Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/577436

 

This letter responds to the applicant's communication filed on July 8, 2005.

 

non-final action

 

In the office action dated April 7, 2005, the examining made final the refusal to register under Section 2(e)(1) of the Trademark Act. 

 

In its response, the applicant continues to argue that the mark is not merely descriptive.  This is a non-final action.

 

The examining attorney has determined that the following refusal must be issued.

 

Registration is Refused - Mark is Deceptively Misdescriptive

 

The mark is TEXAS HOLD’EM for, as amended, “Lottery games, namely lottery game scratch tickets, lottery game pull tab tickets and lottery game entry tickets, the winning outcomes of which are not determined by or based on the game of poker or hands of cards.”

 

The examining attorney refuses registration on the Principal Register because the mark is deceptively misdescriptive of the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209.04.

 

A mark is descriptive if it conveys an accurate or true idea of an ingredient, quality, characteristic, function or feature of the relevant goods.  If the idea conveyed by the mark is false, and also plausible, then the term is deceptively misdescriptive and is unregistrable under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1).  In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987); In re Ox‑Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983).

 

Accordingly, the test for deceptive misdescriptiveness has two parts:  (1) does the mark misdescribe the goods, and (2) are consumers likely to believe the misrepresentation?  In re Quady Winery, Inc., 221 USPQ 1213, 1214  (TTAB 1984).

 

As to the first part, the mark misdescribes the goods because it gives the idea that the goods somehow pertain to the popular game “Texas Hold’Em.”

 

As to the second part, consumers are likely to believe the misrepresentation because it is not unusual for lottery purveyors to incorporate other forms of gambling into their lottery games.  Indeed, as demonstrated in the previous office action, there are lottery games which specifically feature scratch tickets using a “Texas Hold’Em” theme.  The examining attorney refers the applicant to the evidence already in the record.

 

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 misdescriptiveness, 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.

 

In this case, the applicant must submit actual or sample lottery tickets to show how the mark is used in connection with the goods.

 

Supplemental Register

 

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.  In the alternative, the applicant may amend the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. Section 1091; 37 C.F.R. Sections 2.47 and 2.75(a).

 

The Principal Register offers prima facie evidence of:

 

         1.   validity of the registration;

         2.   registrant's ownership of the trademark;

         3.   exclusive right to use the trademark in commerce;

4.      "incontestability" after five years registration (stops attacks based on prior

descriptiveness of the trademark)

         5.   constructive notice of registrant's claim of ownership;

         6.   nationwide rights in the trademark;

         7.   right to bring suit in federal court regardless of jurisdictional diversity;

         8.   statutory remedies;

9.      ability to prevent importation of goods bearing an infringing trademark by

   depositing the registration with the Customs Office and,

         10.   rights under the Paris Convention.

 

These presumptions do not apply to registration on the Supplemental Register.  This is because a trademark on the Supplemental Register is merely considered "capable" of being a trademark -- there has been no determination that it is a trademark.  Nevertheless, registration on the Supplemental Register does permit:

 

         1.   use of the federal registration symbol "â";

2.      use of the trademark as a bar to registration of confusingly similar trademarks

   filed by others;

         3.   registration abroad based on U.S. rights; and,

         4.   registrant may bring suit in federal court.

 

Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. §1051(b), 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(c); TMEP §815.02, 816.02 and 1102.03.  When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use.  37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.

 

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

 

 

 

/Gwen P. Stokols/

Trademark Examining Attorney

Law Office 102

 

Telephone:  571-272-9263

Fax:  571-273-9263

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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