To: | Fox Media LLC (FoxTrademarks@fox.com) |
Subject: | U.S. Trademark Application Serial No. 88537267 - ULTIMATE TAG - 81408199 |
Sent: | May 14, 2020 12:47:55 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 |
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:
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Applicant: Fox Media LLC
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Reference/Docket No. 81408199
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: May 14, 2020
This Office action is in response to applicant’s communication filed on April 21, 2020.
In a previous Office action dated October 21, 2019, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(e)(1) for being merely descriptive of the identified services. In addition, applicant was advised that an amendment to the Supplemental Register was not yet available because the application was filed based on intent to use.
Applicant responded on April 21, 2020 and requested reconsideration of the refusal. Applicant’s response was reviewed but found unpersuasive. As a result, the trademark examining attorney maintains and now makes FINAL the Section 2(e)(1) refusal for being merely descriptive of applicant’s services. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL THAT APPLICANT MUST ADDRESS:
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
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). The question is not whether someone presented only with the mark could guess what the 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).
In this case, applicant has applied to register 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 dictionary evidence attached to the previous Office action shows the wording “TAG” in the applied-for mark means refers to “a game in which the player who is it chases others and tries to touch one of them who then becomes it” while 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 internet evidence attached to the previous Office action from 247 Sports, the National Football League, and Deadline and to the instant Office action from Fox, Rotten Tomatoes, Variety, Broadway World, and On Camera Audiences establishes that the applicant’s sports competitions, tournaments, videos, information and fantasy sports leagues all pertain to an extreme form of the game tag (“A high-octane physical competition based on the classic playground game of chase"). 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.
Based on the foregoing, the refusal to register the applied-for mark for being merely descriptive of applicant’s services pursuant to Section 2(e)(1) of the Trademark Act is continued and made FINAL.
SUPPLEMENTAL REGISTER ADVISORY – NOT YET AVAILABLE
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.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
Justin Miller
/Justin Miller/
Trademark Examining Attorney Law Office 125
(571) 272-6040
justin.miller@uspto.gov
RESPONSE GUIDANCE