TEAS Response to Suspension Inquiry

PTO Form 1822 (Rev 11/2007)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1822 (Rev 11/2007)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 77583731 WII SPORTS RESORT (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=77583731) has been amended as follows:
PENDING SERIAL NUMBER(S)

ARGUMENT(S)

Request to Release Application From Suspension

In response to the September 20, 2010, Notice of Suspension, Applicant Nintendo of America Inc. respectfully requests that the current application be released from suspension.

A.  Pending Application Cited Under Section 2(d) in the Office Action

In the Notice of Suspension, App. Serial Number 78872928 is cited as possibly conflicting with the current mark under Section 2(d) of the Trademark Act.  The prior application was abandoned as of 11/14/11.

B.  Identification of Goods

The identification of goods is currently amended herewith.  

C.  Closing

Applicant believes the application is now in condition for publication. The Examining Attorney is encouraged to contact the below-signed attorney directly at (206) 695-1660 or sarah.nagae@cojk.com with any questions.

The referenced serial number(s) 78/872928 has/have now abandoned. The applicant hereby requests removal of this application from suspension for further consideration by the examining attorney.
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; 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
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had 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 had 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; (Based on Intent-to-Use and Section 44(e)) Video game discs; video game cartridges; programs for video games; computer 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; optical discs, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and storage media in the nature of flash memory cards, all of the foregoing containing recorded programs for video game machines; controllers, joysticks and memory cards for video game machines and their parts and fittings therefor; controllers, joysticks and memory cards for video game machines and 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; parts and fittings for video game machines, namely, power supplies, transformers, connection cables and modems; programs for handheld games with liquid crystal displays; video game 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; optical discs, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and storage media in the nature of flash memory cards, all of the foregoing containing recorded programs for handheld games with liquid crystal displays; programs for arcade video game machines; computer 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; optical discs, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and storage media in the nature of flash memory cards, all of the foregoing containing recorded 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; optical discs, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and storage media in the nature of flash memory cards, all of the foregoing containing recorded video game programs for video game computers; downloadable programs for video game computers; downloadable video game programs for video game computers; programs for video game computers; video game programs for video game computers; game programs for cellular phones; video 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; 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; gaming headsets with microphones for use in playing video games; parts and fittings for cellular phones, namely, straps for cellular phones, display screen protectors, sleeves, cases, skins, stands, ear phones, power supplies and transformers; telephone headsets with microphones; recorded compact discs featuring entertainment content, namely music, stories, games and game hints; parts and fittings for cellular phones, namely, straps for cellular phones, display screen protectors, protective sleeves, cases specially adapted for cellular phones, fitted plastic films known as skins for covering and providing a scratch proof barrier or protection for cellular phones, stands specially designed for cellular phones, ear phones, power supplies and transformers; phonographic records; recorded compact discs featuring entertainment content, namely music, stories, interactive audio games, video games and game hints; phonographic records featuring music, stories, interactive audio games and game hints; downloadable music files; electronic circuits and CD-ROMs with recorded automatic performance programs for electronic musical instruments; cinematographic films; digital music downloadable from the Internet, namely, downloadable music files; downloadable image files featuring photographs, art, video/computer game characters, video/computer game scenes and video/computer game images; downloadable image files featuring photographs, art, video and computer game characters, video and computer game scenes and video and 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; computer game cartridges; cartridges, compact discs, optical discs and memory cards featuring entertainment, informational and educational content, namely, games and puzzles; computer game discs, computer game memory cards; educational instruction, entertainment instruction and informational instruction, all pertaining to games, puzzles, physical fitness, diet, nutrition, sports and exercise; 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; video game memory cards; video game programs; video game software ¶
¶
(Based on Intent-to-Use) exposed cinematographic films; magnetic coded trading cards and discs featuring game program and data content; downloadable electronic publications namely, written commentary articles in the field of current event news and games, game strategy guides and story books featuring entertainment content, namely, games and puzzles; cartridges, compact discs, optical discs and memory cards featuring entertainment, informational and educational content, namely, electronic games and puzzles; video game cartridges; magnetic coded trading cards and discs, namely, digital trading cards in the nature of multimedia software recorded on magnetic media featuring video game programs and video game characters; video game discs; musical sound recordings; magnetic trading cards and discs, namely, digital trading cards in the nature of multimedia software recorded on magnetic media featuring video game programs and video game characters; video game software; magnetic trading cards and discs featuring game program and data contentClass 009 for (Based on Intent-to-Use and Section 44(e)) Video game discs; video game cartridges; computer programs for video games; optical discs, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and storage media in the nature of flash memory cards, all of the foregoing containing recorded programs for video game machines; controllers, joysticks and memory cards for video game machines and 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, connection cables and modems; video game programs for handheld games with liquid crystal displays; optical discs, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and storage media in the nature of flash memory cards, all of the foregoing containing recorded programs for handheld games with liquid crystal displays; computer programs for arcade video game machines; optical discs, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and storage media in the nature of flash memory cards, all of the foregoing containing recorded programs for arcade video game machines; video game computers; optical discs, ROM cards, ROM cartridges, CD-ROMs, DVD-ROMs and storage media in the nature of flash memory cards, all of the foregoing containing recorded video game programs for video game computers; downloadable video game programs for video game computers; video game programs for video game computers; video 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; gaming headsets with microphones for use in playing video games; telephone headsets with microphones; parts and fittings for cellular phones, namely, straps for cellular phones, display screen protectors, protective sleeves, cases specially adapted for cellular phones, fitted plastic films known as skins for covering and providing a scratch proof barrier or protection for cellular phones, stands specially designed for cellular phones, ear phones, power supplies and transformers; recorded compact discs featuring entertainment content, namely music, stories, interactive audio games, video games and game hints; phonographic records featuring music, stories, interactive audio games and game hints; electronic circuits and CD-ROMs with recorded automatic performance programs for electronic musical instruments; digital music downloadable from the Internet, namely, downloadable music files; downloadable image files featuring photographs, art, video and computer game characters, video and computer game scenes and video and computer game images; recorded video discs and video tapes featuring children's entertainment content, namely fairytales, music and games; 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; video game memory cards; video game programs; video game software (Based on Intent-to-Use) exposed cinematographic films; downloadable electronic publications namely, written commentary articles in the field of current event news and games, game strategy guides and story books featuring entertainment content, namely, games and puzzles; cartridges, compact discs, optical discs and memory cards featuring entertainment, informational and educational content, namely, electronic games and puzzles; magnetic coded trading cards and discs, namely, digital trading cards in the nature of multimedia software recorded on magnetic media featuring video game programs and video game characters; musical sound recordings; magnetic trading cards and discs, namely, digital trading cards in the nature of multimedia software recorded on magnetic media featuring video game programs and video game characters
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 5248886 registered 07/17/2009 with a renewal date of __________ and an expiration date of 07/17/2019 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU0-2166414140-171413973_._27607_WiiSportsResort___Design_JP_Reg_and_US_Trans.pdf
Converted PDF file(s) (7 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7


Response Suspension Inquiry Signature
Signature: /Sarah E. Nagae/     Date: 12/02/2011
Signatory's Name: Sarah E. Nagae
Signatory's Position: Attorney of Record, Washington Bar Member
Signatory's Phone Number: 206-682-8100

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: Fri Dec 02 15:19:03 EST 2011
TEAS Stamp: USPTO/RSI-XXX.XX.XXX.XX-2011120215190360
5933-77583731-49037b5ab8ec6bc1c51d3abfc2
b853a678-N/A-N/A-20111201171413973537