To: | Relativity ODA LLC (trademark@leydig.com) |
Subject: | U.S. Trademark Application Serial No. 88455071 - RELATIVITY FEST - 743964 |
Sent: | August 28, 2019 08:43:15 AM |
Sent As: | ecom120@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88455071
Mark: RELATIVITY FEST
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Correspondence Address: |
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Applicant: Relativity ODA LLC
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Reference/Docket No. 743964
Correspondence Email Address: |
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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: August 28, 2019
Applicant has applied for the mark “RELATIVITY FEST” in standard characters for use in connection with the following:
International Class 041 Organization of conferences in the field of law and e-discovery; educational services, namely, conducting seminars, workshops, classes, presentations, panel discussions, and exams in the fields of law and e-discovery; entertainment and educational services, namely, providing recognition and incentives by the way of awards to demonstrate excellence in the fields of law and e-discovery
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS
SPECIMENT DOES NOT SHOW MARK WITH SPECIFIC CLASS- 041
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
IDENTIFICATION OF GOODS AND/OR SERVICES
Applicant must clarify the below listed wording in the identification of goods and/or services because the respective identifications are indefinite and/or too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
International Class 041:
Applicant must clarify the wording “Organization of conferences in the field of law and e-discovery” in the identification of services. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what services are provided. Further, this wording could identify services in more than one international class. For example, “Arranging business conferences” is in International Class 035 and “Educational services, namely, conducting {indicate specific modes of instruction, e.g., classes, seminars, conferences, workshops, field trips} for {indicate specific group, e.g., persons with learning disabilities, special needs children, organizations, etc.} in the field of {indicate subject matter or fields of educational activity}” is in International Class 041.
Suggested Amendment:
Applicant may substitute the following wording, if accurate (additions in bold):
INTERNATIONAL CLASS 035 Arranging business conferences in the field of law and e-discovery
INTERNATIONAL CLASS 041 Organization of educational conferences in the field of law and e-discovery; educational services, namely, conducting seminars, workshops, classes, presentations, panel discussions, and exams in the fields of law and e-discovery; entertainment and educational services, namely, providing recognition and incentives by the way of awards to demonstrate excellence in the fields of law and e-discovery
MULTIPLE CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or 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 fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class. 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 not acceptable for any international class. 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).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
In this case, applicant must disclaim the wording “FEST” because it is not inherently distinctive. This unregistrable term at best is merely descriptive of a characteristic, purpose, or use of applicant’s services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
Dictionary evidence defines “FEST” as “a gathering or occasion characterized by a specified activity.” See attached evidence from http://www.ahdictionary.com/word/search.html?q=fest. The attached evidence from conference organizations shows that this wording is commonly used in connection with similar services to describe a gathering of people for the dissemination of information and/or engagement in activities concerning a particular subject matter. See attached evidence from http://womenstravelfest.com/, http://sleuthfest.com/, http://www.devfestdc.org/about/. In this case, applicant identifies its services as “Organization of conferences in the field of law and e-discovery; educational services, namely, conducting seminars, workshops, classes, presentations, panel discussions, and exams in the fields of law and e-discovery; entertainment and educational services, namely, providing recognition and incentives by the way of awards to demonstrate excellence in the fields of law and e-discovery”. Applicant’s conferences, seminars, workshops, classes, presentations, panel discussions, and awards are presumed to gather attendees for the dissemination of information and/or engagement in activities concerning law and e-discovery. Thus, the wording “FEST” merely describes a characteristic, purpose, or use of applicant’s services because applicant’s identified services are comprised of a gathering or occasion that is characterized by a specified activity.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “FEST” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
RESPONSE OPTIONS
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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 goods and/or 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
Shari Gadson
/Shari Gadson/
Trademark Examining Attorney
Law Office 120
United States Patent and Trademark Office
571-272-9319
shari.gadson@uspto.gov
RESPONSE GUIDANCE