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. 88000082 GAMEWITH(Standard Characters, see http://uspto.report/TM/88000082/mark.png) has been amended as follows:

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

Applicant requests that the USPTO withdraw the likelihood of confusion refusals based on Reg. Nos. 5183347, 3704620, and 3280603 based on the amendments Applicant has made to its goods and services descriptions. There is no longer any overlap in the parties' goods because Applicant's goods and services no longer mention or cover any computer game references. Therefore, confusion among the marks is no longer likely.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Application software; downloadable game programs; downloadable image files; 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.

Proposed:
Tracked Text Description: Application software; Computer application software that allows users to post and browse reviews of software and computer applications of others; downloadable game programs; downloadable image files containing consumer reviews of software and computer applications of others; downloadable image files; electronic publications in the nature of electronic magazines in the field of software and computer applications; electronic publicationsClass 009 for Computer application software that allows users to post and browse reviews of software and computer applications of others; downloadable image files containing consumer reviews of software and computer applications of others; electronic publications in the nature of electronic magazines in the field of software and computer applications
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Internet advertising, image distribution advertising, and other advertising services; organizing, arranging, or conducting of sales promotion events for game products; conducting surveys about Internet games and information services relating to the survey results; information services relating to game software sales or sales ranking; marketing research or analysis; information services relating to product sales
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: Internet advertising, image distribution advertising, and other advertising services; Internet advertising services, distribution of advertising materials; organizing, arranging, or conducting of sales promotion events for game products; marketing research and analysis; conducting surveys about Internet games and information services relating to the survey results; commercial information services relating to product sales; information services relating to game software sales or sales ranking; marketing research or analysis; information services relating to product salesClass 035 for Internet advertising services, distribution of advertising materials; marketing research and analysis; commercial information services relating to product sales
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Commentary on games or information services relating to game strategies; game services and information services relating thereto; educational services relating to games and information services relating thereto; providing videos via communication networks; planning, operating, and conducting of seminars relating to games; entertainment information services; planning, operating, and conducting of seminars; providing electronic publications; production of radio and television programs; production of videos in the field of culture, entertainment or sports; directing of radio and television programs; planning, operating, or conducting of events excluding movies, shows, plays, musical performances, sports, horse races, bicycle races, boat races and auto races; introduction of game competitors conducted through telecommunication lines by portable games with liquid crystal displays and computer terminals
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: Commentary on games or information services relating to game strategies; Providing a website featuring user reviews of software applications; game services and information services relating thereto; production of videos in the field of culture, entertainment or sports; educational services relating to games and information services relating thereto; providing videos via communication networks; planning, operating, and conducting of seminars relating to games; entertainment information services; planning, operating, and conducting of seminars; providing electronic publications; production of radio and television programs; directing of radio and television programs; planning, operating, or conducting of events excluding movies, shows, plays, musical performances, sports, horse races, bicycle races, boat races and auto races; introduction of game competitors conducted through telecommunication lines by portable games with liquid crystal displays and computer terminalsClass 041 for Providing a website featuring user reviews of software applications; production of videos in the field of culture, entertainment or sports
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.

SIGNATURE(S)
Response Signature
Signature: /Pat Jennings/     Date: 02/25/2019
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 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: 88000082
Internet Transmission Date: Mon Feb 25 13:08:26 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201902251308269
28564-88000082-6206e7385ad78cf5b286ab236
8ca5e439e56ae54e5cfe858bc80e5d4dad3a34ef
9-N/A-N/A-20190225130105543655