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. 88030811 WOLF(Standard Characters, see http://uspto.report/TM/88030811/mark.png) has been amended as follows:

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

RESPONSE TO OFFICE ACTION Applicant responds to the November 2, 2018 Office Action as follows: I. Likelihood of Confusion The Examiner has issued a refusal of registration of the present application based on alleged potential confusion with Registration No. 4,985,330 for the mark BAD WOLF (the "Cited Mark") which is registered for "games, namely, card games, board games and dice games" (the "Registered Goods") in Class 028. In light of the arguments contained herein, Applicant respectfully requests that the Examiner withdraw the refusal and pass this application to publication. The likelihood of confusion test is a cornerstone of registrability of a federal trademark under Section 2(d) of the Lanham Act. 5 J. McCarthy, McCarthy on Trademarks and Unfair Competition 23:1 (5th ed. 2018). Likelihood of confusion depends on whether the purchasing public would mistakenly assume that the applicant's goods or services originate with, are sponsored by, or are in some way associated with the goods sold under a cited registration or trademark. 5 McCarthy 23:78 at 388-389. It is well-settled that likelihood of confusion is synonymous with ?probable? confusion, as opposed to "possible" confusion. See, e.g., Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 1217, 2 U.S.P.Q.2d 1204, 1206 (9th Cir. 1987) ("Likelihood of confusion requires that confusion be probable, not simply a possibility.") The likelihood of confusion determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). The DuPont factors are generally applied on a case-by-case basis, the fundamental inquiry being "the cumulative effect of the differences in the essential characteristics of the goods and the differences in the marks." Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 U.S.P.Q. 24, 29 (C.C.P.A. 1976); see also Toro Co. v. GrassMasters Inc., 66 U.S.P.Q.2s 1032, 1035-36 (T.T.A.B. 2003). Applicant amends the description of the Goods and Services for the applied-for mark to further distinguish from the Registered Goods. More specifically, Applicant has amended the Goods and Services to specify: Card games, namely trivia card games; Game cards, namely game cards for playing trivia games. Applicant's game, sold in connection with the applied-for mark, is a collaborative game wherein teams compete to guess as many correct answers to trivia clues. Game cards are not collected, arranged, or discarded during game play. In contrast, the Cited Mark is used on a game that appears to be a hybrid of Rummy and Uno; players compete to "[b]e the first to discard your hand of seven cards, and score as high as you can with your runs." Bad Wolf Card Game, The Gathering Games, www.thegatheringgames.com/catalog/board_games/bad_wolf_card_game/1425313 (accessed May 1, 2019). Trivia appears to play no role in the Bad Wolf Card Game sold in connection with the Cited Mark. See id. Accordingly, consumer confusion as to the sources of the game sold in association with the Cited Mark and the game sold in association with the applied-for mark is not even a possibility. See Rodeo Collection, 812 F.2d at 1217, 2 U.S.P.Q.2d at 1206. Conclusion Based on the foregoing, Applicant respectfully requests that the Examiner withdraw her likelihood of confusion refusal and after accepting the disclaimer, pass the application on to publication. Respectfully submitted, /Randy R. Micheletti/ Incubate IP 366 Pembroke Ln., #8 Glen Ellyn, IL 60137 Tel: 312-600-5412 Email: randy@incubateip.com Attorney for Applicant Gray Matters Games, LLC Date: May 2, 2019

EVIDENCE
Evidence in the nature of Response to Office Action has been attached.
Original PDF file:
evi_715725199-20190501231822887302_._WOLF_ROA_due_02-MAY-2019.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Card games; Game cards
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: Card games; Card games, namely trivia card games; Game cards; Game cards, namely game cards for playing trivia gamesClass 028 for Card games, namely trivia card games; Game cards, namely game cards for playing trivia games
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)
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. § 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 allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have 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/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have 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/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Randy R. Micheletti/      Date: 05/02/2019
Signatory's Name: Randy R. Micheletti
Signatory's Position: Attorney of record, Illinois bar member
Signatory's Phone Number: 3126005412


Response Signature
Signature: /Randy R. Micheletti/     Date: 05/02/2019
Signatory's Name: Randy R. Micheletti
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 3126005412

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: 88030811
Internet Transmission Date: Thu May 02 10:00:29 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.X.XXX-2019050210002927
7778-88030811-62093abcf7d122e932bf86021c
82f61a5f6bb19383eb7904a1a8e9435ba683913-
N/A-N/A-20190502095823148766