To: | Alpha Entertainment LLC (pitrademarks@klgates.com) |
Subject: | U.S. Trademark Application Serial No. 88585803 - LA - 190396 |
Sent: | November 21, 2019 10:08:40 PM |
Sent As: | ecom121@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88585803
Mark: LA
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Correspondence Address: |
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Applicant: Alpha Entertainment LLC
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Reference/Docket No. 190396
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: November 21, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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).
I. SECTION 2(e)(2) REFUSAL – PRIMARILY GEOGRAPHICALLY DESCRIPTIVE
A mark is primarily geographically descriptive when the following is demonstrated:
(1) The primary significance of the mark is a generally known geographic place or location;
(2) The goods and/or services for which applicant seeks registration originate in the geographic place identified in the mark; and
(3) Purchasers would be likely to make a goods-place or services-place association; that is, purchasers would be likely to believe that the goods and/or services originate in the geographic place identified in the mark.
TMEP §1210.01(a); see In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1853 (TTAB 2014).
Applicant seeks to register the mark “LA” in stylized form for use in connection with: “Class 025: Clothing, namely, tops and bottoms as clothing; headwear; sports caps and hats; t-shirts; shirts; sweatshirts; shorts; tank tops; sweaters; pants; jackets; golf shirts; knit shirts; jerseys; wristbands as clothing; warm up suits; gloves; ties as clothing; cloth bibs; sleepwear, namely, bathrobes and pajamas; underwear; socks; footwear, namely, sneakers, slippers, flip flops; scarves; bandannas; swimwear; Halloween and masquerade costumes [and]
Class 041: Entertainment services in the nature of professional football games and exhibitions; providing sports and entertainment information via a global computer network, mobile applications, commercial on-line computer service or by cable, satellite, television and radio; arranging and conducting athletic competitions, namely, professional football games; production and distribution of radio and television programs in the field of sports; entertainment services in the nature of live shows featuring football games, organizing live exhibitions, competitions, and live musical and dance performances; sporting activities, namely, football skills competitions and football showcases; distribution of television programming to cable and satellite television systems; distribution of television programs for others; entertainment services, namely, providing online electronic games; football fan club services; providing a web site featuring sports news and entertainment news; Entertainment services in the nature of a fantasy football game; mail order, on-line retail store services and mail order catalog services, all featuring general consumer merchandise related to sports and sports teams.”
In this case, the attached evidence from the various dictionaries and Columbia Gazetteer combined with the evidence from XFL News Hub establishes that the primary significance of the wording “LA” in applicant’s mark is a nickname or reference to the well known city of Los Angeles. Additionally, the attached industry website evidence shows that the applicant’s goods and services will originate in Los Angeles. When there is no genuine issue that the geographical significance of a term is its primary significance, and the geographical place is neither obscure nor remote, a public association of the goods and/or services with the place is presumed if an applicant’s goods and/or services originate in the place named in the mark. TMEP §1210.04; see, e.g., In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704, 1706 (TTAB 1988) (holding CALIFORNIA PIZZA KITCHEN primarily geographically descriptive of restaurant services rendered in California); In re Handler Fenton Ws., Inc., 214 USPQ 848, 849-50 (TTAB 1982) (holding DENVER WESTERNS primarily geographically descriptive of western-style shirts originating in Denver). Accordingly, considering all of the above-referenced factors, the applied-for mark must be refused on the Principal Register under Section 2(e)(2) of the Trademark Act since the applied-for mark is primarily geographically descriptive.
II. SUPPLEMENTAL REGISTER NOT AVAILABLE FOR SECTION 1(b) APPLICATIONS 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.
(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).
III. IDENTIFICATION OF GOODS AND SERVICES
Certain wording in the identification of goods and services is indefinite and overly broad, and therefore could include a wide array of goods and services, including goods and services found in other international classes, as indicated below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the goods and services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the goods and services using clear and succinct language. See id. More specifically, the wording “mail order, on-line retail store services and mail order catalog services, all featuring general consumer merchandise related to sports and sports teams” is misclassified as this refers to a business transaction/storefront service which is properly classified in Class 035. Additionally, the wording “sporting activities, namely, football skills competitions and football showcases” is indefinite as to the overall nature of the services provided since the specific activity performed has not been clearly described in definite terms. As such, applicant must amend the identification of goods and services to properly classify and identify each of the goods and services provided.
Applicant may substitute the following wording, if accurate:
International Class 025
Clothing, namely, tops and bottoms as clothing; headwear; sports caps and hats; t-shirts; shirts; sweatshirts; shorts; tank tops; sweaters; pants; jackets; golf shirts; knit shirts; jerseys; wristbands as clothing; warm up suits; gloves; ties as clothing; cloth bibs; sleepwear, namely, bathrobes and pajamas; underwear; socks; footwear, namely, sneakers, slippers, flip flops; scarves; bandannas; swimwear; Halloween and masquerade costumes
(Add Class) International Class 035
Mail order, on-line retail store services and mail order catalog services, all featuring general consumer merchandise related to sports and sports teams
International Class 041
Entertainment services in the nature of professional football games and exhibitions; providing sports and entertainment information via a global computer network, mobile applications, commercial on-line computer service or by cable, satellite, television and radio; arranging and conducting athletic competitions, namely, professional football games; production and distribution of radio and television programs in the field of sports; entertainment services in the nature of live shows featuring football games, organizing live exhibitions, competitions, and live musical and dance performances; organizing sports competitions in the nature of sporting activities, namely, football skills competitions and football showcases; distribution of television programming to cable and satellite television systems; distribution of television programs for others; entertainment services, namely, providing online electronic games; football fan club services; providing a web site featuring sports news and entertainment news; Entertainment services in the nature of a fantasy football game;
See TMEP §1402.01.
Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and services or add goods and services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant should note the multiple-class application requirements provided below.
IV. MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least three or more classes; however, applicant submitted a fee sufficient for only two classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Applicant should note the additional requirement stated below.
V. AMENDED DESCRIPTION OF MARK REQUIRED
The following description is suggested, if accurate:
The mark consists of the stylized letters “LA”.
Applicant should note the response guidelines provided below.
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.
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 goods and/or 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
/Amer Raja/
Amer Raja
Examining Attorney
Law Office 121
(571) 270 5936
amer.raja@uspto.gov
RESPONSE GUIDANCE