To: | Fox Media LLC (FoxTrademarks@fox.com) |
Subject: | U.S. Trademark Application Serial No. 88537267 - ULTIMATE TAG - 81408199 |
Sent: | October 21, 2019 05:52:06 PM |
Sent As: | ecom125@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88537267
Mark: ULTIMATE TAG
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Correspondence Address: INTELLECTUAL PROPERTY DEPARTMENT |
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Applicant: Fox Media LLC
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Reference/Docket No. 81408199
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: October 21, 2019
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
In this case, applicant has applied for the mark ULTIMATE TAG in connection with its services identified as “Organizing, arranging, and conducting of sports competitions and tournaments; providing on-line information in the field of entertainment news, sports, sports competitions and tournaments; entertainment services in the nature of non-downloadable videos and images featuring of entertainment news, sports, sports competitions and tournaments transmitted via the Internet and wireless communication networks; providing a web site that provides sports league player statistics; entertainment services in the nature of fantasy sports leagues; providing a web-based system and on-line portal for customers to participate in online fantasy sports leagues and tournaments; providing a web-based system and online portal for the operation and coordination of online fantasy sports leagues and tournaments.”
The attached dictionary evidence shows that the wording “TAG” in the applied-for mark refers to
“a game in which the player who is it chases others and tries to touch one of them who then becomes it.” In addition, the attached dictionary evidence shows that the wording “ULTIMATE” in the
applied-for mark means “the best or most extreme of its kind.” “Marks that are merely laudatory and
descriptive of the alleged merit of a product [or service] are . . . regarded as being descriptive” because “[s]elf-laudatory or puffing marks are regarded as a condensed form of describing the
character or quality of the goods [or services].” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1256, 103 USPQ2d 1753,
1759 (Fed. Cir. 2012) (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)); see In re Nett Designs, Inc., 236
F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (holding THE ULTIMATE BIKE RACK merely laudatory and descriptive of applicant’s bicycle racks being of superior quality); TMEP
§1209.03(k). In fact, “puffing, if anything, is more likely to render a mark merely descriptive, not less so.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d at 1256, 103 USPQ2d at 1759.
Moreover, the attached internet evidence from 247 Sports, the National Football League, and Deadline establishes that the applicant’s sports competitions, tournaments, videos, information and fantasy sports leagues all pertain to an extreme form of the game tag (“In the post, Watt said that this new creation will take "a childhood game to extreme levels, with insane obstacles and incredible athletes."). Thus, this wording merely describes applicant’s services as providing sports leagues, fantasy sports leagues, information, and images and videos about an extreme variation of the game tag.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the 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 services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services. Specifically, the applied-for mark ULTIMATE TAG merely describes applicant’s services as providing sports leagues, fantasy sports leagues, information, and images and videos about an extreme variation of the game tag, and the combination of these words do not create a unique, incongruous, or nondescriptive meaning in relation to the applicant’s services.
As a result, registration must be refused under Section 2(e)(1) of the Trademark Act.
SUPPLEMENTAL REGISTER AND GENERIC DISCLAIMER ADVISORY
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). 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.
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “TAG” apart from the mark as shown.
TMEP §1213.08(a)(i).
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.
DOMESTIC PRO SE APPLICANT – COUNSEL SUGGESTED
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
ASSISTANCE
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 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
Justin Miller
/Justin Miller/
Trademark Examining Attorney Law Office 125
(571) 272-6040
justin.miller@uspto.gov
RESPONSE GUIDANCE