To:
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`Subject:
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`Sent:
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`Sent As:
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`Attachments:
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`Rigo Trading S.A. (trademark@leydig.com)
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`U.S. TRADEMARK APPLICATION NO. 79231286 - 740584
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`6/13/2019 12:27:42 PM
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`ECOM122@USPTO.GOV
`
`United States Patent and Trademark Office (USPTO)
`
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application
`Serial No. 79231286
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`Mark:       
`
`Correspondence
`Address: 
`MARK J. LISS
`
`LEYDIG, VOIT &
`MAYER, LTD.
`
`2 PRUDENTIAL PLZ
`STE 4900
`
`180 N STETSON
`AVE,
`
`CHICAGO, IL 60601
`
`Applicant:   Rigo
`Trading S.A.
`
`    
`
`Reference/Docket
`No. 740584
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`      OFFICE ACTION
`
`Correspondence
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`Email Address:  
`
`trademark@leydig.com
`
`Issue date:  6/13/2019
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`INTERNATIONAL REGISTRATION NO. 1399973
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`THIS IS A FINAL ACTION.
`
`STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION:  TO AVOID ABANDONMENT OF THE REQUEST FOR
`EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE
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`TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION
`WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
`
`In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the
`USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/.  To do so, enter the U.S. application serial number
`for this application and then select “Documents.”   The Mailing Date used to calculate the response deadline for this provisional full refusal is the
`“Create/Mail Date” of the “IB-1rst Refusal Note.”
`
`This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. 
`See 15 U.S.C. §1141h(c).  See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
`
`INTRODUCTION
`
`This Office action is in response to applicant’s communication filed on February 14, 2019 .
`
`In a previous Office action(s) dated August 13, 2018, applicant was required to satisfy the following requirements: amend the identification of
`goods, clarify the mark description and provide accurate sheet music, clarify the mark in the drawing with an audio reproduction file, provide
`citizenship and entity type of applicant, and respond to inquiry of evidence of use.
`
`Based on applicant’s response, the trademark examining attorney notes tha t the following requirements have been satisfied: definite
`identification of goods provided, amended mark description and sheet music provided, and citizenship and entity type of applicant provided.  See
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`TMEP §§713.02, 714.04.  
`
`Based on applicant’s response, the trademark examining attorney notes that the following requirement has been partially satisfied: evidence of
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`type of use provided.  See TMEP §§713.02, 714.04.  
`
`Further, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below.  See 37 C.F.R.
`§2.63(b); TMEP §714.04.
`
`SUMMARY OF ISSUE(S) MADE FINAL that applicant must address:
`
`Inquiry – Evidence of Type of Use Required
`
`INQUIRY – EVIDENCE OF TYPE OF USE REQUIRED
`
`Applicant is advised that applicant must have a bona fide intent to use the applied for sound as a trademark within the definition of the
`Trademark Act Sections 1, 2, 3, and 45. See 15 U.S.C. §§1051-1053, 1127; 37 C.F.R. §2.63(b). Based on the nature of the applied for mark as a
`non-traditional device not commonly used as a source identifier for the applied for goods, applicant must provide additional information about
`applicant’s use of the sound to indicate how this sound will act as an inherently distinctive source identifier for the applied for goods.  See 37
`C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008);
`
`TMEP §§814, 1402.01(e).   
`
`Applicant must provide evidence and an explanation of how the applicant uses the sound in the country of origin, or elsewhere, on the applied for
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`good such that consumers would perceive the sound as functioning as source identifier for these goods.   
`
`Applicant provided examples of the mark used in advertising however, the mark is integrated with singing voices; thus, the advertising examples
`fail to show how the applied-for mark as shown in the drawing is source indicating for the identified goods.   Applicant did provide responses to
`the additional inquiries (see below).
`
`Specifically, applicant must respond to the following questions:  
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`Is an example of the sound emanating from the goods, their packaging, or a point-of-sale display available?   
`
`If so, provide examples of the sound emanating from the goods, their packaging, or a point-of-sale display.   
`If an example of the sound used on goods, their packaging, or a point-of-sale display is unavailable, please describe in detail when
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`and how the sound will be produced in on the goods, their packaging, or a point-of sale-display.  
`
`Is the sound used in the operation of the goods?   
`
`If yes, please provide examples of the sound emanating from the goods in the course of operation of the goods.   
`If an example of the sound emanating from the goods in the course of operation is unavailable, please provided a detailed
`
`explanation how the sound is produced during the operation of the goods.   
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`Is an example of the sound used in advertising for the goods available?  
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`If yes, please provide an example.  
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`If an example is unavailable, please describe in detail how the sound is produced in advertising the goods?  
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`Factual information about the goods must make clear how the sound is used on the goods or services. Conclusory statements will not satisfy this
`requirement. See 37 C.F.R. §2.61(b); TMEP §814.
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`Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016);
`TMEP §814.
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`WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:  Any response to this provisional refusal must be
`personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate
`officer or general partner).  37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01.  If applicant hires a qualified U.S. attorney to respond on his or
`her behalf, then the attorney must sign the response.  37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01.  Qualified U.S. attorneys
`include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S.
`commonwealths or U.S. territories.  See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01.  Additionally, for all responses, the
`proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing.  See 37 C.F.R.
`§2.193(a); TMEP §§611.01(b), 611.02.  The name of the signatory must also be printed or typed immediately below or adjacent to the signature,
`or identified elsewhere in the filing.  37 C.F.R. §2.193(d); TMEP §611.01(b).
`
`In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an
`amendment to an application, or submit legal arguments in response to a requirement or refusal).  See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-
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`.03(b), 608.01.  
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`DESIGNATION OF DOMESTIC REPRESENTATIVE:  The USPTO encourages applicants who do not reside in the United States to
`designate a domestic representative upon whom any notice or process may be served.  TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37
`
`C.F.R. §2.24(a)(1)-(2).  Such designations may be filed online at http://www.uspto.gov/trademarks/teas/correspondence.jsp.   
`How to respond.        
`
`/Christina Calloway/
`
`Examining Attorney
`
`Law Office 122
`
`571-272-7342
`
`christina.calloway@uspto.gov
`
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` 
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`

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`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.
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`

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`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Rigo Trading S.A. (trademark@leydig.com)
`
`U.S. TRADEMARK APPLICATION NO. 79231286 - 740584
`
`6/13/2019 12:27:43 PM
`
`ECOM122@USPTO.GOV
`
`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on 6/13/2019 for
`U.S. Trademark Application Serial No. 79231286
`
`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.  
`
`/Christina Calloway/
`
`Examining Attorney
`
`Law Office 122
`
`571-272-7342
`
`christina.calloway@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 , 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 TSDR to avoid missing critical deadlines.
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`·       Update your correspondence email address,
`application.
`
`if needed,
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`to ensure you receive important USPTO notices about your
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`·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with
`the USPTO often use public information provided in USPTO trademark applications to mail and email trademark-related offers
`and notices – most of which require fees.  These companies often have names similar to the USPTO.  All official USPTO
`correspondence will only be emailed from the domain “@uspto.gov.”   For a current list of companies the USPTO has
`received complaints about, information on how to identify these offers and notices, and what to do if you receive one, see the
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`misleading notices webpage.   
`
`