Appln. No. 77/095,125 TM: 83 (Stylized) - Response to OA Issued 11/11/2011 BACKGROUND Applicant, RED BULL GMBH (hereinafter “Red Bull” or “Applicant”), filed a Statement of Use in connection with Appln. No. 77/095,125 in Classes 9, 12, 16, 21, 25, 28 on October 19, 2011. On November 11, 2011, the Examining Attorney issued the instant Office Action, partially refusing the Statement of Use in connection with Classes 9 and 12 only1, stating that the applied-for mark, as used on the specimens submitted with the Statement of Use, 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. For the reasons set forth below, Applicant believes that the already-submitted specimens for Classes 9 and 12 do, in fact, clearly function as a trademark to identify and distinguish Applicant’s goods from those of others and to indicate the source of Applicant’s goods. As such, Applicant respectfully requests that the specimens be accepted for Classes 9 and 12, and that Appln. No. 77/095,125 be approved for registration. ARGUMENT 1. Class 9 A. Proposed Amended Goods Computer game software, namely, specific features within vehicle racing games. B. Explanation As a preliminary matter, Applicant’s proposed amendment to the goods above should be found permissible as it further narrows the scope of the goods, rather than impermissibly broadening it. TMEP §1505.02(a). 1As the Office Action of November 11, 2011 is a partial refusal only pertaining to the specimens submitted for Classes 9 and 12, it is implied that the Statement of Use has been accepted in connection with the other classes in the application, namely, Classes 16, 21, 25, and 28. -1- In NASCAR, the racing team (the source - or in this case, Applicant) is identified by fans and consumers by the number of the car, or in this case, the mark in question. See Exhibit A showing how each driver and team is identified by a specific number so that fans can identify the team and driver during the NASCAR events. This recognition of the source of the goods and services offered under the mark by fans and consumers is not limited to the field of racing alone. Rather it expands to all mediums within which the trademark numbers are used, including video games. When a consumer purchases a NASCAR racing game and identifies his favorite team/driver by the trademark number on the car within the game (the same way he would if he were watching a NASCAR event), he is implicitly identifying the source of the trademark in connection with the video game. With the proposed limiting amendments to the goods, the mark as featured within the game identifies Applicant as the owner of that particular feature, namely the 83 car in the video game, and licensor of the mark for commercial use in connection with video games. Showing that consumers would identifying the source of the pending mark in connection with the goods at issue is only one aspect of a valid specimen. The specimen must also show use of the mark in commerce, 15 U.S.C. § 1051(a)(1); 37 C.F.R. §§ 2.34(a)(1)(iv) and 2.56(a); TMEP § 904, which is clear from the specimens submitted with the Statement of Use. Under Trademark Law, use in commerce is defined very broadly. It is intended to cover any and all commerce that may lawfully be regulated by Congress and any activity that substantially affects interstate commerce. 15 U.S.C. § 1127; TMEP § 901.01. Here, the NASCAR video game shown in the specimen allows the consumer to play as their favorite driver, who is necessarily connected to a trademarked numbered vehicle. Essentially, the video game is purchased specifically for the features within it - to give consumers the ability to feel like they, too, are in the driver’s seat as their favorite driver, sponsored by their favorite team. As consumers purchase the video game for the specific cars shown within, it is the trademarks featured within the game, such as the mark of Appln. -2- No. 77/095,125 (as sponsored by Applicant, and licensed to the video game developer), rather than the overall idea of the video game that draws in customers and sells the product. Therefore, the mark of Appln. No. 77/095,125 plays a significant role in substantially affecting interstate commerce as related to video games, as it is a main reason consumers are drawn to purchase the video game in the first place. As the specimens submitted for Class 9 clearly show a method for consumers to purchase the video game, and how the mark of Appln. No. 77/095,125 is featured within the game to entice consumers to purchase and to represent the source of the feature within, Applicant has satisfied the two requirements set forth for a valid specimen. Applicant respectfully requests that the proposed amendments to the goods in Class 9, as well as the previously-submitted specimens be approved. 2. Class 12 The Examining Attorney has refused the submitted specimen in Class 12, stating that it does not function as a trademark because it does not identify the name or source of the racing cars. More specifically, “it does not appear that the applicant sells racing cars, accordingly, the owner’s manual does not function for racing cars.” Applicant thanks the Examining Attorney for taking the time to discuss this refusal further with Applicant’s Attorney on February 2, 2012. In the telephone conversation, the Examining Attorney further clarified that the specimen was refused as the use of the mark in the owner’s manual appears to only show applied-for mark on racing cars while in a race, indicating that Applicant merely sponsors a racing team and does not actually provide the Class 12 goods to the public. Additionally, the Examining Attorney stated that the owner’s manual resembled more of promotional material for Red Bull Racing Team, rather than something that would be provided when a consumer purchases a vehicle. Applicant submits with this response supplemental evidence to clarify and support the previously-submitted specimen. Applicant is not replacing the specimen. -3- This owner’s manual, the complete version of which is added as supplemental evidence in Exhibit B, is what is provided with the street-legal racing car when purchased by the public. It includes detailed information about the modifications Applicant has made to the Toyota Camry for this publically available street-legal vehicle. It is routinely accepted that when a company modifies a vehicle to create a special edition, that company becomes an identifiable source of the vehicle. For example, Eddie Bauer, Inc. obtained U.S. Registration No. 1,447,361 for “trucks, namely, utility vehicles” when they first introduced the Eddie Bauer edition of the Ford Explorer. The source of this modified vehicle became two-fold – Eddie Bauer, Inc. and Ford Motor Company. The same should hold true here. As Applicant has developed and manufactured this highly-modified version of the Toyota Camry, Applicant has become a source of the vehicle, which is clarified further by the owner’s manual. Additionally, the applied-for mark, as shown in the manual and as seen on the cars available to the public, identifies Applicant as the source, due to the unique nature of the stylized number logos in NASCAR. As stated above, in NASCAR, the public identifies the source of a vehicle by the stylized number on the side of the race car. Each driver is assigned one number (no duplicate numbers exist) and each team designs a highly stylized version of the number to associate the exact logo with the source. As NASCAR is one of the most highly viewed professional sports in the United States, the consuming public has a high awareness that the stylized number represents the source of the car, and seeing such on a street-legal car in interstate commerce would create the same association – identifying Applicant as the source of the land vehicle. The submitted specimen clearly shows how the mark is used on the goods to identify Applicant as the source, as the excerpts from the owner’s manual include clear photos of the mark on a “land vehicle”. The Examining Attorney also stated that as the photo within the manual only shows the mark in a racing environment, it does not appear to be available to the public. When a consumer wishes -4- to purchase this modified vehicle, it is because of its association with NASCAR. Seeing the exact vehicle to be purchased in a racing environment, entices the consumer even further into making the purchase, by showing them that by buying this vehicle, it is as if they, too, participate in NASCAR events. These kinds of marketing tactics are common used within the car industry (and any industry for that matter). For example, convertibles are often advertised in year-round warm, sunny environments, but this does not mean that they are not also sold in colder cities such as Chicago. Simply because the photos showing the source-identifying mark are taken on a race track is not indicative of whether Applicant sells these cars, and such an assumption that these cars are not sold is without basis. As further supplemental evidence showing that the vehicles in question are available to the public for purchase, Applicant attaches Exhibit C. Exhibit C is a copy of the relevant portions of the executed Consignment Agreement between Applicant’s wholly owned subsidiary, Red Bull Racing, Inc., and Toyota of Cleveland.