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  76/577436

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Registration is Refused - Mark is Merely Descriptive

 

The applicant applied to register the mark TEXAS HOLD’EM for “lottery games, namely lottery game scratch tickets, lottery game pull tab tickets and lottery game entry tickets.”  The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.

 

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 goods.  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’s mark is merely descriptive because it immediately conveys to prospective consumers a feature of the goods, namely, the subject matter.  “Texas Hold ‘Em” is a popular poker game.  The examining attorney refers to the excerpted articles from the computerized database LEXIS/NEXISâ.  See attached.  The applicant’s goods will simulate that game. 

 

Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application".  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration). 

 

In order to allow for proper examination of the application, including the final determination of descriptiveness, applicant must submit additional information about the goods.  The applicant must provide product information for the goods.  This may take the form of a fact sheet, instruction manual, or advertisement.  If unavailable, the applicant should submit the information for goods of the same type, explaining how its own product will differ.  If the goods feature new technology and no competing goods are available, the applicant must provide a detailed factual description of the goods.

 

In all cases, the submitted factual information must make clear how the goods operate, their salient features, and their prospective customers and/or channels of trade.  This information is not readily available to the examining attorney, and is pertinent to the descriptiveness determination.  Conclusory statements from the applicant or its attorney regarding the descriptiveness standard will not be sufficient to meet this requirement for information.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issue.

 

Standard Character Claim Required

 

The applicant’s mark was filed in “typed form.”  As of November 2, 2003, the rules pertaining to drawings in trademark applications changed.  “Typed form” is no longer a recognizable drawing format; what was typed form is now considered “standard character.”  Marks formerly filed with typed form drawings now must be filed with a “standard character claim.”

 

When the applicant files a mark with a standard character drawing, the applicant must submit a standard character claim.  37 C.F.R. section 2.52(a).

 

Accordingly, the applicant must submit the following standard character claim:

 

            “The mark is presented in standard character format without claim to any particular font, style, size or color.”

 

 

No Likelihood of Confusion

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 1105.01.

 

Response Guidelines

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

NEW PHONE NUMBER AS OF OCTOBER 12, 2004

 

To reach the undersigned attorney by telephone after October 12, 2004, please call (571) 272 - 9263.  Thank you.

 

 

/Gwen P. Stokols/

Trademark Examining Attorney

Law Office 102

 

Telephone:  703-308-9102, x. 275

Fax:  703-746-8102

 

 

 

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 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.

 

                                                                         108B8C

Print Request:   Selected Document(s): 1,2,5,14

                 

Time of Request: September 12, 2004  01:10 PM EDT

 

Number of Lines: 37

Job Number:      1861:11060029

 

Client ID/Project Name: 

 

Research Information:

 

 US Newspapers

"texas hold 'em" w/10 game

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Send to:  STOKOLS, GWEN

          TRADEMARK LAW LIBRARY

          2101 CRYSTAL PLAZA ARC

          MAILBOX 314

          ARLINGTON, VA 22202-4600

          

          

 

 

1.   Detroit Free Press, September 12, 2004 Sunday 0 EDITION, 392 words, It's a full house at poker tournaments, BY BILL ORDINE; KNIGHT RIDDER NEWSPAPERS

... a younger clientele, and Texas Hold 'em, a game that appeals to the under-30  ...

 

2.  Orlando Sentinel (Florida), September 12, 2004 Sunday,   CENTRAL FLORIDA, LAKE; BUSINESS & REAL ESTATE; Pg. K27, 491 words, WHEN THE POWER'S OUT, `GOT GAME?' FILLS THE BILL OWNER EXPANDS STORE AFTER START AT FLEA MARKET, Rosalind Jennings, Special to the Sentinel

... board games, card games like wicked Mexican  ...

... any kind of domino game. Texas Hold 'Em is one of the newest, hottest poker games." Paletta said her shop, which  ...

 

5. The Virginian-Pilot(Norfolk, Va.), September 10, 2004 Friday, Final Edition, Pg. B1, 649 words, ALL BETS OFF: POKER EVENT CANCELED; TOURNAMENT AT FRATERNAL ORDER OF POLICE LODGE CALLED ILLEGAL, JON FRANK THE VIRGINIAN-PILOT, VIRGINIA BEACH

... in." The tournament featured Texas Hold 'Em poker, the seven-card game made popular in  ...

... skill, rather than simple games of chance such as bingo or raffles. He said that other Texas Hold 'Em poker games are being held in the  ...

 

14.   The Washington Post, September 6, 2004 Monday,   Final Edition, A Section; A01, 1843 words, Poker's Popularity Proves a Hot Hand for Gaming Industry;  Online and Off, Card Game Draws Players With Money, Competition, Jonathan Krim, Washington Post Staff Writer

... most popular tournament game, Texas Hold 'em, every player has two  ...