To: | Gaming Partners International Corporatio ETC. (TRADEMARKSLV@DICKINSONWRIGHT.COM) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88078410 - SMART - 075518-70304 |
Sent: | 9/12/2018 2:06:28 PM |
Sent As: | ECOM124@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88078410
MARK: SMART
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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: Gaming Partners International Corporatio 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: 9/12/2018
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Trademark Act Section 2(e)(1) Refusal – Descriptive
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant’s identification of goods is for a lengthy list of electronic hardware devices and components used to for authentication and verification in the casino industry concerning chips, currency, and the overall integrity of equipment. The identification of goods makes numerous references to RFID readers and chips which assist in performing these tasks. Applicant’s services concern the design and implementation of such electronic goods for the purposes of fraud detection. The examining attorney believes that generally, applicant’s goods are “smart” iterations and would be recognized as such in applicant’s field. Attached to this Office Action is an article titled “Smart chips up the ante of security” in the Pittsburgh Post-Gazette, which discusses casino chips with microchip sensors to validate authenticity and value. Further, the American Heritage Dictionary defines “smart” as meaning “something capable of making adjustments that resemble those resulting from human decisions, chiefly by means of electronic sensors and computer technology.” Taken together, the word “SMART” is descriptive of a feature or characteristic of applicant’s goods and services and registration on the Principal Register must be refused.
Amendment to Supplemental Register Suggested
Classification of Identification of Goods and Services
Applicant may adopt the following identification of goods and services, if accurate:
Class 9: RFID readers for use in connection with electronic counterfeit casino currency detection; electronic device for use in connection with electronic counterfeit casino currency detection in the nature of a RFID reader; currency counting machines for use in casinos; counterfeit money detection device in the nature of a currency recognition machine for the purpose of authenticating RFID chips in currency; electronic device for pursuing and recording casino chips on casino tables; device for verifying casino chips on casino tables in the nature of scanners and RFID readers; computer hardware for use in connection with preventing cheating in casino games; computer software for use in connection with preventing cheating in casino games, namely, software for monitoring casino currency inventory and detecting counterfeit currency; electronic security equipment relating to chips for casino gambling, namely, checking equipment in the nature of scanners and RFID readers for determining quality and integrity of chips for casino gambling, counting equipment in the nature of scanners and RFID readers to prevent theft and loss of chips for casino gambling, monitoring equipment in the nature of scanners and RFID readers for identifying movement of chips for casino gambling, ID verification equipment in the nature of scanners and RFID readers for chips for casino gambling, counting equipment in the nature of scanners and RFID readers for chips for casino gambling, video camera security equipment for chips for casino gambling, cheating act surveillance equipment in the nature of cameras, scanners, and video monitors relating to tracking of chips for casino gambling; computer software for verification of movement of chips for casino gambling; computer software for verification of distribution and calculation of chips for casino gambling.
Class 42: Design and implementation of software and technology solutions for the purpose of casino currency authentication and tracking to protect against counterfeiting, tampering, and diversion, and to ensure the integrity of the casino currency; information security services, namely, RFID authentication services; Fraud detection services, namely, monitoring, detecting and preventing counterfeit currency through RFID technology
Multi-Class Application - Advisory
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 9; and applicant needs a specimen for class 42 if it is added to the application. See more information about specimens.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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 and/or services. 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.
Assistance
/Jordan A. Baker/
Trademark Examining Attorney
Law Office 124
571-272-8844
jordan.baker@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.