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. 86338355 DICE (Stylized and/or with Design, see http://uspto.report/TM/86338355/mark.png) has been amended as follows:

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

I. Introduction Applicant Dice FM Ltd. ("Applicant") has filed an intent to use application, claiming priority based on a United Kingdom application, to register the mark for use in connection with goods and services in Classes 9, 35, and 41. The Examining Attorney has refused to register Applicant's mark in Class 35 based on an alleged likelihood of confusion with the following registrations: 183 Reg. No. 3150314 - owned by The Boston Consulting Group, Inc. and covering the mark DICE for use with "providing business project management consulting services, namely predicting project outcomes and modifying project implementation to increase likelihood of success in business transformation projects" in Class 35; 183 Reg. No. 3207563 - owned by the Academy of Interactive Arts and Sciences and covering the mark D.I.C.E. SUMMIT for use with the "arranging and conducting trade shows in the field of computer games and video games design, development, technology, programming, graphics, animation, audio, theory, marketing, and sales" in Class 35; and 183 Reg. No. 4576613 - owned by the Academy of Interactive Arts and Sciences and covering the mark D.I.C.E. for use with the "arranging and conducting business conferences; organizing exhibitions in the field of interactive entertainment and video and computer games for business and commercial purposes; organizing exhibitions for commercial or advertising purposes; advertising, marketing, and promoting the goods and services of others" in Class 35. The refusal based on Reg. No. 3150314 is limited to the following services: "Advertising; Business management; Business administration; Office administration services; Marketing research and studies; Online advertising services for others; Direct mail advertising services; Dissemination of advertising matter; Marketing and promotion services; Accounting services; Business advice and information; Business consulting" in Class 35. The refusals based on Reg. Nos. 3207563 and 4576613 are limited to the following services: "Advertising; Business management; Business administration; Office administration services; Marketing research and studies; Online advertising services for others; Direct mail advertising services; Dissemination of advertising matter; Marketing and promotion services; Accounting services; Promotion of venues, musical performers, sporting events, musical concerts and entertainment events of others; Business advice and information; Business consulting." The Examining Attorney has also refused to register Applicant's mark based on a now-abandoned prior pending application (Serial No. 85/774,914) for the mark D.I.C.E., which was also owned by the Academy of Interactive Arts and Sciences. Likelihood of Confusion Refusals Under Section 2(d) of the Lanham Act, the United States Patent and Trademark Office may refuse to register a trademark if it "so resembles" a previously registered trademark "as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1052(d). A. Likelihood of Confusion Principles Likelihood of confusion determinations are made on a case-by-case basis, On-Line Careline Inc. v. Am. Online Inc., 56 USPQ2d 1471, 1474 (Fed. Cir. 2000), taking into consideration the thirteen nonexclusive factors propounded in In re E.I. duPont de Nemours & Co., 177 USPQ 563, 567 (C.C.P.A. 1973): 1) the similarity or dissimilarity of the parties' marks in their entireties, taking into account the sound, appearance, connotation, and commercial impression of the marks; 2) the similarity or dissimilarity of the parties' goods or services; 3) the similarity or dissimilarity of the parties' established, likely-to-continue trade channels; 4) the sophistication of the parties' consumers; 5) the fame of the prior mark; 6) the number and nature of similar marks in use on similar goods or services; 7) nature and extent of any actual confusion; 8) length of time and conditions under which there was concurrent use of the marks without actual confusion; 9) the variety of goods or services upon which a mark is used or not used; 10) the market interface between the applicant and the owner of the prior mark; 11) the extent to which the applicant has a right to exclude others from using its mark on its goods or services; 12) the extent of potential confusion, i.e., whether de minimis or substantial; and 13) any other facts of the effect of use. In ex parte examinations, the DuPont factors boil down to what is essentially a two-part inquiry: the similarities between the marks and the relatedness of the goods/services. Federated Foods, Inc. v. Fort Howard Paper Co., 192 USPQ 24, 29 (C.C.P.A. 1976) ("The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks."). B. The Parties' Services are not Related In response to the refusal based on Reg. No. 3150314, Applicant has amended its description of goods and services to eliminate the services of "Advertising; Business management; Business administration; Office administration services; Marketing research and studies; Online advertising services for others; Direct mail advertising services; Dissemination of advertising matter; Marketing and promotion services; Accounting services; Business advice and information; Business consulting" from its Class 35 description of services. Therefore, Applicant respectfully requests that the Examining Attorney withdraw this refusal. In response to the refusals based on Reg. Nos. 3207563 and 4576613, Applicant has deleted all of the services to which these refusals pertain, with the exception of the "promotion of venues, musical performers, sporting events, musical concerts and entertainment events of others." Applicant has not deleted those services because they have nothing in common with the provision of trade shows or business conferences for the video and computer gaming industries. Those services are not related and consumers are not likely to confuse those services or the respective sources of those services - especially given the common nature of the word "dice" and the fact that Applicant's mark is a unique logo. As the Class 35 services remaining in this application are not related to the services in Reg. Nos. 3207563 and 4576613, Applicant respectfully requests that the Examining Attorney withdraw these refusal. C. Prior Pending Refusal The Examining Attorney also to register Applicant's mark based on a now-abandoned prior pending application (Serial No. 85/774,914) for the mark D.I.C.E. Applicant respectfully requests the Examining Attorney withdraw this refusal based on the abandonment of the prior pending application. D. Conclusion For the foregoing reasons, Applicant respectfully requests that the Examining Attorney withdraw the refusals issued against this application and suspend this application pending submission of Applicant's United Kingdom application.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computers; Electronic databases in the field of the sale and exchange of tickets; Computer servers; Computer screen saver software; Digital media, namely downloadable audio and video recordings in the field of the sale and exchange of tickets; Electronic publications, namely, books, magazines, and newsletters in the field of entertainment, sports, music, theatre, art events, television shows, motion pictures, art exhibitions, public shows, lectures and other entertainment, cultural and educational events; Downloadable musical sound recordings; Downloadable images in the field of entertainment, sports, music, theatre, art events, television shows, motion pictures, art exhibitions, public shows, lectures and other entertainment, cultural and educational events; Downloadable MP3 files and MP3 recordings in the field of entertainment, sports, music, theatre, art events, television shows, motion pictures, art exhibitions, public shows, lectures and other entertainment, cultural and educational events; Downloadable podcasts in the field of entertainment, sports, music, theatre, art events, television shows, motion pictures, art exhibitions, public shows, lectures and other entertainment, cultural and educational events; audio books in the field of the sale and exchange of tickets; Carrying cases, covers and sleeves for laptops and tablet computers, electronic books, CD and DVD players and MP3 players; Printers; Electronic and electrical apparatus, namely, ticket issuing, reading and recording machines; Vending machines
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number 3040253 filed 01/31/2014]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Computers; Electronic databases in the field of the sale and exchange of tickets; Electronic databases in the field of the sale and exchange of tickets recorded on computer media; Computer servers; Computer screen saver software; Digital media, namely downloadable audio and video recordings in the field of the sale and exchange of tickets; Digital media, namely, downloadable audio and video recordings in the field of the sale and exchange of tickets; Electronic publications, namely, books, magazines, and newsletters in the field of entertainment, sports, music, theatre, art events, television shows, motion pictures, art exhibitions, public shows, lectures and other entertainment, cultural and educational events; downloadable electronic publications, namely, books, magazines, and newsletters in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions, public music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature of music and film festivals; Downloadable musical sound recordings; Downloadable images in the field of entertainment, sports, music, theatre, art events, television shows, motion pictures, art exhibitions, public shows, lectures and other entertainment, cultural and educational events; Downloadable images in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions, public music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature of music and film festivals; Downloadable MP3 files and MP3 recordings in the field of entertainment, sports, music, theatre, art events, television shows, motion pictures, art exhibitions, public shows, lectures and other entertainment, cultural and educational events; Downloadable MP3 files and MP3 recordings in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions, public music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature of music and film festivals; Downloadable podcasts in the field of entertainment, sports, music, theatre, art events, television shows, motion pictures, art exhibitions, public shows, lectures and other entertainment, cultural and educational events; Downloadable podcasts in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions, public music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature of music and film festivals; audio books in the field of the sale and exchange of tickets; Carrying cases, covers and sleeves for laptops and tablet computers, electronic books, CD and DVD players and MP3 players; Printers; Electronic and electrical apparatus, namely, ticket issuing, reading and recording machines; Vending machinesClass 009 for Computers; Electronic databases in the field of the sale and exchange of tickets recorded on computer media; Computer servers; Computer screen saver software; Digital media, namely, downloadable audio and video recordings in the field of the sale and exchange of tickets; downloadable electronic publications, namely, books, magazines, and newsletters in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions, public music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature of music and film festivals; Downloadable musical sound recordings; Downloadable images in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions, public music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature of music and film festivals; Downloadable MP3 files and MP3 recordings in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions, public music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature of music and film festivals; Downloadable podcasts in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions, public music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature of music and film festivals; audio books in the field of the sale and exchange of tickets; Carrying cases, covers and sleeves for laptops and tablet computers, electronic books, CD and DVD players and MP3 players; Printers; Electronic and electrical apparatus, namely, ticket issuing, reading and recording machines
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ United Kingdom application number 3040253 filed 01/31/2014]. 15 U.S.C.Section 1126(d), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Advertising; Business management; Business administration; Office administration services; Marketing research and studies; Auctioneering; Online advertising services for others; Direct mail advertising services; Dissemination of advertising matter; Administrative processing of purchase orders; Marketing and promotion services; Accounting services; Promotion of venues, musical performers, sporting events, musical concerts and entertainment events of others; Business advice and information; Business consulting
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed:
Tracked Text Description: Advertising; Auctioneering; Business management; Administrative processing of purchase orders; Business administration; Promotion of venues, musical performers, sporting events, musical concerts and entertainment events of others; Office administration services; Providing an on-line searchable database in the field of purchasing tickets to entertainment events for others; Marketing research and studies; Online advertising services for others; Direct mail advertising services; Dissemination of advertising matter; Marketing and promotion services; Accounting services; Business advice and information; Business consultingClass 035 for Auctioneering; Administrative processing of purchase orders; Promotion of venues, musical performers, sporting events, musical concerts and entertainment events of others; Providing an on-line searchable database in the field of purchasing tickets to entertainment events for others
Deleted Filing Basis: 1(b)
Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Musical and event booking agency services; Ticket agency services for entertainment events; Booking of seats for shows and sports events; Ticket reservation and booking services for entertainment, sporting and cultural events; On-line admission ticket agency services for entertainment, educational, sporting and cultural events; Providing an Internet website portal featuring links to musical artist websites and music performance ticket information; Providing on-line publications in the nature of magazines, books and newsletters in the field of entertainment, sports, music, theatre, art events, television shows, motion pictures, art exhibitions, public shows, lectures and other entertainment, cultural and educational events; Publishing of electronic publications
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed:
Tracked Text Description: Musical and event booking agency services; Musical event and entertainment event booking agencies; Ticket agency services for entertainment events; Booking of seats for shows and sports events; Ticket reservation and booking services for entertainment, sporting and cultural events; On-line admission ticket agency services for entertainment, educational, sporting and cultural events; Providing an Internet website portal featuring links to musical artist websites and music performance ticket information; Providing on-line publications in the nature of magazines, books and newsletters in the field of entertainment, sports, music, theatre, art events, television shows, motion pictures, art exhibitions, public shows, lectures and other entertainment, cultural and educational events; Providing on-line publications in the nature of magazines, books and newsletters in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions, public music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature of music and film festivals; Publishing of electronic publications; Non-downloadable electronic publications, namely, books, magazines, and newsletters in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions, public music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature of music and film festivalsClass 041 for Musical event and entertainment event booking agencies; Ticket agency services for entertainment events; Booking of seats for shows and sports events; Ticket reservation and booking services for entertainment, sporting and cultural events; On-line admission ticket agency services for entertainment, educational, sporting and cultural events; Providing an Internet website portal featuring links to musical artist websites and music performance ticket information; Providing on-line publications in the nature of magazines, books and newsletters in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions, public music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature of music and film festivals; Publishing of electronic publications; Non-downloadable electronic publications, namely, books, magazines, and newsletters in the field of entertainment music performances, sports, music, theatre shows, art events, television shows, motion pictures, art exhibitions, public music concert shows, popular culture lectures, and entertainment, cultural and educational events in the nature of music and film festivals
Deleted Filing Basis: 1(b)
Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the stylized word DICE in a diamond border.

Significance of wording, letter(s), or numeral(s)
DICE 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
Applicant's goods and services do not feature dice or a small cube that has six dots on each side.


SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or amendment to allege use (AAU) unsigned, all statements in the application or AAU and this submission based on the signatory's own knowledge are true, and all statements in the application or AAU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(a) or AAU under 15 U.S.C. Section 1051(c), the signatory additionally believes that: the applicant is the owner of the trademark/service mark sought to be registered; the applicant or the applicant's related company or licensee is using the mark in commerce and has been using the mark in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU, and such use by the applicant's related company or licensee inures to the benefit of the applicant; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU; and to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(b), Section 1126(d), and/or Section 1126(e), the signatory additionally believes that: the applicant is entitled to use the mark in commerce; the applicant has a bona fide intention and has had a bona fide intention as of the application filing date to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the goods/services in the application; and to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive.

Signature: /Pat Jennings/      Date: 01/20/2015
Signatory's Name: Patrick J. Jennings
Signatory's Position: Attorney of Record, DC Bar Member
Signatory's Phone Number: 2026638000


Response Signature
Signature: /Pat Jennings/     Date: 01/20/2015
Signatory's Name: Patrick J. Jennings
Signatory's Position: Attorney of Record, DC Bar Member

Signatory's Phone Number: 2026638000

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: 86338355
Internet Transmission Date: Tue Jan 20 11:23:46 EST 2015
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201501201123461
01397-86338355-530c8993a9d32a54262ccf887
69c70e7fde3bdc9cc5cbfac66e2559e8c5e74f-N
/A-N/A-20150120101642050861