To: | Fox Media LLC (FoxTrademarks@fox.com) |
Subject: | U.S. Trademark Application Serial No. 88421213 - FOX BET - 81404427 |
Sent: | July 29, 2019 09:36:45 AM |
Sent As: | ecom106@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88421213
Mark: FOX BET
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Correspondence Address: INTELLECTUAL PROPERTY DEPARTMENT |
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Applicant: Fox Media LLC
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Reference/Docket No. 81404427
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: July 29, 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.
SUMMARY OF ISSUES:
The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d). However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.
The filing date of pending U.S. Application Serial No. 79245178 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
IDENTIFICATION OF SERVICES REQUIREMENT
Applicant must specify the nature of the educational service being provided. If applicant is providing classes or similar group learning activities, the identification must specify (1) the form of the activity (e.g., classes, seminars, workshops) and (2) the subject matter or field (e.g., retirement benefits, nutrition, business management).
In addition, the wordings “entertainment services”, “gaming services in the nature of gambling”, “electronic games services provided by means of the internet or communications network”, and “organizing and conducting sporting and entertainment events” in the identification of services is indefinite and must be clarified because the nature of the services is not specified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate (suggestions in bold):
International 41: Entertainment services, namely, {specify the nature of the services}; educational services, namely,
conducting {indicate specific modes of instruction, e.g. classes, seminars, conferences, workshops} in the field of {indicate specific field, e.g. pet care, math, tax preparation}; betting
services; gambling services; wagering services; entertainment services, namely, providing on-line computer games; entertainment services, namely, providing a website for on-line gambling, betting,
and wagering; online gaming and gambling services, namely, providing a web-based system and online portal for customers to participate in on-line gaming and gambling; gaming services in the nature of
gambling {specify whether this refers to casino gambling or sports wagering or both}; providing online non-downloadable game software; organization of electronic game competitions;
organization of games; gaming services in the nature of conducting online gambling; entertainment services, namely, providing temporary use of non-downloadable computer games, electronic games, and
interactive games; providing temporary use of non-downloadable gaming and gambling software; entertainment services, namely, providing online electronic games; electronic games services provided by
means of the internet or other global communications network; entertainment services, namely, providing games of chance via the internet; entertainment services in the
nature of fantasy sports leagues; providing entertainment information via a website; providing a website featuring information about gaming, sports, sporting events, and gambling; providing sports
news; entertainment services, namely, providing virtual environments in which users can interact for recreational, leisure or entertainment purposes; entertainment services, namely, arranging and
conducting interactive peer to peer gambling competitions via global computer network, via social networking and via mobile phones, personal electronic devices, and portable electronic
game systems; providing on-line, non-downloadable electronic publications, namely, newsletters, magazines, blogs, and non-downloadable multimedia content in the fields of entertainment, gaming,
gambling, sports, and sporting events; educational services, namely, providing classes, workshops, seminars, and online instruction in the fields of gaming, sports, sporting events, and gambling;
entertainment services, namely, contest and incentive award programs designed to reward program participants who engage in gaming and gambling; organizing and conducting sporting and entertainment
events in the nature of {specify the type of sports or entertainment events}, the proceeds of which are donated to charity; entertainment services in the nature of
organizing, arranging and hosting social entertainment events; entertainment services, namely, provision of on-going multimedia programs in the field of television and video entertainment featuring
sports, sporting events, gambling, music commentary and news distributed via various platforms across multiple forms of transmission media; virtual reality game services provided on-line from a
computer network
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.
In this case, applicant must disclaim “BET” because it is not inherently distinctive. This un-registrable term at best is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from Oxford Dictionary defines “BET” as “risk a sum of money or valued item against someone else's on the basis of the outcome of an unpredictable event such as a race or game.” In addition, the wording appear in applicant’s identification of goods. Thus, the wording merely describes applicant’s goods because consumers can use applicant’s services to risk money on the basis of the outcome of events or games.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “BET” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
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 response to this nonfinal Office action
/Marcya N. Betts/
Marcya N. Betts
Examining Attorney
Law Office 106
(571) 272-4913
Marcya.Betts@uspto.gov
RESPONSE GUIDANCE