Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1030556 Filing date: 01/22/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 87634647 Applicant Dallas Owl, LLC Applied for Mark DALLAS FUEL Correspondence JACQUELINE M LESSER Address BAKER & HOSTETLER LLP 2929 ARCH STREETCIRA CENTRE, 12TH FLOOR PHILADELPHIA, PA 19104-2891 UNITED STATES [email protected], [email protected], [email protected], kwal- [email protected] 215-568-3100
Submission Applicants Request for Remand and Amendment Attachments Codemaster Consent Letter Executed.pdf(435367 bytes ) 87634647_200122_Request for Remand Amendment and Reconsidera- tion.pdf(429917 bytes ) Filer's Name Jacqueline M. Lesser Filer's email [email protected], [email protected], [email protected], kwal- [email protected] Signature /Jacqueline M. Lesser/ Date 01/22/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the Matter of Trademark Appln. No. 87634641 ) MARK: DALLAS FUEL ) OWNER: DALLAS OWL, LLC ) EXAMINING ATTORNEY: WON T. OH ) LAW OFFICE 114 ) ) In the Matter of Trademark Appln. No. 87634647 ) MARK: ) OWNER: DALLAS OWL, LLC ) EXAMINING ATTORNEY: WON T. OH ) LAW OFFICE 114 )
REQUEST FOR REMAND, AMENDMENT, AND RECONSIDERATION
Pursuant to TBMP Rules 1205.01, 1207.02 and 1209.04, Applicant, Dallas Owl LLC
(“Applicant”) hereby requests a voluntary amendment, and to remand these applications to the
Trademark Examining Attorney to submit additional evidence by way of a consent, to overcome the final rejections of the DALLAS FUEL applications in International Classes 9 and 41. In support of this request, Applicant submits a consent to registration from the registrant of the cited registration against Applicant’s DALLAS FUEL marks in Classes 9 and 41. Applicant also amends its application to restrict Class 41 and delete Class 18. The appeal of these applications is currently suspended in view of a pending cancellation proceeding. Good cause exists for this request insofar as a consent agreement has been reached with the owner of the cited registration at issue. See, Letter of Consent (“Consent”), submitted herewith.
A. Amendment
1. Applicant requests the following amendment to Class 41, as underlined below:
IC 041. Entertainment services in the nature of eSports and video game contests, providing on-line and live video games, on-line and live video game tournaments, on-line and live video gaming exhibitions, on-line and live video game competitions and video gaming events; Entertainment services in the nature of eSports, providing on-line and live video games, on-line and live video game tournaments, on-line and live video gaming exhibitions, on-line and live video game competitions and video gaming events live at indoor and outdoor venues and through the media of radio, television, and the Internet; Providing a web-based system and on- line portal for gamers to participate in on-line gaming, operation and coordination of game tournaments, leagues and tours for computer game playing purposes; Organizing eSports and video gaming leagues; Production of television and global computer communications programs and network broadcast programs featuring news highlights, eSports and video game contests, games, tournaments, exhibitions, competitions and events; Entertainment services, namely, providing online videos featuring games being played by others; Entertainment services, namely, live performances by video game players; Providing online news, information and commentary in the fields of eSports, video gaming, video games, and video game players; Providing temporary use of on-line non-downloadable video game software for consumer use to upload, share, preview and /or publish video game content, music and related files, all of the foregoing for use exclusively in connection with an e-gaming team of the same name.
2
2. Deletion of Class 18
Applicant deletes Class 18, in order that the application may be approved for publication.
With the exception of the amendments to Class 41, and the deletion of Class 18, there are
no amendments to the existing specification.
B. Additional Argument Based on New Facts
The Trademark Examining Attorney’s rejection of registration in Classes 9 and 41 were due to a cited registration by The Codemasters Software Company Limited (hereinafter
“Codemasters”), Reg. No. 3,925,983 for the mark FUEL, which is registered in International
Class 9 for “computer game software; downloadable computer game software” and is specifically associated with a car racing game. Applicant had argued in response to Office
Actions and in request for reconsideration that the Codemasters’ mark is unlikely to be confused with the Applicant’s marks. Applicant has now obtained a consent to registration of its DALLAS
FUEL marks from Codemasters.
As further evidence, the Consent details that Applicant’s mark has coexisted with the cited registrant’s mark for over two years without any reported instances of confusion. Consent
¶8. The parties believe in good faith that confusion is not likely. Consent ¶ 9. Applicant’s
DALLAS FUEL mark identifies an eGaming team that is part of the Overwatch League eSports team based in Dallas, Texas. Overwatch is a team-based shooter game that is set on a near future earth. See Consent ¶ 1. The Codemasters’ mark FUEL is associated with a car racing-oriented video game. Consent ¶2.
3
The parties’ respective consumers are highly sophisticated. Consumers of eGaming sports are intimately aware of the teams within an eGaming sports league, and the particular video game that is placed in the league. Spectators and fans are aware that Applicant’s DALLAS
FUEL is an eGaming team that is part of the Overwatch League. Consent ¶¶ 3 – 5.
The respective marks have different commercial impressions. As a matter of practice, eGaming teams, like most sports teams, are composed of a state or jurisdiction name, and a word. The DALLAS FUEL eGaming team emanates from Dallas, Texas. Consent ¶4. The stylized logo uses a flame symbol. The commercial impression of the DALLAS FUEL mark is always associated with Dallas, and the fuel term is associated with combustibles.
On the other hand, The Codemasters’ FUEL game is a downloadable video game that is associated with a specific car racing game. Consent ¶6. The term “fuel” is associated with the fuel used for a car engine. Accordingly, the parties’ respective marks look different, sound different, and have different commercial impressions.
The trading channels are different. The Codemasters’ FUEL mark is not used for an eGaming team, it is not used for an eGaming league, and it is not identified with any eGaming tournaments. Consent ¶7. Applicant’s goods and services are aimed at spectators and fans of a professional eSports Overwatch League. Consent ¶5. Moreover, in the unlikely event of any confusion or mistake, the parties have agreed to work cooperatively to abate the cause of confusion or mistake. Consent ¶10.
Thus, it is respectfully requested that the applications be remanded to the Examining
Attorney, and that the Examining Attorney, in consideration of the Consent, now allow the applications for the DALLAS FUEL mark to proceed to publication. There are credible reasons
4 among those in the marketplace that there is no likelihood of confusion. In re American Cruise
Lines, Inc., 128 USPQ2d 1157 (TTAB 2018).
Dated: January 22, 2020 Respectfully submitted,
BAKER & HOSTETLER LLP
/Jacqueline M. Lesser/ Jacqueline M. Lesser Lesley M. Grossberg 2929 Arch Street Cira Centre, 12th Floor Philadelphia, PA 19104-2891 [email protected] [email protected] 215-568-3100
Attorneys for Applicant
5