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:  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

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Summary of Issues:

 

• Requirement: Signed Declaration
• Requirement: Identification & Classification of Goods & Services Clarification
• Advisory: Multiple-Class Application Requirements
• Requirement: Disclaimer

 

Requirement: Signed Declaration

 

The application was unsigned, resulting in the application not being properly verified.  See TMEP §804.  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2)-(c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. 

 

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).

 

Second, the identification for software in International Class 9 is indefinite and too broad and must be clarified to specify whether the 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 a service in International Class 42.  See TMEP §1402.03(d).

 

Third, the identification of services is indefinite and must be clarified because some of the wording is too broad making the nature of the services identified unclear and could include goods and services in multiple international classes.  Applicant must clarify the identification by specifying the type of goods and services and classifying the goods and services in the appropriate international classes as is shown in the suggested identification below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

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

 

If applicant adopts the suggested amendment of the goods and services, then applicant must amend the classification to International Classes 9, 14, 15, 16, 20, 21, 22, 24, 26, 28, 35, 41, and 42.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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 goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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.

 

Requirement: Disclaimer

 

Applicant must disclaim the word “FEST” FOR CLASSES 9, 16, 35 AND 41 because it is merely descriptive of a characteristic, feature, purpose, or use of applicant’s goods and 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). 

 

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.”

            …

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.

…

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.    

 

Office action questions. Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

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

• 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 March 23, 2020 for

U.S. Trademark Application Serial No. 88753381

 

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. 

 

 

/Tina Brown/

Trademark Examining Attorney

Law Office 118

E: tina.brown@uspto.gov

T: 571-272-8864

 

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 March 23, 2020, 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.”