To: | EB Golf Media LLC (ny.trademark@dorsey.com) |
Subject: | U.S. Trademark Application Serial No. 88350867 - GOLF - 484035-00049 |
Sent: | January 07, 2020 02:04:41 PM |
Sent As: | ecom130@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88350867
Mark: GOLF
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Correspondence Address:
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Applicant: EB Golf Media LLC
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Reference/Docket No. 484035-00049
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: January 07, 2020
This application was approved for publication on December 4, 2019. See 37 C.F.R. §2.80. However, approval of the application has been withdrawn to address the issue below. See TMEP §706.01. The trademark examining attorney apologizes for any inconvenience this may cause applicant.
SECTION 2(f) ACQUIRED DISTINCTIVENESS (Class 41)
Specifically, the applied-for mark is highly descriptive of or generic for applicant’s information services in the field of golf. Marks that are comprised of the subject matter of the owner’s identified services have been found to be generic for the information services. See In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM generic for "providing information for others about temporary lodging"); In re Rodale Inc., 80 USPQ2d 1696 (TTAB 2006) (NUTRITION BULLETIN generic for "providing information in the field of health and diet via a web site on the Internet"); In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005) (SPORTSBETTING.COM generic for "providing a web site on and through a global computer network featuring information in the fields of gaming, athletic competition and entertainment").
SECTION 2(e)(1) REFUSAL – MARK IS MERELY DESCRIPTIVE (Continued & Maintained in Class 41)
Registration is refused because the applied-for mark merely describes a feature of applicant’s 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 “Providing information in the field of golf by way of the Internet.”
Notably, applicant’s identification indicates that it provides information in the field of golf. Therefore, the wording GOLF is descriptive of a characteristic of applicant’s goods and services. Marks that are comprised of the subject matter of the owner’s identified services have been found to be generic for the information services. See In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM generic for "providing information for others about temporary lodging"); In re Rodale Inc., 80 USPQ2d 1696 (TTAB 2006) (NUTRITION BULLETIN generic for "providing information in the field of health and diet via a web site on the Internet"); In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005) (SPORTSBETTING.COM generic for "providing a web site on and through a global computer network featuring information in the fields of gaming, athletic competition and entertainment").
Therefore, the mark GOLF must be refused registration under Section 2(e)(1) of the Trademark Act because, as applied to the identified services, it merely describes a feature of applicant’s services, namely, information in the field of golf.
In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified services and, therefore, incapable of functioning as a source-identifier for applicant’s services. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017); see TMEP §§1209.01(c) et seq., 1209.02(a). Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended. See TMEP §1209.01(c).
Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.
PARTIAL ABANDONMENT ADVISORY
If applicant does not respond to this Office action within the six-month period for response, International Class 41 will be deleted from the application. The application will then proceed with International Classes 9 and 16 only. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
RESPONSE OPTIONS
(1) Deleting the class to which the refusal pertains;
(2) Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
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.
If applicant does not timely respond to this Office action, the following class will be deleted from the application: 41. See 37 C.F.R. §2.65(a); TMEP §718.02(a).
In such case, the application will then proceed with the following classes only: 9 and 16. See TMEP §718.02(a).
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 response to this nonfinal Office action.
Black, Mildred
/Mildred Black/
Trademark Examining Attorney
Law Office 130
571.270.1217
mildred.black@uspto.gov
RESPONSE GUIDANCE