| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88264475 |
| LAW OFFICE ASSIGNED | LAW OFFICE 102 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88264475/mark.png |
| LITERAL ELEMENT | WORLD SPORTS GAMING |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
This is in response to the ExaminingAttorney’s letter dated April 8, 2019, for U.S. Application Serial No. 88264475for the Mark “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 Class 41(collectively, the “Services”).
REMARKS The Examining Attorneyhas refused registration of Applicant’s Mark WORLD SPORTS GAMING under Section 2(e)(1) of the TrademarkAct, 15 U.S.C. §1052(e)(1). Applicant respectfully submits that the refusal should be withdrawnfor the reasons set forth below.
Rejection Under Section 2(e)(1) of the Trademark Act The Applicant has an intent to use WORLD SPORTS GAMING in commerce in connection with the aforementioned Services. The basis of the Examining Attorney’s rejection is that the mark “World Sports Gaming” is merely descriptive of sports gaming services that are offered worldwide in scope. The Applicant respectfully submits that the Examining Attorney’s definition of the word “world”: “involving or applying to part of or the whole world”, does not appear in the Merriman-Webster Dictionary print-outs (Attachments 16-24 tothe Office Action). The Applicant 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 Applicant respectfully submits that “sports gaming” as used in each of the articles attached to the Office Action, is used in the context of wagering on professional sports, and is not synonymous with “sports gaming” as it is used in the Mark. “Sports gaming” is not defined in any of the articles relied on by the Examining Attorney, and no other source is cited to define it. Notably, all of the articles are about state gaming legislation or U.S. professional sports leagues, and are arguably inapplicable on a worldwide level. The context of each article indicates that the various authors used “sports gaming,” only in the context of referring to the action of betting on professional sports events as a spectator. Betting on professional sports events as a spectator is not a service Applicant offers or intends to offer. In fact, Applicant’s services associated with the Mark are not related to wagers on professional sports. Applicant will offer an online aggregation of games related to sports, wagering or both, engaged in by consumer participants in the various formats and settings included in the identification of the services. The applied for Mark is not descriptive of the increased interactive nature of Applicant’s services. In reviewing a trademark application, the Examining Attorneyhas the burden of establishing that the Mark is merely descriptive. See In re Eon Comm’s Corp.,No. 75/439499 (TTAB 2001). To the extent there is any doubt as to whether the Mark is merely descriptive, such doubt must be resolvedin favor of the Applicantand the Mark published for opposition. See In re Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981). A Mark is “merely descriptive” only if it “forthwith conveys an immediateidea of the ingredients, qualitiesor characteristics of the goods and/or services.” Abercrombie & Fitch Co. v. HuntingWorld, Inc., 189 USQP 759, 765 (2d Cir. 1976). Further, in order to be “merely descriptive,” the Mark must convey such ideas not only immediately, but with a “degree of particularity.” Plus Productsv. Medical ModalitiesAssociations, Inc., 211 USPQ 1199, 1204-05 (TTAB 1981). “[I]f one must exercise mature thought or follow a multi-stage reasoningprocess in order to determinewhat product or service characteristics the term indicates, the term is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 196, 197 (TTAB 1978). Even a “minor degree of descriptiveness does not destroy the suggestiveness, or trademark significance.” J. Gilson, TrademarkPractitioner and Practice, § 2.04 (1994). Accordingly, in the present matter, the ExaminingAttorney must demonstrate that the Mark WORLD SPORTS GAMING conveys an immediate idea of significant characteristics of servicesfor which the Mark has sought registration. While the Mark WORLD SPORTS GAMING conveys that the service provided is gaming, it does not convey to the relevant consumerany degree of particularity as to the specific gaming services offered, and it certainly does not convey that its services exclude wagering dependent on professional sporting events. The Applicant respectfully points out the flaws with reliance on the cited references, which do not support the ExaminingAttorney’s conclusion that the Mark WORLD SPORTS GAMING for the above-listed services is descriptive or merely descriptive. Please note that the Applicant is not seeking amendment to the Supplemental Register in this response. Requirement - Amendment to the Disclaimer Statement The Applicant herein adopts the Examining Attorney’s suggested amended disclaimer: “No claim is made to the exclusive right to use “SPORTS GAMING” apart from the mark as shown.”
CONCLUSION In light of the foregoing,it is respectfully requested that the ExaminingAttorney withdraw the refusal of record and pass this application to publication on the Principal register in due course. |
|
| ADDITIONAL STATEMENTS SECTION | |
| DISCLAIMER | No claim is made to the exclusive right to use "SPORTS GAMING" apart from the mark as shown. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Stephanie Nott/ |
| SIGNATORY'S NAME | Stephanie Nott |
| SIGNATORY'S POSITION | Attorney of Record, New York bar member |
| SIGNATORY'S PHONE NUMBER | 585-218-9999 ext 407; 516-328-2300 |
| DATE SIGNED | 10/08/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Oct 08 23:09:45 EDT 2019 |
| TEAS STAMP | USPTO/ROA-X.X.XX.XXX-2019 1008230945646095-88264475 -6105e68c87b903ca0ababd36 685bd9cb4de086c65bf279032 b77ee86fbcb33e-N/A-N/A-20 191008225408078510 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
This is in response to the ExaminingAttorney’s letter dated April 8, 2019, for U.S. Application Serial No. 88264475for the Mark “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 Class 41(collectively, the “Services”).
REMARKS
The Examining Attorneyhas refused registration of Applicant’s Mark WORLD SPORTS GAMING under Section 2(e)(1) of the TrademarkAct, 15 U.S.C. §1052(e)(1). Applicant respectfully submits that the refusal should be withdrawnfor the reasons set forth below.
Rejection Under Section 2(e)(1) of the Trademark Act
The Applicant has an intent to use WORLD SPORTS GAMING in commerce in connection with the aforementioned Services.
The basis of the Examining Attorney’s rejection is that the mark “World Sports Gaming” is merely descriptive of sports gaming services that are offered worldwide in scope.
The Applicant respectfully submits that the Examining Attorney’s definition of the word “world”: “involving or applying to part of or the whole world”, does not appear in the Merriman-Webster Dictionary print-outs (Attachments 16-24 tothe Office Action).
The Applicant 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 Applicant respectfully submits that “sports gaming” as used in each of the articles attached to the Office Action, is used in the context of wagering on professional sports, and is not synonymous with “sports gaming” as it is used in the Mark. “Sports gaming” is not defined in any of the articles relied on by the Examining Attorney, and no other source is cited to define it. Notably, all of the articles are about state gaming legislation or U.S. professional sports leagues, and are arguably inapplicable on a worldwide level. The context of each article indicates that the various authors used “sports gaming,” only in the context of referring to the action of betting on professional sports events as a spectator.
Betting on professional sports events as a spectator is not a service Applicant offers or intends to offer. In fact, Applicant’s services associated with the Mark are not related to wagers on professional sports. Applicant will offer an online aggregation of games related to sports, wagering or both, engaged in by consumer participants in the various formats and settings included in the identification of the services. The applied for Mark is not descriptive of the increased interactive nature of Applicant’s services.
In reviewing a trademark application, the Examining Attorneyhas the burden of establishing that the Mark is merely descriptive. See In re Eon Comm’s Corp.,No. 75/439499 (TTAB 2001). To the extent there is any doubt as to whether the Mark is merely descriptive, such doubt must be resolvedin favor of the Applicantand the Mark published for opposition. See In re Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981).
A Mark is “merely descriptive” only if it “forthwith conveys an immediateidea of the ingredients, qualitiesor characteristics of the goods and/or services.” Abercrombie & Fitch Co. v. HuntingWorld, Inc., 189 USQP 759, 765 (2d Cir. 1976). Further, in order to be “merely descriptive,” the Mark must convey such ideas not only immediately, but with a “degree of particularity.” Plus Productsv. Medical ModalitiesAssociations, Inc., 211 USPQ 1199, 1204-05 (TTAB 1981). “[I]f one must exercise mature thought or follow a multi-stage reasoningprocess in order to determinewhat product or service characteristics the term indicates, the term is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 196, 197 (TTAB 1978). Even a “minor degree of descriptiveness does not destroy the suggestiveness, or trademark significance.” J. Gilson, TrademarkPractitioner and Practice, § 2.04 (1994).
Accordingly, in the present matter, the ExaminingAttorney must demonstrate that the Mark WORLD SPORTS GAMING conveys an immediate idea of significant characteristics of servicesfor which the Mark has sought registration. While the Mark WORLD SPORTS GAMING conveys that the service provided is gaming, it does not convey to the relevant consumerany degree of particularity as to the specific gaming services offered, and it certainly does not convey that its services exclude wagering dependent on professional sporting events.
The Applicant respectfully points out the flaws with reliance on the cited references, which do not support the ExaminingAttorney’s conclusion that the Mark WORLD SPORTS GAMING for the above-listed services is descriptive or merely descriptive.
Please note that the Applicant is not seeking amendment to the Supplemental Register in this response.
Requirement - Amendment to the Disclaimer Statement
The Applicant herein adopts the Examining Attorney’s suggested amended disclaimer: “No claim is made to the exclusive right to use “SPORTS GAMING” apart from the mark as shown.”
CONCLUSION
In light of the foregoing,it is respectfully requested that the ExaminingAttorney withdraw the refusal of record and pass this application to publication on the Principal register in due course.