To: | ALCO I.P. LLC (nott@abramslaw.com) |
Subject: | U.S. Trademark Application Serial No. 88264514 - WORLD HIGH STAKES GOLF - N/A |
Sent: | December 05, 2019 04:27:25 PM |
Sent As: | ecom102@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 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 Attachment - 48 Attachment - 49 Attachment - 50 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88264514
Mark: WORLD HIGH STAKES GOLF
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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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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: December 05, 2019
This Office action is in response to applicant’s communication filed on October 12, 2019.
The trademark examining attorney notes that the following requirement(s) have been satisfied: (1) Definite amended identification provided; (2) Disclaimer of “GOLF CHAMPIONSHIPS”. See TMEP §§713.02, 714.04.
The refusal based on Section 2(e)(1) is maintained and made FINAL.
SECTION 2(e)(1) REFUSAL – MARK IS MERELY DESCRIPTIVE
The applicant has applied to register the mark WORLD HIGH STAKES GOLF CHAMPIONSHIPS for “Downloadable computer game software; Downloadable electronic game programs; Downloadable computer game programs; Downloadable interactive game programs; Downloadable computer software platforms for on-line computer games, online e-sport computer games, online interactive computer games, online computer games in mobile wireless form, online computer games for social interaction, and online computer game applications; Electronic software updates, namely, downloadable computer software and associated data files for updating computer software in the fields of on-line computer games, online e-sport computer games, online interactive computer games, online computer games in mobile wireless form, online computer games for social interaction, and online computer game applications, provided via computer and communication networks; Downloadable video game software; Downloadable video game programs; Downloadable computer software platforms for social networking; Downloadable interactive video game programs; Downloadable electronic game programs; Downloadable computer software platforms for social networking that may be accessed via the internet, computers, computer operating systems and wireless devices; Downloadable computer software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information in the fields of virtual communities, electronic gaming, entertainment, and general interest via the internet or other communications networks with third parties; Downloadable computer programs for video and computer games; Downloadable electronic game software for cellular telephones; Downloadable electronic game software for wireless devices; Downloadable electronic game software for use with social networking applications and on social networking websites” (in International Class 9) and “Arranging and conducting athletic competitions; Entertainment in the nature of golf tournaments; 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, providing computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications via the Internet; Providing information on-line relating to games enhancements within computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications; Providing online reviews of computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications; Entertainment services, namely, organizing and conducting an array of athletic events rendered live and recorded for the purpose of distribution through broadcast media; Entertainment services, namely, providing computer model of reality in which users can interact through social games for recreational, leisure or entertainment purposes; 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; Providing games and game applications on social, mobile, personal electronic devices, portable electronic devices and gaming platforms; Providing interactive games and gaming via internet website portal; Providing electronic games by means of the Internet; Conducting and providing facilities for gaming contests and tournaments; Providing a web-based system and on-line portal for customers to participate in on-line gaming, operation and coordination of game tournaments, leagues and tours for recreational computer game playing purposes; Radio program syndication; Television program syndication; Betting services; Gambling services; Wagering services; Educational services, namely, conducting classes, seminars and workshops in the field of computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications; Providing of information relating to computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications; On-line gaming services; Entertainment services, namely, providing temporary use of non-downloadable interactive games; Organizing and conducting contests, tournaments and other games of chance for entertainment purposes; Organizing, conducting and operating live gaming contests and tournaments” (in International Class 41).
In its response to the descriptiveness refusal, the applicant has primarily argued: (1) Applicant selected the word WORLD in its mark to communicate to consumers the connection between its mark and the marks associated with WORLD SERIES OF GOLF tournaments; (2) The wording HIGH STAKES was selected to suggest wagering.
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).
In this case, the proper question is whether consumers familiar with the nature of the applicant’s services would understand the mark WORLD HIGH STAKES GOLF CHAMPIONSHIPS to describe particular features of those services. The examining attorney concludes that the answer to this question is yes, with applicant’s services providing high stakes wagering of golf games provided worldwide.
The examining attorney has attached a copy of applicant’s website in this action. See the following excerpts from applicant’s website www.worldhighstakesgolf.com:
Based on the evidence, it is clear that applicant’s services consist of high stakes golf championships which take place internationally or world wide. The applicant’s attached website describes its’ services as a hit-and-bet game in which golf players hit their tee shots and wager against other players in their group as to who will win the hole. The pay out for first place is $100,000 and the pay out for 7th-30th place is $7,500. Since the pay out involves a great deal of money, it is considered a high-stakes game. A “HIGH-STAKES game or contest is one in which the people involved can gain or lose a great deal”. See the attached evidence from www.Collinsdictionary.com.
As further evidence, the examining attorney has attached 14 third-party registrations in which the term WORLD is registered on the Supplemental Register for Class 41 services. 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).
Accordingly, for the above reasons, the examining attorney concludes that the applied-for mark is merely descriptive of the identified services, and is unpersuaded by the applicant’s argument to the contrary. Accordingly, the refusal to register under Section 2(e)(1) is 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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Coleman, Cimmerian/
Trademark Examining Attorney
Law Office 102
571-272-9146
cimmerian.coleman@uspto.gov
RESPONSE GUIDANCE