own uses on its website. In the absence of any evidence of a definition of songclip, the Examining Attorney has split the mark into two elements, searched for definitions of the words “song” and “clip,” and concluded that, because some of the goods and services in the application contain the word “songs,” the mark as a whole is thus descriptive for all of the goods and services.

This conclusion is unwarranted, and the dissection of the mark is inappropriate. The analysis of whether a mark is merely descriptive requires viewing the mark in its entirety and attempting to assess the impression likely to be conveyed to the purchasing public when they are confronted with the mark as a whole. In re Keebler Co. (1973, Cust & Pat App) 479 F2d 1405, 178 USPQ 155. Equine Technology Inc. v. Equietechnology, Inc. 68 F.3d 542, 544 (1^stCir. 1995). In addition, when viewed in its entirety, the SONGCLIP mark not only presents a unique term to consumers, but it also requires them to pause, and consider what the CLIP portion of the mark may mean, in relation to the Applicant’s software and services.

Multiple Meanings of “Clip” Are Hallmarks of Distinctiveness, not Mere Descriptiveness. To establish that a mark is merely descriptive, the Examining Attorney must show that relevant consumers would directly and immediately perceive Applicant’s mark as describing a significant feature, function, or characteristic of the applied-for goods. The Trademark Manual of Examining Procedure provides that “a designation does not have to be devoid of all meaning in relation to the goods and services to be registrable.” On the contrary, when relevant consumers must use “imagination, thought or perception to reach a conclusion as to the nature of those goods or services” a mark is suggestive, and therefore registrable. A mark is considered merely descriptive only if it “immediately tells something about the goods or services.” TMEP §1209.01(a) (emphasis added).

The SONGCLIP mark is not merely descriptive for Applicant’s goods and services because customers must make some mental investment to sift through the many definitions for, and interpretations of, the word “clip,” as demonstrated by the evidence in the Office Action and as described below. These multiple meanings support the conclusion that the mark is distinctive and not merely descriptive.

In the Office Action, the Examining Attorney has supplied multiple dictionary definitions of the word “clip,” – twenty-four pages of definitions. This means that consumers must consider and sift through a very large number of possible meanings of the word CLIP in order to understand the nature and purpose of the Applicant’s goods and services. An “immediate” understanding of the word CLIP, as required to meet the test for a descriptive mark does not seem likely. For example, some of the definitions listed in the twenty-four pages in the Office Action are:

Clip verb (1) 1. Encompass

2. a. to hold in a tight grip: clutch

b. to clasp, fasten, or secure with a clip

Clip noun (1)

1. Any of various devices that grip, clasp or hook

2. A device to hold cartridges for charging the magazines of some rifles…

3. Something (such as a piece of jewelry) that is worn as an ornament or fastener…

Clip verb (2) 1. a. To cut or cut off…

2. a. Curtail, diminish…

b. To abbreviate in speech or writing

3. Hit, punch…

4. To illegally block… 5. To take money from unfairly…

… 2. To travel or pass rapidly… 3. To clip an opposing player in football

Clip noun (2) 1. a. Clips plural, Scottish: shears

b. a 2-bladed instrument for cutting especially the nails

2. something that is clipped such as

a. : the product of a single shearing (as of sheep)

b. : a crop of wool of a sheep, a flock, or a region

c. : a section of filmed, videotaped or recorded material

d. : a clipping especially from a newspaper

3. An act of clipping

4. a sharp blow

5. RATE sense //continues at a brisk clip

6. a single instance or occasion

//trained 1000 workers at a clip…

See the full list of definitions attached to the Office Action, attached hereto as Exhibit A.

The multiplicity of meanings of the combined words “SONG” and “CLIP” demonstrates that, when considered as a whole, the mark is ambiguous and cannot be considered merely descriptive of the Applicant’s goods and services. As the United States Court of Appeals for the Federal Circuit explained in In re Hutchinson Technology Incorporated, 852 F.2d 552, 555 (Fed. Cir. 1988); 7 U.S.P.Q.2D (BNA) 1490, 1492, 1493, a term that has multiple meanings does not convey the sort of immediate understanding of the goods necessary to classify a mark as merely descriptive. Marks that cause customers to pause and consider meaning are not marks that meet the test of “mere descriptiveness” and are, instead, considered suggestive.

The Board regularly applies this principle in reversing refusals of registration. For example, in In re Diet Tabs, Inc., 231 U.S.P.Q. 587 (T.T.A.B. 1986), the Board reversed the refusal of registration of DIET-TABS, because the mark could be interpreted to mean either “diet tablets” or “dietary tablets,” each of which has a different significance in relation to “vitamin supplement tablets.” In light of the multiple meanings of CLIP that could possibly be attached to Applicant’s software and services, Board would likely apply the same reasoning to the SONGCLIP mark in this case.

To the extent the Examining Attorney finds Applicant’s mark to be within a “gray area” between obviously descriptive marks, on the one hand, and suggestive marks, on the other, any doubts must be resolved in Applicant’s favor. In re Conductive Systems, Inc., 220 U.S.P.Q. 84, 86 (TTAB 1983) (where combination of two merely descriptive terms creates a mark that might be either descriptive or suggestive, doubts are to be resolved in favor of applicants; refusal reversed); In re Pennwalt Corp., 173 U.S.P.Q. 317, 319 (TTAB 1972) (doubts to be resolved in favor of publication; refusal reversed).

Accordingly, the Applicant requests that the Examining Attorney withdraw the refusal of registration and approve the application for publication.

EVIDENCE
Evidence in the nature of Exhibit A, Copy of Response has been attached.
Original PDF file:
evi_2410440161-20200310183555076259_._Ex_A_-SONGCLIP_OApdf.pdf
Converted PDF file(s) ( 24 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Evidence-23
Evidence-24
Original PDF file:
evi_2410440161-20200310211012118873_._ROA_SONGCLIP.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 009 for Computer software for use in selecting, combining and pairing music, songs, audio and sounds with videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; API (Application Programming Interface) software for use by others to develop software that allows users to select, combine and pair music, songs, audio and sounds with videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Computer software for use in searching for music, songs, audio, sounds, artists, lyrics, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; API (Application Programming Interface) software for use by others to develop software that allows users to search for music, songs, audio, sounds, artists, lyrics, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Computer software for use in downloading, uploading and sharing videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers featuring music, songs, audio or sounds; API (Application Programming Interface) software for use by others to develop software that allows users to select, download, upload and share videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers featuring music, songs, audio or sounds; Computer software for use in recommending music, songs, audio and sounds to pair with videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; API (Application Programming Interface) software for use by others to develop software that recommends music, songs, audio and sounds to pair with videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Computer software for editing, shortening, enhancing, and altering files with effects, words, duration and sounds for music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; API (Application Programming Interface) software for use by others to develop software for editing, shortening, enhancing, and altering files with effects, words, duration and sounds for music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Computer software for use in creating and saving combinations of music, songs and audio, with videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; API (Application Programming Interface) software for use by others to develop software for creating and saving combinations of music, songs and audio, with videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Computer software for use in categorizing, organizing, sorting and reporting music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; API (Application Programming Interface) software for use by others to develop software for categorizing, organizing, sorting and reporting music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Computer software for use in creating and running challenges, contests and puzzles, using music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; API (Application Programming Interface) software for use by others to develop software for creating and running challenges, contests and puzzles, using music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Computer software for use in analyzing, collecting and reporting data on user searches, selections, and sharing; API (Application Programming Interface) software for use by others to analyze, collect and report data on user searches, selections, and sharing; Downloadable ring tones, audio, videos, photos, graphics, images and multimedia provided via a website and wireless devices
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.

Proposed:
Tracked Text Description: Computer software for use in selecting, combining and pairing music, songs, audio and sounds with videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; downloadable computer software for use in selecting, combining and pairing music, songs, audio and sounds with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; API (Application Programming Interface) software for use by others to develop software that allows users to select, combine and pair music, songs, audio and sounds with videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; downloadable application programming interface (API) software for use by others to develop software that allows users to select, combine and pair music, songs, audio and sounds with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Computer software for use in searching for music, songs, audio, sounds, artists, lyrics, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; downloadable computer software for use in searching for music, songs, audio, sounds, artists, lyrics, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; API (Application Programming Interface) software for use by others to develop software that allows users to search for music, songs, audio, sounds, artists, lyrics, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; application programming interface (API) software for use by others to develop software that allows users to search for music, songs, audio, sounds, artists, lyrics, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Computer software for use in downloading, uploading and sharing videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers featuring music, songs, audio or sounds; downloadable computer software for use in downloading, uploading and sharing videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers featuring music, songs, audio or sounds; API (Application Programming Interface) software for use by others to develop software that allows users to select, download, upload and share videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers featuring music, songs, audio or sounds; application programming interface (API) software for use by others to develop software that allows users to select, download, upload and share videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers featuring music, songs, audio or sounds; Computer software for use in recommending music, songs, audio and sounds to pair with videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; downloadable computer software for use in recommending music, songs, audio and sounds to pair with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; API (Application Programming Interface) software for use by others to develop software that recommends music, songs, audio and sounds to pair with videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; application programming interface (API) software for use by others to develop software that recommends music, songs, audio and sounds to pair with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Computer software for editing, shortening, enhancing, and altering files with effects, words, duration and sounds for music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; downloadable computer software for editing, shortening, enhancing, and altering files with effects, words, duration and sounds for music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; API (Application Programming Interface) software for use by others to develop software for editing, shortening, enhancing, and altering files with effects, words, duration and sounds for music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; application programming interface (API) software for use by others to develop software for editing, shortening, enhancing, and altering files with effects, words, duration and sounds for music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Computer software for use in creating and saving combinations of music, songs and audio, with videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; downloadable computer software for use in creating and saving combinations of music, songs and audio, with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; API (Application Programming Interface) software for use by others to develop software for creating and saving combinations of music, songs and audio, with videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; application programming interface (API) software for use by others to develop software for creating and saving combinations of music, songs and audio, with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Computer software for use in categorizing, organizing, sorting and reporting music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; downloadable computer software for use in categorizing, organizing, sorting and reporting music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; API (Application Programming Interface) software for use by others to develop software for categorizing, organizing, sorting and reporting music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; application programming interface (API) software for use by others to develop software for categorizing, organizing, sorting and reporting music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Computer software for use in creating and running challenges, contests and puzzles, using music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; downloadable computer software for use in creating and running challenges, contests and puzzles, using music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; API (Application Programming Interface) software for use by others to develop software for creating and running challenges, contests and puzzles, using music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; application programming interface (API) software for use by others to develop software for creating and running challenges, contests and puzzles, using music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Computer software for use in analyzing, collecting and reporting data on user searches, selections, and sharing; downloadable computer software for use in analyzing, collecting and reporting data on user searches, selections, and sharing; API (Application Programming Interface) software for use by others to analyze, collect and report data on user searches, selections, and sharing; application programming interface (API) software for use by others to analyze, collect and report data on user searches, selections, and sharing; Downloadable ring tones, audio, videos, photos, graphics, images and multimedia provided via a website and wireless devices; downloadable ring tones, audio, videos, photos, graphics, images and multimedia audio and video files provided via a website and wireless devicesClass 009 for downloadable computer software for use in selecting, combining and pairing music, songs, audio and sounds with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; downloadable application programming interface (API) software for use by others to develop software that allows users to select, combine and pair music, songs, audio and sounds with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; downloadable computer software for use in searching for music, songs, audio, sounds, artists, lyrics, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; application programming interface (API) software for use by others to develop software that allows users to search for music, songs, audio, sounds, artists, lyrics, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; downloadable computer software for use in downloading, uploading and sharing videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers featuring music, songs, audio or sounds; application programming interface (API) software for use by others to develop software that allows users to select, download, upload and share videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers featuring music, songs, audio or sounds; downloadable computer software for use in recommending music, songs, audio and sounds to pair with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; application programming interface (API) software for use by others to develop software that recommends music, songs, audio and sounds to pair with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; downloadable computer software for editing, shortening, enhancing, and altering files with effects, words, duration and sounds for music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; application programming interface (API) software for use by others to develop software for editing, shortening, enhancing, and altering files with effects, words, duration and sounds for music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; downloadable computer software for use in creating and saving combinations of music, songs and audio, with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; application programming interface (API) software for use by others to develop software for creating and saving combinations of music, songs and audio, with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; downloadable computer software for use in categorizing, organizing, sorting and reporting music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; application programming interface (API) software for use by others to develop software for categorizing, organizing, sorting and reporting music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; downloadable computer software for use in creating and running challenges, contests and puzzles, using music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; application programming interface (API) software for use by others to develop software for creating and running challenges, contests and puzzles, using music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; downloadable computer software for use in analyzing, collecting and reporting data on user searches, selections, and sharing; application programming interface (API) software for use by others to analyze, collect and report data on user searches, selections, and sharing; downloadable ring tones, audio, videos, photos, graphics, images and multimedia audio and video files provided via a website and wireless devices
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.

Applicant proposes to amend the following:
Current: Class 042 for Providing temporary use of online non-downloadable software for use in selecting, combining and pairing music, songs, audio and sounds with videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in searching for music, songs, audio, sounds, artists, lyrics, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in downloading, uploading and sharing videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers featuring music, songs, audio or sounds; Providing temporary use of online non-downloadable software for use in recommending music, songs, audio and sounds to pair with videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for editing, shortening, enhancing, and altering files with effects, words, duration and sounds for music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in creating and saving combinations of music, songs and audio, with videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in categorizing, organizing, sorting and reporting music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in creating and running challenges, contests and puzzles, using music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in analyzing, collecting and reporting data on user searches, selections, and sharing; Providing a website to allow users to search for music, songs, audio, sounds, artists, lyrics, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing a website to allow users to upload, download and share music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing and updating a searchable database of licensed and meta-tagged audio, music, or songs
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.

Proposed:
Tracked Text Description: Providing temporary use of online non-downloadable software for use in selecting, combining and pairing music, songs, audio and sounds with videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in selecting, combining and pairing music, songs, audio and sounds with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in searching for music, songs, audio, sounds, artists, lyrics, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; providing temporary use of online non-downloadable software for use in searching for music, songs, audio, sounds, artists, lyrics, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in downloading, uploading and sharing videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers featuring music, songs, audio or sounds; providing temporary use of online non-downloadable software for use in downloading, uploading and sharing videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers featuring music, songs, audio or sounds; Providing temporary use of online non-downloadable software for use in recommending music, songs, audio and sounds to pair with videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; providing temporary use of online non-downloadable software for use in recommending music, songs, audio and sounds to pair with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for editing, shortening, enhancing, and altering files with effects, words, duration and sounds for music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; providing temporary use of online non-downloadable software for editing, shortening, enhancing, and altering files with effects, words, duration and sounds for music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in creating and saving combinations of music, songs and audio, with videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; providing temporary use of online non-downloadable software for use in creating and saving combinations of music, songs and audio, with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in categorizing, organizing, sorting and reporting music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; providing temporary use of online non-downloadable software for use in categorizing, organizing, sorting and reporting music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in creating and running challenges, contests and puzzles, using music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; providing temporary use of online non-downloadable software for use in creating and running challenges, contests and puzzles, using music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in analyzing, collecting and reporting data on user searches, selections, and sharing; Providing a website to allow users to search for music, songs, audio, sounds, artists, lyrics, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; providing a website featuring a search engine to allow users to search for music, songs, audio, sounds, artists, lyrics, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing a website to allow users to upload, download and share music, songs, audio, videos, photos, GIFs, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; providing a website featuring technology to allow users to upload, download and share music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; providing and updating a searchable database of licensed and meta-tagged audio, music, or songsClass 042 for Providing temporary use of online non-downloadable software for use in selecting, combining and pairing music, songs, audio and sounds with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; providing temporary use of online non-downloadable software for use in searching for music, songs, audio, sounds, artists, lyrics, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; providing temporary use of online non-downloadable software for use in downloading, uploading and sharing videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers featuring music, songs, audio or sounds; providing temporary use of online non-downloadable software for use in recommending music, songs, audio and sounds to pair with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; providing temporary use of online non-downloadable software for editing, shortening, enhancing, and altering files with effects, words, duration and sounds for music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; providing temporary use of online non-downloadable software for use in creating and saving combinations of music, songs and audio, with videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; providing temporary use of online non-downloadable software for use in categorizing, organizing, sorting and reporting music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; providing temporary use of online non-downloadable software for use in creating and running challenges, contests and puzzles, using music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; Providing temporary use of online non-downloadable software for use in analyzing, collecting and reporting data on user searches, selections, and sharing; providing a website featuring a search engine to allow users to search for music, songs, audio, sounds, artists, lyrics, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; providing a website featuring technology to allow users to upload, download and share music, songs, audio, videos, photos, GIF files, graphics, images, animations, multimedia files, visual assets, augmented reality files, virtual reality files, holograms, and digital stickers; providing and updating a searchable database of licensed and meta-tagged audio, music, or songs
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: AUDIOBYTE LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      36 Main Street, 2nd Floor
      Port Washington, New York 11050
      United States

Proposed: AUDIOBYTE LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      36 Main Street, 2nd Floor
      Port Washington, New York 11050
      United States
      Email Address: trademarks@Songclip.com

The owner's/holder's current attorney information: Joi A. White. Joi A. White of CARR & FERRELL LLP, is located at

      120 CONSTITUTION DRIVE
      MENLO PARK, California 94025
      United States
The docket/reference number is T-4384 US.
      The phone number is 650-812-3400.
      The fax number is 650-812-3444.
      The email address is usptomail@carrferrell.com

The owner's/holder's proposed attorney information: Joi A. White. Other appointed attorneys are Jefferson F. Scher, Aylin Demirci, Jessica E. Galaif and all other attorneys of the Firm. Joi A. White of Carr & Ferrell LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      120 Constitution Drive
      Menlo Park, California 94025
      United States
The docket/reference number is T-4384 US.
      The phone number is 650-812-3400.
      The fax number is 650-812-3444.
      The email address is jwhite@carrferrell.com

Joi A. White 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.Correspondence Information (current):
      JOI A. WHITE
      PRIMARY EMAIL FOR CORRESPONDENCE: usptomail@carrferrell.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jwhite@carrferrell.com

The docket/reference number is T-4384 US.
Correspondence Information (proposed):
      Joi A. White
      PRIMARY EMAIL FOR CORRESPONDENCE: jwhite@carrferrell.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): usptomail@carrferrell.com

The docket/reference number is T-4384 US.

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: /Joi A. White/     Date: 03/10/2020
Signatory's Name: Joi A White
Signatory's Position: Attorney of record, California state bar member

Signatory's Phone Number: 650-812-3400

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:    JOI A. WHITE
   CARR & FERRELL LLP
   
   120 CONSTITUTION DRIVE
   MENLO PARK, California 94025
Mailing Address:    Joi A. White
   Carr & Ferrell LLP
   120 Constitution Drive
   Menlo Park, California 94025
        
Serial Number: 88467393
Internet Transmission Date: Tue Mar 10 21:48:32 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020031021483269
3603-88467393-7105579afc839674805458fd5f
191b8c821c5a2e4774acd8e0b9ea2620934e6ac8
-N/A-N/A-20200310211012118873