Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 76579083 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant respectfully submits that it has deleted Class 28 from the subject application and that, consequently, the refusal to register as to that Class is moot.  In view of the foregoing, Applicant requests that the Examining Attorney lift the refusal to register and approve the subject application for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 028 for Games, other than those that pertain to bicycles, and playthings, other than bicycles, namely, play and action figures and accessories therefor, amusement park rides, playing cards, balloons, rubber balls, rubber action balls, sport balls, foam balls, basketballs, footballs, playground balls, foam balls, bath toys, board games, toy boxes, card games, cases for play accessories, child crib toys, dolls and doll accessories, face masks, carnival masks, toy masks, musical toys, pinball machines, plush toys, puppets, stuffed toys, inflatable and play swimming pools

Applicant hereby deletes the following class of goods/services from the application.
Class 042 for Entertainment and education computer game software services, other than those that pertain to bicycles, that are non-downloadable and supplied for temporary use online from facilities provided on a global computer network, including web sites

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Entertainment and education computer game software, other than those that pertain to bicycles, for use on the personal computer or global computer network; entertainment and education computer game software, other than those that pertain to bicycles, that is downloadable supplied online from facilities provided on a global computer network, including web sites; interactive computer and video games, other than those that pertain to bicycles, recorded on CD-ROMs, DVDs, cartridges, pre-recorded video cassettes, and entertainment gaming and web consoles and related thereto
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Canada registration number TMA653687 registered 11/28/2005 with a renewal date of __________ and an expiration date of 11/28/2020 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed:
Tracked Text Description: Entertainment and education computer game software, other than those that pertain to bicycles, for use on the personal computer or global computer network; entertainment and education computer game software, other than those that pertain to bicycles, that is downloadable supplied online from facilities provided on a global computer network, including web sites; interactive computer and video games, other than those that pertain to bicycles, recorded on CD-ROMs, DVDs, cartridges, pre-recorded video cassettes, and entertainment gaming and web consoles and related thereto; interactive computer and video games, other than those that pertain to bicycles, recorded on CD-ROMs, DVDs, cartridges, pre-recorded video cassettes, and dedicated entertainment gaming consoles and web consoles for entertainment gamingClass 009 for Entertainment and education computer game software, other than those that pertain to bicycles, for use on the personal computer or global computer network; entertainment and education computer game software, other than those that pertain to bicycles, that is downloadable supplied online from facilities provided on a global computer network, including web sites; interactive computer and video games, other than those that pertain to bicycles, recorded on CD-ROMs, DVDs, cartridges, pre-recorded video cassettes, and dedicated entertainment gaming consoles and web consoles for entertainment gaming
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ Canada registration number TMA653687 registered 11/28/2005 with a renewal date of __________ and an expiration date of 11/28/2020 ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for Gymnastic and sporting articles, namely, duffel bags, sports bags, canvas tote bags and knapsacks
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 018 for Gymnastic and sporting articles, namely, duffel bags, sports bags, canvas tote bags and knapsacks
Deleted Filing Basis: 44(e)
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant hereby adds the following class of goods/services to the application:
New: Class 041 (Original Class: 042 ) for Entertainment and education computer game software services, namely, providing temporary use of non-downloadable electronic games that are unrelated to bicycles, the foregoing including such services provided via web sites
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /cmc/     Date: 02/18/2010
Signatory's Name: Catherine M. Clayton
Signatory's Position: Attorney for Applicant, Member New York Bar

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 76579083
Internet Transmission Date: Thu Feb 18 16:25:08 EST 2010
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201002181625084
26083-76579083-460609cefd4703fb1b21c1083
bf3b6243-N/A-N/A-20100218151208735664