UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/327601
APPLICANT: Bellagio, LLC
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CORRESPONDENT ADDRESS: DANA B. ROBINSON QUIRK & TRATOS 3773 HOWARD HUGHES PARKWAY, SUITE 500 NO LAS VEGAS, NEVADA 89109
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom112@uspto.gov
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MARK: FREEPLAY
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/327601
This letter responds to the applicant's communication filed on 4/3/03. The applicant:
1. Provided additional evidence of acquired distinctiveness under Section 2(f).
Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), because the subject matter for which registration is sought is merely descriptive of the identified services.
The applicant argues that the wording is suggestive of the applicant’s services. The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive. For the reasons below, the refusal under Section 2(e)(1) is maintained and made FINAL.
A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b). The applicant seeks to register the mark FREEPLAY for “casino services.” The mark is merely descriptive of the applicant’s services because it identifies a feature of the services.
The wording “free play” is commonly used within the casino and gaming industry to signify a feature of casino games. The applicant is directed to the following attached evidence:
· Stories from the LEXIS/NEXIS database, in particular story number 7 of 80, referring to a “free play coupon” for a casino.
· Screen captures from he World Wide Web referring to casinos offering “free play” games and tables.
The wording indicates that some portion of the casino and gaming service are offered for free. A variety of casinos use this wording to identify their services, therefore, the wording is merely descriptive of the services.
Acquired Distinctiveness
In the alternative, the applicant submitted a claim of acquired distinctiveness under Section 2(f).
The applicant previously submitted evidence of three years use to support its claim of acquired distinctiveness. The applicant has supported the claim with a description of its use. The applicant has provided in the form of affidavit regarding the applicant’s use and efforts to promote the mark. The applicant’s use of the mark for four years and the evidence provided does not establish acquired distinctiveness under Section 2(f). The refusal to register is made FINAL.
a. Length of Use
Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f), provides that “proof of substantially exclusive and continuous use” of a designation “as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made” may be accepted as prima facie evidence that the mark has acquired distinctiveness as used with the applicant’s goods in commerce. See also 37 C.F.R. §2.41(b). The Trademark Law Revision Act of 1988, Public Law 100-667, 102 Stat. 3935, revised §2(f) of the Act to provide for a prima facie showing of acquired distinctiveness based on five years’ use running up to the date the claim is made. The applicant’s claim is for less than five years use, therefore it does not meet the prima facie showing of acquired distinctiveness.
b. Advertising
The applicant’s advertising expenditures also do not establish that the mark has acquired distinctiveness. The applicant has provided a statement regarding its advertising expenditures in connection with promoting the mark.
In considering a claim of acquired distinctiveness, the issue is whether acquired distinctiveness of the mark in relation to the goods or services has in fact been established in the minds of the purchasing public. In re Redken Laboratories, Inc., 170 USPQ 526 (TTAB 1971); In re Fleet-Wing Corp., 122 USPQ 335 (TTAB 1959).
Large scale expenditures in promoting and advertising goods and services under a particular mark are significant to indicate the extent to which a mark has been used. However, proof of an expensive and successful advertising campaign is not in itself enough to prove secondary meaning. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (claim based on annual sales under the mark of approximately eighty-five million dollars, and annual advertising expenditures in excess of ten million dollars -- two million of which were spent on promotions and promotional items which included the phrase THE BEST BEER IN AMERICA -- found insufficient to establish distinctiveness, in view of the highly descriptive nature of the proposed mark); Mattel, Inc. v. Azrak-Hamway International, Inc., 724 F.2d 357, 221 USPQ 302, 305 n. 2 (2d Cir. 1983).
The ultimate test in determining whether a designation has acquired distinctiveness is applicant’s success, rather than its efforts, in educating the public to associate the proposed mark with a single source. The examining attorney must examine the advertising material to determine how the term is being used, the commercial impression created by such use, and what the use would mean to purchasers. In re Redken Laboratories, Inc., 170 USPQ 526, 529 (TTAB 1971) (evidence adduced by applicant pursuant to §2(f) held insufficient to establish acquired distinctiveness of THE SCIENTIFIC APPROACH, for lectures concerning hair and skin treatment, notwithstanding ten years of use, over $500,000 in promotion and sponsorship expenses, and the staging of over 300 shows per year). See also In re E.I. Kane, Inc., 221 USPQ 1203, 1206 (TTAB 1984) (refusal to register OFFICE MOVERS, INC., for moving services, affirmed notwithstanding §2(f) claim based on, inter alia, evidence of substantial advertising expenditures. “There is no evidence that any of the advertising activity was directed to creating secondary meaning in applicant’s highly descriptive trade name.”); In re Kwik Lok Corp., 217 USPQ 1245 (TTAB 1983) (evidence held insufficient to establish acquired distinctiveness for configuration of bag closures made of plastic, notwithstanding applicant’s statement that advertising of the closures involved several hundred thousands of dollars, where there was no evidence that the advertising had any impact on purchasers in perceiving the configuration as a mark). Cf. In re Haggar Co., 217 USPQ 81, 84 (TTAB 1982) (background design of a black swatch held registrable pursuant to §2(f) for clothing where applicant had submitted, inter alia, evidence of “very substantial advertising and sales,” the Board finding the design to be, “because of its serrated left edge, something more than a common geometric shape or design”).
The applicant has not provided evidence of the actual advertising in question,. There is insufficient evidence to determine whether the applicant’s mark has gained recognition as a result of the advertising.
For the foregoing reasons, the refusal to register is made FINAL.
Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board. 37 C.F.R. Section 2.64(a). If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned. 37 C.F.R. Section 2.65(a).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Andy Corea/
Examining Attorney
Trademark Law Office 112
703/308-9112 x160
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
108B8C
Print Request: Selected Document(s): 1,2,7,8,11-13,15,19,26,32
Time of Request: May 19, 2003 10:00 AM EDT
Number of Lines: 248
Job Number: 1862:0:829244
Client ID/Project Name:
Research Information:
US Newspapers and Wires
"free play" /10 casino
Send to: COREA, ANDY
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VIRGINIA 22202-4600
1 of 80 DOCUMENTS
The Associated Press State & Local Wire
The materials in the AP file were compiled by The Associated Press. These materials may not be republished without the express written consent of The Associated Press.
April 8, 2003, Tuesday, BC cycle
SECTION: State and Regional
LENGTH: 462 words
HEADLINE: Live from Lauglin, it's TV gambling
BYLINE: By RYAN PEARSON, Associated Press Writer
DATELINE: CARSON CITY, Nev.
BODY:
...Laughlin casino for a trial run and hopes to partner first with a British broadcaster which already offers virtual free-play casinos.
Lindos predicts his publicly-traded company would earn over $1 billion in yearly royalties through the operation. "The numbers are ...
2 of 80 DOCUMENTS
The Associated Press State & Local Wire
The materials in the AP file were compiled by The Associated Press. These materials may not be republished without the express written consent of The Associated Press.
April 8, 2003, Tuesday, BC cycle
SECTION: State and Regional
LENGTH: 434 words
HEADLINE: Entrepreneur asks Nevada for OK to televise casino games for betting
BYLINE: By RYAN PEARSON, Associated Press Writer
DATELINE: CARSON CITY, Nev.
BODY:
...a Laughlin casino for a trial run and hopes to partner first with a British broadcaster that already offers free play on Internet casinos.
Lindos predicts his publicly traded company would earn more than $1 billion in yearly royalties through the operation. "The numbers are ...
7 of 80 DOCUMENTS
Copyright 2003 Providence Publications, LLC
Providence Journal-Bulletin (Rhode Island)
January 3, 2003, Friday All Editions
SECTION: News; Pg. C-02
LENGTH: 1112 words
HEADLINE: East Bay Briefings
BODY:
...rib) Jan. 19 with shrimp cocktail, clam chowder, clam cakes and more. The group will also visit Mohegan Sun Casino and receive a $10 Free Play coupon.
The Casino Extravaganza is scheduled for Feb. 23. The group will visit both casinos and receive $45 in bonuses including the ...
8 of 80 DOCUMENTS
Copyright 2002 McClatchy Newspapers, Inc.
Fresno Bee (California)
December 27, 2002, Friday SOUTH VALLEY EDITION
SECTION: SOUTH VALLEY BEE; Pg. 1
LENGTH: 454 words
HEADLINE: Casino adding slots, tables $3m project doubles the size of Eagle Mountain.
BYLINE: Jason D. Plemons THE BEE
DATELINE: PORTERVILLE
BODY:
...part of string of payouts in the past year. Earlier there was a $90,000 winner and another for $247,000.
Navarro said his casino is the only one in the state that offers instant "free plays" on its machines.
More than 600 people work at the casino, and there are plans to add at least 100 more workers when the addition opens, Navarro said.
Plans for boosting the live ...
11 of 80 DOCUMENTS
Copyright 2002 DR Partners d/b Las Vegas Review-Journal
Las Vegas Review-Journal (Nevada)
November 29, 2002 Friday FINAL EDITION
SECTION: J; Pg. 5J
LENGTH: 737 words
HEADLINE: PLAYER'S EDGE: Hit a jackpot at the Plaza, get free groceries
BYLINE: Bob Dancer and Jeffrey Compton
BODY:
...Members do not have to redeem their points, but there is a maximum of two certificates per member per Sunday.
The Palms is offering free play, the equivalent of cashback, in the casino's High Limit Slot Salon. Club Palms members will have the option of receiving $1 of free play for every $ ...
12 of 80 DOCUMENTS
Copyright 2002 DR Partners d/b Las Vegas Review-Journal
Las Vegas Review-Journal (Nevada)
November 1, 2002 Friday FINAL EDITION
SECTION: J; Pg. 32J
LENGTH: 755 words
HEADLINE: Trips, cars, popular promotions dot casino landscape
BYLINE: Bob Dancer and Jeffrey Compton
BODY:
...one ticket every time an 11 is rolled on the come out roll. On Thursdays in November, the casino will hold drawings for logo jackets and $100 in free play.
Finally, Plaza players hitting a $200 or more jackpot on slots, video poker or at live keno ...
13 of 80 DOCUMENTS
Copyright 2002 The Times-Picayune Publishing Company
Times-Picayune (New Orleans, LA)
May 12, 2002 Sunday
SECTION: ST. BERNARD PICAYUNE; Pg. 3
LENGTH: 274 words
HEADLINE: AARP ACTIVITIES
BODY:
...travel to Beau Rivage in Biloxi, Miss. May 20.
The cost is $8 per person and includes $20 in free play on your card, compliments of the Casino.
Reservations are due by Wednesday. Call Vernon or Helen Landry at 682-5035.
AARP CHAPTER 3851
Members of ...
15 of 80 DOCUMENTS
Copyright 2001 Reno Gazette-Journal
All Rights Reserved
Reno Gazette-Journal
December 27, 2001 Thursday
SECTION: BEST BETS; Pg. 24H
LENGTH: 1767 words
HEADLINE: Games PEOPLE PLAY
BYLINE: Neil Baron, Staff
BODY:
...Smith's and the Emporium and Grand Pavilion inside Baldini's.
Go for the big payoff by cashing a paycheck at the casino. That entitles you to a free play on the Millionaire Paycheck Poker machine, which awards more than $100,000 in cash and complimentaries each month. Every play is ...
19 of 80 DOCUMENTS
Copyright 2001 Press & Sun-Bulletin (Binghamton, NY)
All Rights Reserved
Press & Sun-Bulletin (Binghamton, NY)
July 2, 2001 Monday
SECTION: LOCAL; Pg. 2B
LENGTH: 901 words
HEADLINE: UPCOMING EVENTS
BYLINE: compiled by Lori Tripp
BODY:
...TRIP PLANNED
The Johnson City Senior Center will sponsor a July 17 bus trip to Turning Stone Casino in Verona.
The trip includes $20 free play, $6 Keno match and $3 meal credit.
The bus will leave the senior center at 30 Brocton St., ...
26 of 80 DOCUMENTS
Copyright 2001 The Hearst Corporation
The Times Union (Albany, NY)
January 26, 2001, Friday, 4 EDITION
SECTION: CAPITAL REGION, Pg. F4
LENGTH: 1023 words
HEADLINE: SENIORS NEWS
BODY:
...Tier Center at 8 a.m. and make a stop on the Thruway for breakfast. Upon arrival at the casino, each passenger will receive $ 20 in free play, a $ 3 meal credit and a $ 6 Keno matchplay. The same incentives will be available the second day, with the exception of $ ...
32 of 80 DOCUMENTS
Copyright 2000 PR Newswire Association, Inc.
PR Newswire
May 25, 2000, Thursday
SECTION: FINANCIAL NEWS
DISTRIBUTION: TO BUSINESS EDITOR
LENGTH: 594 words
HEADLINE: Online Gaming Systems Announces Licensing Agreement With Australian-Based Burswood Casino, One Of Australia's Largest Casinos With Turnover In Excess Of $370,000,000AUD;
Play for Free Internet Gaming Site
DATELINE: BOCA RATON, Fla., May 25
BODY:
...Burswood's Marketing Manager, Sue Quinn stated, "Burswood is proud to be associated with Online Gaming Systems, the logical choice to develop our free play online casino site. The implementation of this site will assist in establishing the Burswood brand globally and provide us with significant opportunities to develop our ...