To: | Spin Games LLC (ipdocket@h2law.com) |
Subject: | U.S. Trademark Application Serial No. 88380441 - SPIN GAMES - 060967.00116 |
Sent: | November 19, 2019 11:27:29 AM |
Sent As: | ecom116@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88380441
Mark: SPIN GAMES
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Correspondence Address: HOWARD & HOWARD ATTORNEYS PLLC
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Applicant: Spin Games LLC
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Reference/Docket No. 060967.00116
Correspondence Email Address: |
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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: November 19, 2019
This Office action is in response to applicant’s communication filed on 11/18/2019.
NEW ISSUE – SECTION 2(F) CLAIM INSUFFICIENT
An applicant bears the burden of proving that a mark has acquired distinctiveness under Trademark Act Section 2(f). In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (citing In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)); TMEP §1212.01. “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.” In re Steelbuilding.com, 415 F.3d at 1297, 75 USPQ2d at 1422.
In the present case, applicant’s claim of acquired distinctiveness based on five years’ use in commerce is insufficient to show acquired distinctiveness of the applied-for mark because the evidence shows that the term SPIN GAMES commonly describes types of online games.
To support the claim of acquired distinctiveness, applicant may respond by submitting other evidence. See TMEP §1212.02(g). Such evidence may include “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).” In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)). A showing of acquired distinctiveness need not consider all of these types of evidence; no single factor is determinative. In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq. Rather, the determination involves assessing all of the circumstances involving the use of the mark. See In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424 (citing Thompson Med. Co., Inc. v. Pfizer Inc., 753 F.2d 208, 217, 225 USPQ2d 124, 131-32 (Fed. Cir. 1985)).
If applicant cannot submit additional evidence to support the claim of acquired distinctiveness, applicant may respond to the refusal by arguing in support of registration and/or amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091(a); 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816. If applicant amends the application to the Supplemental Register, applicant is not precluded from submitting evidence and arguments against this refusal. TMEP §816.04.
CONTINUED SECTION 2(E)(1) REFUSAL
The Section 2(e)(1) Merely Descriptive Refusal is CONTINUED.
“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).
The proposed mark is SPIN GAMES for:
IC 042: Providing temporary use of non-downloadable game software; Providing online non-downloadable game software
SPIN is defined as:
1a : the act of spinning or twirling something
“spin” Merriam-Webster (2019) http://www.merriam-webster.com/. Retrieved May 16, 2019. See attachment to Office action no. 1.
GAME is defined as:
1a(1) : activity engaged in for diversion or amusement : play
“game” Merriam-Webster (2019) http://www.merriam-webster.com/. Retrieved May 16, 2019. See attachment to Office action no. 1.
The proposed mark SPIN GAMES describe the use of the software, which is used for spin games, namely, games involving the act of spinning something.
The examining attorney refers to the attached excerpts from the following websites attached as a representative sample referring to online spin games.
http://kbhgames.com/tag/spin Retrieved November 19, 2019. See attachments.
http://www.youtube.com/watch?v=EdjvotPkoJM Retrieved November 19, 2019. See attachments.
http://www.wordgames.com/en/games/spin Retrieved November 19, 2019. See attachments.
http://www.wbipam.com/tag/spin-games/ Retrieved November 19, 2019. See attachments.
http://www.slotsup.com/free-slots-online/hillbillies-cashola-rtg Retrieved November 19, 2019. See attachments.
http://zgames.online/tags/spin/ Retrieved November 19, 2019. See attachments.
http://www.primeslots.com/jackpot-slots-and-spin-games/ Retrieved November 19, 2019. See attachments.
AMENDMENT TO SUPPLEMENTAL REGISTER SUGGESTED
DISCLAIMER OF “GAMES” MUST REMAIN IN RECORD
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
/Ellen Awrich/
Trademark Examining Attorney
Law Office 116
571-272-9123
ellen.awrich@uspto.gov
RESPONSE GUIDANCE