To: | Betfair Interactive US LLC (trademark@raklaw.com) |
Subject: | U.S. Trademark Application Serial No. 88472643 - SAME GAME PARLAY - 3765-1-US03 |
Sent: | February 19, 2021 03:45:27 PM |
Sent As: | ecom126@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88472643
Mark: SAME GAME PARLAY
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Correspondence Address: 12424 Wilshire Boulevard, 12th floor
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Applicant: Betfair Interactive US LLC
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Reference/Docket No. 3765-1-US03
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: February 19, 2021
The Office has reassigned this application to the undersigned trademark examining attorney.
SUMMARY OF ISSUES:
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Furthermore, a mark is suggestive if some imagination, thought, or perception is needed to understand the nature of the goods and/or services described in the mark; whereas a descriptive term immediately and directly conveys some information about the goods and/or services. See Stoncor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1332, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251-52, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012)); TMEP §1209.01(a). “A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark describes only one significant function, attribute, or property. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.
Dictionaries, applicant’s specimen, and any explanatory text therein are generally a competent source for determining how the public perceives the mark in connection with applicant’s goods and/or services. See In re N.C. Lottery, 866 F.3d 1363, 1367-68, 123 USPQ2d 1707, 1709-10 (Fed. Cir. 2017); In re Nett Designs, Inc., 236 F.3d 1339, 1341, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (citing In re Bed & Breakfast Registry, 791 F.2d 157, 160, 229 USPQ 818, 819 (Fed. Cir. 1986)); TMEP §1209.01(b).
In the present case, applicant is seeking registration of “SAME GAME PARLAY” for “downloadable electronic game software for use on mobile and cellular phones and handheld computers” in Class 009, “providing online computer games; betting services; gambling services; entertainment services, namely, providing a website for online gambling; gaming services in the nature of online gambling and conducting online computer game tournaments” in Class 041 and “computer services, namely, creating an on-line virtual environment for sports betting” in Class 042.
The attached dictionary evidence from the Merriam Webster and Macmillan dictionaries shows that “SAME” means “being one without addition, change, or discontinuance: identical”, “GAME” means “a physical or mental competition conducted according to rules with the participants in direct opposition to each other” and “PARLAY” means “to gamble money” and is synonym for the word “gamble”. Thus, the words in the applied-for mark mean “a gamble on one competition”.
The specimen provided by the applicant includes information on applicant’s goods and services, which are described as a game in which “you can combine multiple bets from one matchup or team into a single parlay”.
Applicant’s mark in connection with its gaming goods and services in the field of betting and gambling conveys directly that it is a game provided by applicant that involves gambling or betting on a single competition, as explained in its specimen.
ADVISORY: AMEND APPLICATION TO SUPPLEMENTAL REGISTER
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Faith Beaudry-Torres/
Faith Beaudry-Torres
Law Office 126
(571) 270-3044
faith.beaudry-torres@uspto.gov
RESPONSE GUIDANCE