| PTO Form (Rev 4/2000) |
| OMB No. 0651-.... (Exp. 08/31/2004) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 78534544 |
| LAW OFFICE ASSIGNED | LAW OFFICE 113 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
In response to the July 27, 2008 Office Action, Applicant requests reconsideration and allowance of its application as to "strategy guides, user manuals and posters" for the reasons explained below. As to posters, Applicant files herewith a supplemental specimen showing use of the mark on posters, which use pre-dates the Statement of Use filed on June 20, 2008. As to any assertion that the use shown on the specimen is ornamental, Applicant submits that its existing use of CONKER for computer game software and U.S. Trademark Registration Nos. 3071710 and 3093812 for CONKER establish that use of the mark on posters serves as a source indicating function and is registerable. TMEP § 1202.03(c). As to strategy guides, Applicant believes that the current specimen supports registration. Unlike a novel or traditional book where a mark used as the title may not serve as a source indicating function unless it is used on multiple books, a mark used for game software and on a strategy guide for that game software inherently serves as a source indicating function. Users look to "Conker" on the strategy guide to confirm the source of the goods and to know that it is from the same source as the Conker game software. This is especially true where, as here, the mark is used in a highly stylized trademark form as shown in the specimen filed on June 20, 2008. In addition to the nature of its use on strategy guides, Applicant submits herewith two additional specimens showing use of its mark on a user manual and on a second strategy guide, which Applicant understands is sufficient to overcome the current refusal. For the reasons discussed above, Applicant believes its application is in condition to accept the Statement of Use and move forward to registration. If questions remain, the Examining Attorney is invited to contact Applicant's counsel, William O. Ferron, Jr., by email at BillF@SeedIP.com or by telephone at (206) 622-4900. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_6438133114-144209603_._CONKER_poster.PDF |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT5\IMAGEOUT5\785\345\78534544\xml1\RFR0002.JPG |
| ORIGINAL PDF FILE | evi_1-6438133114-144209603_._CONKER_user_manual.PDF |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT5\IMAGEOUT5\785\345\78534544\xml1\RFR0003.JPG |
| ORIGINAL PDF FILE | evi_6438133114-144209603_._CONKER_strategy_guide.PDF |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT5\IMAGEOUT5\785\345\78534544\xml1\RFR0004.JPG |
| ORIGINAL PDF FILE | evi_6438133114-144209603_._Declaration.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT5\IMAGEOUT5\785\345\78534544\xml1\RFR0005.JPG |
| DESCRIPTION OF EVIDENCE FILE | three .pdf files showing use of applicant's mark on a poster, a user manual and a strategy guide, and a Declaration Under 37 C.F.R. Section 2.20 to Accompany Supplemental Specimens |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /William O. Ferron Jr./ |
| SIGNATORY'S NAME | William O. Ferron, Jr. |
| SIGNATORY'S POSITION | Attorney for Applicant, Washington State bar member |
| DATE SIGNED | 01/08/2009 |
| AUTHORIZED SIGNATORY | YES |
| CONCURRENT APPEAL NOTICE FILED | NO |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Jan 08 15:15:01 EST 2009 |
| TEAS STAMP | USPTO/RFR-XX.XX.XXX.XXX-2 0090108151501499142-78534 544-43034443b5da3d64119c3 d5c5a7c318186a-N/A-N/A-20 090108144209603631 |
| PTO Form (Rev 4/2000) |
| OMB No. 0651-.... (Exp. 08/31/2004) |
In response to the July 27, 2008 Office Action, Applicant requests reconsideration and allowance of its application as to "strategy guides, user manuals and posters" for the reasons explained below.
As to posters, Applicant files herewith a supplemental specimen showing use of the mark on posters, which use pre-dates the Statement of Use filed on June 20, 2008. As to any assertion that the use shown on the specimen is ornamental, Applicant submits that its existing use of CONKER for computer game software and U.S. Trademark Registration Nos. 3071710 and 3093812 for CONKER establish that use of the mark on posters serves as a source indicating function and is registerable. TMEP § 1202.03(c).
As to strategy guides, Applicant believes that the current specimen supports registration. Unlike a novel or traditional book where a mark used as the title may not serve as a source indicating function unless it is used on multiple books, a mark used for game software and on a strategy guide for that game software inherently serves as a source indicating function. Users look to "Conker" on the strategy guide to confirm the source of the goods and to know that it is from the same source as the Conker game software. This is especially true where, as here, the mark is used in a highly stylized trademark form as shown in the specimen filed on June 20, 2008.
In addition to the nature of its use on strategy guides, Applicant submits herewith two additional specimens showing use of its mark on a user manual and on a second strategy guide, which Applicant understands is sufficient to overcome the current refusal.
For the reasons discussed above, Applicant believes its application is in condition to accept the Statement of Use and move forward to registration. If questions remain, the Examining Attorney is invited to contact Applicant's counsel, William O. Ferron, Jr., by email at BillF@SeedIP.com or by telephone at (206) 622-4900.
