To: | Music is 4 Lovers, LLC. (brett@ppkfirm.com) |
Subject: | U.S. Trademark Application Serial No. 88519670 - MUSIC IS 4 LOVERS - N/A |
Sent: | October 10, 2019 03:14:21 PM |
Sent As: | ecom121@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88519670
Mark: MUSIC IS 4 LOVERS
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Correspondence Address: |
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Applicant: Music is 4 Lovers, LLC.
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Reference/Docket No. N/A
Correspondence Email Address: |
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COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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: October 10, 2019
USPTO database searched; no conflicting marks found. The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
Applicant must address issues shown below. On Oct. 10, 2019, the examining attorney and Bretton I. Pollack, Esq. discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
Summary of Issues:
Refusal under Section 1, 2, and 45 – Does Not Function as a Trademark for Sound Recordings – Name of Performing Artist (Limited to Class 009 Goods)
This refusal is limited to applicant’s class 009 goods.
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).
(3) Amending the 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).
If applicant cannot satisfy one of the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), and the refusal will be withdrawn. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use along with satisfying one of the above requirements. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. If the same specimen is submitted with an allegation of use, and applicant does not either provide the additional evidence described above or amend to the Supplemental Register, the same refusal will issue.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).
Application has been amended as shown below. As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below. Please notify the examining attorney immediately of any objections. TMEP §707. In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted. 37 C.F.R. §2.71(a).
Disclaimer Statement Added
The following disclaimer statement is added to the record:
No claim is made to the exclusive right to use “MUSIC” apart from the mark as shown.
See 15 U.S.C. §1056(a); TMEP §§1213, 1213.08(a)(i).
Response Guidelines
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 refusal(s) and/or requirement(s) 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.
For this application to proceed further, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. In addition, because applicant filed a TEAS Plus application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee. See 37 C.F.R. §2.22(b)(1), (c). Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
If applicant does not timely respond to this Office action, the following class will be deleted from the application: Class 009. See 37 C.F.R. §2.65(a); TMEP §718.02(a).
In such case, the application will then proceed with the following class(es) only: Class 025, 035, 041. See TMEP §718.02(a).
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.
How to respond. Click to file a response to this nonfinal Office action.
/Dustin T. Bednarz/
Examining Attorney
USPTO Law Office 121
dustin.bednarz@uspto.gov
571-270-1151
RESPONSE GUIDANCE