To: White, Santi (scott@smasonmusiclaw.

com)

Subject: TRADEMARK APPLICATION NO. 77044349 - SANTOGOLD - N/A

Sent: 6/6/2008 8:08:31 AM

Sent As: ECOM109@USPTO.GOV

Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 77/044349

MARK: SANTOGOLD
*77044349*
CORRESPONDENT ADDRESS:
Scott H. Mason, Esq. RESPOND TO THIS ACTION:
LAW OFFICES OF SCOTT H. MASON http://www.uspto.gov/teas/eTEASpageD.htm
100 JANE ST APT 9Q
NEW YORK NY 10014-1770 GENERAL TRADEMARK INFORMATION:
http://www.uspto.gov/main/trademarks.htm

APPLICANT: White, Santi

CORRESPONDENT’S REFERENCE/DOCKET
NO:
N/A
CORRESPONDENT E-MAIL ADDRESS:
scott@smasonmusiclaw.com

OFFICE ACTION

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION
WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

ISSUE/MAILING DATE: 6/6/2008

This Office action responds to the applicant’s Statement of Use received on April 14, 2008.

The applicant is advised as follows:

Specimens
Please note: This requirement applies to Class 9 only.

The applicant must provide additional information regarding the specimens of use for the goods in Class 9. The Statement
of Use indicates that the specimens are cover art from the applicant’s CD’s. However, the applicant must indicate whether
the specimens consist of cover art from a single CD or more than one CD.

Advisory – Title of a Single Work

Applicant is advised that, upon consideration of applicant’s response to this Office action, registration may be refused on
the ground that the applied-for mark, as used on the specimen of record, is the title of a single creative work, namely the
title of a specific CD, and as such does not function as a trademark to identify and distinguish applicant’s goods from those
of others and to indicate the source of applicant’s goods. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052,
1127; see Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162-63, 64 USPQ2d 1375, 1378-79 (Fed. Cir. 2002); In
re Cooper, 254 F.2d 611, 615-16, 117 USPQ 396, 399-400 (C.C.P.A. 1958); TMEP §§1202.08, 1202.08(f). Single creative
works include works in which the content does not change significantly, whether that work is in printed, recorded or
electronic form. TMEP §1202.08(a).

However, the name of a series of creative works may be registrable if the designation serves to identify and distinguish the
source of the series. The name for a series of creative works has trademark function in indicating that each work in the
series comes from the same source as the others. In re Scholastic, Inc., 23 USPQ2d 1774, 1776 (TTAB 1992); see TMEP
§1202.08(c). Therefore, if applicant uses the mark to identify a series, rather than a single work, applicant may provide
such evidence for the record to avoid a refusal. Evidence of a series includes copies of at least two different book covers or
packaging for recorded works (not two copies of the same work) that show the mark as a source identifier for a series as
well as distinguish the mark from the individual titles of the works. See In re Scholastic, 23 USPQ2d at 1776-78; TMEP
§1202.08(c).

The applicant should also note the following refusal:

Name/Pseudonym of Performing Artist

Registration is refused because the applied-for mark, as used on the specimen of record, identifies only the featured
performer(s) on a sound recording; it does not function as a trademark to identify and distinguish applicant’s goods from
those of others and to indicate the source of applicant’s goods. Trademark Act Sections 1, 2 and 45, 15 U.S.C.
§§1051-1052, 1127; see In re Polar Music Int’l AB, 714 F.2d 1567, 221 USPQ 315 (Fed. Cir. 1983); In re Spirer, 225
USPQ 693 (TTAB 1985); TMEP §§904.07(b), 1202.09(a).

Applicant may respond to this refusal by satisfying one of the following:

(1) Submitting evidence that (a) the name is used on a series of sound recordings, and (b) the name is promoted and recognized by

others as the source of a series of sound recordings. See TMEP §1202.09(a)-(a)(ii)(A); cf. In re First Draft, Inc., 76 USPQ2d

1183, 1190 (TTAB 2005). Evidence of a series includes copies or photographs of at least two different CD covers or similar
 packaging for recorded works. TMEP §1202.09(a)(i); see In re Polar Music, 714 F.2d at 1572, 221 USPQ at 318. Evidence that

the name is promoted and recognized by others as a source of the series includes advertising that promotes the name as the source

of the series, third-party reviews showing use of the name by others to refer to the series, and/or declarations from the sound

recording industry, retailers, and purchasers showing recognition of the name as an indicator of the source of a series of

recordings. TMEP §1202.09(a)(ii)(A); cf. In re First Draft, 76 USPQ2d at 1191; In re Scholastic, Inc., 23 USPQ2d 1774, 1777-78

(TTAB 1992).;

(2) Submitting evidence that (a) the name is used on a series of sound recordings, and (b) the performer controls the quality of the

recordings and controls the use of the name, such that the name has come to represent an assurance of quality to the public.

TMEP §1202.09(a)-(a)(ii), (a)(ii)(B); see In re Polar Music, 714 F.2d at 1572, 221 USPQ at 318. Evidence of a series includes

copies or photographs of at least two different CD covers or similar packaging for recorded works. TMEP §1202.09(a)(i); see In

re Polar Music, 714 F.2d at 1572, 221 USPQ at 318. Evidence of control over the quality of the recordings and use of the name

includes licensing contracts or similar documentation. TMEP §1202.09(a)(ii)(B).; or

(3) Amending the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; see 37

C.F.R. §§2.47, 2.75(a); TMEP §§816, 1202.09(a).

Applicant may not withdraw the statement of use. 37 C.F.R. §2.88(g); TMEP §1109.17.

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned
examining attorney.
 /Amy Alfieri/

Trademark Attorney, USPTO

Law Office 109

phone: 571.272.9422

fax: 571.273.9109

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining
attorney. A response to this Office action should be filed using the form available at
http://www.uspto.gov/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response
using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the
USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing
date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the
following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the
USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When
conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your
application has not changed for more than six months, please contact the assigned examining attorney.
 To: White, Santi (scott@smasonmusiclaw.com)

Subject: TRADEMARK APPLICATION NO. 77044349 - SANTOGOLD - N/A

Sent: 6/6/2008 8:08:35 AM

Sent As: ECOM109@USPTO.GOV

Attachments:

IMPORTANT NOTICE
USPTO OFFICE ACTION HAS ISSUED ON 6/6/2008 FOR
APPLICATION SERIAL NO. 77044349

Please follow the instructions below to continue the prosecution of your application:

VIEW OFFICE ACTION: Click on this link

http://tmportal.uspto.gov/external/portal/tow?DDA=Y&serial_number=77044349&doc_type=OOA&mail_date=20080
(or copy and paste this URL into the address field of your browser), or visit
http://tmportal.uspto.gov/external/portal/tow and enter the application serial number to access the Office action.

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this
notification.

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is
required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from
6/6/2008.

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does
NOT accept e-mailed responses. Instead, the USPTO recommends that you respond online using the Trademark
Electronic Application System response form at http://www.uspto.gov/teas/eTEASpageD.htm.

HELP: For technical assistance in accessing the Office action, please e-mail
TDR@uspto.gov. Please contact the assigned examining attorney with questions about the Office action.

WARNING
1. The USPTO will NOT send a separate e-mail with the Office action attached.

2. Failure to file any required response by the applicable deadline will result in the
ABANDONMENT of your application.