| PTO Form 1822 (Rev 11/2007) |
| OMB No. 0651-0050 (Exp. 4/30/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77686933 |
| LAW OFFICE ASSIGNED | LAW OFFICE 106 |
| PENDING SERIAL NUMBER(S) | |
| Serial number(s) 77670823 should not be used as a citation(s) under Section 2(d) of the Trademark Act, in the event that said serial number(s) mature(s) into a registration(s). The applicant hereby requests removal of this application from suspension, based on the following arguments. In the event that the examining attorney is not persuaded by these arguments, the applicant hereby requests that this application be returned to suspended status, awaiting ultimate disposition of the referenced serial number(s). | |
| ARGUMENT(S) | |
|
This is a response to the Notice of Suspension of U.S. TRADEMARK APPLICATION NO. 77686933 - PEAS IN A POD dated June 3, 2009. Googaloo Games LLC maintains that there is no likelihood of public confusion as to source, sponsorship or affiliation arising from the use of the mark for the goods recited in their respective applications, as demonstrated by the following argument:
1) Dissimilar nature of goods. Prior Applicant (IGT CORPORATION NEVADA) has applied for the mark “PEAS IN A POD” under IC 009 (gaming machines, namely devices which accepts a wager). Applicant maintains that goods for which marks are intended are disparate and unlikely to cause confusion among consumers. Whereas a gaming machine which accepts a wager and is used in connection with gambling by an individual may deliver, as the result of the application of an element of chance, money or property, Applicant’s intended use is for a parlor game (IC 028). Although both uses fall under the broad category of entertainment, Applicant’s parlor game is for use by a group of interactive players who do not pay something of value to participate; nor do they receive money or anything of value as a result of the outcome. Furthermore, the result of the outcome of the parlor game is determined by skill, not chance.
2) Conditions under which and buyers to whom sales are made.
a) Different channels of trade. Channels of trade for devices classified under IC 009 are business to business sales and/or licensing arrangements involving sophisticated buyers. Owners and licensees of these devices offer them to the adult public as a paid means of gambling entertainment in licensed locations. Applicant’s parlor game is solely a retail product which by its nature would never be offered in the same venues as gambling devices.
b) Classes of Customers. Gaming machines are used by adults of legal gambling age in licensed establishments in specific geographical areas. Applicant’s goods are intended for use by families and groups of children and/or adults in the broad consumer marketplace.
c) Decision basis. The decision to use a gaming device is primarily an impulsive one that involves placing a wager one or more times, whereas the decision to purchase a parlor game is determined by weighing the value of a much longer term investment in recreation.
3) No actual confusion or fame of mark. Prior applicant does not nor has ever used the trademark, PEAS IN A POD, thus no public recognition to date that could be cited as a source of confusion.
4) Likelihood that prior applicant will bridge gap. Prior applicant is a corporation based solely on the manufacturing of gaming machines and distribution of internet-based gambling with no history or indication of entry into the board/parlor game market.
5) PEAS IN A POD as a widely used phrase. Further diminishing the likelihood of consumer confusion is the common use of the phrase, “peas in a pod”, and its multiple meanings; including, 1)people who look or think or act alike, and 2) the condition of expectant mothers. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Harriett L. Bennett/ |
| SIGNATORY'S NAME | Harriett L. Bennett |
| SIGNATORY'S POSITION | Member |
| DATE SIGNED | 12/02/2009 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Dec 02 19:41:06 EST 2009 |
| TEAS STAMP | USPTO/RSI-XX.XXX.XX.XXX-2 0091202194106017297-77686 933-46087ef70d71dedddee01 613d09a4ce3bf-N/A-N/A-200 91202191242745716 |
| PTO Form 1822 (Rev 11/2007) |
| OMB No. 0651-0050 (Exp. 4/30/2009) |
This is a response to the Notice of Suspension of U.S. TRADEMARK APPLICATION NO. 77686933 - PEAS IN A POD dated June 3, 2009. Googaloo Games LLC maintains that there is no likelihood of public confusion as to source, sponsorship or affiliation arising from the use of the mark for the goods recited in their respective applications, as demonstrated by the following argument:
1) Dissimilar nature of goods. Prior Applicant (IGT CORPORATION NEVADA) has applied for the mark “PEAS IN A POD” under IC 009 (gaming machines, namely devices which accepts a wager). Applicant maintains that goods for which marks are intended are disparate and unlikely to cause confusion among consumers. Whereas a gaming machine which accepts a wager and is used in connection with gambling by an individual may deliver, as the result of the application of an element of chance, money or property, Applicant’s intended use is for a parlor game (IC 028). Although both uses fall under the broad category of entertainment, Applicant’s parlor game is for use by a group of interactive players who do not pay something of value to participate; nor do they receive money or anything of value as a result of the outcome. Furthermore, the result of the outcome of the parlor game is determined by skill, not chance.
2) Conditions under which and buyers to whom sales are made.
a) Different channels of trade. Channels of trade for devices classified under IC 009 are business to business sales and/or licensing arrangements involving sophisticated buyers. Owners and licensees of these devices offer them to the adult public as a paid means of gambling entertainment in licensed locations. Applicant’s parlor game is solely a retail product which by its nature would never be offered in the same venues as gambling devices.
b) Classes of Customers. Gaming machines are used by adults of legal gambling age in licensed establishments in specific geographical areas. Applicant’s goods are intended for use by families and groups of children and/or adults in the broad consumer marketplace.
c) Decision basis. The decision to use a gaming device is primarily an impulsive one that involves placing a wager one or more times, whereas the decision to purchase a parlor game is determined by weighing the value of a much longer term investment in recreation.
3) No actual confusion or fame of mark. Prior applicant does not nor has ever used the trademark, PEAS IN A POD, thus no public recognition to date that could be cited as a source of confusion.
4) Likelihood that prior applicant will bridge gap. Prior applicant is a corporation based solely on the manufacturing of gaming machines and distribution of internet-based gambling with no history or indication of entry into the board/parlor game market.
5) PEAS IN A POD as a widely used phrase. Further diminishing the likelihood of consumer confusion is the common use of the phrase, “peas in a pod”, and its multiple meanings; including, 1)people who look or think or act alike, and 2) the condition of expectant mothers.