To: | EB Golf Media LLC (ny.trademark@dorsey.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88350867 - GOLF - 484035-00049 |
Sent: | 6/7/2019 11:48:57 AM |
Sent As: | ECOM121@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88350867
MARK: GOLF
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: EB Golf Media LLC
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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: 6/7/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SECTION 2(e)(1) REFUSAL – MARK IS MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a feature of applicant’s goods and services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
Here, applicant has applied to register the mark GOLF for use in connection with “Digital media, namely, electronic publications in the nature of magazines featuring news, lifestyles, sports, leisure, travel, and topics of general interest recorded on computer media and mobile applications for viewing and interacting with digital magazines featuring news, lifestyles, sports, leisure, travel, and topics of general interest; downloadable software in the nature of a mobile application for viewing and interacting with digital magazines; downloadable electronic publications in the nature of magazines in the field of news, lifestyles, sports, leisure, travel, and topics of general interest and digital applications for viewing and interacting with digital magazines via the internet and wireless devices in the field of news, lifestyles, sports, leisure, travel, and topics of general interest; Magazine published monthly featuring golf information; Providing information in the field of golf by way of the Internet.”
Notably, applicant’s identification indicates that its goods and services are digital publications, magazines, and information in the field of golf. Furthermore, the fields of news, lifestyles, spors, leisure, and travel may also encompass golf because golf is a type of sport that is commonly in the news and played on vacation and for leisure. Therefore, the wording GOLF is descriptive of a characteristic of applicant’s goods and services.
Applicant owns active U.S. Registration Nos. 4240278, 2852850, 2752640, 2429568, 2349798, 2382518, 2253880, and 1521775 for the mark and/or portion of the mark GOLF for digital materials, magazines, and information in the field of golf and sports. In this case, applicant has applied for essentially the same mark and/or portion of that mark for the identical goods and services.
In applicant’s prior registrations, applicant claimed acquired distinctiveness under Trademark Act Section 2(f) unconditionally and not in the alternative for GOLF in the initial application or a subsequent amendment. Thus, applicant conceded that this wording was not inherently distinctive but was rather merely descriptive. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1479 (TTAB 2016) (citing Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009)); TMEP §1212.02(b)-(c). Accordingly, applicant’s prior registrations are probative to show that applicant’s applied-for mark is not inherently distinctive in this case. See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1713 (TTAB 2011); TMEP §1212.02(c).
Therefore, the mark GOLF must be refused registration under Section 2(e)(1) of the Trademark Act because, as applied to the identified goods and services, it merely describes a feature of applicant’s goods and services, namely, publications and information in the field of golf.
Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.
ADVISORY: AMENDMENT TO SUPPLEMENTAL REGISTER
The applied-for mark has been refused registration on the Principal Register. Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816. Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s). TMEP §816.04.
IDENTIFICATION OF THE GOODS AND SERVICES
The wording “Digital media, namely, electronic publications in the nature of magazines featuring news, lifestyles, sports, leisure, travel, and topics of general interest recorded on computer media and mobile applications for viewing and interacting with digital magazines featuring news, lifestyles, sports, leisure, travel, and topics of general interest” in the identification of goods is indefinite and must be clarified because the term “general interest” is vague. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “downloadable electronic publications in the nature of magazines in the field of news, lifestyles, sports, leisure, travel, and topics of general interest and digital applications for viewing and interacting with digital magazines via the internet and wireless devices in the field of news, lifestyles, sports, leisure, travel, and topics of general interest” in the identification of goods is indefinite and must be clarified because the term “general interest” is vague and applicant must clarify the nature of the software and specify that it is “downloadable” to be definite in Class 9. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate:
IC 009: Digital media, namely, electronic publications in the nature of magazines featuring news, lifestyles, sports, leisure, travel, and topics of general human interest recorded on computer media and mobile applications for viewing and interacting with digital magazines featuring news, lifestyles, sports, leisure, travel, and topics of general interest; downloadable software in the nature of a mobile application for viewing and interacting with digital magazines; downloadable electronic publications in the nature of magazines in the field of news, lifestyles, sports, leisure, travel, and topics of general human interest and downloadable digital software applications for viewing and interacting with digital magazines via the internet and wireless devices in the field of news, lifestyles, sports, leisure, travel, and topics of general interest
IC 016 (no change): Magazine published monthly featuring golf information
IC 041 (no change): Providing information in the field of golf by way of the Internet
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.
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.
/Mildred Black/
Examining Attorney
Law Office 121
571.270.1217
mildred.black@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.