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  77/018056

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  TEAS Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html:  (1) written responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) amendments to allege use; (7) statements of use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis.  If any of these documents are filed on paper, they must be accompanied by a $50 per class fee.  37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i).  Telephone responses will not incur an additional fee.  NOTE:  In addition to the above, applicant must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee.  37 C.F.R. §2.23(a)(2).

 

No Conflicting Marks Noted

 

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.

 

Applicant, however, should note the following requirements.

 

New Drawing

Applicant must submit a new drawing with “TM” deleted because it is not part of the mark.  TMEP §§807.02 and 807.14(a).

 

Disclaimer

Applicant must insert a disclaimer of CHAMPIONSHIP GAMING SERIES in the application because it merely describes the subject matter of applicant’s goods.  Please see the attached definitions from the American Heritage® Online Dictionary.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §1213. 

The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark.  Trademark Act Section 6(a), 15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  TMEP §1213.03(a).  If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark.  TMEP §1213.01(b). 

A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect.  The appearance of the applied-for mark does not change. 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office: 

No claim is made to the exclusive right to use “CHAMPIONSHIP GAMING SERIES” apart from the mark as shown. 

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

The applicant applied to register the mark CHAMPIONSHIP GAMING SERIES for “Cases for mobile phones; Cases for spectacles and sunglasses; CD cases; CD sleeves; Cell phone covers; Computer game cartridges; Computer game discs; Computer game equipment containing memory devices namely, discs; Computer game software; Computer hardware and computer software programs for the integration of text, audio, graphics, still image and moving pictures into an interactive delivery for multimedia applications; Computer mouse; Computer screen saver software; Computer software for computer and video games; Covers for electric outlets; Decorative magnets; Decorative switch plate covers; Downloadable films and tv programs provided via a video-on-demand; Downloadable multimedia file containing artwork, text, audio, video, games, and Internet Web links relating to the entertainment and gaming industries; Downloadable video recordings featuring gaming events; DVD cases; DVD sleeves; Electronic game software for cellular telephones; Electronic game software for handheld electronic devices; Electronic game software for wireless devices; Eyeglass cases; Eyeglass chains; Game software; Handheld computers; Interactive video game programs; Interactive video games of virtual reality comprised of computer hardware and software; Mobile phone straps; Mouse pads; Multimedia software recorded on CD-ROM featuring video games; Pre-recorded CD's, video tapes, laser disks and DVD's featuring computer and video games and events related thereto; Prerecorded digital video disks featuring video games and gaming events; Prerecorded video cassettes featuring video games and gaming events; Video discs featuring video games and gaming events; Video game cartridges; Video game discs; Video game interactive hand held remote controls for playing electronic games; Video game interactive remote control units; Video game software; Video game tape cassettes; Video recordings featuring video games and gaming events; Virtual reality game software.” 

The term CHAMPIONSHIP means “A competition or series of competitions held to determine a winner.”  The term GAMING means “Gambling, especially casino gambling” or “The playing of games, especially video games.”  The term SERIES means “A number of objects or events arranged or coming one after the other in succession.”  Please see the attached definitions from the American Heritage® Online Dictionary.  When combined, these terms do not create a separate and distinct commercial impression.  Rather the terms merely describe the subject matter of the applicant’s goods, namely, a number of arranged video game competitions coming one after the other to determine a winner. 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

 

 

 

/Michael Engel/

Trademark Examining Attorney

Law Office 107

(571) 272-9338

 

 

 

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.