To: | AW Licensing LLC (tmdocket@arenfox.com) |
Subject: | U.S. Trademark Application Serial No. 88656920 - #WANGFEST - 038757._____ |
Sent: | December 04, 2019 04:47:02 PM |
Sent As: | ecom120@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88656920
Mark: #WANGFEST
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Correspondence Address:
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Applicant: AW Licensing LLC
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Reference/Docket No. 038757._____
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: December 04, 2019
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).
Section 2(e)(4) Refusal – Primarily Merely a Surname
An applicant’s mark is primarily merely a surname if the surname, when viewed in connection with the applicant’s recited goods and/or services, “‘is the primary significance of the mark as a whole to the purchasing public.’” Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1377, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017) (quoting In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); TMEP §1211.01.
The following five inquiries are often used to determine the public’s perception of a term’s primary significance:
(1) Whether the surname is rare;
(2) Whether anyone connected with applicant uses the term as a surname;
(3) Whether the term has any recognized meaning other than as a surname;
(4) Whether the term has the structure and pronunciation of a surname; and
(5) Whether the term is sufficiently stylized to remove its primary significance from that of a surname.
In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 & n.2, 1282-83 (TTAB 2016) (citing In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) for the Benthin inquiries/factors); TMEP §1211.01; see also In re Etablissements Darty et Fils, 759 F.2d 15, 16-18, 225 USPQ 652, 653 (Fed. Cir. 1985).
These inquiries are not exclusive, and any of these circumstances – singly or in combination – and any other relevant circumstances may be considered when making this determination. In re Eximius Coffee, LLC, 120 USPQ2d at 1277-78; TMEP §1211.01. For example, when the applied-for mark is not stylized, it is unnecessary to consider the fifth inquiry. In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007); TMEP §1211.01.
Please see the attached evidence from Lexis and Wikipedia, establishing the surname significance of WANG. This evidence shows the applied-for mark appearing 176,651 times as a surname in the LEXISNEXIS® surname database, which is a weekly updated directory of cell phone and other phone numbers (such as voice over IP) from various data providers. The Wikipedia article discusses the prevalence of the name and its storied history.
As the attached article from The Cut shows, #WANGFEST is created by Alexander Wang. The attached dictionary definition of WANG shows that the definition is related to the surname, that is, it is defined as being the Chinese ruling family by the surname WANG. Because of the broad variety of famous persons with the last name WANG, including Alexander Wang, Vera Wang, Ed Wang, and Garrett Wang, among others listed in the Wikipedia article, consumers would see thisas having the structure and pronunciation of a surname. The mark is in standard characters, and therefore does not have any stylization to overcome this refusal.
Applicant has added two elements to the mark. The first is a hashtag. Hashtags are used on social-networking sites to identify or search for a keyword or topic of interest. Id. Because a hashtag will usually be perceived as part of an online social media search term, a hashtag generally serves no source-indicating function and adding such symbol or term to an otherwise unregistrable mark typically does not render the mark registrable. TMEP §1202.18; cf. In re Oppedahl & Larson LLP, 373 F.3d 1171, 1177, 71 USPQ2d 1370, 1374 (Fed. Cir. 2004) (holding that the addition of a top-level domain to an otherwise unregistrable mark does not typically add any source-identifying significance); Interactive Prods. Corp. v. a2z Mobile Office Solutions, Inc., 326 F.3d 687, 696-97, 66 USPQ2d 1321, 1327-28 (6th Cir. 2003) (holding that the post-domain path of a URL does not typically signify source).
The second is the term FEST. The attached definition from Merriam-Webster shows FEST means “a gathering, event, or show having a specified focus.” Applicant’s services, namely, “organizing social entertainment, cultural and arts events; entertainment services in the nature of organizing social, cultural and arts events; organizing and arranging exhibitions for entertainment purposes,” are FEST services, that is, the organizing of an event. If the mark combines a surname with an additional term, the mark will be evaluated to determine if the primary significance of the mark as a whole in connection with applicant’s services is still that of a surname. See Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1377, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017); TMEP §1211.01(b). A key element in this determination is the relative distinctiveness of the additional term in the mark. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d at 1377, 123 USPQ2d at 1413 (citing In re Hutchinson Tech. Inc., 852 F.2d 552, 554-55, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); TMEP §1211.01(b)(vi).
A nondistinctive term is typically accorded less weight and is not likely to detract from the primary surname significance of the mark. See Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1481 n.9, 1482 (TTAB 2017) (construing In re Hutchinson Tech. Inc., 852 F.2d at 554, 7 USPQ2d at 1492-93); TMEP §1211.01(b)(vi). Although individual components of a mark may be weighed to determine the mark’s overall commercial impression, the combination of the individual parts must be viewed as a whole to determine if the additional term alters the primary significance of the mark to the purchasing public. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d at 1378-79, 123 USPQ2d at 1414 (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1174-75, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004)).
In this case, the addition of FEST does not alter the primary significance of the mark as a whole from that of a surname.
For the above reasons, applicant’s mark cannot be registered on the principal register under Section 2(e)(4) of the Trademark Act.
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
The wording “social … events” in the identification of services is indefinite and must be clarified because these events could be for business purposes, educational purposes, entertainment or otherwise. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate:
Class 41: Organizing social entertainment, cultural and arts events; entertainment services in the nature of organizing social entertainment, cultural and arts events; organizing and arranging exhibitions for entertainment purposes.
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.
Responding to this Action
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.
/Leslee A. Friedman/
Leslee A. Friedman
Trademark Examining Attorney
Office 120
leslee.friedman@uspto.gov
(571) 272 - 5278
RESPONSE GUIDANCE