To: | Egift LTD (docketing@ploen.com) |
Subject: | U.S. Trademark Application Serial No. 88325716 - GAMEGIFT - GAM-601 |
Sent: | December 13, 2019 03:57:55 PM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88325716
Mark: GAMEGIFT
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Correspondence Address:
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Applicant: Egift LTD
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Reference/Docket No. GAM-601
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 13, 2019
This Office Action is in response to applicant’s communication filed on November 20, 2019.
In a previous Office Action(s) dated May 5, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:
- Trademark Act Section 2(e)(1) as merely descriptive of applicant’s services;
In addition, applicant was required to satisfy the following: Provide additional information about applicant’s services and amend the identification of services.
Based on applicant’s response, applicant has satisfied the following: Provided additional information about applicant’s services and amended the identification of services. See TMEP §§713.02, 714.04.
Please note: the identified prior filed application has matured to registration. However, the change to the Identification of services has obviated the potential Section 2(d) Refusal.
The trademark examining attorney maintains and now makes FINAL the refusal(s) 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 - MERELY DESCRIPTIVE
“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).
Here, the applied for mark is GAMEGIFT for “Providing an interactive website featuring technology that enables users to purchase keys, vouchers, tokens and codes for accessing software programs and unlocking content within software programs” in Class 42.
Per the previously attached dictionary evidence shows that the wording GAME is defined as “An activity providing entertainment or amusement; a pastime.” Additionally, GIFT is defined as “Something that is bestowed voluntarily and without compensation.”
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services 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/or services and do not create a unique, incongruous, or non-descriptive meaning in relation to the goods and/or services. Specifically, a service for downloading or transferring gifts related to games, namely items to be used within online video games.
The applicant has argued that the wording GAME GIFT is suggestive, rather than descriptive. A mark is suggestive if some imagination, thought, or perception is needed to understand the nature of the goods and/or services described in the mark; whereas a descriptive term immediately and directly conveys some information about the goods and/or services. 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). Additionally, “a mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark describes only one significant function, attribute, or property. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.
Accordingly, the attached evidence from http://news.xbox.com/en-us/2017/11/16/game-gifting-now-available/; http://www.polygon.com/2017/11/14/16652882/xbox-one-buy-game-gift-xbox-live-microsoft explains the process of “giving or receiving a game gift.” The attached evidence explains that said “game gifts” are digital codes that can be redeemed by the recipient to download games or features within games.
Furthermore, the attached evidence from http://www.androidcentral.com/how-buy-digital-copy-playstation-4-game-your-friend and http://www.techtimes.com/articles/227564/20180511/microsoft-enables-digital-game-gifting-for-pc-xbox-one-titles-heres-how-to-start-sending-them.htm show the phrase “game gift” and “game gifting” used generically to describe the ability for a user to send a code, which can be redeemed in the form of downloadable video games or downloadable video game add-ons. Thus, the wording GAMEGIFT is merely descriptive of applicant’s services.
Applicant has included a list of marks that Applicant believes serve as examples of combinations of descriptive elements which are not merely descriptive as a whole. However, the fact that third-party registrations exist for marks allegedly similar to applicant’s mark is not conclusive on the issue of descriptiveness. See In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 1977); TMEP §1209.03(a). An applied-for mark that is merely descriptive does not become registrable simply because other seemingly similar marks appear on the register. In re Scholastic Testing Serv., Inc., 196 USPQ at 519; TMEP §1209.03(a).
It is well settled that each case must be decided on its own facts and the Trademark Trial and Appeal Board is not bound by prior decisions involving different records. See In re Nett Designs, Inc., 236 F. 3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014); TMEP §1209.03(a). The question of whether a mark is merely descriptive is determined based on the evidence of record at the time each registration is sought. In re theDot Commc’ns Network LLC, 101 USPQ2d 1062, 1064 (TTAB 2011); TMEP §1209.03(a); see In re Nett Designs, Inc., 236 F.3d at 1342, 57 USPQ2d at 1566.
Accordingly, the mark GAMEGIFT is merely descriptive of applicant’s services. Thus, the mark is refused under Trademark Act Section 2(e)(1).
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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).
Mark Peisecki
/Mark Peisecki/
Trademark Examining Attorney Law Office 105
(571) 270-5399
mark.peisecki@uspto.gov
RESPONSE GUIDANCE