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 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`Request for Reconsideration after Final Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`ARGUMENT(S)
`
`The table below presents the data as entered.
`
`Entered
`
`79231286
`
`LAW OFFICE 122
`
`SENSORY MARK
`
`Sound/Motion Mark
`
`Response
`
`This Request for Reconsideration answers the Office Action issued on June 13, 2019 for Application Serial No. 79/231,286 (the
`
`“Application”) for the Haribo Sound Mark (the “Mark”), owned by Rigo Trading S.A. (the “Applicant”). Please consider the following.
`
`Examiner’s Inquiries
`
`The Examiner has asked Applicant to respond to specific questions regarding the Mark. Below are answers to the Examiner’s
`
`inquiries:
`
`1. At this time, the Mark does not emanate from the goods, their packaging or a point-of-sale display. As such, no example is available.
`
`2. The Mark is not used in the operation of the goods.
`
`3. The Mark is used in advertising of the claimed goods. Examples are attached as Exhibits A-D.
`
`Remarks
`
`The Examiner has refused registration claiming the submitted advertising examples fail to show how the applied-for mark indicates the
`
`source of the goods because the Mark is integrated with singing voices. However, consumers encountering the submitted advertising examples
`
`will recognize the tune of the Haribo Sound Mark as a trademark separate from the singing component.
`
`Specifically, Applicant uses the Mark in connection with its goods through its licensee and related company, Haribo. As a licensee and
`
`related company, Haribo’s use of the Mark inures to the benefit of Applicant. TMEP § 1201.03.
`
`Over the years, Haribo has extensively used the Mark in the United States in connection with its branded gummies, including its
`
`
`
`
`
`
`PTO Form 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`Request for Reconsideration after Final Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`ARGUMENT(S)
`
`The table below presents the data as entered.
`
`Entered
`
`79231286
`
`LAW OFFICE 122
`
`SENSORY MARK
`
`Sound/Motion Mark
`
`Response
`
`This Request for Reconsideration answers the Office Action issued on June 13, 2019 for Application Serial No. 79/231,286 (the
`
`“Application”) for the Haribo Sound Mark (the “Mark”), owned by Rigo Trading S.A. (the “Applicant”). Please consider the following.
`
`Examiner’s Inquiries
`
`The Examiner has asked Applicant to respond to specific questions regarding the Mark. Below are answers to the Examiner’s
`
`inquiries:
`
`1. At this time, the Mark does not emanate from the goods, their packaging or a point-of-sale display. As such, no example is available.
`
`2. The Mark is not used in the operation of the goods.
`
`3. The Mark is used in advertising of the claimed goods. Examples are attached as Exhibits A-D.
`
`Remarks
`
`The Examiner has refused registration claiming the submitted advertising examples fail to show how the applied-for mark indicates the
`
`source of the goods because the Mark is integrated with singing voices. However, consumers encountering the submitted advertising examples
`
`will recognize the tune of the Haribo Sound Mark as a trademark separate from the singing component.
`
`Specifically, Applicant uses the Mark in connection with its goods through its licensee and related company, Haribo. As a licensee and
`
`related company, Haribo’s use of the Mark inures to the benefit of Applicant. TMEP § 1201.03.
`
`Over the years, Haribo has extensively used the Mark in the United States in connection with its branded gummies, including its
`
`
`
`
`
`
`
`famous Haribo “GOLDBEAR”, “SOUR GOLDBEAR”, and “HAPPY COLA” branded gummies (see Behler Declaration attached).
`
`Furthermore, for at least the last five years, Haribo has extensively and consistently used the Mark in its marketing, advertising, promotions
`
`and related activities in the United States. Haribo has advertised and promoted its goods using the Mark through a variety of ways including,
`
`but not limited to, television advertisements featuring the Mark and social media advertisements featuring a shortened version of the Mark (see
`
`representative examples attached as Exhibits A-D).
`
`From 2015 to 2019, Applicant’s television advertising expenditures featuring the Mark were in excess of $50,000,000, including over
`
`$1,000,000 in 2015 and over $10,000,000 each year from 2016 to 2019. During the years from 2015 to 2019, Haribo’s television
`
`advertisements have aired for over 70 total weeks.
`
`As a result of Applicant’s use and advertising of the Mark, the consuming public will identify the tune of the Haribo Sound Mark as a
`
`trademark separate from any singing component played simultaneously with the Mark. Therefore, the submitted advertising examples
`
`adequately demonstrate that the Mark identifies the source of the goods.
`
`Conclusion
`
`In light of the above, Applicant respectfully submits that adequate examples demonstrating use of the Mark have been provided and
`
`that Application No. 79/231,286 is in condition for publication. Additionally, Applicant is filing a Notice of Appeal concurrently with this
`
`response.
`
`EVIDENCE SECTION
`
` EVIDENCE FILE NAME(S)
`
` ORIGINAL FILE
`
` ORIGINAL FILE
`
` ORIGINAL FILE
`
` ORIGINAL FILE
`
` ORIGINAL PDF FILE
`
` CONVERTED PDF FILE(S)
` (2 pages)
`
`APPLICANT-SUPPLIED FILE (SOUND/MOTION)
`
`APPLICANT-SUPPLIED FILE (SOUND/MOTION)
`
`APPLICANT-SUPPLIED FILE (SOUND/MOTION)
`
`APPLICANT-SUPPLIED FILE (SOUND/MOTION)
`
`evi_3898140130-20191213083405332535_._Behler_Declaration.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\792\312\79231286\xml12\RFR0002.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\792\312\79231286\xml12\RFR0003.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`A Declaration and television and social media advertising.
`
`ATTORNEY SECTION (current)
`
`NAME
`
`ATTORNEY BAR MEMBERSHIP NUMBER
`
`YEAR OF ADMISSION
`
`U.S. STATE/ COMMONWEALTH/ TERRITORY
`
`Mark J. Liss
`
`NOT SPECIFIED
`
`NOT SPECIFIED
`
`NOT SPECIFIED
`
`FIRM NAME
`
`LEYDIG, VOIT & MAYER, LTD.
`
`
`
`
`
`
`
`INTERNAL ADDRESS
`
`STREET
`
`CITY
`
`STATE
`
`POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`FAX
`
`
`180 N STETSON AVE,
`
`2 PRUDENTIAL PLZ STE 4900
`
`CHICAGO
`
`Illinois
`
`60601
`
`US
`
`312-616-5600
`
`312-616-5700
`
`trademark@leydig.com
`
`AUTHORIZED TO COMMUNICATE VIA EMAIL
`
`DOCKET/REFERENCE NUMBER
`
`ATTORNEY SECTION (proposed)
`
`NAME
`
`ATTORNEY BAR MEMBERSHIP NUMBER
`
`YEAR OF ADMISSION
`
`U.S. STATE/ COMMONWEALTH/ TERRITORY
`
`Yes
`
`740584
`
`Mark J. Liss
`
`XXX
`
`XXXX
`
`XX
`
`FIRM NAME
`
`INTERNAL ADDRESS
`
`STREET
`
`CITY
`
`STATE
`
`POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`FAX
`
`
`AUTHORIZED TO COMMUNICATE VIA EMAIL
`
`DOCKET/REFERENCE NUMBER
`
`OTHER APPOINTED ATTORNEY
`
`CORRESPONDENCE SECTION (current)
`
`NAME
`
`FIRM NAME
`
`INTERNAL ADDRESS
`
`STREET
`
`CITY
`
`STATE
`
`POSTAL CODE
`
`COUNTRY
`
`LEYDIG, VOIT & MAYER, LTD.
`
`180 N STETSON AVE,
`
`2 PRUDENTIAL PLZ STE 4900
`
`CHICAGO
`
`Illinois
`
`60601
`
`United States
`
`312-616-5600
`
`312-616-5700
`
`trademark@leydig.com
`
`Yes
`
`740584
`
`Stella M. Brown, Laura M. Schaefer, Kyle A. Migliorini
`
`MARK J. LISS
`
`LEYDIG, VOIT & MAYER, LTD.
`
`180 N STETSON AVE,
`
`2 PRUDENTIAL PLZ STE 4900
`
`CHICAGO
`
`Illinois
`
`60601
`
`US
`
`
`
`PHONE
`
`FAX
`
`
`AUTHORIZED TO COMMUNICATE VIA EMAIL
`
`DOCKET/REFERENCE NUMBER
`
`CORRESPONDENCE SECTION (proposed)
`
`NAME
`
`FIRM NAME
`
`INTERNAL ADDRESS
`
`STREET
`
`CITY
`
`STATE
`
`POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`FAX
`
`
`AUTHORIZED TO COMMUNICATE VIA EMAIL
`
`DOCKET/REFERENCE NUMBER
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`CONCURRENT APPEAL NOTICE FILED
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`312-616-5600
`
`312-616-5700
`
`trademark@leydig.com
`
`Yes
`
`740584
`
`Mark J. Liss
`
`LEYDIG, VOIT & MAYER, LTD.
`
`180 N STETSON AVE,
`
`2 PRUDENTIAL PLZ STE 4900
`
`CHICAGO
`
`Illinois
`
`60601
`
`United States
`
`312-616-5600
`
`312-616-5700
`
`trademark@leydig.com
`
`Yes
`
`740584
`
`/Mark J. Liss/
`
`Mark J. Liss
`
`Attorney of record, IL bar member
`
`312-616-5600
`
`12/13/2019
`
`YES
`
`YES
`
`Fri Dec 13 08:47:27 EST 2019
`
`USPTO/RFR-XX.XX.XXX.XXX-2
`0191213084727898375-79231
`286-700a83fbbbc77986a5888
`adb4e675acabd96be0214a747
`89d5618dcce89cc30f3-N/A-N
`/A-20191213083405332535
`
`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 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`
`
`Request for Reconsideration after Final Action
`To the Commissioner for Trademarks:
`
`Application serial no. 79231286 Sound/Motion Mark (Sound/Motion Mark) has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`Response
`
`This Request for Reconsideration answers the Office Action issued on June 13, 2019 for Application Serial No. 79/231,286 (the
`
`“Application”) for the Haribo Sound Mark (the “Mark”), owned by Rigo Trading S.A. (the “Applicant”). Please consider the following.
`
`Examiner’s Inquiries
`
`The Examiner has asked Applicant to respond to specific questions regarding the Mark. Below are answers to the Examiner’s inquiries:
`
`1. At this time, the Mark does not emanate from the goods, their packaging or a point-of-sale display. As such, no example is available.
`
`2. The Mark is not used in the operation of the goods.
`
`3. The Mark is used in advertising of the claimed goods. Examples are attached as Exhibits A-D.
`
`Remarks
`
`The Examiner has refused registration claiming the submitted advertising examples fail to show how the applied-for mark indicates the
`
`source of the goods because the Mark is integrated with singing voices. However, consumers encountering the submitted advertising examples
`
`will recognize the tune of the Haribo Sound Mark as a trademark separate from the singing component.
`
`Specifically, Applicant uses the Mark in connection with its goods through its licensee and related company, Haribo. As a licensee and
`
`related company, Haribo’s use of the Mark inures to the benefit of Applicant. TMEP § 1201.03.
`
`Over the years, Haribo has extensively used the Mark in the United States in connection with its branded gummies, including its famous
`
`Haribo “GOLDBEAR”, “SOUR GOLDBEAR”, and “HAPPY COLA” branded gummies (see Behler Declaration attached). Furthermore, for
`
`at least the last five years, Haribo has extensively and consistently used the Mark in its marketing, advertising, promotions and related activities
`
`in the United States. Haribo has advertised and promoted its goods using the Mark through a variety of ways including, but not limited to,
`
`television advertisements featuring the Mark and social media advertisements featuring a shortened version of the Mark (see representative
`
`examples attached as Exhibits A-D).
`
`From 2015 to 2019, Applicant’s television advertising expenditures featuring the Mark were in excess of $50,000,000, including over
`
`$1,000,000 in 2015 and over $10,000,000 each year from 2016 to 2019. During the years from 2015 to 2019, Haribo’s television advertisements
`
`
`
`
`
`
`
`have aired for over 70 total weeks.
`
`As a result of Applicant’s use and advertising of the Mark, the consuming public will identify the tune of the Haribo Sound Mark as a
`
`trademark separate from any singing component played simultaneously with the Mark. Therefore, the submitted advertising examples adequately
`
`demonstrate that the Mark identifies the source of the goods.
`
`Conclusion
`
`In light of the above, Applicant respectfully submits that adequate examples demonstrating use of the Mark have been provided and that
`
`Application No. 79/231,286 is in condition for publication. Additionally, Applicant is filing a Notice of Appeal concurrently with this response.
`
`EVIDENCE
`Evidence in the nature of A Declaration and television and social media advertising. has been attached.
`Original Specimen:
`APPLICANT-SUPPLIED FILE (SOUND/MOTION)
`Original Specimen:
`APPLICANT-SUPPLIED FILE (SOUND/MOTION)
`Original Specimen:
`APPLICANT-SUPPLIED FILE (SOUND/MOTION)
`Original Specimen:
`APPLICANT-SUPPLIED FILE (SOUND/MOTION)
`Original PDF file:
`evi_3898140130-20191213083405332535_._Behler_Declaration.pdf
`Converted PDF file(s) ( 2 pages)
`Evidence-1
`Evidence-2
`
`The applicant's current attorney information: Mark J. Liss. Mark J. Liss of LEYDIG, VOIT & MAYER, LTD., is located at
`
` 180 N STETSON AVE,
` 2 PRUDENTIAL PLZ STE 4900
` CHICAGO, Illinois 60601
` US
`The docket/reference number is 740584.
`
`The phone number is 312-616-5600.
`
`The fax number is 312-616-5700.
`
`The email address is trademark@leydig.com
`
`The applicants proposed attorney information: Mark J. Liss. Other appointed attorneys are Stella M. Brown, Laura M. Schaefer, Kyle A.
`Migliorini. Mark J. Liss of LEYDIG, VOIT & MAYER, LTD., is a member of the XX bar, admitted to the bar in XXXX, bar membership no.
`XXX, and the attorney(s) is located at
`
` 180 N STETSON AVE,
` 2 PRUDENTIAL PLZ STE 4900
` CHICAGO, Illinois 60601
` United States
`
`
`
`
`
`
`The docket/reference number is 740584.
`
`The phone number is 312-616-5600.
`
`The fax number is 312-616-5700.
`
`The email address is trademark@leydig.com
`
`Mark J. Liss submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a
`U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
`
`The applicant's current correspondence information: MARK J. LISS. MARK J. LISS of LEYDIG, VOIT & MAYER, LTD., is located at
`
` 180 N STETSON AVE,
` 2 PRUDENTIAL PLZ STE 4900
` CHICAGO, Illinois 60601
` US
`The docket/reference number is 740584.
`
`The phone number is 312-616-5600.
`
`The fax number is 312-616-5700.
`
`The email address is trademark@leydig.com
`
`The applicants proposed correspondence information: Mark J. Liss. Mark J. Liss of LEYDIG, VOIT & MAYER, LTD., is located at
`
` 180 N STETSON AVE,
` 2 PRUDENTIAL PLZ STE 4900
` CHICAGO, Illinois 60601
` United States
`The docket/reference number is 740584.
`
`The phone number is 312-616-5600.
`
`The fax number is 312-616-5700.
`
`The email address is trademark@leydig.com
`
`SIGNATURE(S)
`Request for Reconsideration Signature
`Signature: /Mark J. Liss/ Date: 12/13/2019
`Signatory's Name: Mark J. Liss
`Signatory's Position: Attorney of record, IL bar member
`
`Signatory's Phone Number: 312-616-5600
`
`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.
`
`The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.
`
`Mailing Address: MARK J. LISS
` LEYDIG, VOIT & MAYER, LTD.
` 180 N STETSON AVE,
`
`
`
` 2 PRUDENTIAL PLZ STE 4900
` CHICAGO, Illinois 60601
`Mailing Address: Mark J. Liss
` LEYDIG, VOIT & MAYER, LTD.
` 180 N STETSON AVE,
` 2 PRUDENTIAL PLZ STE 4900
` CHICAGO, Illinois 60601
`
`Serial Number: 79231286
`Internet Transmission Date: Fri Dec 13 08:47:27 EST 2019
`TEAS Stamp: USPTO/RFR-XX.XX.XXX.XXX-2019121308472789
`8375-79231286-700a83fbbbc77986a5888adb4e
`675acabd96be0214a74789d5618dcce89cc30f3-
`N/A-N/A-20191213083405332535
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Christina Calloway
`Examining Attorney
`Law Office 122
`
`) )
`
`)
`)
`)
`)
`)
`
`Rigo Trading S.A.
`
`Serial No. 79/231,286
`
`Filed: February 13, 2018
`
`Mark: Haribo Sound Mark
`
`DECLARATION
`
`I, Alexander Behler, being warned that willful false statements and the like so made are
`punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and. that such willful, false
`statements may jeopardize the validity of the application or any resulting registration, declares
`that the following statements are true to the best of my knowledge and belief.
`
`1 .
`
`U.)
`
`I, Alexander Behler. Director of Rigo Trading S.A. (“Rigo”), am authorized to make this
`statement on Rigo’s behalf.
`
`Rigo, a Luxembourg Corporation, located at Building B, 6 Route de Treves,
`Senningerberg, Luxembourg L-2633, are representatives of the Haribo Group (“Haribo”).
`
`Rigo, the Applicant of the applied-for Haribo Sound Mark (the “Mark”), uses the Mark in
`connection With its confectionary products through its licensee and related company,
`Haribo.
`
`Over the years, Haribo has used the Mark in connection with several of its branded
`gummy products, including “GOLDBEAR”, “SOUR GOLDBEAR”, and “HAPPY
`COLA”.
`
`Haribo has consistently used and promoted the Mark in its marketing, advertising,
`promotions, and related activities for at least the last five years.
`
`Haribo has advertised and promoted its goods using the Mark through a variety of
`marketing channels, including television advertisements featuring the Mark and social
`media advertisements featuring a shortened version of the Mark. Attached as Exhibits A-
`D are representative samples of these advertising materials.
`
`During the years from 2015 to 2019, Haribo’s television advertising expenditures
`featuring the Mark were in excess of $50,000,000, including over $1,000,000 in 2015 and
`over $ 10,000,000 each year from 2016 to 2019.
`
`During the years from 2015 to 2019, Haribo’s television advertisements have aired for
`over 70 total weeks.
`
`
`
`9. As a result of Haribo’s substantially exclusive and continuous use of the Mark in
`commerce and Haribo’s advertising and promotion thereof, the consuming public
`recognizes the Mark as indicating high quality confectionary products originating
`exclusively from Haribo.
`
`10. As a result of Haribo’s use and advertising of the Mark, the consuming public will
`recognize the tune of the Haribo Sound Mark as a trademark separate from any singing
`component played simultaneously with the Mark.
`
`1 1. As a licensee and related company, Haribo’s use of the Mark inures to the benefit of the
`Applicant, Rigo. TMEP § 1201.03.
`
`Rigo Trading S.A.
`
`Dated: December 12, 2019
`Name: Alexander Behler
`Title: Director
`
`
`
`
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