Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/523963

 

Search Results

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Section 2(e)(1) - Descriptive Refusal

 

Registration is refused because the proposed mark merely describes a feature of the applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

 

It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods/services to be merely descriptive.  It is enough if the term describes one attribute of the goods/services.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).  TMEP §1209.01(b). 

 

The “e” prefix has become commonly recognized as a designation for goods or services that are electronic in nature or are sold or provided electronically.  When the “e” prefix is coupled with a descriptive term or terms for electronic goods and/or services, then the entire mark is considered merely descriptive under Section 2(e)(1).  In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002) (E-AUTODIAGNOSTICS merely descriptive of an “electronic engine analysis system comprised of a hand-held computer and related computer software”); In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000) (E FASHION held merely descriptive of software for use in shopping via global computer network and electronic retailing services); Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385 (TTAB 1999) (E-TICKET held generic for computerized reservation and ticketing of transportation services).  The applicant’s own identification states that its goods include “electronic gaming machines.”

 

Further, the applicant’s gaming machines presumably are intended to “pay” winners. 

 

pay1

 
pay (pâ) verb

paid (pâd) pay·ing, pays verb, transitive

1.    To give money to in return for goods or services rendered: pay the cashier.

2.    To give (money) in exchange for goods or services: paid three dollars for a hamburger; paid an hourly wage.

3.    To discharge or settle (a debt or an obligation): paying taxes; paid the bill.

4.    a. To give recompense for; requite: a kindness that cannot be paid back. b. To give recompense to; reward or punish: I'll pay him back for his insults.

5.    To bear (a cost or penalty, for example) in recompense: She paid the price for her unpopular opinions.

6.    To yield as a return: a savings plan that paid 12 percent interest.

7.    To afford an advantage to; profit: It paid us to be generous.

8.    To give or bestow: paying compliments; paying attention.

9.    To make (a visit or call).

10.  Past tense and past participle paid or  payed (pâd). To let out (a line or cable) by slackening.

 

verb, intransitive

1.    To give money in exchange for goods or services.

2.    To discharge a debt or an obligation.

3.    To bear a cost or penalty in recompense: You'll pay for this mischief!

4.    To be profitable or worthwhile: It doesn't pay to get angry.

 

adjective

1.    Of, relating to, giving, or receiving payments.

2.    Requiring payment to use or operate: a pay telephone.

3.    Yielding valuable metal in mining: a pay streak.

 

noun

1.    The act of paying or state of being paid.

2.    Money given in return for work done; salary; wages.

3.    a. Recompense or reward: Your thanks are pay enough. b. Retribution or punishment.

4.    Paid employment: the workers in our pay.

5.    A person considered with regard to his or her credit or reliability in discharging debts.

 

— phrasal verb.

pay off

1.    To pay the full amount on (a debt).

2.    To effect profit: a bet that paid off poorly.

3.    To get revenge for or on; requite.

4.    To pay the wages due to (an employee) upon discharge.

5.    Informal. To bribe.

6.    Nautical. To turn or cause to turn (a vessel) to leeward.

pay out

1.    To give (money) out; spend.

2.    To let out (a line or rope) by slackening.

pay up

To give over the full monetary amount demanded.

 

— idiom.

pay (one's) dues

To earn a given right or position through hard work, long-term experience, or suffering: She paid her dues in small-town theaters before getting a part in a Broadway play.

pay (one's) way

To contribute one's own share; pay for oneself.

pay the piper

To bear the consequences of something.

pay through the nose Informal.

To pay excessively.

 [Middle English paien, from Old French paiier, from Late Latin, to appease, from Latin pâcâre, to pacify, from pâx, pâc-, peace.]

 Word History: Given the unpeaceful feelings one often has in paying bills or income taxes, it is difficult to believe that the word pay ultimately derives from the Latin word pâx, “peace.” However, it is not the peace of the one who pays that is involved in this development of meaning. From pâx, meaning “peace” and also “a settlement of hostilities,” was derived the word pâcâre, “to impose a settlement on peoples or territories.” In Late Latin pâcâre was extended in sense to mean “to appease.” The Old French word paiier that developed from Latin pâcâre came to have the specific application “to pacify or satisfy a creditor,” a sense that came into Middle English along with the word paien (first recorded around the beginning of the 13th century), the ancestor of our word pay.[1]

 

The combination of “e” and “pay” describes what the product is intended to do – function “electronically” to provide “payments,” or “pay” to winning players.  As a result, the mark is descriptive and registration on the Principal Register must be refused.

 

Supplemental Register

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case until an acceptable allegation of use is filed.  The instant application was filed under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88 has been timely filed.  37 C.F.R. §2.47(d); TMEP §815.02, 816.02 and 1102.03.

 

If applicant files an allegation of use and also amends to the Supplemental Register, please note that the effective filing date of the application will then be the date of filing of the allegation of use.  37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.

 

Identification of Goods

 

The wording “lottery machines” in the identification of goods needs clarification because the type of lottery machine is not stated, and it is not clear why the goods belong in Class 9.  Applicant may change this wording to “electronic lottery machines,” if accurate.  TMEP §1402.01.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

The applicant must rewrite the identification of goods in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(b).

 

Fee Increase

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

 

/Doritt Carroll/

Examining Attorney, LO 116 (703) 306-7904

ecom116@uspto.gov

www.gov.uspto.report/teas/index.html

fax: (703) 746-8116

 

 

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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.