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. 77583731 has been amended as follows:

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

These remarks are responsive to the Office Action issued January 13, 2009.

Potential Likelihood of Confusion under Section 2(d)

Applicant acknowledges receipt of the information regarding application serial number 78872928 and will file comments if this application proceeds to registration.

Foreign Registration

Applicant acknowledges the request for a copy of a foreign registration and an English translation thereof per Trademark Act Section 44(e) and is in the process of preparing same.  Applicant requests that this application be suspended pending filing of the foreign registration.

Filing Basis 

Applicant wishes to maintain both the intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration under Section 44(e).

Assignment of the Mark

This application has been assigned to Nintendo of America Inc. at Reel/Frame:  004009/0558 and Applicant requests that the registration issue in assignee's name.

Identification of Goods

Applicant submits an amended identification of goods herewith.

Applicant is concurrently prosecuting eighteen applications with goods in class 9, including the current application, filed with identical descriptions of goods within an approximately one month period.  Applicant received Office Actions in many of these applications based on the description of goods, all with varying suggested amendments.  In response, applicant has constructed one amended listing based on the suggested changes and submits it herein with the expectation that this standardized listing will be acceptable to the several different examiners of these applications, whether or not the goods amendments were requested in the outstanding Office Actions.  Some of these other applications include the following serial numbers:  77/583759, 77/583794, 77583766, 77583730, 77583714, 77/583731, 77583725, 77583752, 77/583781, 77/583774, 77/583779, 77/583790, 77/583786, 77/583784, 77/601539 and 77/601452. 

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Video game discs; video game cartridges; programs for video games; electronic circuits, magnetic discs, optical discs, magnetic tapes, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and other storage media namely flash memory all storing programs for video game machines; controllers, joysticks and memory cards for video game machines and their parts and fittings therefor; microphones for video game machines; sound receivers for video game machines; parts and fittings for video game machines; video game computers; electronic circuits, magnetic discs, optical discs, magnetic tapes, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and other storage media namely flash memory all storing programs for video game computers; downloadable programs for video game computers; programs for video game computers; game programs for cellular phones; other electronic machines, apparatus and their parts namely electronic game software, electronic video game machines for use with computer monitor or television; microphones; headsets with microphones; cellular phones; straps for cellular phones; parts and fittings for cellular phones; other telecommunication machines and apparatus; recorded compact discs featuring entertainment content, namely music, stories, games and game hints; phonographic records; electronic circuits and CD-ROMs with recorded automatic performance programs for electronic musical instruments; downloadable music files; cinematographic films; slide films; slide film mounts; downloadable image files; recorded video discs and video tapes featuring children's entertainment content; downloadable electronic publications namely, commentary articles, game strategy guides, stories and games featuring entertainment content; cartridges, compact discs, optical discs and memory cards featuring entertainment, informational and educational content; educational instruction, entertainment instruction and informational instruction, all pertaining to games, puzzles, physical fitness, diet, nutrition, sports, and exercise; computer game cartridges; computer game discs; computer game memory cards; computer game programs; computer game software; electronic game cartridges; electronic game discs; electronic game memory cards; electronic game programs; electronic game software; electronic interactive board games; interactive game cartridges; interactive game discs; interactive game memory cards; interactive game programs; interactive game software; discs featuring game program and data content; musical sound recordings; video game cartridges; video game discs; video game memory cards; video game programs; video game software; magnetic trading cards and discs featuring game program and data content
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(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Japan application number 2008-056934 filed 07/11/2008]. 15 U.S.C.Section 1126(d), as amended.

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 [ Japan 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:
Tracked Text Description: Video game discs; video game cartridges; programs for video games; electronic circuits, magnetic discs, optical discs, magnetic tapes, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and other storage media namely flash memory all storing programs for video game machines; optical discs, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and other storage media namely flash memory all storing programs for video game machines; controllers, joysticks and memory cards for video game machines and their parts and fittings therefor; microphones for video game machines; sound receivers for video game machines; parts and fittings for video game machines; parts and fittings for video game machines, namely, power supplies, transformers, cables and modems; programs for handheld games with liquid crystal displays; electronic circuits, magnetic discs, optical discs, magnetic tapes, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and other storage media namely flash memory all storing programs for video game computers; optical discs, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and other storage media storing programs namely flash memory all for handheld games with liquid crystal displays; programs for arcade video game machines; optical discs, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and other storage media namely flash memory all storing programs for arcade video game machines; video game computers; optical discs, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and other storage media namely flash memory all storing programs for video game computers; downloadable programs for video game computers; programs for video game computers; cellular phones; game programs for cellular phones; straps for cellular phones; other electronic machines, apparatus and their parts namely electronic game software, electronic video game machines for use with computer monitor or television; parts and fittings for cellular phones; microphones; other telecommunication machines and apparatus; headsets with microphones; parts and fittings for cellular phones, namely, straps for cellular phones, display screen protectors, sleeves, cases, skins, stands, ear phones, power supplies and transformers; recorded compact discs featuring entertainment content, namely music, stories, games and game hints; phonographic records; electronic circuits and CD-ROMs with recorded automatic performance programs for electronic musical instruments; downloadable music files; slide films; cinematographic films; slide film mounts; downloadable image files featuring photographs, art, video/computer game characters, video/computer game scenes and video/computer game images; downloadable image files; recorded video discs and video tapes featuring children's entertainment content, namely fairytales, music and games; recorded video discs and video tapes featuring children's entertainment content; downloadable electronic publications namely, commentary articles, game strategy guides and stories featuring entertainment content, namely, games and puzzles; downloadable electronic publications namely, commentary articles, game strategy guides, stories and games featuring entertainment content; cartridges, compact discs, optical discs and memory cards featuring entertainment, informational and educational content, namely, games and puzzles; cartridges, compact discs, optical discs and memory cards featuring entertainment, informational and educational content; educational instruction, entertainment instruction and informational instruction, all pertaining to games, puzzles, physical fitness, diet, nutrition, sports and exercise; educational instruction, entertainment instruction and informational instruction, all pertaining to games, puzzles, physical fitness, diet, nutrition, sports, and exercise; computer game cartridges; computer game discs, computer game memory cards; computer game discs; computer game programs; computer game memory cards; computer game software; electronic game cartridges; electronic game discs; electronic game memory cards; electronic game programs; electronic game software; electronic interactive board games for use with external monitors; interactive game cartridges; electronic interactive board games; interactive game discs; interactive game memory cards; interactive game programs; interactive game software; magnetic coded trading cards and discs featuring game program and data content; musical sound recordings; discs featuring game program and data content; video game cartridges; video game discs; video game memory cards; video game programs; video game software; magnetic trading cards and discs featuring game program and data contentClass 009 for Video game discs; video game cartridges; programs for video games; optical discs, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and other storage media namely flash memory all storing programs for video game machines; controllers, joysticks and memory cards for video game machines and their parts and fittings therefor; microphones for video game machines; sound receivers for video game machines; parts and fittings for video game machines, namely, power supplies, transformers, cables and modems; programs for handheld games with liquid crystal displays; optical discs, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and other storage media storing programs namely flash memory all for handheld games with liquid crystal displays; programs for arcade video game machines; optical discs, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and other storage media namely flash memory all storing programs for arcade video game machines; video game computers; optical discs, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and other storage media namely flash memory all storing programs for video game computers; downloadable programs for video game computers; programs for video game computers; game programs for cellular phones; other electronic machines, apparatus and their parts namely electronic game software, electronic video game machines for use with computer monitor or television; microphones; headsets with microphones; parts and fittings for cellular phones, namely, straps for cellular phones, display screen protectors, sleeves, cases, skins, stands, ear phones, power supplies and transformers; recorded compact discs featuring entertainment content, namely music, stories, games and game hints; phonographic records; electronic circuits and CD-ROMs with recorded automatic performance programs for electronic musical instruments; downloadable music files; cinematographic films; downloadable image files featuring photographs, art, video/computer game characters, video/computer game scenes and video/computer game images; recorded video discs and video tapes featuring children's entertainment content, namely fairytales, music and games; downloadable electronic publications namely, commentary articles, game strategy guides and stories featuring entertainment content, namely, games and puzzles; cartridges, compact discs, optical discs and memory cards featuring entertainment, informational and educational content, namely, games and puzzles; educational instruction, entertainment instruction and informational instruction, all pertaining to games, puzzles, physical fitness, diet, nutrition, sports and exercise; computer game cartridges; computer game discs, computer game memory cards; computer game programs; computer game software; electronic game cartridges; electronic game discs; electronic game memory cards; electronic game programs; electronic game software; electronic interactive board games for use with external monitors; interactive game cartridges; interactive game discs; interactive game memory cards; interactive game programs; interactive game software; magnetic coded trading cards and discs featuring game program and data content; musical sound recordings; video game cartridges; video game discs; video game memory cards; video game programs; video game software; magnetic trading cards and discs featuring game program and data content
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(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Japan application number 2008-056934 filed 07/11/2008]. 15 U.S.C.Section 1126(d), as amended.

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 [ Japan 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.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use SPORTS apart from the mark as shown.

Claim of Prior Registration(s)
Applicant claims ownership of U.S. Registration Number(s) 3500328, 3494185, 3443076 and others.

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: /Sarah E. Nagae/     Date: 07/13/2009
Signatory's Name: Sarah E. Nagae
Signatory's Position: Attorney of record - Washington state bar member

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: 77583731
Internet Transmission Date: Mon Jul 13 11:45:36 EDT 2009
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2009071311453692
9502-77583731-4307d1ca1b41dd84756c149865
bcb98f418-N/A-N/A-20090706182610268154