To: | TAS Rights Management, LLC (trademarkdocket@venable.com) |
Subject: | U.S. Trademark Application Serial No. 88753381 - LOVER FEST - 124909516347 |
Sent: | March 23, 2020 07:55:48 PM |
Sent As: | ecom118@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 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88753381
Mark: LOVER FEST
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Correspondence Address:
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Applicant: TAS Rights Management, LLC
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Reference/Docket No. 124909516347
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: March 23, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search Results: No Conflicting Marks
Requirement: Signed Declaration
The following statements must be verified: That 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 application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).
For more information about the verified statement and instructions on providing one using the online Trademark Electronic Application System (TEAS) response form, see the Verified statement webpage.
Requirement: Identification & Classification of Goods & Services Clarification
First, the identification for computer game software in International Class 9 is indefinite and too broad and must be clarified to specify whether its format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is an entertainment service in International Class 41. See TMEP §1402.03(d).
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Suggested Identification
Instructions and suggested changes are shown in bold text. Applicant may adopt the following identification, if accurate:
IC 9: Cases for mobile phones; carrying cases specially adapted for electronic equipment, namely, mobile phones and mobile computers; Pre-recorded CDs featuring performances by an individual in the field of music and musical entertainment; musical sound recordings; audio recordings featuring music; musical video recordings; series of musical sound recordings; video recordings featuring music; downloadable audio files featuring music and musical entertainment; downloadable video recordings featuring music and musical entertainment; downloadable musical sound recordings; downloadable ring tones for mobile phones; digital music downloadable from the Internet; video recordings featuring music and musical entertainment; audio recordings featuring music and musical entertainment; digital media, namely, downloadable audio and video recordings, and CDs featuring and promoting music and musical entertainment; downloadable multimedia files containing audio, video, artwork, graphics, hypertext and text relating to music and musical entertainment; downloadable multimedia files featuring music; downloadable electronic newsletters delivered by e-mail in the fields of music, entertainment, and musical entertainment; {specify the format of the computer game software, e.g., downloadable, recorded} computer game software; {specify the format of the computer graphics software, e.g., downloadable, recorded} computer graphics software; {specify the format of the computer application software, e.g., downloadable} computer application software for cellular telephones, handheld electronic devices, and wireless devices for voice, data and image transmission and for sharing information on social media; downloadable graphics for cellular telephones, handheld electronic devices, and wireless devices; stands adapted for mobile phones; devices for hands free use of mobile phones; magnetically encoded gift cards; downloadable photographs in the field of music and musical entertainment and downloadable pre-recorded musical performances providing online via a website; downloadable photographs and downloadable pre-recorded musical performances relating to a musical artist
IC 14: No changes needed
IC 15: No changes needed
IC 16: No changes needed
IC 20: No changes needed
IC 21: No changes needed
IC 22: No changes needed
IC 24: No changes needed
IC 26: No changes needed
IC 28: No changes needed
IC 35: Retail and on-line retail store services featuring paper goods, household linens, home furnishings, cosmetics, toiletries, key chains, collectibles, memorabilia, toys, printed publications, gift cards and printed materials; retail and on-line retail store services featuring audio recordings, video recordings and digital media; issuing gift certificates which may then be redeemed for goods and services; {specify the nature of the services for providing non-downloadable online gift cards, e.g., promotional services, namely, promoting the goods and services of others by means of providing non-downloadable online gift cards}
IC 41: Entertainment services, namely, conducting contests; entertainment services, namely, providing a website featuring non-downloadable multi-media content in the fields of music and musical entertainment; entertainment services, namely, providing a website featuring non-downloadable multi-media content relating to a musical artist; entertainment services, namely, providing a website containing non-downloadable multi-media content featuring pre-recorded musical performances, stage performances, public appearances, photographs, and other information and multi-media materials relating to music and musical entertainment; entertainment services, namely, providing a website containing non-downloadable multi-media content featuring pre-recorded musical performances, stage performances, public appearances, photographs, and other information and multi-media materials relating to a musical artist; entertainment services, namely, providing a website featuring news and non-downloadable articles relating to music and musical entertainment; entertainment services, namely, providing a website featuring news and non-downloadable articles relating to a musical artist; entertainment services in the nature of live musical performances; entertainment services, namely, providing a website featuring {specify the type of photographs, e.g., non-downloadable} photographs, non-downloadable videos, {specify the type of pre-recorded musical performances, e.g., non-downloadable} pre-recorded musical performances, and reviews in the field of music and musical entertainment; entertainment services, namely, providing a website featuring {specify the type of photographs, e.g., non-downloadable} photographs, non-downloadable videos, {specify the type of pre-recorded musical performances, e.g., non-downloadable} pre-recorded musical performances, and reviews relating to a musical artist; fan club services; entertainment services, namely, providing non-downloadable prerecorded digital music on-line via a global communications network; entertainment services, namely, providing information relating to music and musical entertainment via a global communications network; Providing temporary use of non-downloadable computer game software
IC 42: Providing temporary use of non-downloadable computer graphics software; providing temporary use of non-downloadable computer application software for cellular telephones, handheld electronic devices, and wireless devices for voice, data and image transmission and for sharing information on social media
Identification Advisories
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.
Advisory: Multiple-Class Application Requirements
The application identifies goods and services that are classified in at least 13 classes; however, applicant submitted fees sufficient for only 12 classes. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01. For more information about adding classes to an application, see the Multiple-class Application webpage.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least 13 classes; however, applicant submitted fees sufficient for only 12 classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
The USPTO changed the federal trademark rules to eliminate the TEAS RF application, which is now considered a “TEAS Standard” application. See 37 C.F.R. §2.6(a)(iii). The fee for adding classes to a TEAS Standard application is $275 per class. See id. For more information about these changes, see the Mandatory Electronic Filing webpage.
The attached evidence from the Merriam-Webster Online Dictionary shows the word “FEST” means “a gathering, event, or show having a specified focus.” See the dictionary definition at Exhibit A. The term “FEST” is an abbreviated form of the word “festival.” See the dictionary definitions at Exhibit B. The word “FEST” describes a feature, characteristic, use, or purpose of the applicant’s goods and services, namely, indicating that the goods and services are, feature, or are for use connection with a fest. Attached at Exhibit C, is Internet evidence showing that the applicant’s goods and services are, feature, or are for use in connection with a festival or festival-style event. Specifically, this Internet evidence shows the following.
Taylor Swift’s first big project of 2020? Lover Fest, her self-produced, festival-style tour slated to kick off in June (Messina Touring Group will promote). Fourteen dates have been announced, and the artist lineup is still in the works. “I haven’t really done festivals in years -- not since I was a teenager,” says Swift. “That’s something that [the fans] don’t expect from me, so that’s why I wanted to do it.”
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Lover Fest is the latest in a growing number of artist-curated festivals, ranging from Post Malone’s Posty Fest to Travis Scott’s Astroworld to Tyler, the Creator’s Camp Flog Gnaw.
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But Swift has always prioritized personal touches, no matter the size of her show, from nightly surprise guests to one-time-only performances of early tracks. The on-brand opening acts, Instagram-ready visuals and overall attention to detail common to other artist-curated festivals should be present at Lover Fest, too. “[I want to] challenge myself with new things and at the same time keep giving my fans something to connect to,” says Swift. With Lover Fest, it seems she’ll be able to do both.
As additional evidence that the term “FEST” is merely descriptive, attached at Exhibit D, are third-party registrations showing marks disclaiming the word “FEST” for services similar to those of the applicant in this case. Third-party registrations featuring goods and/or services the same as or similar to applicant’s goods and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register. E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
Thus, the word “FEST” merely describes applicant’s goods and services because it indicates that the applicant’s goods and services are, feature, or are for use in connection with a fest or festival.
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” FOR CLASSES 9, 16, 35 AND 41 apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
How to respond. Click to file a response to this nonfinal Office action.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/Tina Brown/
Trademark Examining Attorney
Law Office 118
E: tina.brown@uspto.gov
T: 571-272-8864
RESPONSE GUIDANCE