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:  October 26, 2019

 

This Office action is supplemental to and supersedes the previous Office action issued on June 25, 2019 in connection with this application.  The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, the requirement is necessary because one of the items in the identification of services is indefinite and overbroad.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue. 

 

Applicant must address all issues raised in this Office action.  The issue raised in the previous June 25, 2019 Office action is as follows and is maintained: Partial Refusal under Section 2(e)(1) – Mark is Merely Descriptive – Classes 35 & 41. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

•        CONTINUED & MAINTAINED: Partial Refusal under Section 2(e)(1) – Mark is Merely Descriptive – Classes 35 & 41

•        NEW ISSUE: Partial Identification and Classification of Services Requirement – Class 35

 

Applicant must respond to all issues raised in this Office action 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).

 

PARTIAL REFUSAL UNDER SECTION 2(e)(1) – MARK IS MERELY DESCRIPTIVE – CLASSES 35 & 41

 

This partial refusal applies to Classes 35 and 41 only.

 

The applied-for mark is “HOUSE” in stylized form for the following applicable classes of services:

 

Class 35: promotional, advertising and digital media marketing services, namely, promoting the sale of the goods and services of others via the Internet; promoting live entertainment events for others and merchandise related thereto; business marketing and consulting services in the fields of music, news and entertainment; management of professional artists, musicians and media talent; business management, event management services and business marketing and consulting services in the field of sports, news and entertainment; advertising, marketing and promotional services related to all industries for the purpose of facilitating networking and socializing opportunities for business purposes; development of marketing strategies, concepts and tactics, namely, audience development, brand awareness, online community building and digital word of mouth communications; experiential, event and live advertising; promoting the goods and services of others by arranging for businesses to affiliate their goods and services with the goods and services of third parties by means of sponsorship arrangements and license agreements; event management services, namely, providing marketing, promotion and organization of special events; marketing services, namely, development of marketing strategies, concepts and tactics, namely, audience development, brand awareness, online community building and digital word of mouth and social media communications; post-production editing services for video and audio commercials; preparing advertisements for others, namely, preparing video advertising and promotional videos for commercial use via the internet and television, digital cable and video-on-demand or download; producing promotional videotapes, video discs and audio visual recordings; providing collaborative co-working facilities equipped with recording studios, sound studios, photo studios, screening rooms, film, television and audio editing labs, conference rooms and music rehearsal rooms; promoting public awareness of equality and human rights, arts, education and culture, health and wellness, the planet Earth, community engagement, and shelter, safety and security

 

Class 41: entertainment services, namely, presentation and production of live musical and audio visual performances by an individual or group entertainment, namely, live music concerts; entertainment information services, namely, providing information and news releases about musical artists; entertainment services in the nature of arranging social entertainment events; entertainment services in the nature of development, creation, production and post-production services of multimedia entertainment content; entertainment services, namely, production and distribution of television shows, internet shows and motion pictures; digital audio and video recording, production and editing via various platforms across multiple forms of transmission media services; digital video, audio, and multimedia publishing, recording and distribution services; entertainment media production services for motion pictures, television and the internet; multimedia entertainment services in the nature of development, recording production and post-production services in the fields of music, video and films

 

Registration is refused because the applied-for mark merely describes a feature, characteristic, purpose, function, subject matter, or provider of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes a quality, characteristic, function, feature, purpose, or provider of an applicant’s services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

 

“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

           

The wording “HOUSE” describes a music genre.  House music is defined as “[a] style of electronic dance music with a heavy, synthesized bass and drum lines and rapid tempos, originally popularized at parties held in abandoned warehouses.”  See the attached dictionary evidence from The American Heritage Dictionary.  As listed in the application, applicant’s identification of services is broad enough to include this genre of music in its services.  When used in connection with the identification of services, the mark HOUSE immediately tells consumers that applicant’s services feature music.

 

Applicant has applied for the mark “HOUSE” for use with various services related to music, including business marketing and consulting services in the fields of music, news and entertainment in Class 35, and publishing, recording and distribution services in Class 41.  The proposed mark is descriptive of the applicant’s services because “HOUSE” describes a genre of music that is the subject of applicant’s music, audio and video related services.  The attached evidence from a search of the Internet demonstrates that house music is a common genre of music that is easily recognizable.

 

Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner.  In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209.  Businesses and competitors should be free to use descriptive language when describing their own services to the public in advertising and marketing materials.  See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).

 

Given the analysis above, the mark is merely descriptive of the services and is refused registration under Section 2(e)(1) of the Trademark Act.

 

SUPPLEMENTAL REGISTER ADVISORY

 

The applied-for mark has been refused registration on the Principal Register.  Applicant may respond by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:  (1) amending the application to seek registration under Trademark Act Section 2(f), or (2) amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §§1052(f), 1091. 

 

To seek registration on the Principal Register based on a claim of acquired distinctiveness under Section 2(f), applicant generally may (1) submit actual evidence that the mark has acquired distinctiveness of the services, (2) claim ownership of an active prior U.S. registration for the same mark for sufficiently similar services, or (3) provide the following verified statement of five years’ use:  “The mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least five years immediately before the date of this statement.”  See 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a); TMEP §§1212.03-.06 et seq.

 

However, in this case, the USPTO will not accept a verified statement of five years’ use alone to establish distinctiveness because applicant’s mark is highly descriptive of applicant’s services.  See In re Kalmbach Publ’g Co., 14 USPQ2d 1490, 1491-92 (TTAB 1989); TMEP §1212.05(a).  An applicant’s evidentiary burden of showing acquired distinctiveness increases with the level of descriptiveness of the mark sought to be registered; a more descriptive term requires more evidence.  Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1365, 127 USPQ2d 1041, 1045 (Fed. Cir. 2018) (citing In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).

 

To amend the application to the Supplemental Register, applicant must provide a written statement requesting that the application be amended to the Supplemental Register.  TMEP §816.01; see 15 U.S.C. §1091; 37 C.F.R. §2.47. 

 

Benefits of Supplemental Registration

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

 

(1)       Use of the registration symbol ® with the registered mark in connection with the designated services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.

 

(2)       Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.

 

(3)       Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.

 

(4)       Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.

 

(5)       Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.

 

See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).

 

Although applicant’s mark has been refused registration on the Principal Register, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

PARTIAL IDENTIFICATION AND CLASSIFICATION OF SERVICES REQUIREMENT – CLASS 35

 

This partial requirement applies only to the services in Class 35 specified therein.

 

The wording “providing collaborative co-working facilities equipped with recording studios, sound studios, photo studios, screening rooms, film, television and audio editing labs, conference rooms and music rehearsal rooms” in the identification of services for International Class 35 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Specifically, providing general purpose facilities is classified in International Class 43 as a temporary accommodation service whereas providing facilities for a particular purpose is classified according to the purpose.  Thus, the applicant must clarify the nature of the services, and re-classify as appropriate.  For example, providing general purpose facilities for {indicate purpose, e.g., business, conferences, trade shows, exhibitions} is classified in International Class 43; the rental of recording studios is in International Class 41; and the rental of offices for co-working is in International Class 36.

 

If applicant adopts the suggested amendment of the services, then applicant may amend the classification to any of the following International Classes: 35, 36, 41, and/or 43.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.  See a discussion of multiple-class application requirements, below.

 

Applicant may substitute the following wording, if accurate (the examining attorney’s suggested changes and additions are in bold font, items for applicant to clarify are in bold italics, and suggested items to remove have a line through them):

 

Class 35: promotional, advertising and digital media marketing services, namely, promoting the sale of the goods and services of others via the Internet; promoting live entertainment events for others and merchandise related thereto; business marketing and consulting services in the fields of music, news and entertainment; management of professional artists, musicians and media talent; business management, event management services and business marketing and consulting services in the field of sports, news and entertainment; advertising, marketing and promotional services related to all industries for the purpose of facilitating networking and socializing opportunities for business purposes; development of marketing strategies, concepts and tactics, namely, audience development, brand awareness, online community building and digital word of mouth communications; experiential, event and live advertising; promoting the goods and services of others by arranging for businesses to affiliate their goods and services with the goods and services of third parties by means of sponsorship arrangements and license agreements; event management services, namely, providing marketing, promotion and organization of special events; marketing services, namely, development of marketing strategies, concepts and tactics, namely, audience development, brand awareness, online community building and digital word of mouth and social media communications; post-production editing services for video and audio commercials; preparing advertisements for others, namely, preparing video advertising and promotional videos for commercial use via the internet and television, digital cable and video-on-demand or download; producing promotional videotapes, video discs and audio visual recordings; providing collaborative co-working facilities equipped with recording studios, sound studios, photo studios, screening rooms, film, television and audio editing labs, conference rooms and music rehearsal rooms; promoting public awareness of equality and human rights, arts, education and culture, health and wellness, the planet Earth, community engagement, and shelter, safety and security

 

Class 36: charitable foundation services, namely, providing fundraising activities and investment management services to support medical education and research and procedures for those in need; charitable foundation services, namely, providing fundraising activities to support medical research and procedures for those in need; charitable foundation services, namely, providing fundraising activities, funding, scholarships and/or financial assistance for promoting public awareness of equality and human rights, arts, education and culture, health and wellness, the planet Earth, community engagement, and shelter, safety and security; charitable foundation services, namely, providing fundraising activities, supplemental funding, capital improvement funding, scholarships and financial assistance for programs and services of others; rental of offices for co-working

 

Class 41: entertainment services, namely, presentation and production of live musical and audio visual performances by an individual or group entertainment, namely, live music concerts; entertainment information services, namely, providing information and news releases about musical artists; entertainment services in the nature of arranging social entertainment events; entertainment services in the nature of development, creation, production and post-production services of multimedia entertainment content; entertainment services, namely, production and distribution of television shows, internet shows and motion pictures; digital audio and video recording, production and editing via various platforms across multiple forms of transmission media services; digital video, audio, and multimedia publishing, recording and distribution services; entertainment media production services for motion pictures, television and the internet; multimedia entertainment services in the nature of development, recording production and post-production services in the fields of music, video and films; recording studios; sound recording studios; photography studios; providing audio or video editing lab studios; rental of music rehearsal facilities

 

Class 43: rental of conference rooms

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See TMEP §1402.07(e).

 

ADVISORY ON MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application references services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies services based on use in commerce that are classified in at least 4 classes; however, applicant submitted fees sufficient for only 3 classes.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for classes 35, 36, and 41; and applicant needs a specimen for class 43.  See more information about specimens.

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.  

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal and/or requirements in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

The trademark examining attorney is raising a new nonfinal examination issue in this Office action; therefore, jurisdiction remains with the trademark examining attorney.  See 37 C.F.R. §2.141(a); TMEP §714.05-.05(a).  Filing an appeal with the Trademark Trial and Appeal Board would be considered premature at this time.  See TMEP §1501.  Applicant must respond to the trademark examining attorney about the issues raised in this Office action. 

 

Failure to Respond to Office Action with Partial Refusal/Requirement – Abandonment of Class Advisory

 

If applicant does not respond to this Office action within the six-month period for response, International Class 35 and 41 will be deleted from the application.  The application will then proceed with International Class 36 only.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/D. Zarick/

D. Zarick

Trademark Examining Attorney

Law Office 126

(571) 270-5013

diana.zarick@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 October 26, 2019 for

U.S. Trademark Application Serial No. 88422702

 

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. 

 

 

/D. Zarick/

D. Zarick

Trademark Examining Attorney

Law Office 126

(571) 270-5013

diana.zarick@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 October 26, 2019, 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.”