To: | Innovative Concepts in Entertainment, In ETC. (trademarks@davismcgrath.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88036869 - BUBBLE SOCCER - N/A |
Sent: | 11/2/2018 11:40:22 AM |
Sent As: | ECOM122@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88036869
MARK: BUBBLE SOCCER
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Innovative Concepts in Entertainment, In ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 11/2/2018
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH RESULTS: PRIOR-FILED PENDING APPLICATION
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant should note and respond to the additional refusal and issues below.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Applicant’s applied-for mark is “BUBBLE SOCCER” for “Equipment sold as a unit for playing table soccer games.”
The attached evidence from WonderFly Games, Wikipedia, BubbleSoccerUSA, and Walmart shows that “BUBBLE SOCCER” is a variant of the game soccer in which players wear large plastic bubbles. WonderFly Games says that “In BubbleBall, players wear inflatable bubble suits that allow them to safely bounce off one another and roll over completely.” Wikipedia says that “Bubble football, BubbleBall, Bubble Soccer, or Airball Soccer is the recreation/sport of playing football while half-encased inside an inflated torus bubble, similar to a zorb, which covers the player’s upper body and head … Bubble football follows the same objectives and overall rules as regular football (i.e., teams compete to hit a ball into the opposing team's goal) with the added condition that each player must wear an inflatable bubble, similar to a water ball, around their upper torso.”
Applicant’s goods are table soccer game units. Additional attached evidence from Wayfair, Google, and target shows these goods. Therefore, the wording in the mark, “BUBBLE SOCCER”, merely describes tabletop soccer games that show the players in these “bubbles.” The mark clear and directly names that the goods, tabletop soccer units, will feature “BUBBLE SOCCER” players.
A major reasons for not protecting descriptive marks is to prevent the owner of a descriptive mark from inhibiting competition in the marketplace. In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209. Businesses and competitors should be free to use descriptive language when describing their own services to the public in advertising and marketing materials. See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001). “BUBBLE SOCCER” describes a feature or characteristic of the applied-for goods and is therefore a word that providers of these goods need to be able to use to describe and advertise them.
Based on the evidence and analysis above, applicant’s applied-for mark is merely descriptive and must be refused under Section 2(e)(1) of the Lanham Act.
ADVISORY: SUPPLEMENTAL REGISTER & DISCLAIMER
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “SOCCER” apart from the mark as shown.
TMEP §1213.08(a)(i).
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Applicant should note the additional requirements, set forth below. If applicant chooses to respond to the refusal above, applicant must also respond to these requirements.
REQUEST FOR INFORMATION REQUIREMENT
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods is available on applicant’s website is insufficient to make the information of record.
(2) If these materials are unavailable, applicant should describe the look of the tabletop soccer game units, or the planned look of these units.
(3) Applicant must respond to the following questions as they related to the goods in production, or the planned goods if they are not yet in production:
i. Do the tabletop soccer units feature clear orbs of any kind? If yes, describe their placement in the game unit.
ii. Do the player figured in the goods appear with anything surrounding them?
iii. Describe the appearance of the players in the tabletop soccer units.
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
RESPONSE AND ASSISTANCE
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Kimberly M. Ray/
Examining Attorney
Law Office 122
(571) 272-7834
Kimberly.Ray@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.