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)

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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. 88177163 CICADA(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/88177163/large) has been amended as follows:

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

In the Office Action dated February 14, 2019, the Examiner raised issues summarized as:

• Section 2(d) Refusal – Likelihood of Confusion – Partial Refusal

• Amended Identification and Classification of Services Requirement

• Multiple Class Application Requirement

• Substitute Specimen Requirement

   

  Each of these issues will be addressed in the order summarized.

   

  Response to Section 2(d) Refusal – Likelihood of Confusion
  Partial Refusal as to the Services Specified in the Office Action

  In the Office Action, registration of the applied-for mark is partially refused under Section 2(d). 

  Applicant amends the present application hereinbelow, without prejudice to presentation in a separate application, so that the identification of services does not include the services that are the subject of the partial refusal.  Applicant files herewith a Request to Divide and herein below provides a response to the Section 2(d) Refusal to be entered in the new application.  Applicant’s amendment in the present application obviates the rejection.  Specifically, the services are amended to:

  Art exhibitions and art exhibition services in Class 41; art café in Class 43

  In view of the amendment, Applicant respectfully requests withdrawal of the refusal.

  Response to Amended Identification and Classification of Services Requirement
  
  

  In response to the requirement that the identification of services be amended, Applicant proposes to amend the identification of services to:

  Class 41:  Art exhibitions and art exhibition services

  Class 43:  Art café

  Response to Multiple Class Application Requirements

  Applicant lists the services by their international class number and provides the filing fee with an additional $275 for the services in Class 43.  As an intent to use application, dates of first use, specimens, and a verified statement are not required. 

  Response to Substitute Statement Requirement

  Applicant amends this application to an intent to use application under Section 1(b), for which no specimen is required. 

Response to Be Entered in New Application

Applicant submits the following response to be entered in the new application that is created as a result of the Request to Divide filed herewith:

• In the Office Action dated February 14, 2019, the Examiner raised issues summarized as:

  Section 2(d) Refusal – Likelihood of Confusion – Partial Refusal

  • Amended Identification and Classification of Services Requirement

  • Multiple Class Application Requirement

  • Substitute Specimen Requirement

     

    Each of these issues will be addressed in the order summarized.  Applicant requests that the filing basis for the new application be intent-to-use.

     

    Response to Section 2(d) Refusal – Likelihood of Confusion

    In the Office Action, registration of the applied-for mark is refused under Section 2(d). 

    Specifically, the Examiner asserts that Applicant’s mark CICADA for “Night club, dance club and lounge services; arranging and conducting nightclub entertainment events” in Class 41 is likely to be confused with U.S. Registration No. 3,040,854.  Applicant requests reconsideration of this refusal, including consideration of the Amendment to the identification of services.  In the Request to Divide, Applicant amends these services in the new application to the following, removing services that remain in the original application and adding the words that are underlined: 

    Night club, dance club, and bar and cocktail lounge services; arranging and conducting nightclub entertainment events

    The registered mark U.S. Registration No. 3,040,854 is for the mark BURNING CICADA for “Entertainment services, namely live music concerts” in Class 41. 

    Applicant’s mark CICADA is distinct from the Registrant’s cited mark BURNING CICADA.  Consumers will recognize that Registrant’s BURNING CICADA mark will not be confused by the concurrent use of the cited mark with Applicant’s use of CICADA alone as a mark. 

    Registrant’s services are also quite different from those of Applicant.  Registrant’s services focus on live music concerts as a form of entertainment.  These services are rather different from Applicant’s services, as amended, which are “Night club, dance club, and bar and cocktail lounge services; arranging and conducting nightclub entertainment events.” 

    Applicant’s and Registrant’s services are in different markets for unrelated purposes.  Registrant’s identification of services focuses on live music concerts.  The specimen filed by Registrant in 2015 in support of its renewal confirms that Registrant’s services are live music concerts as exemplified by the picnic music festival depicted in the specimen.  Registrant therefore holds concerts that are one-time live events.  Attendees to these events are planning in advance to attend a live music concert.

    In contrast, Applicant’s services “Night club, dance club, and bar and cocktail lounge services; arranging and conducting nightclub entertainment events” focus on club services, which are quite different from live concerts.  Night club services provide a place of entertainment that is open at night, usually serving food and alcohol and providing both music and space for dancing and often having a floor show.  The focus of night clubs, dance clubs, and bar and cocktail lounges is on dancing, and attendees are looking for the atmosphere and consistency of a club, where they can go dancing and see others who frequent the club.  The additional services Applicant intends to provide, arranging and conducting nightclub entertainment events, are also not likely to be confused with an entity providing live music concert services. 

    Therefore, Registrant and Applicant serve different markets offering different services.  The differences between Applicant’s services and the services associated with the BURNING CICADA registered mark are significant.  In summary, the CICADA mark is different from Registrant’s mark, the services are not related, and the circumstances surrounding their marketing would not give rise to a belief that the services emanate from the same source.

    Amended Identification and Classification of Services Requirement

     

    As an initial response to the requirement that the original identification and classification of services be amended, Applicant is filing herewith a request to divide the services that were in the original application so that the present application is directed to night club, dance club and lounge services; arranging and conducting nightclub entertainment events in Class 41.  In the Office Action, the Examiner found the wording “lounge services” to be indefinite.  In response, Applicant seeks to amend the identification of services, and appreciates the Examiner’s suggested language.  As amended, the services are:

    Class 41:  Night club, dance club, and bar and cocktail lounge services; arranging and conducting nightclub entertainment events

    Multiple Class Application Requirement

    Applicant lists the services by their international class number.  As divided, this application does not have multiple classes as all the services are in Class 41. 

    Response to Substitute Statement Requirement

    Applicant amends this application to an intent-to-use application under Section 1(b), for which no specimen is required.

  
  

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Night club, dance club and lounge services; arranging and conducting nightclub entertainment events; art exhibitions and art exhibition services; art cafe
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 09/01/2018 and first used in commerce at least as early as 09/01/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Night club, dance club and lounge services; Art exhibitions and art exhibition services; arranging and conducting nightclub entertainment events; art cafeClass 041 for Art exhibitions and art exhibition services
Deleted Filing Basis: 1(a)
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 hereby adds the following class of goods/services to the application:
New: Class 043 for art cafe
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 AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Cicada, LLC, a limited liability company legally organized under the laws of Massachusetts, having an address of
      144 Lincoln Street, Unit 2
      Boston, Massachusetts 02111
      United States

Proposed: Cicada LLC, a limited liability company legally organized under the laws of Massachusetts, having an address of
      144 Lincoln Street, Unit 2
      Boston, Massachusetts 02111
      United States

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the 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 application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Susan G. L. Glovsky/      Date: 06/10/2019
Signatory's Name: Susan G. L. Glovsky
Signatory's Position: Attorney of Record, Massachusetts Bar Member
Signatory's Phone Number: (617) 607-5900


Response Signature
Signature: /Susan G. L. Glovsky/     Date: 06/10/2019
Signatory's Name: Susan G. L. Glovsky
Signatory's Position: Attorney of Record, Massachusetts Bar Member

Signatory's Phone Number: (617) 607-5900

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
RAM Sale Number: 88177163
RAM Accounting Date: 06/11/2019
        
Serial Number: 88177163
Internet Transmission Date: Mon Jun 10 14:22:10 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019061014221060
7492-88177163-62054edc92be1cf0276e6644ba
3f9292c32d6f872744d0d956e8d85749f78fab6-
DA-597-20190610141935264989