Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87523477 ROGER(Standard Characters, see http://uspto.report/TM/87523477/mark.png) has been amended as follows:

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

The Examining Attorney has refused Applicant's mark pending a revised mark description and clarifications to the claimed Class 41 services, and also based on a likelihood of confusion with the prior registered mark ROGER & OUT (Reg. No. 4,348,646). Applicant has responded elsewhere to the mark description and identification issues in the TEAS response form. With respect to the likelihood of confusion refusal, Applicant submits that confusion is unlikely for at least two reasons. First, Applicant's mark does not share the same meaning as the cited mark because the word ROGER in the phrase ROGER & OUT has a distinct meaning in military contexts. The wikipedia article on military procedure words indicates that "ROGER" means "yes" in the context of a transmission. The word "out" connotes the termination of the transmission. (Exhibit A) This military meaning of ROGER & OUT is bolstered by the product sold under the cited mark, a game depicting a mercenary soldier. (Exhibit B). Second, the goods and services claimed under the marks at issue are distinct. Applicant's claimed services are in the nature of gambling; the cited mark's goods and services are for a fanciful video game unrelated to casino gambling (see Exhibit B). Consequently, the consumers of the respective goods and services are likely to be different and are unlikely to be confused.

EVIDENCE
Evidence in the nature of website screenshots has been attached.
Original PDF file:
evi_21623516118-20180411113711681324_._Exhibit_A_-_Procedure_Words.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
Original PDF file:
evi_21623516118-20180411113711681324_._Exhibit_B_-_Roger___Out_Game_Summary.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Gambling services; wagering services; entertainment services, namely, providing an online portal for, online gambling, gaming, casino gaming, games of chance, wagering, and temporary use of non-downloadable interactive games, electronic games, and game software; entertainment services, namely, providing an online portal for obtaining information from, maintaining a database for, and providing information to others online in the field of gambling, gaming, casino gaming, games of chance, wagering, and non-downloadable interactive games, electronic games, and game software
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.

Proposed:
Tracked Text Description: Gambling services; wagering services; entertainment services, namely, providing an online portal for, online gambling, gaming, casino gaming, games of chance, wagering, and temporary use of non-downloadable interactive games, electronic games, and game software; entertainment services, namely, providing an online portal for, online gambling, online casino gaming, casino gaming, online games of chance, wagering, and temporary use of online non-downloadable interactive game software, electronic game software, and game software; entertainment services, namely, providing an online portal for obtaining information from, maintaining a database for, and providing information to others online in the field of gambling, gaming, casino gaming, games of chance, wagering, and non-downloadable interactive games, electronic games, and game software; entertainment services, namely, providing an online internet website portal featuring information and a database featuring information for others in the field of gambling, online casino gaming, casino gaming, online games of chance, wagering, and entertainment in the nature of online non-downloadable interactive games, electronic games, and game softwareClass 041 for Gambling services; wagering services; entertainment services, namely, providing an online portal for, online gambling, online casino gaming, casino gaming, online games of chance, wagering, and temporary use of online non-downloadable interactive game software, electronic game software, and game software; entertainment services, namely, providing an online internet website portal featuring information and a database featuring information for others in the field of gambling, online casino gaming, casino gaming, online games of chance, wagering, and entertainment in the nature of online non-downloadable interactive games, electronic games, and game software
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.

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
ROGER appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.


SIGNATURE(S)
Response Signature
Signature: /vcl/     Date: 04/11/2018
Signatory's Name: Vincent C. Lombardozzi
Signatory's Position: Associate Attorney - DC Bar Member

Signatory's Phone Number: 202-467-8829

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 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 87523477
Internet Transmission Date: Wed Apr 11 12:24:07 EDT 2018
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201804111224075
00805-87523477-51044452486a5f654d989a227
534f7faf669de0f4be9fac8497fd19a283c176a-
N/A-N/A-20180411113711681324