Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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. 

 

Specifically, the Office of the Deputy Commissioner for Trademark Examination Policy accepted a Letter of Protest received in connection with this application.  The evidence presented in the letter was forwarded to the trademark examining attorney for consideration.  See TMEP §1715.

 

Based upon this evidence, the trademark examining attorney is taking further action, as specified below.  See TMEP §1715.02(b).

 

In addition to the refusals in this Office action, all refusals and requirements in the previous two Office actions, are herein incorporated by reference.  Therefore, a proper response to this Office action must address each issue raised in the preceding Office actions as well as in this Office action.

 

 

 

 

 

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:

 

• Trademark Act, Section 2(a) False Connection with Request for Information
• Trademark Act, Section 2(c) Name of Living Individual

 

MAINTAINED AND CONTINUED ISSUES:

 

• Trademark Act, Section 2(d) refusal
• Identification of goods
• Domicile address
• Entity type
• Prior pending application

 

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.

 

Under Section 45, a “person” may be a natural person (i.e., an individual) or a juristic person (i.e., a corporation, partnership, association, union, or any other organization capable of suing or being sued).  15 U.S.C. §1127; TMEP §1203.03(a)(i); see Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 888, 160 USPQ 715, 720-21 (C.C.P.A. 1969); In re Pedersen, 109 USPQ2d 1185, 1191 (TTAB 2013). 

 

Trademark Act Section 2(a) prohibits registration of “matter which may . . . falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols.”  15 U.S.C. § 1052(a).  To establish that an applied-for mark falsely suggests a connection with a person or an institution, the following is required:

 

(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.”)

 

http://www.musicradar.com/news/gibson-does-the-right-thing-by-giving-the-oberheim-brand-back-to-tom-oberheim#main

(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.”)

 

http://ask.audio/articles/4-famous-classic-analog-synths-every-producer-should-know-about/oberheim-sem-amp-ob-xa

(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.”)

 

It is noted that the applied-for mark includes the term BEHRINGER. However, the fact that a person has never used a term as his or her name or identity does not mean the term may not be considered the identity of a person and does not obviate a false suggestion of a connection refusal.  See In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *3-6 (TTAB 2020) (holding TRUMP-IT marks with additional wording and designs falsely suggested a connection with President Trump even though he never used that term himself); In re Nieves & Nieves LLC, 113 USPQ2d 1629, 1635-36 (TTAB 2015) (holding PRINCESS KATE falsely suggested a connection with Kate Middleton even though she never used that term herself).  All that is required is that the applied-for mark clearly identify the person.  See In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *4 (citing In re Nieves & Nieves LLC, 113 USPQ2d at 1644; In re Urbano, 51 USPQ2d 1776, 1779 (TTAB 1999)).

 

Moreover, if applicant’s goods and/or services are of a type that the named person or institution sells or uses, as in the case at hand, and the named party is sufficiently famous, then it may be inferred that purchasers of the goods and/or services would be misled into making a false connection of sponsorship, approval, support or the like with the named party.  See, e.g., In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1647-48 (TTAB 2015) (holding ROYAL KATE used with applicant’s consumer products, including fashion products, suggested a connection with Kate Middleton would be inferred because evidence showed that Kate Middleton, by virtue of being the wife of Prince William of the British Royal family, has become a celebrity and fashion trend-setter the media reports on, including the clothes she wears, what she does, and what she buys); In re Cotter & Co., 228 USPQ 202, 204-05 (TTAB 1985) (holding WESTPOINT used with applicant’s firearms suggested sponsorship, approval, support or the like from West Point because evidence showed that West Point is a well-known U.S. Military Academy).

 

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

 

Registration is refused because the applied-for mark consists of or comprises a name, portrait, or signature identifying a particular living individual whose written consent to register the mark is not of record.  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §1206; see In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *7-9 (TTAB 2020); In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1649-50 (TTAB 2015).

 

Section 2(c) applies not only to the full name of an individual, but also to any first name, surname, shortened name, pseudonym, stage name, title, or nickname that identifies a particular living individual.  In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *8 (TTAB 2020) (holding registration of TRUMP-IT marks with additional wording and designs barred under Section 2(c) in the absence of consent to register, because the marks create a direct association with President Trump); In re Nieves & Nieves LLC, 113 USPQ2d 1629, 1639 (TTAB 2015) (holding registration of the mark PRINCESS KATE barred under Section 2(c) in the absence of consent to register, because the mark “points uniquely and unmistakably to Kate Middleton,” the Duchess of Cambridge, whose identity is renowned); In re Sauer, 27 USPQ2d 1073, 1074-75 (TTAB 1993) (holding registration of a mark containing BO, used in connection with a sports ball, barred under Section 2(c) in the absence of consent to register, because BO is the nickname of the well-known athlete BO JACKSON and thus use of the mark would lead to the assumption that he was associated with the goods), aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994). 

 

For purposes of Section 2(c), a name in a mark identifies a particular living individual if the person bearing the name will be associated with the mark as used on the goods or services because:  “(1) the person is so well known that the public would reasonably assume a connection between the person and the goods or services; or (2) the individual is publicly connected with the business in which the mark is used.”  In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *8 (TTAB 2020); In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1650 (TTAB 2015).

 

“Well-known individuals such as celebrities and world-famous political figures are entitled to the protection of Section 2(c) without having to evidence a connection with the involved goods or services.”  In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *8 (TTAB 2020) (citing In re Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010); In re Masucci, 179 USPQ 829, 830 (TTAB 1973)).

 

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).

 

Additionally, the fact that a mark also contains other matter, in addition to a name, portrait, or signature, does not alter the requirement for written consent to register from the identified individual.  See Reed v. Bakers Eng’g & Equip. Co., 100 USPQ 196, 199 (PTO 1954).

 

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.    

 

CLOSING

 

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

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 04, 2021 for

U.S. Trademark Application Serial No. 90121878

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Jean H. Im/

Trademark Examining Attorney

Law Office 101

U.S. Patent and Trademark Office

571-272-9303

jean.im@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from March 04, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”