To: | NetEnt Product Services Ltd (trademarks@brookskushman.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88320431 - SCUDAMORE'S SUPER STAKES - AJG0306TUS |
Sent: | 4/12/2019 4:51:16 PM |
Sent As: | ECOM101@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88320431
MARK: SCUDAMORE'S SUPER STAKES
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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: NetEnt Product Services Ltd
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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: 4/12/2019
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.
SEARCH RESULTS
The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
However, applicant must comply with the following procedural requirements.
IDENTIFICATION OF GOODS AND/OR SERVICES
Applicant has identified the following:
International Class 9: “Interactive computer game programs; Software and applications for mobile devices; Entertainment software; Computer gaming software; Computer game software, downloadable.”
International Class 41: “Entertainment services; Interactive entertainment services; Gambling services; Game services provided on-line from a computer network”
Please note that as of 01-01-2019, in compliance with Nice 11-2019, computer software must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods. In addition, the nature of/function of the software and applications for mobile devices and entertainment software must be specified. Regarding Class 41, applicant must identify specific entertainment services.
Applicant must amend this wording to specify the common commercial or generic name of the goods and/or services and ensure that the goods and services are properly classified. See TMEP §1402.01. If there is no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses or the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s) for services. See id.
Applicant may substitute the following wording, if accurate:
International Class 9:
Recorded and downloadable interactive computer game programs; Downloadable software and mobile applications for mobile devices for {INDICATE function of the software and applications, e.g. playing video and computer games}; Recorded and downloadable entertainment software for {INDICATE function(s) of software, e.g. playing video and computer games}; Recorded and downloadable computer gaming software; Downloadable computer game software
International Class 41:
Entertainment services, namely, {INDICATE specific services properly classified in Class 41, e.g. providing on-line computer games, conducting online computer game tournaments, providing a website for on-line gambling, providing information on-line relating to computer games and computer enhancements for games}; interactive entertainment services, namely, providing temporary use of non-downloadable interactive games; Gambling services; Game services provided on-line from a computer network
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
DISCLAIMER
In this case, applicant must disclaim the wording “SUPER STAKES” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached dictionary evidence shows that “super” means very large and “stakes” is defined as something that is staked for gain or loss or a prize in a contest. Thus, the wording merely describes applicant’s goods and services that feature very large prizes. Please see the attached third party registrations illustrating that the Office routinely requires a disclaimer of such wording under similar circumstances.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “SUPER STAKES” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
APPLICATION PURSUANT TO SECTIONS 1(b) & 44(e)-OPTION TO DELETE SECTION 1(b)
Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e). Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).
If the applicant has any questions or needs assistance in responding to this Office Action, please contact the assigned examining attorney.
/Katherine C. Weigle/
Trademark Examining Attorney
Law Office 101
571-270-1506
katherine.weigle@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.