Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88407125 STARRING YOU(Standard Characters, see http://uspto.report/TM/88407125/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Applicant:       Big Fish Games, Inc.   Serial No.:       88407125   Mark:               STARRING YOU   Office Action Date:    Dec. 6, 2019   Examiner:        Katherine Eissenstat

RESPONSE TO OFFICE ACTION

I.          Introduction

            The Examining Attorney has refused registration of Big Fish Games, Inc.’s (“Applicant”) STARRING YOU mark (“Mark”) on the ground that it fails to function as a trademark. Applicant respectfully disagrees and submits that relevant consumers would recognize STARRING YOU as a source indicator that distinguishes its goods and services from those of others.   The term STARRING YOU is not commonly used in Applicant’s industry and consumers are not accustomed to seeing this term used in connection with Applicant’s goods.  Applicant respectfully requests that the refusal to register the mark be withdrawn. 

II.        DISCUSSION

Matter is merely informational when, based on the nature and context of its use by the applicant and others in the marketplace, consumers would perceive it as merely conveying information about the goods/services or an informational message.  The critical inquiry in determining whether a designation functions as a mark is how the designation would be perceived by the relevant public. In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010).  That perception turns on the proposed mark’s wording and the nature and context of its use in the marketplace.

The term STARRING YOU does not merely impart information about the goods and services in the application.  Players of Applicant’s games are not featured in the games.  Rather, Applicant’s mark is suggestive of the games’ movie industry and acting themes.

The Examining Attorney asserts that the term STARRING YOU “is commonly used by those in applicant’s particular trade or industry to indicate a game in which the consumer is feature as part of the game.”  In support of this statement, the Examining Attorney points to three examples where “starring you” is used in connection with video games.  Only three instances does not establish a prima facie case that the term is commonly used or that use is so widespread that consumers are accustomed to seeing the phrased used in connection with video games.  In fact, a Google search as well as searches of Google Play and the Apple App Store reveal that this term is seldom used in connection with computer and video games.  Consumers are not likely to have encountered STARRING YOU in connection with games and are not accustomed to seeing the term used to provide information about video and computer games.

A review of specimens showing how the applied-for matter is used is a key factor is determining whether the relevant public will perceive a term as a trademark.  To determine if consumers will view proposed marks that consist of or contain informational matter as source-indicating or as merely, both the meaning and the nature and context of use of the wording are relevant.  See In re Bose Corp., 192 USPQ 213, 216; In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1863-64 (TTAB 2006).  While a refusal of an intent-to-use application can be issued based on other evidence of record, where, as here, there is a dearth of evidence, it would be appropriate to allow the application to proceed in order to view the nature and context of its use by the Applicant once a Statement of Use and specimens are filed.  

            The USPTO has previously registered similar uses of the term STARRING YOU and closely similar marks.  A sampling of these marks includes (See Exhibit A):

Trademark	Owner	Reg. No.	Goods/services
STARRING YOU	JibJab Media Inc.	Reg. No. 3429912	Class 9:  Digital materials, namely, customized downloadable multimedia files, video files, and image files featuring audio and visual elements inserted by users onto selected audio-visual templates Class 38: Electronic delivery via a global computer network of customized downloadable multimedia files, video files, and image files featuring audio and visual elements inserted by users onto selected audio-visual templates Class 41: Entertainment services, namely, an online activity where you create your own customized comedy-oriented videos by inserting audio and visual elements onto a selection of audio and visual templates
YOU’RE THE STAR	McDonald’s Corporation	Reg. No. 1909481	Class 41: educational and entertainment services in the nature of conducting performances at schools and other education facilities to encourage a positive self-esteem
WHERE YOU’RE THE STAR	Global Marketing Resources, Inc.	Reg. No. 3627934	Class: 38: Audio and video broadcasting services over the Internet or other communications networks, namely, electronically transmitting information, audio, and video clips. Class 41: Computer services, namely, uploading, posting, showing and displaying information, audio, and video clips over the Internet for others; providing a web site that gives computer users the ability to upload, post, show and display information, audio, and video clips over the Internet
YOU’RE THE STAR	Hallmark Licensing LLC	Reg. No. 4557176	Class 16:  role playing play sets composed primarily of children's storybooks, with accompanying costumes for use in children's dress up play and role playing, and costume masks, play wands and plush toys for depicting characters in the storybooks
YOU TOO CAN BE A STAR	Hatcher, Larry; Underwood, Joyce; Fackler, Donald	Reg. No. 5770812	Class 41: Entertainment services, namely, contest and incentive award programs designed to reward program participants who display superior talent in the fields of entertainment, such as film, comedy, fashion, dance, and singing; Entertainment services in the nature of development, creation, production, distribution, and post-production of variety shows, documentaries, episodic series, online streaming shows, and cable television shows; Entertainment services, namely, an ongoing series featuring competitions, variety shows, biographies, comedies, human-interest stories, music, cooking, performance arts, and news, provided through cable television and webcasts; Entertainment services in the nature of live musical concert tours; Entertainment services in the nature of cooking shows; Entertainment, namely, live music concerts.

III.      Conclusion

            Applicant’s STARRING YOU mark is not merely informational, is not widely used in Applicant’s industry, and is capable of distinguishing Applicant’s good and services in the marketplace.  Therefore, Applicant respectfully requests withdrawal of the refusal to register its STARRING YOU mark.

EVIDENCE
Evidence in the nature of Exhibit A - Prior Registrations has been attached.
Original PDF file:
evi_2087715287-20191206194208219082_._Starring_You_Exhibit_A.pdf
Converted PDF file(s) ( 15 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15

The applicant's current attorney information: Jennifer L. Jolley. Jennifer L. Jolley of BIG FISH GAMES, INC., is located at

      906 ALASKAN WAY, SUITE 700
      SEATTLE, Washington 98104
      US
The docket/reference number is USTM-196.

The phone number is 206-272-3166.

The email address is ip@bigfishgames.com

The applicants proposed attorney information: Jennifer L. Jolley. Jennifer L. Jolley of BIG FISH GAMES, INC., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      906 ALASKAN WAY, SUITE 700
      SEATTLE, Washington 98104
      United States
The docket/reference number is USTM-196.

The phone number is 206-272-3166.

The email address is ip@bigfishgames.com

Jennifer L. Jolley submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: JENNIFER L. JOLLEY. JENNIFER L. JOLLEY of BIG FISH GAMES, INC., is located at

      906 ALASKAN WAY, SUITE 700
      SEATTLE, Washington 98104
      US
The docket/reference number is USTM-196.

The phone number is 206-272-3166.

The email address is ip@bigfishgames.com

The applicants proposed correspondence information: Jennifer L. Jolley. Jennifer L. Jolley of BIG FISH GAMES, INC., is located at

      906 ALASKAN WAY, SUITE 700
      SEATTLE, Washington 98104
      United States
The docket/reference number is USTM-196.

The phone number is 206-272-3166.

The email address is ip@bigfishgames.com

SIGNATURE(S)
Response Signature
Signature: /jennifer l jolley/     Date: 12/06/2019
Signatory's Name: Jennifer L. Jolley
Signatory's Position: Attorney of record, Washington state bar member

Signatory's Phone Number: 206-272-3166

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    JENNIFER L. JOLLEY
   BIG FISH GAMES, INC.
   
   906 ALASKAN WAY, SUITE 700
   SEATTLE, Washington 98104
Mailing Address:    Jennifer L. Jolley
   BIG FISH GAMES, INC.
   906 ALASKAN WAY, SUITE 700
   SEATTLE, Washington 98104
        
Serial Number: 88407125
Internet Transmission Date: Fri Dec 06 19:47:18 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2019120619471801
3349-88407125-7004d75aa9e60d557a4797e378
7106821796aff88b4f8ff87e6ec4a4140dde4b1-
N/A-N/A-20191206194208219082