To: | Marshall, Quavious (ralph@kranesmith.com) |
Subject: | U.S. Trademark Application Serial No. 88612315 - MIGOS - N/A |
Sent: | November 25, 2019 07:33:38 AM |
Sent As: | ecom113@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. 88612315
Mark: MIGOS
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Correspondence Address:
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Applicant: Marshall, Quavious
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: November 25, 2019
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.
Search Results
ADVISORY – Potential Section 2(d) Refusal – Likelihood of Confusion
In response to this Office action, applicants may present arguments in support of registration by addressing the issue of the potential conflict between applicants’ mark and the marks in the referenced applications. Applicants’ election not to submit arguments at this time in no way limits applicants’ right to address this issue later if a refusal under Section 2(d) issues.
Summary of Issues Applicants Must Address
Sections 1, 2, and 45 Refusal – Name of Performing Artist
Applicants have applied for registration of the mark MIGOS in standard character form for:
Audio and video recordings featuring music and artistic performances; downloadable audio and video recordings featuring music and artistic performances, in Class 9.
In support of this application, applicant has submitted a specimen described as “page printed from iTunes showing Applicants' mark used in commerce in connection with downloadable audio recordings.”
As described, the specimen consists of a variety of downloadable audio recordings (individual songs) associated with the artist (musical group) MIGOS that may be purchased for download. The specimen also includes evidence of several complete albums associated with this artist. However, more information is needed for the mark to be registered for a particular performing artist.
As a result, registration is refused because the applied-for mark, as used on the specimen of record, merely identifies the name of featured performers on a sound recording; it does not function as a trademark to indicate the source of applicants’ goods and to identify and distinguish them from others. 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, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983); In re Arnold, 105 USPQ2d 1953, 1957 (TTAB 2013). Sound recordings include musical and other performances presented in recorded or electronic form. See TMEP §1202.09(a).
Because the record includes evidence of the name used on a series of sound recordings, applicants may respond to this refusal by satisfying one of the following:
(1) Submitting evidence that the name is promoted and recognized by others as the source of the series of sound recordings. See In re Arnold, 105 USPQ2d at 1958; TMEP §1202.09(a)-(a)(ii)(A). 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, Inc., 76 USPQ2d 1183, 1191 (TTAB 2005); In re Scholastic, Inc., 23 USPQ2d 1774, 1777-78 (TTAB 1992).
(2) Submitting evidence that the performers control the quality of the recordings and control the use of the name, such that the name has come to represent an assurance of quality to the public. See In re Polar Music Int’l AB, 714 F.2d at 1572, 221 USPQ at 318; In re Arnold, 105 USPQ2d at 1958; TMEP §1202.09(a)-(a)(ii), (a)(ii)(B). 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); see In re Polar Music Int’l AB, 714 F.2d at 1568-72, 221 USPQ at 316-18. However, if the sound recordings are recorded directly under applicants’ control, applicants may submit solely as evidence of control the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The applicants produce the goods and controls their quality.” TMEP §1202.09(a)(ii)(B); see 37 C.F.R. §2.193(e)(1). All of the applicants must sign this statement.
The applicants may also respond by 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).
If applicants cannot satisfy one of the above requirements, applicants may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), and the refusal will be withdrawn. See TMEP §806.03(c). However, if applicants amend the basis to Section 1(b), registration will not be granted until applicants later amend the application back to use in commerce by filing an acceptable allegation of use along with satisfying one of the above requirements. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. If the same specimen is submitted with an allegation of use, and applicant does not either provide the additional evidence described above or amend to the Supplemental Register, the same refusal will issue.
To amend to Section 1(b), applicants must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).
How to respond. Click to file a response to this nonfinal Office action.
/Kim Teresa Moninghoff/
Examining Attorney
Law Office 113
Phone: 571-272-4738
Email: kim.moninghoff@uspto.gov
RESPONSE GUIDANCE