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. 88462736 LAMP OF FORTUNE(Standard Characters, see http://uspto.report/TM/88462736/mark.png) has been amended as follows:

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

Dear Ms. Smith: This law firm represents Design Works Studios, LLC. We are responding to an Office Action whereby the Examining Attorney refused to register Design Work's proposed mark "Lamp of Fortune" because of a likelihood of confusion with another mark that include the word "Lamp" and which are registered in International Class 009. The mark should be registered because: (1) the applicant's mark "Lamp of Fortune" is sufficiently different and unique from the marks cited to the Examining Attorney's Office Action to distinguish it from those marks; and (2) the wide use of the word Lamp in International Class 009 means that the other marks are entitled to very limited protection. The Term "Lamp" is Widely Used in Connection with Gaming in International Class 009 and Other Similar Classes and is entitled to Limited Protection. The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that merely descriptive and weak designations may be entitled to a narrower scope of protection than an entirely arbitrary or coined word. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-39, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1026 (TTAB 2009); In re Box Solutions Corp., 79 USPQ2d 1953, 1957-58 (TTAB 2006); In re Cent. Soya Co., 220 USPQ 914, 916 (TTAB 1984). If the common element of marks is "weak" in that it is generic, descriptive or highly suggestive of the named goods or services, consumers typically will be able to avoid confusion unless the overall combinations have other commonality. See, e.g., In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986). (BED & BREAKFAST REGISTRY for making lodging reservations for others in private homes held not likely to be confused with BED & BREAKFAST INTERNATIONAL for room booking agency services); The U.S. Shoe Corp. v. Chapman, 229 USPQ 74 (TTAB 1985) (COBBLER'S OUTLET for shoes held not likely to be confused with CALIFORNIA COBBLERS (stylized) for shoes); See also TMEP ?1207.01(b)(ix). Sufficient evidence of third-party use of similar marks can "show that customers ... 'have been educated to distinguish between different... marks on the basis of minute distinctions.'" Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 1338-39 (Fed. Cir. 2015) citing 2 McCarthy on Trademarks and Unfair Competition Section 11:88 (4th ed.2015) (quoting Standard Brands, Inc. v. RJR Foods, Inc., 192 U.S.P.Q. 383 (T.T.A.B.1976)). More broadly, evidence of third-party use bears on the strength or weakness of a mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1373 (Fed.Cir.2005). The weaker a mark, the closer an applicant's mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection. Id. ("Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection."); *1339 In re Coors Brewing Co., 343 F.3d 1340, 1345 (Fed.Cir.2003) (third-party use can establish that mark is not strong); Fleetwood Co. v. Mende, 49 C.C.P.A. 907, 298 F.2d 797, 799 (1962) ("Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights."). The term "lamp" is weak in that is describes a common, generic item that is widely used in multiple marketplaces including gaming. A lamp, by itself, does not convey anything. When added to other terms, it is intended to convey a feeling or impression of magic-something that is quite common in the gaming (and other) marketplaces. Serial Number Reg. Number Word Mark 88002140 5939074 LADY OF THE LAMP 88096651 LAMP OF WONDERS 88462736 LAMP OF FORTUNE 86709246 5079103 LAMP OF DESTINY 85361317 4415255 RICHES OF THE LAMP 85751054 4724188 LEGEND OF THE LAMP 85601790 4404165 ALADDIN AND THE LAMP 77099480 3446014 GENIE'S GOLDEN LAMP 77447010 3632757 ARABIAN LAMP 75221494 2283618 MAGIC LAMP The additional words or phrases added to "Lamp" are the distinguishing element of a mark. Each term added to "Lamp" conveys something different and are easily distinguishable from each other. None of the owners of the "Lamp" marks identified above can claim any exclusive right to the term "Lamp" outside of their specific mark because none of them claim or can claim exclusive right to use the term "lamp" for gaming. Because the term lamp is so widely used and represents such a common item or theme, registered marks including it are entitled to very limited protections. An applicant's mark would have to be identical for it to be refused based upon a likelihood of confusion. The applicant's marks and the cited mark are not identical. A consumer is unlikely to confuse the marks or assume that they are associated with each other simply because both marks include the phrase "lamp." To the contrary, the word "lamp" is so commonly used, a mark would have to be identical to actually cause confusion. Taken to its logical conclusion, this refusal would prohibit any registration of marks in International Classes 009, 041, or 028 that include the phrase "Lamp." That is not reasonable or consistent with USPTO guidelines. The Mark Cited by the Examining Attorney as the Basis for Suspension of the Application Has Been Approved for Publication by the USPTO. The Examining Attorney cites a pending application "Lamp of Wonders" (Serial No. 88096651) as the basis for the suspension of Applicant's application for "Lamp of Fortune." That application, it seems, would be subject to the same "likelihood of confusion" contentions as Applicant's application for "Lamp of Fortune." But, that application was approved and published for opposition on January 22, 2019.(1) It is pending. It is unclear to the Applicant why a seemingly similar mark that should be subject to an identical analysis was approved for publication while the Applicant's application is rejected based upon a purported likelihood of confusion. Applicant respectfully contends that the analysis of "Lamp of Wonders" is correct and that it and "Lamp of Fortune" and "Lamp of Destiny" can all coexist. Very truly yours, GALLAGHER & KENNEDY, P.A. By: /s/ Joshua S. Becker (1) Additionally, the application for "Lamp of Wonders" includes International Class 028-the International Class where Lamp of Destiny is registered?while the Applicant's application does not include that International Class.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer game software for gambling machines; computer game software for gaming machines, namely, slot machines and video lottery terminals; games that accept virtual or monetary wagers sold as a feature of game software; downloadable computer software and firmware for playing games of chance on any computerized platform, namely, dedicated gaming consoles, video based slot machines, reel based slot machines, video lottery terminals, hand held devices, mobile and wireless communication devices, and internet enabled devices, and electronic sweepstakes games
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/18/2019 and first used in commerce at least as early as 04/18/2019 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Computer game software for gambling machines; Downloadable computer game software for gambling machines; computer game software for gaming machines, namely, slot machines and video lottery terminals; downloadable computer game software for gaming machines, namely, slot machines and video lottery terminals; games that accept virtual or monetary wagers sold as a feature of game software; downloadable games that accept virtual or monetary wagers sold as a feature of game software; downloadable computer software and firmware for playing games of chance on any computerized platform, namely, dedicated gaming consoles, video based slot machines, reel based slot machines, video lottery terminals, hand held devices, mobile and wireless communication devices, and internet enabled devices, and electronic sweepstakes gamesClass 009 for Downloadable computer game software for gambling machines; downloadable computer game software for gaming machines, namely, slot machines and video lottery terminals; downloadable games that accept virtual or monetary wagers sold as a feature of game software; downloadable computer software and firmware for playing games of chance on any computerized platform, namely, dedicated gaming consoles, video based slot machines, reel based slot machines, video lottery terminals, hand held devices, mobile and wireless communication devices, and internet enabled devices, and electronic sweepstakes games
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/18/2019 and first used in commerce at least as early as 04/18/2019 , and is now in use in such commerce.
The applicant's current attorney information: Joshua Becker. Joshua Becker of GALLAGHER & KENNEDY PA, is located at

      2575 EAST CAMELBACK ROAD, SUITE 1100
      PHOENIX, Arizona 85016
      US
The docket/reference number is 26242-0002T9.

The phone number is 602-530-8465.

The email address is josh.becker@gknet.com

The applicants proposed attorney information: Joshua Becker. Joshua Becker of GALLAGHER & KENNEDY PA, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      2575 EAST CAMELBACK ROAD, SUITE 1100
      PHOENIX, Arizona 85016
      United States
The docket/reference number is 26242-0002T9.

The phone number is 602-530-8465.

The email address is josh.becker@gknet.com

Joshua Becker 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: JOSHUA BECKER. JOSHUA BECKER of GALLAGHER & KENNEDY PA, is located at

      2575 EAST CAMELBACK ROAD, SUITE 1100
      PHOENIX, Arizona 85016
      US
The docket/reference number is 26242-0002T9.

The phone number is 602-530-8465.

The email address is josh.becker@gknet.com; trademarks@gknet.com

The applicants proposed correspondence information: Joshua Becker. Joshua Becker of GALLAGHER & KENNEDY PA, is located at

      2575 EAST CAMELBACK ROAD, SUITE 1100
      PHOENIX, Arizona 85016
      United States
The docket/reference number is 26242-0002T9.

The phone number is 602-530-8465.

The email address is josh.becker@gknet.com; trademarks@gknet.com

SIGNATURE(S)
Response Signature
Signature: /Joshua Becker/     Date: 01/03/2020
Signatory's Name: Joshua Becker
Signatory's Position: Attorney of record, Arizona Bar Member

Signatory's Phone Number: 602-530-8465

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:    JOSHUA BECKER
   GALLAGHER & KENNEDY PA
   
   2575 EAST CAMELBACK ROAD, SUITE 1100
   PHOENIX, Arizona 85016
Mailing Address:    Joshua Becker
   GALLAGHER & KENNEDY PA
   2575 EAST CAMELBACK ROAD, SUITE 1100
   PHOENIX, Arizona 85016
        
Serial Number: 88462736
Internet Transmission Date: Fri Jan 03 15:00:14 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020010315001440
7612-88462736-7001686818778e5deb67de7fd1
3bfbf6757b8c79dec225afda3f2e83a9e54d9b-N
/A-N/A-20200103143309911460