Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  August 02, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on July 3, 2019.

 

In a previous Office action dated January 3, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)(1) for being merely descriptive, and a failure to show the applied-for mark in use in commerce with any of the specified goods.  In addition, applicant was required to satisfy the following requirement:  clarify the mark description.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: clarification of the mark description.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusals in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Section 2(e)(1) Refusal – Mark is Merely Descriptive
• Specimen Refusal

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

Registration is refused because the applied-for mark merely a feature and entity designation of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

In this case, applicant has applied to register the mark “GAMECO” for use in connection with “Gaming devices, namely, gaming machines, slot machines, bingo machines, with or without video input; Gaming machines for gambling; Gaming machines for gambling including slot machines or video lottery terminals; Gaming machines, namely slot machines and video lottery terminals; Video gaming consoles for gambling” in International Class 28 and for use in connection with “Entertainment services, namely, casino gaming” in International Class 41.  

 

The word “game” means “A form of play or sport, especially a competitive one played according to rules and decided by skill, strength, or luck” as shown by the previously attached Oxford dictionary definition evidence. The word “game” merely describes the applicant’s goods because the goods are games and game devices, as shown by the identification of goods “Gaming devices, namely, gaming machines, slot machines, bingo machines, with or without video input; Gaming machines for gambling; Gaming machines for gambling including slot machines or video lottery terminals; Gaming machines, namely slot machines and video lottery terminals; Video gaming consoles for gambling” in International Class 28.

 

The terms “game” and “gaming” are commonly used to describe casino games in International Class 28, as shown by the previously attached internet evidence from Ainsworth Game Technology Inc. (“See Our Latest Games”), Amatic Industries (“Designer, manufacturer and distributor of advanced gaming technology”), and Barcrest (“offering thrilling game content”). It is common in the this industry for businesses selling similar goods to refer to themselves as a “game company” as evidenced by the attached internet evidence from Simple Machine (“Simple Machine is a game company based in New York City”), Giant Bomb (“Bioware is a game company that is currently owned by Electronic Arts (EA)”), Random Potion (“Random Potion is a game company specialized in multiplayer games…”), Looney Labs (“We are a game company”), and Unreal Engine (“At the end of the day, we are a game company”).

 

The word “Co.” is the shortening of the business type designation of a “company.” Business type designations and abbreviations such as “Corporation,” “Inc.,” “Company,” “LLC,” and “Ltd.” or family business designations such as “& Son’s” or “Bros.” merely indicate applicant’s business type or structure and generally have no source-indicating capacity.  TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888); In re Piano Factory Grp., Inc., 85 USPQ2d 1522, 1526 (TTAB 2006); In re Patent & Trademark Servs., Inc., 49 USPQ2d 1537, 1539-40 (TTAB 1998).  Many other companies additionally use the abbreviation Co. as part of the business type designation of their company. Please see the previously attached internet evidence from Bloomberg discussing Sega Games Co., Ltd, Enix Holdings Co., Ltd, and Nexon Co. Ltd.

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002));TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows).  

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).

 

In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and services.  Specifically, the term “GAMECO” is simply a combination of the words “Game” and “Co.” The deletion of the space between the words “Game” and “Co” does not obviate the commercial impression of these two descriptive terms. This wording directly advises consumers that the applicant is a company that provides games.

 

The applied-for mark shows the wording in stylized lettering.  However, the color claim of red does not obviate the merely descriptive nature of the applied-for mark.  Stylized descriptive or generic wording is registrable only if the stylization creates a commercial impression separate and apart from the impression made by the wording itself.  SeeIn re Cordua Rests., Inc., 823 F.3d 594, 606, 118 USPQ2d 1632, 1639-40 (Fed. Cir. 2016); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1561, 227 USPQ 961, 964 (Fed. Cir. 1985); TMEP §1209.03(w).  Common and ordinary lettering with minimal stylization, as in this case, is generally not sufficiently striking, unique, or distinctive as to make an impression on purchasers separate from the wording.  See In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1487 (TTAB 2012).  

 

Therefore, the mark GAMECO as applied to the identified goods, merely describes a feature of the applicant’s goods, namely, that the applicant is a company that provides gaming.

 

Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.

 

Applicant asserts that “by utilizing a single word ‘GAMECO’ rather two words (i.e., ‘GAME CO.’), Applicant’s mark at first blush is a new word.” In assessing the genericness of a compound term, the evidence of record must show that each of the constituent words is itself generic, and that when combined, the composite lends no additional meaning to the total combination.  See In re Gould Paper Corp., 834 F.2d 1017, 1018-19, 5 USPQ2d 1110, 1111-12 (Fed. Cir. 1987); In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1602-03 (TTAB 2014); In re Wm. B. Coleman Co., 93 USPQ2d 2019, 2025 (TTAB 2010); TMEP §1209.01(c)(i). 

 

In the present case, applicant is seeking registration of the mark GAMECO for “Gaming devices, namely, gaming machines, slot machines, bingo machines, with or without video output; Gaming machines for gambling; Gaming machines for gambling including slot machines or video lottery terminals; Gaming machines, namely, slot machines and video lottery terminals; Video gaming consoles for gambling” in International Class 28.

 

Based on further dictionary evidence from The American Heritage dictionary, the individual words in the applied-for mark are defined as follows:

 

GAME.  An activity providing entertainment or amusement.

 

CO.  An abbreviation for the word company.

 

When these individual words are combined into one term, i.e., the applied-for mark GAMECO, the meaning of the compound term is GAME COMPANY.  The individual words within the composite term retain their original meaning and no additional meaning is created by their combination.  As a result, the relevant public would perceive the mark as a whole to be generic when applied to the relevant goods. Please see the attached internet evidence from Simple Machine (“Simple Machine is a game company based in New York City”), Giant Bomb (“Bioware is a game company that is currently owned by Electronic Arts (EA)”), Random Potion (“Random Potion is a game company specialized in multiplayer games…”), Looney Labs (“We are a game company”), Unreal Engine (“At the end of the day, we are a game company”), and Sega (“Sega Games Co.”).

 

Thus, the applied-for mark is highly descriptive and/or generic as used in connection with the following goods:  “Gaming devices, namely, gaming machines, slot machines, bingo machines, with or without video output; Gaming machines for gambling; Gaming machines for gambling including slot machines or video lottery terminals; Gaming machines, namely, slot machines and video lottery terminals; Video gaming consoles for gambling” in International Class 28. 

 

The fact that the mark PETCO was registered without the issue of descriptiveness being raised is irrelevant to the current prosecution. Trademark examining attorneys are not bound by the actions of past examining attorneys in prior registrations, even if the registrations have some characteristics similar to the application at issue; each case is decided on its own merits.  In re Manwin/RK Collateral Trust, 111 USPQ2d 1311, 1315 (TTAB 2014) (citing In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)).

 

Applicant also asserts that the “bright red color component serves to draw attention to the color of Applicant’s mark rather than the immediate conclusion that GameCo means Game Company as suggested by the examining attorney.” However, as previously discussed, stylized descriptive or generic wording is registrable only if the stylization creates a commercial impression separate and apart from the impression made by the wording itself.  See In re Cordua Rests., Inc., 823 F.3d 594, 606, 118 USPQ2d 1632, 1639-40 (Fed. Cir. 2016); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1561, 227 USPQ 961, 964 (Fed. Cir. 1985); TMEP §1209.03(w).  Common and ordinary lettering with minimal stylization, as in this case, is generally not sufficiently striking, unique, or distinctive as to make an impression on purchasers separate from the wording.  See In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1487 (TTAB 2012). 

 

A mark is only suggestive if some imagination, thought, or perception is needed to understand the nature of the goods described in the mark; whereas a descriptive term immediately and directly conveys some information about the goods.  See Stoncor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1332, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251-52, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012)); TMEP §1209.01(a). Here, the applied-for mark GAMECO conveys immediate information about the applied for goods and the entity designation of the applicant—that this is a company in the business of providing games. Because no imagination, thought, or perception is needed to understand the nature of the goods described in the mark, the applied-for mark GAMECO is merely descriptive and/or generic.

 

Therefore, registration is refused under Section 2(e)(1) of the Trademark Act.

 

SPECIMEN REFUSAL

 

Applicant was previously refused registration in International Class 28 because the specimen appeared to be mere advertising material and thus the specimen fails to show the applied-for mark in use in commerce.  Specifically, applicant submitted what appeared to be a printed advertising flyer showing a photograph of the gaming machine, and the word “GAMECO” in the lower part of the flyer. Response options for overcoming that refusal, if any, were set forth in the prior Office action.  Applicant, however, responded to such refusal by submitting a substitute specimen for each refused international class that does not show proper use of the applied-for mark in commerce for the reasons immediately stated below.  Thus, the refusal to register the applied-for mark in International Class 28 is now made final because applicant failed to provide evidence of use of the mark in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.63(b); TMEP §§904, 904.07, 1301.04(g)(i). 

 

Registration is refused because the substitute specimen in International Class 28 appears to consist of a digitally altered image or a mock-up of the mark on the goods or their packaging and does not show the applied-for mark in actual use in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

An image of a product or packaging that has been digitally created or otherwise altered to include the mark does not show actual use of the mark in commerce.  See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce).  In addition, a photo of the mark on a label, tag, or piece of paper that appears on applicant’s or a third party’s goods or packaging is generally not acceptable to show applicant’s use of the applied-for mark in commerce.  See 15 U.S.C. §1127; TMEP §§904.03(a), 904.07(a).  Applicant must show the mark on applicant’s own goods or packaging as it is seen by the purchasing public, with goods that have actually been sold or transported in commerce.  See TMEP §904.07(a).

 

In this case, the specimen offered appears to be a mock-up of a video game device with the words “GAMECO” digitally place on top of the device as evidence by the highly pixilated edges in relation to the rest of the specimen.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  “Use in commerce” means (1) a bona fide use of the applied-for mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is placed in any manner on the goods, packaging, tags or labels, or displays of the goods, and (3) the goods are actually sold or transported in commerce.  See 15 U.S.C. §1127.

 

In addition to the examples of specimens in (2) in the above paragraph, examples of specimens for goods also include instruction manuals, containers, and webpages that include a picture or textual description of the goods associated with the mark and the means to order the goods.  See TMEP §§904.03 et seq. 

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)       Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

RESPONSE GUIDELINES

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusals and requirements in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.  

 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).

 

 

/Katherine M. Eissenstat/

Trademark Examining Attorney

USPTO, Law Office 127

Tel: (571) 272-5886

Email: Katherine.Eissenstat@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 02, 2019 for

U.S. Trademark Application Serial No. 88103577

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Katherine M. Eissenstat/

Trademark Examining Attorney

USPTO, Law Office 127

Tel: (571) 272-5886

Email: Katherine.Eissenstat@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from August 02, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”