United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88264475
Mark: WORLD SPORTS GAMING
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Correspondence Address: |
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Applicant: ALCO I.P. LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: October 31, 2019
This Office action is in response to applicant’s communication filed on October 8, 2019.
The trademark examining attorney notes that the following requirement(s) have been satisfied: Disclaimer of “SPORTS GAMING.” See TMEP §§713.02, 714.04.
SECTION 2(e)(1) REFUSAL – MARK IS MERELY DESCRIPTIVE
The applicant has applied to register WORLD SPORTS GAMING for “Arranging and conducting athletic competitions; Entertainment in the nature of competitions in the field of athletic and sports events; Entertainment services, namely, arranging and conducting of competitions for athletic and sports events, competitions, exhibitions, tournaments and international tournaments rendered live and through broadcast media including television and radio, and via a global computer network or a commercial on-line service; Entertainment services, namely, organizing and conducting an array of athletic events rendered live and recorded for the purpose of distribution through broadcast media; Production and distribution of motion pictures; Production and distribution of radio programs; Production and distribution of television shows and movies; Production of cable television programs; Providing news and information in the field of sports; Providing various facilities for an array of sporting events, sports and athletic competitions and awards programs; Radio program syndication; Television program syndication; Betting services; Gambling services; Wagering services.”
In the initial Office action, the examining attorney determined that the mark was merely descriptive of the goods because it refers to sports gaming services that are offered worldwide in scope.
In its response to the descriptiveness refusal, the applicant has argued:
They did not select the word “World” for its Mark for the purpose of communicating to consumers that its services are necessarily worldwide in scope. Applicant chose to use the word “World” in its Mark to communicate to consumers that World Sports Gaming is an expansion of the services originating from the “World Series of Golf” tournaments organized by an affiliate of Applicant, identified by their unique combination of online wagering with offline amateur sports.
The examining attorney has reviewed the applicant’s position on the descriptiveness issue, but is unpersuaded.
“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).
Descriptiveness is considered in relation to the relevant goods and/or services. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). “That a term may have other meanings in different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e). “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).
The term “WORLD” is defined as:
2b. Involving or applying to part of or the whole world.
The term “SPORTS” is defined as:
The term “GAMING” is defined as “the practice of gambling.”
See the attached evidence from www.Merriam-Webster.com.
The examining attorney has attached 12 third-party registrations showing marks containing the wording WORLD in Class 41, which are all registered on the Supplemental Register. Third-party registrations featuring goods and/or services the same as or similar to applicant’s goods and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register. E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
Applicant has conceded that the wording “SPORTS GAMING” is descriptive as applicant has disclaimed this wording.
In light of the evidence of record, the examining attorney finds that consumers who encounter the applicant’s mark in commerce in the context of the identified services would immediately perceive the wording WORLD SPORTS GAMING to refer to sports gaming services involving part of or the whole world.
Accordingly, for the above reasons, the examining attorney concludes that the applied-for mark is merely descriptive of the services, and is unpersuaded by the applicant’s arguments to the contrary. Accordingly, the refusal to register under Section 2(e)(1) is hereby maintained and made FINAL.
OPTIONS
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.
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)
/Coleman, Cimmerian/
Trademark Examining Attorney
Law Office 102
571-272-9146
cimmerian.coleman@uspto.gov
RESPONSE GUIDANCE