Response to Office Action

FIVEM

ZAP-Hosting GmbH & Co. KG

Response to Office Action

PTO- 1957
Approved for use through 11/30/2023. OMB 0651-0050
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 79311636
LAW OFFICE ASSIGNED LAW OFFICE 114
MARK SECTION
MARK mark
LITERAL ELEMENT FIVEM
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
OWNER SECTION (current)
NAME ZAP-Hosting GmbH & Co. KG
EMAIL XXXX
OWNER SECTION (proposed)
NAME ZAP-Hosting GmbH & Co. KG
EMAIL XXXX
LEGAL ENTITY SECTION (current)
STATE/COUNTRY/REGION/JURISDICTION/U.S. TERRITORY WHERE LEGALLY ORGANIZED Germany
LEGAL ENTITY SECTION (proposed)
TYPE gesellschaft mit beschränkter haftung (gmbh)
STATE/COUNTRY/REGION/JURISDICTION/U.S. TERRITORY WHERE LEGALLY ORGANIZED Germany
GOODS AND/OR SERVICES SECTION (009) (current)
INTERNATIONAL CLASS 009
DESCRIPTION
Computer software for the administration of on-line games and gaming; computer game software for use with on-line interactive games; computer gaming software; virtual reality game software; interactive multimedia software for playing games; electronic game software for mobile phones; electronic game software for wireless devices; electronic game software for handheld electronic devices; games software for use with video game consoles; downloadable computer games; games software; downloadable interactive entertainment software for playing computer games; web application and server software; cloud servers
GOODS AND/OR SERVICES SECTION (009) (proposed)
INTERNATIONAL CLASS 009
TRACKED TEXT DESCRIPTION
Computer software for the administration of on-line games and gaming; Downloadable computer software for the administration of on-line games and gaming; computer game software for use with on-line interactive games; downloadable computer game software for use with on-line interactive games; computer gaming software; downloadable computer gaming software; virtual reality game software; downloadable virtual reality game software; interactive multimedia software for playing games; downloadable interactive multimedia software for playing games; electronic game software for mobile phones; downloadable electronic game software for mobile phones; electronic game software for wireless devices; downloadable electronic game software for wireless devices; electronic game software for handheld electronic devices; downloadable electronic game software for handheld electronic devices; games software for use with video game consoles; downloadable games software for use with video game consoles; downloadable computer games; downloadable computer games programs; games software; downloadable games software; downloadable interactive entertainment software for playing computer games; web application and server software; downloadable web application and server software for playing computer games; cloud servers; cloud servers, namely, computer servers
FINAL DESCRIPTION
Downloadable computer software for the administration of on-line games and gaming; downloadable computer game software for use with on-line interactive games; downloadable computer gaming software; downloadable virtual reality game software; downloadable interactive multimedia software for playing games; downloadable electronic game software for mobile phones; downloadable electronic game software for wireless devices; downloadable electronic game software for handheld electronic devices; downloadable games software for use with video game consoles; downloadable computer games programs; downloadable games software; downloadable interactive entertainment software for playing computer games; downloadable web application and server software for playing computer games; cloud servers, namely, computer servers
        WEBPAGE URL None Provided
        WEBPAGE DATE OF ACCESS None Provided
GOODS AND/OR SERVICES SECTION (041) (current)
INTERNATIONAL CLASS 041
DESCRIPTION
Entertainment services; on-line gaming services; game services provided online from a computer network; providing information on-line relating to computer games and computer enhancements for games; provision of on-line computer games; providing newsletters in the field of computer games via e-mail; electronic games services, including provision of computer games on-line or by means of a global computer network; providing interactive multi-player computer games via the Internet and electronic communication networks; organization of electronic game competitions
GOODS AND/OR SERVICES SECTION (041) (proposed)
INTERNATIONAL CLASS 041
TRACKED TEXT DESCRIPTION
Entertainment services; Entertainment services, namely, providing online computer games; on-line gaming services; on-line gaming services in the nature of computer game tournaments; game services provided online from a computer network; providing online electronic games from a computer network; providing information on-line relating to computer games and computer enhancements for games; providing online information on-line relating to computer games and computer enhancements for games; provision of on-line computer games; provision of online computer games; providing newsletters in the field of computer games via e-mail; providing online electronic newsletters in the field of computer games via e-mail; electronic games services, including provision of computer games on-line or by means of a global computer network; providing electronic games services via online or a global computer network; providing interactive multi-player computer games via the Internet and electronic communication networks; providing online interactive multi-player computer games via the Internet and electronic communication networks; organization of electronic game competitions
FINAL DESCRIPTION
Entertainment services, namely, providing online computer games; on-line gaming services in the nature of computer game tournaments; providing online electronic games from a computer network; providing online information on-line relating to computer games and computer enhancements for games; provision of online computer games; providing online electronic newsletters in the field of computer games via e-mail; providing electronic games services via online or a global computer network; providing online interactive multi-player computer games via the Internet and electronic communication networks; organization of electronic game competitions
        WEBPAGE URL None Provided
        WEBPAGE DATE OF ACCESS None Provided
GOODS AND/OR SERVICES SECTION (042) (current)
INTERNATIONAL CLASS 042
DESCRIPTION
Hosting services, software as a service, and rental of software; hosting of interactive applications; hosting online web facilities for others for sharing online content, in particular of online games; hosting of access control as a service (ACaaS) servers and software; cloud hosting provider services; programming of computer game software; design of computer game software; design and development of computer game software; rental of server memory space; server hosting; providing temporary use of online non-downloadable games software for computer networks and servers; rental of memory space on servers for hosting functions for online computer games
GOODS AND/OR SERVICES SECTION (042) (proposed)
INTERNATIONAL CLASS 042
TRACKED TEXT DESCRIPTION
Hosting services, software as a service, and rental of software; Website hosting services, software as a service featuring, and rental of software; hosting of interactive applications; hosting of interactive computer software applications of others; hosting online web facilities for others for sharing online content, in particular of online games; hosting of access control as a service (ACaaS) servers and software; hosting of access control as a service (ACaaS) servers and software for operating virtual servers of others; cloud hosting provider services; programming of computer game software; design of computer game software; design and development of computer game software; rental of server memory space; server hosting; providing temporary use of online non-downloadable games software for computer networks and servers; rental of memory space on servers for hosting functions for online computer games
FINAL DESCRIPTION
Website hosting services, software as a service featuring, and rental of software; hosting of interactive computer software applications of others; hosting online web facilities for others for sharing online content, in particular of online games; hosting of access control as a service (ACaaS) servers and software for operating virtual servers of others; cloud hosting provider services; programming of computer game software; design of computer game software; design and development of computer game software; rental of server memory space; server hosting; rental of memory space on servers for hosting functions for online computer games
        WEBPAGE URL None Provided
        WEBPAGE DATE OF ACCESS None Provided
CORRESPONDENCE INFORMATION (current)
NAME Christina D. Frangiosa
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE ipdocket@eckertseamans.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) cfrangiosa@eckertseamans.com; jtorres@eckertseamans.com; lmcguinness@eckertseamans.com
DOCKET/REFERENCE NUMBER 311105-00115
CORRESPONDENCE INFORMATION (proposed)
NAME Christina D. Frangiosa
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE ipdocket@eckertseamans.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) cfrangiosa@eckertseamans.com; jtorres@eckertseamans.com; lmcguinness@eckertseamans.com
DOCKET/REFERENCE NUMBER 311105-00115
SIGNATURE SECTION
RESPONSE SIGNATURE /Jenna P. Torres/
SIGNATORY'S NAME Jenna P. Torres
SIGNATORY'S POSITION Associate Attorney, Eckert Seamans, PA Bar member
SIGNATORY'S PHONE NUMBER 2158518408
DATE SIGNED 03/14/2022
ROLE OF AUTHORIZED SIGNATORY Authorized U.S.-Licensed Attorney
SIGNATURE METHOD Sent to third party for signature
FILING INFORMATION SECTION
SUBMIT DATE Mon Mar 14 14:24:07 ET 2022
TEAS STAMP USPTO/ROA-XXX.XXX.XXX.XX-
20220314142407007686-7931
1636-800bd71c65d1fa2eebc3
f39976c9aacf218a5565ca7e4
9634247542428618c99-N/A-N
/A-20220314135824451733



PTO- 1957
Approved for use through 11/30/2023. OMB 0651-0050
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action


To the Commissioner for Trademarks:

Application serial no. 79311636 FIVEM(Standard Characters, see http://uspto.report/TM/79311636/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Computer software for the administration of on-line games and gaming; computer game software for use with on-line interactive games; computer gaming software; virtual reality game software; interactive multimedia software for playing games; electronic game software for mobile phones; electronic game software for wireless devices; electronic game software for handheld electronic devices; games software for use with video game consoles; downloadable computer games; games software; downloadable interactive entertainment software for playing computer games; web application and server software; cloud servers
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Computer software for the administration of on-line games and gaming; Downloadable computer software for the administration of on-line games and gaming; computer game software for use with on-line interactive games; downloadable computer game software for use with on-line interactive games; computer gaming software; downloadable computer gaming software; virtual reality game software; downloadable virtual reality game software; interactive multimedia software for playing games; downloadable interactive multimedia software for playing games; electronic game software for mobile phones; downloadable electronic game software for mobile phones; electronic game software for wireless devices; downloadable electronic game software for wireless devices; electronic game software for handheld electronic devices; downloadable electronic game software for handheld electronic devices; games software for use with video game consoles; downloadable games software for use with video game consoles; downloadable computer games; downloadable computer games programs; games software; downloadable games software; downloadable interactive entertainment software for playing computer games; web application and server software; downloadable web application and server software for playing computer games; cloud servers; cloud servers, namely, computer serversClass 009 for Downloadable computer software for the administration of on-line games and gaming; downloadable computer game software for use with on-line interactive games; downloadable computer gaming software; downloadable virtual reality game software; downloadable interactive multimedia software for playing games; downloadable electronic game software for mobile phones; downloadable electronic game software for wireless devices; downloadable electronic game software for handheld electronic devices; downloadable games software for use with video game consoles; downloadable computer games programs; downloadable games software; downloadable interactive entertainment software for playing computer games; downloadable web application and server software for playing computer games; cloud servers, namely, computer servers

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following:

Current:
Class 041 for Entertainment services; on-line gaming services; game services provided online from a computer network; providing information on-line relating to computer games and computer enhancements for games; provision of on-line computer games; providing newsletters in the field of computer games via e-mail; electronic games services, including provision of computer games on-line or by means of a global computer network; providing interactive multi-player computer games via the Internet and electronic communication networks; organization of electronic game competitions
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Entertainment services; Entertainment services, namely, providing online computer games; on-line gaming services; on-line gaming services in the nature of computer game tournaments; game services provided online from a computer network; providing online electronic games from a computer network; providing information on-line relating to computer games and computer enhancements for games; providing online information on-line relating to computer games and computer enhancements for games; provision of on-line computer games; provision of online computer games; providing newsletters in the field of computer games via e-mail; providing online electronic newsletters in the field of computer games via e-mail; electronic games services, including provision of computer games on-line or by means of a global computer network; providing electronic games services via online or a global computer network; providing interactive multi-player computer games via the Internet and electronic communication networks; providing online interactive multi-player computer games via the Internet and electronic communication networks; organization of electronic game competitionsClass 041 for Entertainment services, namely, providing online computer games; on-line gaming services in the nature of computer game tournaments; providing online electronic games from a computer network; providing online information on-line relating to computer games and computer enhancements for games; provision of online computer games; providing online electronic newsletters in the field of computer games via e-mail; providing electronic games services via online or a global computer network; providing online interactive multi-player computer games via the Internet and electronic communication networks; organization of electronic game competitions

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following:

Current:
Class 042 for Hosting services, software as a service, and rental of software; hosting of interactive applications; hosting online web facilities for others for sharing online content, in particular of online games; hosting of access control as a service (ACaaS) servers and software; cloud hosting provider services; programming of computer game software; design of computer game software; design and development of computer game software; rental of server memory space; server hosting; providing temporary use of online non-downloadable games software for computer networks and servers; rental of memory space on servers for hosting functions for online computer games
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Hosting services, software as a service, and rental of software; Website hosting services, software as a service featuring, and rental of software; hosting of interactive applications; hosting of interactive computer software applications of others; hosting online web facilities for others for sharing online content, in particular of online games; hosting of access control as a service (ACaaS) servers and software; hosting of access control as a service (ACaaS) servers and software for operating virtual servers of others; cloud hosting provider services; programming of computer game software; design of computer game software; design and development of computer game software; rental of server memory space; server hosting; providing temporary use of online non-downloadable games software for computer networks and servers; rental of memory space on servers for hosting functions for online computer gamesClass 042 for Website hosting services, software as a service featuring, and rental of software; hosting of interactive computer software applications of others; hosting online web facilities for others for sharing online content, in particular of online games; hosting of access control as a service (ACaaS) servers and software for operating virtual servers of others; cloud hosting provider services; programming of computer game software; design of computer game software; design and development of computer game software; rental of server memory space; server hosting; rental of memory space on servers for hosting functions for online computer games

Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: ZAP-Hosting GmbH & Co. KG      Email Address: XXXX

Proposed: ZAP-Hosting GmbH & Co. KG, gesellschaft mit beschränkter haftung (gmbh) legally organized under the laws of Germany
      Email Address: XXXX
Correspondence Information (current):
      Christina D. Frangiosa
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocket@eckertseamans.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): cfrangiosa@eckertseamans.com; jtorres@eckertseamans.com; lmcguinness@eckertseamans.com

The docket/reference number is 311105-00115.
Correspondence Information (proposed):
      Christina D. Frangiosa
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocket@eckertseamans.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): cfrangiosa@eckertseamans.com; jtorres@eckertseamans.com; lmcguinness@eckertseamans.com

The docket/reference number is 311105-00115.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Jenna P. Torres/     Date: 03/14/2022
Signatory's Name: Jenna P. Torres
Signatory's Position: Associate Attorney, Eckert Seamans, PA Bar member

Signatory's Phone Number: 2158518408 Signature method: Sent to third party for signature

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Christina D. Frangiosa
   Eckert Seamans Cherin & Mellott, LLC
   
   50 S. 16th Street, 22nd Floor
   Philadelphia, Pennsylvania 19102-2516
Mailing Address:    Christina D. Frangiosa
   Eckert Seamans Cherin & Mellott, LLC
   50 S. 16th Street, 22nd Floor
   Philadelphia, Pennsylvania 19102-2516
        
Serial Number: 79311636
Internet Transmission Date: Mon Mar 14 14:24:07 ET 2022
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202203141424070
07686-79311636-800bd71c65d1fa2eebc3f3997
6c9aacf218a5565ca7e49634247542428618c99-
N/A-N/A-20220314135824451733



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