NOTE TO THE FILE
SERIAL NUMBER: 87098247
DATE: 10/24/2016
NAME: soehrlein
NOTE:
Searched: Discussed ID with:
Google Senior Atty
Lexis/Nexis Managing Atty
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked: Discussed Geo. Sig. with:
Geographic significance Senior Atty
Surname Managing Atty
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
X Changed TRADEUPS to: amend IDFrom: Kuykendall, Matthew [mailto:mkuykendall@wsgr.com]
Sent: Monday, October 24, 2016 12:12 PM
To: Oehrlein, Stefan <Stefan.Oehrlein@USPTO.GOV>
Subject: RE: U.S. Trademark App. Serial Nos. 87098255, 87098247 - ROBLOX - Docket Nos. 30663-TM1008, 30663-TM1009
Hi Stefan,
That’s great. Thanks very much for your help!
Best,
Matt
From: Oehrlein, Stefan [mailto:Stefan.Oehrlein@USPTO.GOV]
Sent: Monday, October 24, 2016 6:51 AM
To: Kuykendall, Matthew
Subject: RE: U.S. Trademark App. Serial Nos. 87098255, 87098247 - ROBLOX - Docket Nos. 30663-TM1008, 30663-TM1009
Hi Matt,
I will move forward with the examiner’s amendments for both applications. With respect to the EA for 87098255, I will add in “plush dolls” to the language I included below.
Thank you!
Stefan
___________________________________
Stefan M. Oehrlein
Trademark Examining Attorney
Law Office 115
United States Patent and Trademark Office
Madison East 6A64 | (571) 272-1308
From: Kuykendall, Matthew [mailto:mkuykendall@wsgr.com]
Sent: Friday, October 21, 2016 7:58 PM
To: Oehrlein, Stefan <Stefan.Oehrlein@USPTO.GOV>
Subject: RE: U.S. Trademark App. Serial Nos. 87098255, 87098247 - ROBLOX - Docket Nos. 30663-TM1008, 30663-TM1009
Dear Mr. Oehrlein,
Thank you for your email and for trying to resolve these ID issues informally.
Your proposed amendments to application serial number 87098247 for the mark ROBLOX (Stylized) are fine.
Your proposed amendments to applications serial number 87098255 for the mark ROBLOX (word mark) are fine with respect to Classes 9 and 42. Please note additional goods not listed in Class 28 for serial number 87098247, Class 28 for serial number 87098255 also include “plush dolls.” Accordingly, we would like to maintain that phrase.
Please let me know if you would be able to move ahead with an Examiner’s Amendment for both applications?
Best regards,
Matt
Matt Kuykendall
Wilson Sonsini Goodrich & Rosati
650 Page Mill Road
Palo Alto, CA 94304
650-565-3763 (ph)
650-493-6811 (fax)
From: Oehrlein, Stefan [mailto:Stefan.Oehrlein@USPTO.GOV]
Sent: Tuesday, October 18, 2016 1:18 PM
To: Kuykendall, Matthew
Cc: Trademarks; Ferguson, Nathan; Worsham, Alyssa
Subject: U.S. Trademark App. Serial Nos. 87098255, 87098247 - ROBLOX - Docket Nos. 30663-TM1008, 30663-TM1009
This email is intended for Matthew J. Kuykendall and/or any authorized party
United States Trademark Application Serial Nos. 87098255, 87098247 / ROBLOX / Attorney Docket Nos. 30663-TM1008, 30663-TM1009
Dear Mr. Kuykendall,
I am the assigned trademark examining attorney for the above-referenced applications. The application will be ready to proceed once applicant agrees to modify the identification of goods and services for improved clarity and definiteness. I have made suggested changes below, marked in bold.
Most of the changes are minor in order to fit better with USPTO ID requirements with the exception of the following: the language “toys” in Class 28 is indefinite but I have included several types of toys that this can be narrowed to in my suggested amendment below, these suggestions were based off of the applicant’s website. The language “virtual reality headsets for use in playing video games and using video game software, software for communicating and interacting with others, and virtual reality software” belongs in either Class 9 or 28, I have divided up this wording to include goods in both classes. The language “entertainment information in the nature of customized web pages featuring game player information, including information regarding a player's identity and the player's preference” is misclassified and belongs in Class 42, I have deleted it from my suggested amendment.
If the changes below are acceptable, I will issue an examiner's amendment accordingly:
IDENTIFICATION OF GOODS AND SERVICES
The identification of goods and services is amended to read as follows:
Class 9: interactive entertainment software, namely, computer and video game software; downloadable computer software, namely, computer and video game software; electronic downloadable publications in the nature of manuals and user guides in the field of computer software; data recorded electronically from the internet, namely, downloadable audio files and downloadable video recordings featuring computer and video game play; applications downloadable from a website, namely, downloadable computer and video game software; electronic game programs; software for downloading, transmitting, receiving, providing, publishing, extracting, encoding, decoding, reading, storing and organizing audiovisual, video-graphic and written data, namely, software for managing computer and video games for use in social networking; computer software for gathering, processing, monitoring, analyzing, managing and/or reporting information, namely, database management software, antivirus software; computer software for gathering, processing, monitoring, analyzing, managing and reporting information concerning usage and performance of software, computer software applications, computer and video games, websites, virtual worlds and audio visual content for use in the field of computer software design and computer game programming; computer software for gathering, processing, analyzing, managing and reporting information concerning online, internet and web site activity, namely, database management software, antivirus software; electronic notice boards;
Providing an online computer database in the field of downloadable computer software and downloadable computer game programs; computer game software for use on mobile telephones; fitted plastic covers known as skins for protecting mobile telephones, mobile telephone cases and mobile telephones covers; pre-paid gift and debit cards that are magnetically encoded; virtual reality headsets for use with computer software for communicating and interacting with others; virtual reality headsets for use with virtual reality software; parts and fittings for the aforesaid goods; computer software to enable uploading, downloading, accessing, posting, displaying, editing and blogging of electronic media and information via computer and communication networks; software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; computer software for editing, modifying, compiling, storing and sharing video
Class 28: toys, namely, toy vehicles, action figure toys, plastic character toys, rubber character toys; construction toys; stuffed toys; accessories for action figure toys; toy figures and accessories; toy cars; toy sporting equipment, namely, toy dart projectile shooters and toy darts for use therewith, toy ball projectile shooters and toy balls for use therewith; card games; board games; toy boxing playsets and accessories therefor; games and toys, namely, toy figures having radio frequency identification (RFID) chips and tags; action figures having radio frequency identification (RFID) chips and tags; collectible board game pieces; puzzles; toy armor, namely, shields; virtual reality headsets for use in playing video games and using video game software
Class 41: entertainment and education services, namely, providing online electronic, computer and video games provided by means of the internet; online video and computer game services provided via a global computer network; organizing of games in the nature of computer and video game competitions; providing non-downloadable games and educational entertainment services, namely, providing online computer games, providing temporary use of non-downloadable video games; education and entertainment services provided by computer networks, television, mobile telephone, cable and other electronic means, namely, providing online computer games; presentation, preparation of special effects, editing and production of cinematographic, televisual, digital and motion picture films, radio and television programs; Multimedia publishing of computer and video games and computer and video games software; multimedia publishing of entertainment and educational software; arranging, organizing and conducting conferences and seminars about computer software and video games for educational purposes; entertainment services in the form of a continuing program about computer and video games accessible via television, radio, cable, satellite and internet; production and presentation of television programs, radio shows, films, and videos about computer and video games; providing a website featuring online non-downloadable computer and video game software; online computer and video games; educational services relating to entertainment, namely, providing entertainment information about online non-downloadable computer and video games; Providing information about entertainment and education provided on-line from a computer database, accessible via the internet, communications satellite, microwave transmission, electronic, digital and analog audio and video media; magazine and newspaper publishing; organization, production and presentation of events for educational, cultural and entertainment purposes, namely, organizing and conducting computer game competitions and educational conventions; organization, production and presentation of competitions, contests, games, game shows, quizzes, fun days, exhibitions, shows, roadshows, staged events, live performances and participation events, namely, organizing events in the field of computer games for education purposes; internet based games, namely, providing online computer games and providing online video games; providing temporary use of non-downloadable software for editing, modifying, compiling, storing and sharing video; information and advisory services relating to any of the aforesaid services; advisory and consultancy services in connection with the foregoing
See TMEP §§1402.01, 1402.01(e).
Please let me know by phone or email if you agree to allow me to correct the above by an examiner's amendment or if you have any questions about the application.
Kind regards,
___________________________________
Stefan M. Oehrlein
Trademark Examining Attorney
Law Office 115
United States Patent and Trademark Office
Madison East 6A28 | (571) 272-1308
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