PTO Form 1957 (Rev 9/2005)
OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER77728608
LAW OFFICE ASSIGNEDLAW OFFICE 111
MARK SECTION (no change)
ARGUMENT(S)

In an office action dated July 29, 2009, the examining attorney rejected the current application based in part on the specimen of use submitted in connection with the application.  In the office action, the examiner stated that the specimen was not acceptable because it consisted of a "screen shot of a website" and did not show or reference any service performed by the applicant.

The examiner's description of the specimen submitted is inaccurate.  The specimen submitted with the application was not a screenshot of a website.  Instead, it was a screenshot of the splash screen of a video game distributed by Applicant--an image from the software itself.  According to the T.M.E.P., Section 904.03(e), in the case of a computer program, "[a]n acceptable specimen might be a ... printout of a display screen projecting the identifying trademark of a computer program."  This is exactly what was submitted by Applicant as its specimen of use.
GOODS AND/OR SERVICES SECTION (009)(no change)
GOODS AND/OR SERVICES SECTION (042)(current)
INTERNATIONAL CLASS042
DESCRIPTION
Non downloadable software and related website services for use in connection with games, surveys, marketing, advertising, and public electronic displays; designing and developing computer and video game software for use with computers, mobile telephones, and public video displays; providing a website featuring advertisements, information on video games, downloadable software, graphics, movies, and audio files, and forums and chatrooms for users to post messages and meet other users
FILING BASISSection 1(a)
        FIRST USE ANYWHERE DATE At least as early as 12/17/2006
        FIRST USE IN COMMERCE DATE At least as early as 09/15/2007
GOODS AND/OR SERVICES SECTION (042)(proposed)
INTERNATIONAL CLASS042
TRACKED TEXT DESCRIPTION
Non downloadable software and related website services for use in connection with games, surveys, marketing, advertising, and public electronic displays; Providing temporary use of non downloadable software for use in connection with games, surveys, marketing, advertising, and public electronic displays; designing and developing computer and video game software for use with computers, mobile telephones, and public video displays; providing a website featuring advertisements, information on video games, downloadable software, graphics, movies, and audio files, and forums and chatrooms for users to post messages and meet other users
FINAL DESCRIPTION
Providing temporary use of non downloadable software for use in connection with games, surveys, marketing, advertising, and public electronic displays; designing and developing computer and video game software for use with computers, mobile telephones, and public video displays; providing a website featuring advertisements, information on video games, downloadable software, graphics, movies, and audio files, and forums and chatrooms for users to post messages and meet other users
FILING BASISSection 1(a)
       FIRST USE ANYWHERE DATE At least as early as 12/17/2006
       FIRST USE IN COMMERCE DATE At least as early as 09/15/2007
       STATEMENT TYPE "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use].
       SPECIMEN FILE NAME(S)
       ORIGINAL PDF FILESPU1-12146203100-153549042_._42specimen.pdf
       CONVERTED PDF FILE(S)
       (8 pages) 		\\TICRS\EXPORT9\IMAGEOUT9\777\286\77728608\xml1\ROA0002.JPG
       \\TICRS\EXPORT9\IMAGEOUT9\777\286\77728608\xml1\ROA0003.JPG
       \\TICRS\EXPORT9\IMAGEOUT9\777\286\77728608\xml1\ROA0004.JPG
       \\TICRS\EXPORT9\IMAGEOUT9\777\286\77728608\xml1\ROA0005.JPG
       \\TICRS\EXPORT9\IMAGEOUT9\777\286\77728608\xml1\ROA0006.JPG
       \\TICRS\EXPORT9\IMAGEOUT9\777\286\77728608\xml1\ROA0007.JPG
       \\TICRS\EXPORT9\IMAGEOUT9\777\286\77728608\xml1\ROA0008.JPG
       \\TICRS\EXPORT9\IMAGEOUT9\777\286\77728608\xml1\ROA0009.JPG
       SPECIMEN DESCRIPTIONPrint out of the MEGAPHONE website, describing the software development services, among others.
SIGNATURE SECTION
DECLARATION SIGNATURE /ThayerPreece/
SIGNATORY'S NAME Thayer M. Preece
SIGNATORY'S POSITION Attorney of record, CA bar member
DATE SIGNED 01/29/2010
RESPONSE SIGNATURE /ThayerPreece/
SIGNATORY'S NAME Thayer M. Preece
SIGNATORY'S POSITION Attorney of record, CA bar member
DATE SIGNED 01/29/2010
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Fri Jan 29 16:01:45 EST 2010
TEAS STAMP USPTO/ROA-XX.XXX.XXX.XXX-
20100129160145640095-7772
8608-460ebe1f4a525887eaca
395eaea7eddab5-N/A-N/A-20
100129153549042179


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. 77728608 has been amended as follows:

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

In an office action dated July 29, 2009, the examining attorney rejected the current application based in part on the specimen of use submitted in connection with the application.  In the office action, the examiner stated that the specimen was not acceptable because it consisted of a "screen shot of a website" and did not show or reference any service performed by the applicant.

The examiner's description of the specimen submitted is inaccurate.  The specimen submitted with the application was not a screenshot of a website.  Instead, it was a screenshot of the splash screen of a video game distributed by Applicant--an image from the software itself.  According to the T.M.E.P., Section 904.03(e), in the case of a computer program, "[a]n acceptable specimen might be a ... printout of a display screen projecting the identifying trademark of a computer program."  This is exactly what was submitted by Applicant as its specimen of use.



CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Non downloadable software and related website services for use in connection with games, surveys, marketing, advertising, and public electronic displays; designing and developing computer and video game software for use with computers, mobile telephones, and public video displays; providing a website featuring advertisements, information on video games, downloadable software, graphics, movies, and audio files, and forums and chatrooms for users to post messages and meet other users
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/17/2006 and first used in commerce at least as early as 09/15/2007, and is now in use in such commerce.

Proposed:
Tracked Text Description: Non downloadable software and related website services for use in connection with games, surveys, marketing, advertising, and public electronic displays; Providing temporary use of non downloadable software for use in connection with games, surveys, marketing, advertising, and public electronic displays; designing and developing computer and video game software for use with computers, mobile telephones, and public video displays; providing a website featuring advertisements, information on video games, downloadable software, graphics, movies, and audio files, and forums and chatrooms for users to post messages and meet other users

Class 042 for Providing temporary use of non downloadable software for use in connection with games, surveys, marketing, advertising, and public electronic displays; designing and developing computer and video game software for use with computers, mobile telephones, and public video displays; providing a website featuring advertisements, information on video games, downloadable software, graphics, movies, and audio files, and forums and chatrooms for users to post messages and meet other users
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/17/2006 and first used in commerce at least as early as 09/15/2007, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 042. The specimen(s) submitted consists of Print out of the MEGAPHONE website, describing the software development services, among others..
"The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use].
Original PDF file:
SPU1-12146203100-153549042_._42specimen.pdf
Converted PDF file(s) (8 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, 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. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 244. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /ThayerPreece/      Date: 01/29/2010
Signatory's Name: Thayer M. Preece
Signatory's Position: Attorney of record, CA bar member

Response Signature
Signature: /ThayerPreece/     Date: 01/29/2010
Signatory's Name: Thayer M. Preece
Signatory's Position: Attorney of record, CA 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: 77728608
Internet Transmission Date: Fri Jan 29 16:01:45 EST 2010
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201001291601456
40095-77728608-460ebe1f4a525887eaca395ea
ea7eddab5-N/A-N/A-20100129153549042179