Sunday, March 31, 2019

Can Festival Domain Name Stop Similar Name?

Rasta Hat
Dear Rich, I decided to create a brand and annual music festival called The Houston Reggae Festival. I registered the domain, I created social media handles on every major platform, and I've paid for business cards, Facebook advertising, custom brand merchandise like stickers, T-shirts, etc. I registered my domain in May 2015, and I've been publishing content and promoting my event ever since. I own my own small business and listed the festival as a production of my business. I recently discovered another festival infringing on my name, but I've only trademarked under common law so far. I was wondering if I should send a friendly message asking the other events producers to respect my mark for the Houston Reggae Festival, send a cease and desist letter citing my common law trademark/servicemark, or send in my mark application first and send a cease and desist under a pending mark? I'm a little worried my mark might be too generic, but I've listed Houston and Reggae Festival as disclaimers on my application so far. I was also curious what would be the best three services to list for my services as a reggae festival and brand for my SM application?
As you can imagine, legal disputes over festival names are not uncommon (even when the festivals offer different services). But to stop someone from using a similar festival title, you need more than a domain name; you need trademark rights. You receive those rights by being the first to use the name in commerce. In other words, if you used Houston Reggae Festival in commerce starting in May 2015, you might have superior rights (referred to as "priority") over subsequent users.
What is "use in commerce?"Your mark is "in use in commerce" when the services are actually advertised, and you can legitimately deliver festival services to customers. Actual use must be a commercial use, not simply a token use to obtain trademark priority. So, if you promote a festival but you cannot provide festival entertainment, your mark is not in use.
Should you apply for federal registration? We believe Houston Reggae Festival is registrable. You will need to disclaim "Reggae Festival" (but not Houston), and you should register in Class 041. That's based on two existing trademark registrations: Kentucky Reggae Festival (Reg. No. 2292636) and Charlemont Reggae Festival (Reg. No. 88104947).
Registration complications. Although the mark is not generic, a USPTO trademark examiner will likely object to it as being "descriptive." To overcome this and achieve registration, you will need to demonstrate that your mark has become distinctive for reggae festivals. You prove this by demonstrating substantial marketing and advertising, or by five years of continuous use. If the examiner classifies your mark as descriptive and you can't prove distinctiveness, you may need to switch your application to the Supplemental Register. Also, you cannot file an ITU application for a descriptive mark.
What should you do? There are too many variables in play -- your date of first use, whether the mark is descriptive, whether you have the financial support needed to take on a trademark dispute -- that we cannot plot your next move. Surely, if you're hosting or planning to host music festivals, you should resolve your name dispute, and apply for trademark registration. As to the order of events, you'd be best served by consulting an attorney. Consider contacting Texas Accountants and Lawyers for the Arts.

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