United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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: March 09, 2020
This Office action is in response to applicant’s
communication filed on 02/20/2020. Applicant’s request to amend the application to the Supplemental Register is not acceptable because applicant has not yet filed an Amendment to Allege Use.
Please see below for explanation of the issues. Therefore, the refusal under Trademark Act Section
2(e)(1) is maintained and continued.
AMENDMENT TO SUPPLEMENTAL REGISTER NOT ACCEPTABLE
Registration is refused on the Supplemental Register because the proposed mark is not in lawful use in
commerce, as required by Trademark Act Section 23. See 15 U.S.C. §1091(a); 37 C.F.R. §2.47(a); TMEP §714.05(a)(i). Specifically, this application is based on applicant’s bona fide intention to use the mark in commerce under Section 1(b), and applicant has not yet submitted an amendment to
allege use under 37 C.F.R. §2.76. See 37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.
This refusal will be withdrawn if applicant (1) deletes the amendment to the Supplemental Register, or (2) submits an amendment to allege use that
meets the requirements of 37 C.F.R. §2.76(b), (c). See TMEP §§815.02, 1102.03.
If applicant maintains the amendment to the Supplemental Register and provides an acceptable amendment to allege use, the effective filing date of the
application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(c) for the amendment to allege use. 37 C.F.R. §2.75(b); TMEP
§§816.02, 1102.03. In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later
application filing date. TMEP §§206.01, 1102.03.
The following refusal is maintained and continued:
SECTION 2(e)(1) DESCRIPTIVENESS REFUSAL
Registration is refused because the applied-for mark merely describes a feature and/or characteristic of
applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature,
purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872,
874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re
Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543
(1920)).
Applicant’s mark is GAMER’S WALLET for “Downloadable computer application software for mobile phones, namely, software for facilitating savings and
investments through playing video games”
A GAMER is a person who regularly plays computer or video games. And a “wallet,” in the context of related goods and/or services, is defined as an electronic device, software
application or online service that allows an individual to make electronic transactions. The identification of goods indicates that applicant’s software is for facilitating savings and investments,
i.e. transactions, through playing video games, i.e. for use by gamers. Therefore, the mark GAMER’S WALLET merely describes the software that is for use by gamers in electronic transactions. The mark
will be immediately recognized as such and not as indicating the source of the goods in a proper trademark manner.
The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods
and/or services, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed.
Cir. 2012); 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). “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).
“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 question is not whether someone
presented only with the mark could guess what the goods and/or services are, but “whether someone who knows what the goods and[/or] services are will understand the mark to convey information about
them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re
Tower Tech, Inc.,64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Mueller Sports. Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018).
“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.
A mark does not need to be merely descriptive of all the goods or services specified in an
application. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re
Franklin Cnty. Historical Soc'y, 104 USPQ2d 1085, 1089 (TTAB 2012). “A descriptiveness refusal is proper ‘if the mark is descriptive of any of the [goods or]
services for which registration is sought.’” In re The Chamber of Commerce of the U.S., 675 F.3d at 1300, 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).
Marks comprising more than one element must be considered as a whole and should not be dissected; however, a
trademark examining attorney may consider the significance of each element separately in the course of evaluating the mark as a whole. See
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1253, 103 USPQ2d 1753, 1756-57 (Fed. Cir. 2012) (reversing Board’s denial of cancellation for SNAP! with
design for medical syringes as not merely descriptive when noting that the Board “to be sure, [could] ascertain the meaning and weight of each of the components that ma[de] up the mark”); In re Hotels.com, L.P., 573 F.3d 1300, 1301, 1304, 1306, 91 USPQ2d 1532, 1533, 1535, 1537 (Fed. Cir. 2009) (holding HOTELS.COM generic for information and reservation services featuring
temporary lodging when noting that the Board did not commit error in considering “the word ‘hotels’ for genericness separate from the ‘.com’ suffix”).
Generally, if the individual components of a mark retain their descriptive meaning in relation to the
goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d
1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs.,
Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical
extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing
Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the
goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968);
In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique,
incongruous, or nondescriptive meaning in relation to the goods and/or services.
Third-party registrations featuring goods and/or services the same as or similar to applicant’s goods
and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or
registered on the Supplemental Register. E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)); In re Box Solutions Corp., 79 USPQ2d
1953, 1955 (TTAB 2006). Please see the previously attached third party registrations.
Therefore, based on the above analysis, the proposed mark must be refused as descriptive under Trademark Act Section 2(e)(1).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by
submitting evidence and arguments in support of registration.
How to respond. Click to file a response to this nonfinal Office action.
If the applicant has any questions or needs assistance in responding to this Office Action, please contact the assigned examining attorney.
/Katherine Weigle/
Examining Attorney
Law Office 101
U.S. Patent & Trademark Office
(571) 270-1506
katherine.weigle@uspto.gov
RESPONSE GUIDANCE
- Missing the response deadline to this letter will cause
the application to abandon. A response or
notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA
maintenance or unforeseen circumstances could affect an applicant’s
ability to timely respond.