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 09/30/2020) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
88841338 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 105 |
| MARK SECTION (current) |
| MARK FILE NAME |
http://uspto.report/TM/88841338/mark.png |
| LITERAL ELEMENT |
BAMBOO |
| STANDARD CHARACTERS |
NO |
| USPTO-GENERATED IMAGE |
NO |
COLOR(S) CLAIMED
(If applicable) |
Color is not claimed as a feature of the mark. |
DESCRIPTION OF THE MARK
(and Color Location, if applicable) |
The mark consists of the word Bamboo in stylized font. |
| MARK SECTION (proposed) |
| MARK FILE NAME |
\\TICRS\EXPORT18\IMAGEOUT 18\888\413\88841338\xml5 \ ROA0002.JPG |
| LITERAL ELEMENT |
BAMBOO |
| STANDARD CHARACTERS |
NO |
| USPTO-GENERATED IMAGE |
NO |
| COLOR MARK |
NO |
DESCRIPTION OF THE MARK
(and Color Location, if applicable) |
The mark consists of the word Bamboo in stylized font. |
| PIXEL COUNT ACCEPTABLE |
NO |
| PIXEL COUNT |
1652 x 439 |
| ARGUMENT(S) |
| To the United States Patent and Trademark Office (USPTO) Attention of Mr. Theodore Sotland Law Office 105 New York, October 12, 2020 Dear Mr.
Sotland, Please find below our response to the office action, received on 06/16/2020, in connection with the Application number: 88841338 BAMBOO Belonging to Pablo Martin Vazquez, Federico Leonardo
Veleno and Mariano Alexander Veleno hereinafter collectively referred to as the ?Applicant?, Concerning the Application serial number 88841338 BAMBOO: Summary of issues that the Office notified: 1.
Section 2(e)(1) Refusal ? Merely Descriptive 2. Mark on Drawing Differs from Mark on Specimen 3. Identification of Goods 4. Request for Information Applicant seeks to register the mark 88841338
BAMBOO for the goods in class 15. The Examining Attorney has refused the registration of the applied-for mark under Section 2(e)(1) for all goods, on the grounds of the mark being merely descriptive
of the goods and services applied for. Applicant submits that BAMBOO is eligible for registration on the Principal Register because it is inherently distinctive, thus the Applicant hereby presents
the following arguments: 1. Regarding the refusal based on Section 2(e)(1) refusal - Merely Descriptive. A. The term does not merely describe the Applicant?s goods and services Whether a given mark
is suggestive or merely descriptive depends on whether the mark "immediately conveys [?] knowledge of the ingredients, qualities, or characteristics of the goods [...] with which it is used" . Such
information must describe the goods or services with a degree of particularity? . Consequently, ?if one must exercise mature thought or follow a multi-stage reasoning process in order to determine
what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive? . That is not to say that the terms ?descriptive? and ?suggestive? are not mutually
exclusive: there is some degree of description in any suggestion or the suggestive process does not eventually occur. Having this in mind, the Applicant seeks to register the mark BAMBOO for:
?Guitars; Musical instruments; Ukeleles? in Class 15. Applicant?s goods are devices for producing a musical sound. The Examining Attorney has refused registration on the basis that ?BAMBOO? refers to
?any of various woody or arborescent grasses of tropical and temperate regions having hollow stems, thick rhizomes, and shoots that are used for food; the jointed stem of bamboo used especially for
building, furniture, and utensils?, and is thus descriptive of Applicant?s goods. Applicant respectfully disagrees since the mark is not merely descriptive of its goods because the mark has an
ambiguous meaning that requires consumers to use thought and perception to understand the mark?s relationship to the goods. B. Meaning of the word BAMBOO Pursuant to the above mentioned, the
Applicant would also like to respectfully point out that the word BAMBOO, that is part of the mark can have multiple meanings, thus, it cannot ?immediately describe? Applicant?s goods with any
?degree of particularity.? As such, the word BAMBOO can either mean: any tall treelike tropical or semitropical fast-growing grass of the genus Bambusa, having hollow woody- walled stems with
ringed joints and edible young shoots (bamboo shoots). the stem of any of these plants, used for building, poles, and furniture. any of various bamboo-like grasses of the genera Arundinaria,
Phyllostachys or Dendrocalamus. Thus, it is clear that the dictionary definition of the word strictly refers to a botanical area of expertise, indicating a plant or certain parts of it. Even more so,
bamboo or any parts of such a plant are generally used for building, poles, and furniture, not musical instruments, hence the mark does not clearly connect the Applicant?s goods to the wording. The
multiple possible meanings of the word entailed add layers of distinctiveness to Applicant?s mark and emphasize the mark?s suggestive nature. These various, multiple meanings, terms that Applicant?s
mark relies on, and the conditioning consumers have to recognize other terms to describe goods such as Applicant?s are indicative that consumers would not simply and instantaneously mentally connect
the Applicant?s mark to the Applicant?s goods. Instead, they would have to engage in a multi-step reasoning process and use additional thought, perception, or imagination to reach a conclusion as to
the nature of those goods Therefore, the Applicant?s mark does not follow regular etymological conventions and is built from a word with multiple meanings. This requires consumers to exercise their
thought, perception, or imagination to comprehend the mark?s relationship to Applicant?s goods, thus giving the mark a suggestive significance. In this regard, it is well established that if the
mental leap between the word(s) and the product?s attributes is not almost instantaneous, this strongly indicates suggestiveness, not descriptiveness. C. Conditions in which the purchase is made
Moreover, in the case at hand, we are dealing with musical instruments, whose purchase conditions clearly have a higher level of sophistication. Since BAMBOO does instantaneously lead to the
conceptual conclusion that the product is a musical instrument, not even for a specialized consumer, with specific knowledge, thus we are in the opinion that yet again, that the analyzed mark cannot
qualify as descriptive. D. USPTO has previously approved trademarks containing the word BAMBOO Additionally, to strengthen the Applicant?s point of view, marks containing the word BAMBOO, in various
combinations, in similarly as suggestive applications have already been registered by the USPTO. The Applicant would like to thus submit to the Examiner?s attention the following example: 4328280
BAMBOOM Class 15: Musical instruments E. Any doubts regarding descriptiveness should be resolved in favor of the Applicant. Concerning whether a term is either descriptive or suggestive, a relevant
answer can be deducted from the available doctrine. Thus, any doubts as to whether a mark (or a portion thereof) is descriptive, are to be resolved in favor of the Applicant: ?Because the line
between merely descriptive and only suggestive terms is so nebulous, the Trademark Board takes the position that doubt is resolved in favor of the applicant on the assumption that competitors have
the opportunity to oppose the registration once published and to present evidence that is usually not present in ex parte examination.? The Trademark Trial and Appeal board agrees with the
above-mentioned statement, thus strengthening this principle in multiple decisions, as briefly presented below: ?It is incumbent on the Board to balance the evidence of public understanding of the
mark against the degree of descriptiveness encumbering the mark, and to resolve reasonable doubt in favor of the applicant, in accordance with practice and precedent .? 2. Mark on Drawing Differs
from Mark on Specimen Notwithstanding the aforementioned, the Applicant respectfully submits the following amendment to the drawing of the mark, as per the Examiner?s suggestion: Submit a new drawing
of the mark that shows the mark on the specimen. 3. Identification of Goods Notwithstanding the aforementioned, the Applicant respectfully submits the following information in connection with the
goods in class 15: Applicant?s goods are not made of bamboo, hence an adjustment on the goods would be inaccurate and unnecessary. 4. Request for information Notwithstanding the aforementioned, the
Applicant respectfully submits the following information in connection with the goods in class 15: As previously mentioned, the Applicant?s goods in class 15, namely ?Guitars; Musical instruments;
Ukeleles? do not contain and do consist of bamboo. To summarize all the points raised in analyzing the degree of descriptiveness of the mark of the Applicant, we would like to indicate the following
aspects: The Applicant?s mark is not merely descriptive of its goods and services because the mark has an ambiguous meaning that requires potential buyers to use thought and perception to
understand the mark?s relationship to the goods. The word BAMBOO cannot immediately describe Applicant?s services with any degree of particularity. The purchasing conditions of musical
instruments are bound to a higher level of sophistication, thus, even for a buyer with musical background, the word BAMBOO does instantaneously lead to the conceptual conclusion that the product is a
musical instrument. When doubts exist as to whether a term is descriptive as applied to the goods or services for which registration is sought, those doubts should be resolved in favor of the
Applicant. Considering all the above-mentioned, the Applicant is in the opinion that in this case at hand, the mark has a non- descriptive meaning that requires consumers to use additional thought,
perception, and imagination to comprehend it. In light of the foregoing, we kindly request the Examining Attorney to withdraw his objection concerning the applied for mark and pass the application on
to publication on the Principal Register. Pablo Martin Vazquez, Federico Leonardo Veleno and Mariano Alexander Veleno Legally represented by Mr. Paul Cosmovici, LL.M., Attorney at law Member of the
New York Bar |
| EVIDENCE SECTION |
| EVIDENCE FILE NAME(S) |
| ORIGINAL PDF FILE |
evi_18825160134-202011120
14559882399_._Response_to _office_action_88841338_B AMBOO.pdf |
CONVERTED PDF FILE(S)
(10 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\888\413\88841338\xml5\ ROA0003.JPG |
| |
\\TICRS\EXPORT18\IMAGEOUT 18\888\413\88841338\xml5\ ROA0004.JPG |
| |
\\TICRS\EXPORT18\IMAGEOUT 18\888\413\88841338\xml5\ ROA0005.JPG |
| |
\\TICRS\EXPORT18\IMAGEOUT 18\888\413\88841338\xml5\ ROA0006.JPG |
| |
\\TICRS\EXPORT18\IMAGEOUT 18\888\413\88841338\xml5\ ROA0007.JPG |
| |
\\TICRS\EXPORT18\IMAGEOUT 18\888\413\88841338\xml5\ ROA0008.JPG |
| |
\\TICRS\EXPORT18\IMAGEOUT 18\888\413\88841338\xml5\ ROA0009.JPG |
| |
\\TICRS\EXPORT18\IMAGEOUT 18\888\413\88841338\xml5\ ROA0010.JPG |
| |
\\TICRS\EXPORT18\IMAGEOUT 18\888\413\88841338\xml5\ ROA0011.JPG |
| |
\\TICRS\EXPORT18\IMAGEOUT 18\888\413\88841338\xml5\ ROA0012.JPG |
| CORRESPONDENCE INFORMATION (current) |
| NAME |
Paul Cosmovici |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
usmark@cosmovici-ip.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
usmark@cosmovici-ip.com |
| DOCKET/REFERENCE NUMBER |
9080 |
| CORRESPONDENCE INFORMATION (proposed) |
| NAME |
Paul Cosmovici |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
usmark@cosmovici-ip.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
usmark@cosmovici-ip.com |
| DOCKET/REFERENCE NUMBER |
9080 |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/Paul Cosmovici/ |
| SIGNATORY'S NAME |
Paul Cosmovici |
| SIGNATORY'S POSITION |
Attorney of record, New York Bar member |
| DATE SIGNED |
11/12/2020 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Thu Nov 12 01:51:38 ET 2020 |
| TEAS STAMP |
USPTO/ROA-XXX.XX.XXX.XXX-
20201112015138736831-8884
1338-7509190b6ddc8759221e
778779cdec69ed3367f8eccbc
ff95b799c589b8be989a26-N/
A-N/A-2020111201455988239
9 |
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 09/30/2020) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
88841338 BAMBOO (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8884133 8/large) has been amended as follows:
MARK
Applicant proposes to amend the mark as follows:
Current: BAMBOO (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8884133 8/large)
Proposed: BAMBOO (Stylized and/or with Design, see
mark)
The applicant is not claiming color as a feature of the mark.
The mark consists of the word Bamboo in stylized font.
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
To the United States Patent and Trademark Office (USPTO) Attention of Mr. Theodore Sotland Law Office 105 New York, October 12, 2020 Dear Mr. Sotland, Please find below our response to the office
action, received on 06/16/2020, in connection with the Application number: 88841338 BAMBOO Belonging to Pablo Martin Vazquez, Federico Leonardo Veleno and Mariano Alexander Veleno hereinafter
collectively referred to as the ?Applicant?, Concerning the Application serial number 88841338 BAMBOO: Summary of issues that the Office notified: 1. Section 2(e)(1) Refusal ? Merely Descriptive 2.
Mark on Drawing Differs from Mark on Specimen 3. Identification of Goods 4. Request for Information Applicant seeks to register the mark 88841338 BAMBOO for the goods in class 15. The Examining
Attorney has refused the registration of the applied-for mark under Section 2(e)(1) for all goods, on the grounds of the mark being merely descriptive of the goods and services applied for. Applicant
submits that BAMBOO is eligible for registration on the Principal Register because it is inherently distinctive, thus the Applicant hereby presents the following arguments: 1. Regarding the refusal
based on Section 2(e)(1) refusal - Merely Descriptive. A. The term does not merely describe the Applicant?s goods and services Whether a given mark is suggestive or merely descriptive depends on
whether the mark "immediately conveys [?] knowledge of the ingredients, qualities, or characteristics of the goods [...] with which it is used" . Such information must describe the goods or services
with a degree of particularity? . Consequently, ?if one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term
indicates, the term is suggestive rather than merely descriptive? . That is not to say that the terms ?descriptive? and ?suggestive? are not mutually exclusive: there is some degree of description in
any suggestion or the suggestive process does not eventually occur. Having this in mind, the Applicant seeks to register the mark BAMBOO for: ?Guitars; Musical instruments; Ukeleles? in Class 15.
Applicant?s goods are devices for producing a musical sound. The Examining Attorney has refused registration on the basis that ?BAMBOO? refers to ?any of various woody or arborescent grasses of
tropical and temperate regions having hollow stems, thick rhizomes, and shoots that are used for food; the jointed stem of bamboo used especially for building, furniture, and utensils?, and is thus
descriptive of Applicant?s goods. Applicant respectfully disagrees since the mark is not merely descriptive of its goods because the mark has an ambiguous meaning that requires consumers to use
thought and perception to understand the mark?s relationship to the goods. B. Meaning of the word BAMBOO Pursuant to the above mentioned, the Applicant would also like to respectfully point out that
the word BAMBOO, that is part of the mark can have multiple meanings, thus, it cannot ?immediately describe? Applicant?s goods with any ?degree of particularity.? As such, the word BAMBOO can either
mean: any tall treelike tropical or semitropical fast-growing grass of the genus Bambusa, having hollow woody- walled stems with ringed joints and edible young shoots (bamboo shoots). the stem of
any of these plants, used for building, poles, and furniture. any of various bamboo-like grasses of the genera Arundinaria, Phyllostachys or Dendrocalamus. Thus, it is clear that the dictionary
definition of the word strictly refers to a botanical area of expertise, indicating a plant or certain parts of it. Even more so, bamboo or any parts of such a plant are generally used for building,
poles, and furniture, not musical instruments, hence the mark does not clearly connect the Applicant?s goods to the wording. The multiple possible meanings of the word entailed add layers of
distinctiveness to Applicant?s mark and emphasize the mark?s suggestive nature. These various, multiple meanings, terms that Applicant?s mark relies on, and the conditioning consumers have to
recognize other terms to describe goods such as Applicant?s are indicative that consumers would not simply and instantaneously mentally connect the Applicant?s mark to the Applicant?s goods. Instead,
they would have to engage in a multi-step reasoning process and use additional thought, perception, or imagination to reach a conclusion as to the nature of those goods Therefore, the Applicant?s
mark does not follow regular etymological conventions and is built from a word with multiple meanings. This requires consumers to exercise their thought, perception, or imagination to comprehend the
mark?s relationship to Applicant?s goods, thus giving the mark a suggestive significance. In this regard, it is well established that if the mental leap between the word(s) and the product?s
attributes is not almost instantaneous, this strongly indicates suggestiveness, not descriptiveness. C. Conditions in which the purchase is made Moreover, in the case at hand, we are dealing with
musical instruments, whose purchase conditions clearly have a higher level of sophistication. Since BAMBOO does instantaneously lead to the conceptual conclusion that the product is a musical
instrument, not even for a specialized consumer, with specific knowledge, thus we are in the opinion that yet again, that the analyzed mark cannot qualify as descriptive. D. USPTO has previously
approved trademarks containing the word BAMBOO Additionally, to strengthen the Applicant?s point of view, marks containing the word BAMBOO, in various combinations, in similarly as suggestive
applications have already been registered by the USPTO. The Applicant would like to thus submit to the Examiner?s attention the following example: 4328280 BAMBOOM Class 15: Musical instruments E. Any
doubts regarding descriptiveness should be resolved in favor of the Applicant. Concerning whether a term is either descriptive or suggestive, a relevant answer can be deducted from the available
doctrine. Thus, any doubts as to whether a mark (or a portion thereof) is descriptive, are to be resolved in favor of the Applicant: ?Because the line between merely descriptive and only suggestive
terms is so nebulous, the Trademark Board takes the position that doubt is resolved in favor of the applicant on the assumption that competitors have the opportunity to oppose the registration once
published and to present evidence that is usually not present in ex parte examination.? The Trademark Trial and Appeal board agrees with the above-mentioned statement, thus strengthening this
principle in multiple decisions, as briefly presented below: ?It is incumbent on the Board to balance the evidence of public understanding of the mark against the degree of descriptiveness
encumbering the mark, and to resolve reasonable doubt in favor of the applicant, in accordance with practice and precedent .? 2. Mark on Drawing Differs from Mark on Specimen Notwithstanding the
aforementioned, the Applicant respectfully submits the following amendment to the drawing of the mark, as per the Examiner?s suggestion: Submit a new drawing of the mark that shows the mark on the
specimen. 3. Identification of Goods Notwithstanding the aforementioned, the Applicant respectfully submits the following information in connection with the goods in class 15: Applicant?s goods are
not made of bamboo, hence an adjustment on the goods would be inaccurate and unnecessary. 4. Request for information Notwithstanding the aforementioned, the Applicant respectfully submits the
following information in connection with the goods in class 15: As previously mentioned, the Applicant?s goods in class 15, namely ?Guitars; Musical instruments; Ukeleles? do not contain and do
consist of bamboo. To summarize all the points raised in analyzing the degree of descriptiveness of the mark of the Applicant, we would like to indicate the following aspects: The Applicant?s mark
is not merely descriptive of its goods and services because the mark has an ambiguous meaning that requires potential buyers to use thought and perception to understand the mark?s relationship to the
goods. The word BAMBOO cannot immediately describe Applicant?s services with any degree of particularity. The purchasing conditions of musical instruments are bound to a higher level of
sophistication, thus, even for a buyer with musical background, the word BAMBOO does instantaneously lead to the conceptual conclusion that the product is a musical instrument. When doubts exist as
to whether a term is descriptive as applied to the goods or services for which registration is sought, those doubts should be resolved in favor of the Applicant. Considering all the above-mentioned,
the Applicant is in the opinion that in this case at hand, the mark has a non- descriptive meaning that requires consumers to use additional thought, perception, and imagination to comprehend it. In
light of the foregoing, we kindly request the Examining Attorney to withdraw his objection concerning the applied for mark and pass the application on to publication on the Principal Register. Pablo
Martin Vazquez, Federico Leonardo Veleno and Mariano Alexander Veleno Legally represented by Mr. Paul Cosmovici, LL.M., Attorney at law Member of the New York Bar
EVIDENCE
Original PDF file:
evi_18825160134-202011120
14559882399_._Response_to _office_action_88841338_B AMBOO.pdf
Converted PDF file(s) ( 10 pages)
Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10
Correspondence Information (current):
Paul Cosmovici
PRIMARY EMAIL FOR CORRESPONDENCE: usmark@cosmovici-ip.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): usmark@cosmovici-ip.com
The docket/reference number is 9080.
Correspondence Information (proposed):
Paul Cosmovici
PRIMARY EMAIL FOR CORRESPONDENCE: usmark@cosmovici-ip.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): usmark@cosmovici-ip.com
The docket/reference number is 9080.
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: /Paul Cosmovici/ Date: 11/12/2020
Signatory's Name: Paul Cosmovici
Signatory's Position: Attorney of record, New York Bar member
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: Paul Cosmovici
244 Madison Avenue
New York City, New York 10016
Mailing Address: Paul Cosmovici
244 Madison Avenue
New York City, New York 10016
Serial Number: 88841338
Internet Transmission Date: Thu Nov 12 01:51:38 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202011120151387
36831-88841338-7509190b6ddc8759221e77877
9cdec69ed3367f8eccbcff95b799c589b8be989a
26-N/A-N/A-20201112014559882399
