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
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
88636393 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 113 |
| MARK SECTION |
| MARK FILE NAME |
http://uspto.report/TM/88636393/mark.png |
| LITERAL ELEMENT |
DB |
| STANDARD CHARACTERS |
NO |
| USPTO-GENERATED IMAGE |
NO |
COLOR(S) CLAIMED
(If applicable) |
The color(s) black (for the oval) and white (for the lettering) is/are claimed as a feature of the mark. |
DESCRIPTION OF THE MARK
(and Color Location, if applicable) |
The mark consists of capital "DB" which represents the first letter of each word of the band/Company Digital Brains. "DB" appears to be
handwritten in block letters in white and is left of the center of a black oval. |
| ADDITIONAL STATEMENTS SECTION |
| MISCELLANEOUS STATEMENT |
Unfortunately, the application has been reviewed under a false premise that the Applicant provides music production services "for the benefit
of others." This is not the case and this never appeared anywhere on the application or in the TEAS Plus description provided. Taking the examiner's last argument first, the "SPECIMEN REQUIREMENT," I
have identified the services provided by Applicant as "entertainment services by a musical artist and producer, namely, musical composition for others and production of musical sound recordings." The
examiner has acknowledged that Applicant is a producer, but has rejected my application, inter alia, on the basis that my specimen fails to show that the applicant produces and composes music on
BEHALF of others. "On behalf of" does not appear in the description; the description merely says FOR others. In addition, "for others" does not apply to "production of musical sound recordings" at
all in the description. This description is picked from your pre-approved descriptions under the TEAS Plus system. The meaning of "for others" is open to interpretation. Taking the examiner's
meaning, and not mine (which I assumend was "for the listening enjoyment of others") the Applicant is subject to the compulsory license under 17 U.S.C. Section 115, so once any composition is
released by the band to the general public, anyone can license the composition without express permission, so long as they pay the statutory license fee to the publisher. Accordingly, Applicant does
provide musical composition services "for others" or "on behalf of others." Nothing in the description indicates that the "production of musical sound recordings" is performed "for others" otherwise
that phrase would have appeared at the end of the sentence and not after "musical composition." Given the fact that the Applicant does not produce music "for others" or "for the benefit of others,"
it should not be confused with the Registrant cited in the Examiner's report because its services are not similar. In addition, the Registrant has stated that their preferred "channel of trade" is
the production musical genre of folk music. Applicant does not play, produce, or compose folk music. Just because three unrelated studios - Trailblazer Studios, BKP Group, and Felt Music - indicate
that they might provide musical composition services does not mean that the Registrant's application gets to be expanded now to include services that Registrant never applied for or may not even have
the basic talent or skill to provide. A commercial music production studio is a service and a skill that is separate and distinct from composition and songwriting. Finally, the Applicant's logo is in
handwriting, in black and white, and in a circle. The Registrant's logo is in a typed font, in red and white, and in a rectangle. If the businesses are separate and distinct and there is no
likelihood of confusion, it would appear that the only similarity between the logos is the initials. However, there are other businesses that share initials but this would not cause confusion. |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/Stacey Schlitz/ |
| SIGNATORY'S NAME |
Stacey Schlitz |
| SIGNATORY'S POSITION |
Attorney of Record, Tennessee Bar Member |
| SIGNATORY'S PHONE NUMBER |
6156468740 |
| DATE SIGNED |
01/14/2020 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Tue Jan 14 18:40:26 EST 2020 |
| TEAS STAMP |
USPTO/ROA-XX.XXX.XXX.XXX-
20200114184026361645-8863
6393-70032a7fbb049a54be1a
ef96bc4f494653e28c4b057f4
b9c6eaf2c40909cf3-N/A-N/A
-20200114183247850093 |
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.
88636393 DB (Stylized and/or with Design, see http://uspto.report/TM/88636393/mark.png) has been amended as follows:
ADDITIONAL STATEMENTS
Miscellaneous Statement
Unfortunately, the application has been reviewed under a false premise that the Applicant provides music production services "for the benefit of others." This is not the case and this never appeared
anywhere on the application or in the TEAS Plus description provided. Taking the examiner's last argument first, the "SPECIMEN REQUIREMENT," I have identified the services provided by Applicant as
"entertainment services by a musical artist and producer, namely, musical composition for others and production of musical sound recordings." The examiner has acknowledged that Applicant is a
producer, but has rejected my application, inter alia, on the basis that my specimen fails to show that the applicant produces and composes music on BEHALF of others. "On behalf of" does not appear
in the description; the description merely says FOR others. In addition, "for others" does not apply to "production of musical sound recordings" at all in the description. This description is picked
from your pre-approved descriptions under the TEAS Plus system. The meaning of "for others" is open to interpretation. Taking the examiner's meaning, and not mine (which I assumend was "for the
listening enjoyment of others") the Applicant is subject to the compulsory license under 17 U.S.C. Section 115, so once any composition is released by the band to the general public, anyone can
license the composition without express permission, so long as they pay the statutory license fee to the publisher. Accordingly, Applicant does provide musical composition services "for others" or
"on behalf of others." Nothing in the description indicates that the "production of musical sound recordings" is performed "for others" otherwise that phrase would have appeared at the end of the
sentence and not after "musical composition." Given the fact that the Applicant does not produce music "for others" or "for the benefit of others," it should not be confused with the Registrant cited
in the Examiner's report because its services are not similar. In addition, the Registrant has stated that their preferred "channel of trade" is the production musical genre of folk music. Applicant
does not play, produce, or compose folk music. Just because three unrelated studios - Trailblazer Studios, BKP Group, and Felt Music - indicate that they might provide musical composition services
does not mean that the Registrant's application gets to be expanded now to include services that Registrant never applied for or may not even have the basic talent or skill to provide. A commercial
music production studio is a service and a skill that is separate and distinct from composition and songwriting. Finally, the Applicant's logo is in handwriting, in black and white, and in a circle.
The Registrant's logo is in a typed font, in red and white, and in a rectangle. If the businesses are separate and distinct and there is no likelihood of confusion, it would appear that the only
similarity between the logos is the initials. However, there are other businesses that share initials but this would not cause confusion.
SIGNATURE(S)
Response Signature
Signature: /Stacey Schlitz/ Date: 01/14/2020
Signatory's Name: Stacey Schlitz
Signatory's Position: Attorney of Record, Tennessee Bar Member
Signatory's Phone Number: 6156468740
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.
Serial Number: 88636393
Internet Transmission Date: Tue Jan 14 18:40:26 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202001141840263
61645-88636393-70032a7fbb049a54be1aef96b
c4f494653e28c4b057f4b9c6eaf2c40909cf3-N/
A-N/A-20200114183247850093