| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 78862893 |
| LAW OFFICE ASSIGNED | LAW OFFICE 102 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Applicant Intellevision Productions, Inc., by and through its attorneys, hereby responds to the Office Action of September 22, 2006 as follows: As a preliminary matter, Applicant is pleased to note that, aside from a portion of Applicant's Class 41 services description, the Examiner has not found any similar registered or pending mark that would bar registration under Section 2(d) of the Trademark Act. As to Class 41, Applicant respectfully disagrees that there is any possibility of confusion between Applicant's mark and those cited in the Office Action, namely, Reg. No. 2,159,967 or Serial No. 78/692,548. The marks are entirely dissimlar and used in connection with entirely different goods and services. However, rather than present substantive argument, Applicant has amended its description of goods and services to eliminate those services cited as the sole basis for refusal, namely, the original Class 41 description reference to "multimedia entertainment software production services; and publishing interactive computer and video games and software." Since these services have been removed from the application, there can be no doubt that the respective services of Applicant's mark and the cited mark and pending application are dissimilar. Applicant respectfully submits that this eliminates any grounds for refusing the mark based on Section 2(d). The Office Action also raises technical concerns regarding the Class 16 and Class 41 specimens of use that have been submitted. Applicant respectfully submits that the Class 16 specimen (the first two pages of an owner's manual) is an appropriate specimen because it is distributed to consumers at the point of sale for Applicant's video games and equipment, namely, through Applicant's website. Further, the Class 41 specimen is a printout of two pages of Applicant's website at www.intellivisionlives.com and the website itself demonstrates the providing of "information on-line relating to video and computer games." Accordingly, Applicant respectfully submits that both specimens qualify as suitable specimens for Class 16 and Class 41. In light of the foregoing, Applicant respectfully requests that that the mark be allowed to proceed to publication. |
|
| GOODS AND/OR SERVICES SECTION (009)(current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Video output game machines for use with televisions; video game interactive hand held devices for playing electronic games; electronic, video, and multimedia game software for use on personal computers, cell phones, television receivers, handheld devices, and electronic game-playing units; interactive video game programs; video game cartridges, video game cassettes; CD-ROM encoded video game software; DVD-ROM encoded video game software; CD-ROM encoded computer game software; downloadable audio-video recordings featuring music, comedy, drama, action, adventure and/or animation; downloadable ring tones, graphics and music via a global computer network and wireless devices; and sound recordings featuring musical performances and video game-themed music | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 00/00/1979 |
| FIRST USE IN COMMERCE DATE | At least as early as 00/00/1980 |
| GOODS AND/OR SERVICES SECTION (009)(proposed) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Video output game machines for use with televisions; video game interactive hand held joy sticks, control mats, and remote controls for playing electronic games; electronic, video, and multimedia game software for use on personal computers, cell phones, television receivers, handheld devices, and electronic game-playing units; interactive video game programs; video game cartridges, video game cassettes; CD-ROM encoded video game software; DVD-ROM encoded video game software; CD-ROM encoded computer game software; downloadable audio-video recordings featuring music, comedy, drama, action, adventure and/or animation; downloadable ring tones, graphics and music via a global computer network and wireless devices; and sound recordings featuring musical performances and video game-themed music | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 00/00/1979 |
| FIRST USE IN COMMERCE DATE | At least as early as 00/00/1980 |
| GOODS AND/OR SERVICES SECTION (016)(no change) | |
| GOODS AND/OR SERVICES SECTION (021)(no change) | |
| GOODS AND/OR SERVICES SECTION (025)(no change) | |
| GOODS AND/OR SERVICES SECTION (028)(current) | |
| INTERNATIONAL CLASS | 028 |
| DESCRIPTION | Toys and games, namely, hand-held LCD games |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 00/00/2003 |
| FIRST USE IN COMMERCE DATE | At least as early as 00/00/2003 |
| GOODS AND/OR SERVICES SECTION (028)(proposed) | |
| INTERNATIONAL CLASS | 028 |
| DESCRIPTION | |
| Toys and games, namely, hand-held LCD games; interactive hand held units for playing electronic games | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 00/00/2003 |
| FIRST USE IN COMMERCE DATE | At least as early as 00/00/2003 |
| GOODS AND/OR SERVICES SECTION (041)(current) | |
| INTERNATIONAL CLASS | 041 |
| DESCRIPTION | |
| Providing information on-line relating to video and computer games; multimedia entertainment software production services; and publishing interactive computer and video games and software and related instruction booklets, operation manuals, owner's manuals, and catalogs | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 00/00/1997 |
| FIRST USE IN COMMERCE DATE | At least as early as 00/00/1997 |
| GOODS AND/OR SERVICES SECTION (041)(proposed) | |
| INTERNATIONAL CLASS | 041 |
| DESCRIPTION | |
| Providing information on-line relating to video and computer games; and publishing of computer and video game instruction booklets, operation manuals, owner's manuals, and catalogs | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 00/00/1997 |
| FIRST USE IN COMMERCE DATE | At least as early as 00/00/1997 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice. |
| RESPONSE SIGNATURE | /Edwin Komen/ |
| SIGNATORY'S NAME | Edwin Komen |
| SIGNATORY'S POSITION | Attorney |
| DATE SIGNED | 03/21/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Mar 21 11:01:39 EDT 2007 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20070321110139145313-7886 2893-370e08112d9573b8a2a0 fa13a44bc150a1-N/A-N/A-20 070320191306146942 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Applicant Intellevision Productions, Inc., by and through its attorneys, hereby responds to the Office Action of September 22, 2006 as follows:
As a preliminary matter, Applicant is pleased to note that, aside from a portion of Applicant's Class 41 services description, the Examiner has not found any similar registered or pending mark that would bar registration under Section 2(d) of the Trademark Act. As to Class 41, Applicant respectfully disagrees that there is any possibility of confusion between Applicant's mark and those cited in the Office Action, namely, Reg. No. 2,159,967 or Serial No. 78/692,548. The marks are entirely dissimlar and used in connection with entirely different goods and services. However, rather than present substantive argument, Applicant has amended its description of goods and services to eliminate those services cited as the sole basis for refusal, namely, the original Class 41 description reference to "multimedia entertainment software production services; and publishing interactive computer and video games and software." Since these services have been removed from the application, there can be no doubt that the respective services of Applicant's mark and the cited mark and pending application are dissimilar. Applicant respectfully submits that this eliminates any grounds for refusing the mark based on Section 2(d).
The Office Action also raises technical concerns regarding the Class 16 and Class 41 specimens of use that have been submitted. Applicant respectfully submits that the Class 16 specimen (the first two pages of an owner's manual) is an appropriate specimen because it is distributed to consumers at the point of sale for Applicant's video games and equipment, namely, through Applicant's website. Further, the Class 41 specimen is a printout of two pages of Applicant's website at www.intellivisionlives.com and the website itself demonstrates the providing of "information on-line relating to video and computer games." Accordingly, Applicant respectfully submits that both specimens qualify as suitable specimens for Class 16 and Class 41.
In light of the foregoing, Applicant respectfully requests that that the mark be allowed to proceed to publication.