Offc Action Outgoing

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:  December 15, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Prior-Filed Application Advisory
• Amendment of Identification of Goods and/or Services Required
• Disclaimer Required

 

PRIOR-FILED APPLICATION ADVISORY

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

The filing dates of pending U.S. Application Serial Nos. 88142862 and 88142868 precede applicant’s filing date.  See attached referenced applications.  If a mark in the referenced applications registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application(s).

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

AMENDMENT OF IDENTIFICATION OF GOODS AND/OR SERVICES REQUIRED

 

The wording “Entertainment services; educational services” in the identification of services is indefinite and must be clarified because the nature of these services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Entertainment services, namely, handicapping for sporting events and providing information about gaming, sports, sporting events, and gambling; educational services, namely, conducting workshops in the field of gaming, sports, sporting events, and gambling.”

 

The wording “organizing and conducting sporting and entertainment events, the proceeds of which are donated to charity” in the identification of services is indefinite and must be clarified because the nature of the sporting and entertainment events is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate: “organizing and conducting sporting and entertainment events, namely, sports competitions, casino gaming tournaments, and online computer game tournaments, the proceeds of which are donated to charity.”

 

Applicant may adopt the following identification, if accurate (examining attorney’s suggestions in bold font):

 

Class 41:         Entertainment services, namely, handicapping for sporting events and providing information about gaming, sports, sporting events, and gambling; educational services, namely, conducting workshops in the field of gaming, sports, sporting events, and gambling; betting services; gambling services; wagering services; entertainment services, namely, providing on-line computer games; entertainment services, namely, providing a website for on-line gambling, betting, and wagering; online gaming and gambling services, namely, providing a web-based system and online portal for customers to participate in on-line gaming and gambling; gaming services in the nature of gambling; providing online non-downloadable game software; organization of electronic game competitions; organization of games; gaming services in the nature of conducting online gambling; entertainment services, namely, providing temporary use of non-downloadable computer games, electronic games, and interactive games; providing temporary use of non-downloadable gaming and gambling software; entertainment services, namely, providing online electronic games; organizing and conducting sporting and entertainment events, namely, sports competitions, casino gaming tournaments, and online computer game tournaments, the proceeds of which are donated to charity; entertainment services, namely, providing games of chance via the internet; entertainment services in the nature of fantasy sports leagues; providing entertainment information via a website; providing a website featuring information about gaming, sports, sporting events, and gambling; providing sports news; entertainment services, namely, providing virtual environments in which users can interact for recreational, leisure or entertainment purposes; entertainment services, namely, arranging and conducting interactive peer to peer gambling competitions via global computer network, via social networking and via mobile phones, personal electronic devices, and portable electronic game systems; providing on-line, non-downloadable electronic publications, namely, newsletters, magazines, blogs, and non-downloadable multimedia content in the fields of entertainment, gaming, gambling, sports, and sporting events; educational services, namely, providing classes, workshops, seminars, and online instruction in the fields of gaming, sports, sporting events, and gambling; entertainment services, namely, contest and incentive award programs designed to reward program participants who engage in gaming and gambling; organizing and conducting sporting and entertainment events, the proceeds of which are donated to charity; entertainment services in the nature of organizing, arranging and hosting social entertainment events; entertainment services, namely, provision of on-going multimedia programs in the field of television and video entertainment featuring sports, sporting events, gambling, music commentary and news distributed via various platforms across multiple forms of transmission media; virtual reality game services provided on-line from a computer network

 

See TMEP §§ 1402.01, 1402.03.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

DISCLAIMER REQUIRED

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “SPORTS SUPER 6” because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of a characteristic of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from ahdictionary.com shows “SPORT” is defined as “an activity involving physical exertion and skill that is governed by a set of rules or customs and often undertaken competitively.”

 

The attached evidence from ahdictionary.com shows “SUPER” is defined as “an article or a product of superior size, quality, or grade.”

 

“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)); TMEP §1209.03(k). 

 

The Trademark Trial and Appeal Board has determined that “if the word ‘super’ is combined with a word [that] names the goods or services, or a principal component, grade or size thereof, then the composite term is considered merely descriptive of the goods or services.”  In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1052 (TTAB 2002) (holding SUPER SILK merely laudatory and descriptive of applicant’s shirts being of an excellent, first-rate, or superior grade of silk fabric), quoted in In re Positec Grp. Ltd., 108 USPQ2d 1161, 1172 (TTAB 2013) (holding SUPERJAWS merely descriptive of applicant’s various machine tools, hand tools, and heavy-duty workbench accessories as superior vice systems for grasping and holding work pieces); see In re Carter-Wallace, Inc., 222 USPQ 729, 730 (TTAB 1984) (holding SUPER GEL merely laudatory and descriptive of applicant’s shaving gel being of superior quality).

 

The attached evidence from ahdictionary.com shows “6” or “SIX” is defined as “something having six parts, units, or members.”

 

The terms “SPORTS SUPER 6” merely describe characteristics or features of the applicant’s goods/services, namely, superior computer game software featuring 6 sporting events, as indicated on the applicant’s attached website.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “SPORTS SUPER 6” apart from the mark as shown. 

 

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

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.    

 

 

/Ryan Witkowski/

Examining Attorney

Law Office 122

(571) 272-7584

ryan.witkowski@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.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 15, 2019 for

U.S. Trademark Application Serial No. 88631289

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Ryan Witkowski/

Examining Attorney

Law Office 122

(571) 272-7584

ryan.witkowski@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from December 15, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”