Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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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. 85038675 has been amended as follows:

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

Applicant submits this response to the Office Action, dated September 4, 2010. The Examining Attorney refuses registration of Applicant’s applied-for mark on the grounds that the following identifications in the goods and services are indefinite:

Class 9: downloadable Internet browser plug-ins and client server applications in the nature of multi-function tool bar plug-ins.

Class 35: providing online business directories.

Class 41: operating and maintaining an online virtual world for entertainment purposes, namely, providing online computer games and entertainment content.

For the reasons discussed herein, Applicant respectfully requests that the Examining Attorney withdraws the refusal.

The Class 9 identification that is objected to is sufficiently specific. The Examining Attorney has requested that Applicant specify the functions provided by the plug-in that support search engine applications. However, the identification already provides the information the Examining Attorney is requesting. The goods are simply Internet browser and tool bar plug-ins. Plug-ins are software modules that add to the functionality of an application. In this case, plug-ins that are used in connection with Internet browsers and tool bars. The description provided in the application adequately specifies the nature of the plug-ins.

Additionally, the US Patent and Trademark Office has allowed the description that the Examining Attorney is now rejecting. Applicant submits herewith for consideration the following: Application Ser. Nos. 77278177, 77635391, and 77666944; and Trademark Registration Nos. 3874999, 3039976, 3039977, and 2947765, attached hereto as Exhibit A.

Applicant amends the disputed Class 41 services as follows: operating and maintaining an online virtual world for entertainment purposes, namely, providing online computer games and entertainment content in the nature of providing a virtual economy and a virtual currency for transaction of virtual commerce.

Applicant amends the disputed Class 35 services as follows: providing online business directories featuring information on local businesses, including address, phone numbers and websites.

Wherefore, Applicant respectfully requests that the refusal is withdrawn.

EVIDENCE
Evidence in the nature of Exhibit A has been attached.
Original PDF file:
evi_723724944-154550308_._HOPSCOTCH_EXHIBIT_A.pdf
Converted PDF file(s) (15 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Business services, namely, providing links to the websites of others, namely, retail service providers in the field of consumer electronics, computers, clothing, automobiles, toys and games and a wide variety of other general consumer products; providing links to websites of others in the field of consumer products and services; providing consumer product information via the Internet; providing comparison shopping information; providing online consumer and retail directory information services also featuring hyperlinks to other websites; dissemination of advertising for others via the Internet; online advertising services for others, namely, providing advertising space on Internet web sites; promoting the goods and services of others by placing advertisements and promotional displays on electronic sites accessed through computer networks; providing online business directories
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: Business services, namely, providing links to the websites of others, namely, retail service providers in the field of consumer electronics, computers, clothing, automobiles, toys and games and a wide variety of other general consumer products; providing links to websites of others in the field of consumer products and services; providing consumer product information via the Internet; providing comparison shopping information; providing online consumer and retail directory information services also featuring hyperlinks to other websites; dissemination of advertising for others via the Internet; online advertising services for others, namely, providing advertising space on Internet web sites; promoting the goods and services of others by placing advertisements and promotional displays on electronic sites accessed through computer networks; providing online business directories; providing online business directories featuring information on local businesses, including address, phone numbers and websitesClass 035 for Business services, namely, providing links to the websites of others, namely, retail service providers in the field of consumer electronics, computers, clothing, automobiles, toys and games and a wide variety of other general consumer products; providing links to websites of others in the field of consumer products and services; providing consumer product information via the Internet; providing comparison shopping information; providing online consumer and retail directory information services also featuring hyperlinks to other websites; dissemination of advertising for others via the Internet; online advertising services for others, namely, providing advertising space on Internet web sites; promoting the goods and services of others by placing advertisements and promotional displays on electronic sites accessed through computer networks; providing online business directories featuring information on local businesses, including address, phone numbers and websites
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment services, namely, providing on-line computer games, films and entertainment content; providing links to web sites of others in the field of entertainment; operating and maintaining an online virtual world for entertainment purposes, namely, providing online computer games and entertainment content, and providing a virtual economy and a virtual currency for transaction of virtual commerce
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: Entertainment services, namely, providing on-line computer games, films and entertainment content; providing links to web sites of others in the field of entertainment; operating and maintaining an online virtual world for entertainment purposes, namely, providing online computer games and entertainment content, and providing a virtual economy and a virtual currency for transaction of virtual commerce; operating and maintaining an online virtual world for entertainment purposes, namely, providing online computer games and entertainment content in the nature of providing a virtual economy and a virtual currency for transaction of virtual commerceClass 041 for Entertainment services, namely, providing on-line computer games, films and entertainment content; providing links to web sites of others in the field of entertainment; operating and maintaining an online virtual world for entertainment purposes, namely, providing online computer games and entertainment content in the nature of providing a virtual economy and a virtual currency for transaction of virtual commerce
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

SIGNATURE(S)
Response Signature
Signature: /GRE/     Date: 03/04/2011
Signatory's Name: G. Roxanne Elings
Signatory's Position: Attorney of Record, NY 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: 85038675
Internet Transmission Date: Fri Mar 04 15:52:41 EST 2011
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20110304155241921
282-85038675-4804f1b846ebc77994a4b18f3ad
50319fb-N/A-N/A-20110304154550308538