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. 88057417 VOODOO(Standard Characters, see http://uspto.report/TM/88057417/mark.png) has been amended as follows:

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

Applicant respectfully requests that the 2(d) refusal for this mark be lifted. Applicant has amended the goods and services to avoid the cited confusion in the Office Action dated November 26, 2018, and on this basis contends that a likelihood of confusion between the cited marks and Applicant's mark is no longer present.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable and non-downloadable software for mobile phones, tablets, headwear and other portable electronic devices providing augmented reality and virtual reality applications for recreational, health, leisure, business, marketing, education or entertainment purposes
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: Downloadable and non-downloadable software for mobile phones, tablets, headwear and other portable electronic devices providing augmented reality and virtual reality applications for recreational, health, leisure, business, marketing, education or entertainment purposes; Downloadable software for mobile phones, tablets, virtual reality headsets and virtual reality glasses allowing users to interact with other users, watch videos and play games through augmented reality and virtual reality for recreational, health, leisure, business, marketing, education and entertainment purposesClass 009 for Downloadable software for mobile phones, tablets, virtual reality headsets and virtual reality glasses allowing users to interact with other users, watch videos and play games through augmented reality and virtual reality for recreational, health, leisure, business, marketing, education and entertainment purposes
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 028 for Gaming equipment, namely, playing cards, gaming tables and gaming cloths
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: Gaming equipment, namely, playing cards, gaming tables and gaming cloths; Gaming equipment, namely, gaming tables and gaming clothsClass 028 for Gaming equipment, namely, gaming tables and gaming cloths
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 Providing online augmented reality games; Augmented reality video production
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: Providing online augmented reality games; Augmented reality video production; photography, audio recording production, video productionClass 041 for Providing online augmented reality games; Augmented reality video production; photography, audio recording production, video production
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 042 for Software as a service (SAAS) services using augmented reality and virtual reality; Providing a website featuring non-downloadable augmented reality and virtual reality software for use on desktop computers, mobile phones, tablets, headwear and other portable electronic devices for recreational, health, business, leisure, marketing, education, or entertainment purposes; software development, illustration, 3D modeling, animation, metrology, photography, audio production, video production and website design
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: Software as a service (SAAS) services using augmented reality and virtual reality; Providing a website featuring non-downloadable augmented reality and virtual reality software for use on desktop computers, mobile phones, tablets, headwear and other portable electronic devices for recreational, health, business, leisure, marketing, education, or entertainment purposes; software development, illustration, 3D modeling, animation, metrology, photography, audio production, video production and website design; software development, illustration, 3D modeling, animation, metrology, photography, audio production, video production and website design¶
¶
Software as a service (SAAS) services featuring software using augmented reality and virtual reality for allowing users to interact with other users, watch videos and play games; Providing a website featuring non-downloadable augmented reality and virtual reality software for allowing users to interact with other users, watch videos and play games for use on desktop computers, mobile phones, tablets, virtual reality headsets and virtual reality glasses for recreational, health, business, leisure, marketing, education, and entertainment purposes; software development, graphic illustration services for others, computer graphics design services in the nature of creating of 3D computer models and animations, metrology; Providing online non-downloadable software for mobile phones, tablets, virtual reality headsets and virtual reality glassesallowing users to interact with other users, watch videos and play games through augmented reality and virtual reality for recreational, health, leisure, business, marketing, education and entertainment purposesClass 042 for Software as a service (SAAS) services using augmented reality and virtual reality; Providing a website featuring non-downloadable augmented reality and virtual reality software for use on desktop computers, mobile phones, tablets, headwear and other portable electronic devices for recreational, health, business, leisure, marketing, education, or entertainment purposes; software development, illustration, 3D modeling, animation, metrology, photography, audio production, video production and website design Software as a service (SAAS) services featuring software using augmented reality and virtual reality for allowing users to interact with other users, watch videos and play games; Providing a website featuring non-downloadable augmented reality and virtual reality software for allowing users to interact with other users, watch videos and play games for use on desktop computers, mobile phones, tablets, virtual reality headsets and virtual reality glasses for recreational, health, business, leisure, marketing, education, and entertainment purposes; software development, graphic illustration services for others, computer graphics design services in the nature of creating of 3D computer models and animations, metrology; Providing online non-downloadable software for mobile phones, tablets, virtual reality headsets and virtual reality glassesallowing users to interact with other users, watch videos and play games through augmented reality and virtual reality for recreational, health, leisure, business, marketing, education and entertainment purposes
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: /Ashley N. Barendse/     Date: 03/01/2019
Signatory's Name: Ashley N. Barendse
Signatory's Position: Associate Attorney, Dunlap Bennett & Ludwig PLLC, Virginia Bar Member

Signatory's Phone Number: 8557056414

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: 88057417
Internet Transmission Date: Fri Mar 01 12:55:22 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019030112552271
6132-88057417-620a777fea57f27eeb847e2d2b
09555f7f8bd43118d1fa35a1ae0e2d01821d15fb
8-N/A-N/A-20190301124743275744