United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90121878
Mark: BEHRINGER OBERHEIM
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Correspondence Address: |
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Applicant: Music Tribe Global Brands Ltd.
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Reference/Docket No. 10166800TF
Correspondence Email Address: |
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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: March 04, 2021
This Office action is supplemental to and supersedes the previous Office actions issued on December 16 and 28, 2020 in connection with this application. The assigned trademark examining attorney inadvertently omitted refusals relevant to the mark in the subject application. See TMEP §§706, 711.02.
Based upon this evidence, the trademark examining attorney is taking further action, as specified below. See TMEP §1715.02(b).
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s).
The following is a SUMMARY OF ISSUES that applicant must address:
NEW ISSUES:
MAINTAINED AND CONTINUED ISSUES:
Applicant must respond to all issues raised in this Office action and the previous Office actions of December 16 and 28, 2020, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
TRADEMARK ACT, SECTION 2(A) FALSE CONNECTION
Registration is refused because the applied-for mark consists of or includes matter that may falsely suggest a connection with Tom Oberheim. Trademark Act Section 2(a), 15 U.S.C. §1052(a). Although the person is not connected with the goods provided by applicant under the applied-for mark, Tom Oberheim is so well-known that consumers would presume a connection. See id.
(1) The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution.
(2) The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution.
(3) The person or institution identified in the mark is not connected with the goods that are sold or will be sold or services that are performed or will be performed by applicant under the mark.
(4) The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods and/or services.
In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *3 (TTAB 2020) (citing Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983); In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1643 (TTAB 2015); In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013)).
The attached Internet evidence establishes that the Tom Oberheim is a famous audio engineer and electronics engineer well-known for designing effects processors, analog synthesizers, sequencers, and drum machines. The evidence indicates that due to his fame in the relevant electronic music instrument industry, the surname Oberheim uniquely and unmistakably points to Tom Oberheim and a connection with Tom Oberheim would be presumed when applicant’s mark is used on its goods. The evidence was found using the GOOGLE® search engine at the following:
Tom Oberheim, http://en.wikipedia.org/wiki/Tom_Oberheim, viewed March 4, 2021 at 9:56 a.m.
(“Thomas Elroy Oberheim (Born July 7, 1936, Manhattan, Kansas), known as Tom Oberheim, is an American audio engineer and electronics engineer best known for designing effects processors, analog synthesizers, sequencers, and drum machines. He has been the founder of four audio electronics companies, most notably Oberheim Electronics. He was also a key figure in the development and adoption of the MIDI standard.”)
(MUSIC RADAR: “Gibson “does the right thing” by giving the Oberheim brand back to Tom Oberheim…“Let’s do the right thing by putting the Oberheim brand back in the hands of its’ namesake founder Tom Oberheim.”)
http://www.soundonsound.com/reviews/tom-oberheim-sem
(SOUND ON SOUND: Tom Oberheim has returned to the analogue synth fold with a revised and updated version of his classic '70s monosynth, the celebrated Synthesizer Expander Module. The Oberheim Synthesizer Expander Module was one of the world's first self‑contained synthesizer modules.”)
http://www.gearnews.com/tom-oberheim-announces-tvs-pro-special-edition/
(GEARNEWS: “Tom Oberheim announces TVS Pro Special Edition…The Oberheim TVS Pro is back by popular demand in a Special Edition complete with original Oberheim badge and personally signed by Tom.”)
http://www.redbullmusicacademy.com/lectures/tom-oberheim-polyphonic-one-love
(RED BULL MUSIC ACADEMY: “From the late 1960s to the present day, Tom Oberheim has shaped the development of modern musicianship in a way that very few others manage to, building legendary devices that have been used by everyone from the Pat Metheny Group to Underground Resistance. In fact, for a time in the 1980s it seemed just about impossible to score a hit without an Oberheim DMX or OB-Xa – just ask Run-D.M.C. and Van Halen. What’s more, Oberheim has lost none of the enthusiasm that led him to the industry in the first place.In his 2008 Red Bull Music Academy lecture, Oberheim talked about the era of the great analog synth builders, sonic textures and his personal philosophy of the creative process.”)
(ASK AUDIO: “4 Famous Classic Analog Synths Every Producer Should Know About…3. Oberheim SEM & OB-Xa…The very earliest analog synths were monophonic, but of course eventually polyphonic models were developed. Another synth pioneer, Tom Oberheim, provided musicians with a number of classic designs. The SEM - it stands for Synthesizer Expander Module - was Oberheim’s way of offering a modular approach to polyphony.”)
REQUEST FOR INFORMATION
Due to the renown of the institution or person named in the mark, and the fact that there is no information in the application record regarding a connection with applicant, applicant must specify whether the person or institution named in the mark has any connection with applicant’s goods and/or services, and if so, must describe the nature and extent of that connection. See 37 C.F.R. §2.61(b); TMEP §1203.03(c)(i).
Based on the foregoing, registration is refused under Trademark Act, Section 2(a).
The applicant should not the following additional grounds for refusal.
TRADEMARK ACT, SECTION 2(C) NAME OF LIVING INDIVIDUAL
As discussed earlier, the surname OBERHEIM in the applied-for mark unmistakably points to the Tom Oberheim, who is so well-known in relation to applicant’s type of goods and within the relevant industry that the public would reasonably assume a connection between Tom Oberheim and the applicant’s goods. Because a written consent to register the mark by Tom Oberheim is not of record, registration is refused under Trademark Act Section 2(c)
The refusal under Section 2(c) will be withdrawn if applicant provides both of the following:
(1) A statement that the name shown in the mark identifies Tom Oberheim, a living individual whose consent is of record.
(2) A written consent, personally signed by the individual whose name, signature, or portrait appears in the mark, authorizing applicant to register the identifying matter as a trademark and/or service mark with the USPTO; for example, an applicant may use, if applicable, the following: “I, Tom Oberheim, consent to the use and registration of my OBERHEIM as a trademark and/or service mark with the USPTO.”
See TMEP §§813, 813.01(a), 1206.04(a).
Applicant is advised that the written consent must include a statement of the party’s consent to applicant’s registration, and not just the use, of the identifying matter as a trademark. See Krause v. Krause Publ’ns, Inc., 76 USPQ2d 1904, 1912-13 (TTAB 2005); In re New John Nissen Mannequins, 227 USPQ 569, 571 (TTAB 1985); TMEP §1206.04(a).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
How to respond. Click to file a response to this nonfinal Office action.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/Jean H. Im/
Trademark Examining Attorney
Law Office 101
U.S. Patent and Trademark Office
571-272-9303
jean.im@uspto.gov
RESPONSE GUIDANCE