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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/649919

 

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

 

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.

 

However, the applicant shall note the following requirements and concerns:

 

CLASSIFICATION OF SERVICES

 

Applicant must correct the classification of the services in the application and amend the application to classify them in International Class 41.   37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

LIVING INDIVIDUAL INQUIRY

 

Applicant must clarify whether the name in the mark identifies a particular living individual. 

 

If the name in the mark identifies a particular living individual, then applicant must submit the following: 

 

(1)  a signed, written consent from that individual, authorizing applicant to register the name as a trademark with the USPTO; and

 

(2)  a statement that “LUCKY MAGEE identifies a living individual whose consent is of record.”

 

However, if the name in the mark does not identify a living individual, then applicant must submit a statement that “LUCKY MAGEE does not identify a living individual.”  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813 and 1206.

 

DISCLAIMER

 

The applicant must disclaim the descriptive wording “RACINO GRILL AND SPORTS BAR” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is descriptive because, according to the attachment from the Answers.com website, the term “racino” is descriptive of a portmanteau for a combined race track and casino.  Furthermore, the term “grill and sports bar” is descriptive of a feature of the applicant’s wagering services.  According to the attachments from the Encarta online dictionary, the term “grill” refers to an establishment that serves grilled food and the term “sports bar” refers to a place that services alcoholic beverages.  Thus, the term “racino grill and sports bar” is merely descriptive because it immediately identifies a feature of the applicant’s services, namely, wagering services provided at a race track that also serves as a casino, which features grilled food and alcoholic beverages.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use RACINO GRILL AND SPORTS BAR apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

REQUEST FOR ADDITIONAL INFORMATION

Applicant is required to furnish such information and exhibits as may be reasonably necessary to the proper examination of this application. 37 C.F.R. Section 2.61(b). Applicant must furnish the following information:

1. The applicant must indicate whether the term “LUCKY MAGEE’S RACINO GRILL AND SPORTS BAR” or any portion thereof has any significance in relation to the applicant’s goods or in the relevant trade, any geographical significance or any meaning in a foreign language. If the term is an acronym, the applicant must specify its meaning. 37 C.F.R. Section 2.61(b).

2. The applicant must also submit product information for the identified goods and services. This may take the form of a fact sheet, an instruction manual, and/or advertisements or promotional materials. If such materials are not available, the applicant must submit a detailed description of the goods and services, including but not limited to their nature, purpose, prospective purchasers, and channel of trade. This information is necessary to evaluate accurately and fully the registrability of the applicant’s proposed designation. 37 C.F.R. Section 2.61(b); TMEP sections 814. If the applicant does not provide the information required herein, registration may be refused. See, e.g., In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990).

 

CORRESPONDENCE GUIDELINES

 

Please note, there is no required format or form for responding to this Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the following information:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.

 

When responding to this Office action, applicant must make sure to respond to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register.  If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

 

 

 

 

 

 

 

 

 

 

/JenniferVasquez/

Trademark Examining Attorney

Law Office 113

(571) 272-8279

Fax: (571) 273-8279

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.