Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85442271 ROCKSTAR PASS(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85442271) has been amended as follows:

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

Citation to Pending References

The office action cited pending application Serial Nos. 77/579,855 and 78/886,446.   Please note that US Serial No. 78/886,446 for ROCKSTAR WAREHOUSE is owned by Applicant, Take-Two Interactive Software, Inc.  

With respect to the other cited application, Ser. No. 77/579,855 for ROCKSTAR SUPERSTAR, this citation should be lifted. 

The application for ROCKSTAR SUPERSTAR was filed on September 26, 2008 in Class 9 for  “computer game programs; computer game software; computer game software focusing on achieving a set of goals, positions, ownership, and credentials, and professional and social status, and good fortune necessary to succeed professionally and personally, and not referring either to a group of software for use in commerce or to a group of offices; electronic game software; electronic game software for handheld electronic devices; electronic game software for wireless devices; game software; interactive video game programs; video game software; virtual reality game software.”  

The applicant, Take-Two Interactive, owns many registrations for its ROCKSTAR formative marks in Class 9, that predate the cited application for ROCKSTAR SUPERSTAR, including:

• ROCKSTAR GAMES, Reg. No. 2456387 (filed 11/15/99; registered 5/29/01) for “computer games software and video game programs”

• ROCKSTAR FILMS, Reg. No. 3905775 (filed 1/5/04; registered 1/11/11) for “computer game programs and software”

• R ROCKSTAR GAMES & Design, Reg. No. 2855543 (filed 5/14/02; registered 6/22/04) for “computer game software and video game programs” and

• ROCKSTAR GAMES PRESENTS TABLE TENNIS, Reg. No. 3345838 (filed 3/14/06; registered 11/27/07) for “computer game programs and computer game software and computer game cartridges.”

Take-Two’s prior registration rights in Class 9 for ROCKSTAR should take precedence over ROCKSTAR SUPERSTAR such that Take-Two’s application for ROCKSTAR PASS should not be barred from registration because of ROCKSTAR SUPERSTAR. 

Further, since the filing of the ROCKSTAR SUPERSTAR application on September 26, 2008, Take-Two Interactive has filed an application to register, and has received a registration for, its  ROCKSTAR GAMES mark in Class 9.  Specifically, on December 22, 2010 (which is after the filing date of the cited application) Take-Two Interactive filed an application for ROCKSTAR GAMES in Class 9 for “computer games software and video game programs,” which registered on October 11, 2011.  Because ROCKSTAR GAMES was allowed to register, despite the pending application of ROCKSTAR SUPERSTAR, Take-Two’s pending application for ROCKSTAR PASS should similarly be allowed to register.   Accordingly, Take-Two respectfully requests that the citation of Ser. No. 77/579,855 be lifted.

Trade Significance

“PASS” has no significance in the industry.

Identification of Goods and Services Amendment Required – Class 41 Only

The office action requests an amendment to the Class 41 recitation because, per the office action, the specimens for Class 41 show use of the mark for information about applicant’s own goods which are offered for sale on the website and this is not a service performed for others.   

This Class 41 ID appears in many of applicant’s pending applications and registrations and has repeatedly been accepted as a proper Class 41 ID when similar specimens have been submitted. Applicant, in fact, has  never received this particular refusal regarding its Class 41 recitation, and we bring to  the examiner’s attention, the following US registrations owned by the applicant for the identical services in Class 41.

·        GRAND THEFT AUTO CHINATOWN WARS & Design, US Reg. No. 3,926,016 that covers class 41 for:  Entertainment services, namely, providing information in the fields of computer games, computer game software and entertainment via the Internet

·        SOCIAL CLUB, US Reg. No. 3,726,179 that covers class 41 for: Entertainment services, namely, providing information in the fields of computer games and entertainment via the Internet.

·        CARNIVAL GAMES & Design, US Reg. No. 3,709,410 that covers class 41 for:  Entertainment services, namely, providing information in the fields of computer games, computer game software, and entertainment via the Internet.

·        CARNIVAL GAMES, US Reg. No. 3,709,406 that covers class 41 for:  Entertainment services, namely, providing information in the fields of computer games, computer game software, and entertainment via the Internet

·        2K BOSTON, US Reg. No. 3,818,815 that covers classes 9 and 41 (only 41 listed): Entertainment services, namely, providing information in the fields of computer games, computer game software and entertainment via the Internet

·        2K PLAY, US Reg. No. 3,712,548 that covers classes 9 and 41 (only 41 listed ):  Entertainment services, namely, providing information in the fields of computer games, computer game software and entertainment via the Internet

·        BIOSHOCK, US Reg. No. 3,640,375 that covers classes 16 and 41 (only 41 listed ):  Providing information in the fields of computer games, computer game software and entertainment via the Internet

In light of these existing registrations, applicant requests acceptance of the description of services in class 41, as filed:  “Entertainment services, namely, providing a website featuring information in the field of video games”

EVIDENCE
Evidence in the nature of copies of relevant US registration certificates has been attached.
Original PDF file:
evi_3811442101-183641282_._us_reg_certificates_rockstar.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_3811442101-183641282_._us_reg_certificates_ID.pdf
Converted PDF file(s) ( 7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
PASS appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as applied to the goods/services listed in the application, or any geographical significance.


Miscellaneous Statement
The applicant claims ownership of US Serial No. 78/886,446 for ROCKSTAR WAREHOUSE.


SIGNATURE(S)
Response Signature
Signature: /kxm/     Date: 06/19/2012
Signatory's Name: Kristen McCallion
Signatory's Position: Attorney of record, New York bar member

Signatory's Phone Number: 212-765-5070

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: 85442271
Internet Transmission Date: Tue Jun 19 12:34:51 EDT 2012
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2012061912345182
9319-85442271-490e6487cff101f5c28921b94e
cd9a568-N/A-N/A-20120619120231145487