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)

---

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. 88168927 KRAFTON GAME UNION (Stylized and/or with Design, see http://uspto.report/TM/88168927/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Virtual reality game software; computer software for personal information management; downloadable computer game software via a globalcomputer network and wireless devices; computer game software downloadable from a globalcomputer network; computer programs for pre-recorded games; downloadable smart phone application software for mobile games; downloadable mobile game software; recorded game software for mobile phones; electronic circuits recording programs for amusement apparatus for use with liquid crystal screens; interactive multimedia computer game programs; software for processing images, graphics and text; software for compressing image and sound; computer programs for editing images, sound and video; computer software for controlling the operation of audio and video devices; downloadable game programs, provided from online ; interactive game programs; computer game software; computer firmware for playing games, on any computerized platform, including mobile devices, personal computers, computer servers, and gaming consoles; electronic media featuring computer game program; tablet terminal; mouse pads; computer mouse; headsets for use with computers; computer keyboards
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Korea, South application number 40-2018-0144 filed 10/22/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Virtual reality game software; downloadable virtual reality game software; computer software for personal information management; downloadable computer software for personal information management; downloadable computer game software via a globalcomputer network and wireless devices; downloadable computer game software via a global computer network and wireless devices; computer game software downloadable from a globalcomputer network; computer game software downloadable from a global computer network; computer programs for pre-recorded games; downloadable computer programs for pre-recording sports games; downloadable smart phone application software for mobile games; downloadable computer application software for mobile phones, namely, smart phone application software for mobile games; downloadable mobile game software; downloadable electronic game software for use on mobile phones; recorded game software for mobile phones; recorded computer game software for mobile phones; electronic circuits recording programs for amusement apparatus for use with liquid crystal screens; interactive multimedia computer game programs; downloadable interactive multimedia computer game programs; software for processing images, graphics and text; downloadable software for processing images, graphics and text; software for compressing image and sound; downloadable software for compressing image and sound; computer programs for editing images, sound and video; downloadable computer programs for editing images, sound and video; computer software for controlling the operation of audio and video devices; downloadable computer software for controlling the operation of audio and video devices; downloadable game programs, provided from online; downloadable electronic game programs, provided from online; interactive game programs; downloadable interactive game programs; computer game software; downloadable computer game software; computer firmware for playing games, on any computerized platform, including mobile devices, personal computers, computer servers, and gaming consoles; downloadable computer firmware for playing games, on any computerized platform, including mobile devices, personal computers, computer servers, and gaming consoles; electronic media featuring computer game program; Pre-recorded electronic media devices featuring computer game program, excluding gaming apparatus; tablet terminal; tablet terminal in the nature of computer terminals; mouse pads; computer mouse; headsets for use with computers; computer keyboardsClass 009 for downloadable virtual reality game software; downloadable computer software for personal information management; downloadable computer game software via a global computer network and wireless devices; computer game software downloadable from a global computer network; downloadable computer programs for pre-recording sports games; downloadable computer application software for mobile phones, namely, smart phone application software for mobile games; downloadable electronic game software for use on mobile phones; recorded computer game software for mobile phones; electronic circuits recording programs for amusement apparatus for use with liquid crystal screens; downloadable interactive multimedia computer game programs; downloadable software for processing images, graphics and text; downloadable software for compressing image and sound; downloadable computer programs for editing images, sound and video; downloadable computer software for controlling the operation of audio and video devices; downloadable electronic game programs, provided from online; downloadable interactive game programs; downloadable computer game software; downloadable computer firmware for playing games, on any computerized platform, including mobile devices, personal computers, computer servers, and gaming consoles; Pre-recorded electronic media devices featuring computer game program, excluding gaming apparatus; tablet terminal in the nature of computer terminals; mouse pads; computer mouse; headsets for use with computers; computer keyboards
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Korea, South application number 40-2018-0144 filed 10/22/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for providing of game competitions analysis information; provision of information relating to game services; gaming services; amusement arcade services; provision of information relating to game arcade; game services provided by means of downloadable mobile applications; provision of information relating to electronic games services; provision of gaming facilities; provision of game information; game services provided on-line from a mobile phone network; arranging and conducting of mobile game competitions; game services provided by means of downloadable mobile application; electronic games services through mobile game applications; online game services provided via a mobile applications; mobile game services; game services provided on-line from a computer network; provision of game contents via online; providing on-line computer games; on-line game service; electronic games services provided by means of the internet
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Korea, South application number 40-2018-0144 filed 10/22/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: providing of game competitions analysis information; providing information and analysis in the field of electronic game competitions; provision of information relating to game services; provision of information relating to computer games; gaming services; Entertainment services, namely, providing online video gaming services; amusement arcade services; provision of information relating to game arcade; provision of information relating to arcade game; game services provided by means of downloadable mobile applications; provision of information relating to electronic games services; provision of facilities for playing video games; provision of gaming facilities; provision of information relating to electronic games; provision of game information; Entertainment services, namely, providing an on-line electronic game from a mobile phone network; game services provided on-line from a mobile phone network; Entertainment services, namely, arranging and conducting of mobile game competitions; arranging and conducting of mobile game competitions; Entertainment services, namely, providing temporary use of non-downloadable electronic games through mobile game applications; game services provided by means of downloadable mobile application; Entertainment services, namely, providing online electronic game provided via a mobile applications; electronic games services through mobile game applications; Entertainment services, namely, providing online electronic games in mobile wireless form; online game services provided via a mobile applications; Entertainment services, namely, providing an on-line computer game; mobile game services; Providing information relating to electronic computer game contents via online; game services provided on-line from a computer network; providing on-line computer games; provision of game contents via online; Entertainment services, namely, providing temporary use of non-downloadable computer games; electronic games services provided by means of the internet; on-line game serviceClass 041 for providing information and analysis in the field of electronic game competitions; provision of information relating to computer games; Entertainment services, namely, providing online video gaming services; amusement arcade services; provision of information relating to arcade game; provision of information relating to electronic games services; provision of facilities for playing video games; provision of information relating to electronic games; Entertainment services, namely, providing an on-line electronic game from a mobile phone network; Entertainment services, namely, arranging and conducting of mobile game competitions; Entertainment services, namely, providing temporary use of non-downloadable electronic games through mobile game applications; Entertainment services, namely, providing online electronic game provided via a mobile applications; Entertainment services, namely, providing online electronic games in mobile wireless form; Entertainment services, namely, providing an on-line computer game; Providing information relating to electronic computer game contents via online; providing on-line computer games; Entertainment services, namely, providing temporary use of non-downloadable computer games; electronic games services provided by means of the internet
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Korea, South application number 40-2018-0144 filed 10/22/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for development of game software; programming of multimedia applications; managing web sites for others; web site design; web site maintenance; creating and maintaining web sites for others; hosting computer web sites; providing search engines for the internet; providing internet security programs; maintenance of web sites for electronic commerce; development of computer game software; maintenance of computer game software; computer game programming; computer software development; computer software design; computer software consultancy; design of computer software; installation of computer software; repair of computer software; updating of computer 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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Korea, South application number 40-2018-0144 filed 10/22/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: development of game software; programming of multimedia applications; managing web sites for others; web site design; web site maintenance; maintenance of web sites for others; creating and maintaining web sites for others; hosting computer web sites; providing search engines for the internet; providing internet security programs; Providing temporary use of a web-based software application for use in internet security; maintenance of web sites for electronic commerce; maintenance of web sites for others in the field of electronic commerce; development of computer game software; maintenance of computer game software; computer game programming; Computer programming of computer game; computer software development; computer software design; computer software consultancy; design of computer software; installation of computer software; repair of computer software; updating of computer softwareClass 042 for development of game software; programming of multimedia applications; managing web sites for others; web site design; maintenance of web sites for others; creating and maintaining web sites for others; hosting computer web sites; providing search engines for the internet; Providing temporary use of a web-based software application for use in internet security; maintenance of web sites for others in the field of electronic commerce; development of computer game software; maintenance of computer game software; Computer programming of computer game; computer software development; computer software design; computer software consultancy; design of computer software; installation of computer software; repair of computer software; updating of computer 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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Korea, South application number 40-2018-0144 filed 10/22/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "GAME" apart from the mark as shown.


Description of mark
The mark consists of a black line or bar over the stylized wording "KRAFTON"; below the wording "KRAFTON" is a pentagon shape that points down with the stylized wording "GAME UNION" inside the pentagon.

Miscellaneous Statement
Applicant wishes to inform the Examining Attorney that the foreign priority applications are still pending under examination.


SIGNATURE(S)
Response Signature
Signature: /srb/     Date: 07/01/2019
Signatory's Name: Stephen R. Barrese, Esq.
Signatory's Position: Attorney of Record, New York Bar Member

Signatory's Phone Number: 5162288484

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: 88168927
Internet Transmission Date: Mon Jul 01 11:13:40 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-201907011113404202
15-88168927-620cd87c7149a29b4dc21d61c48d
e953d74131a2fe5b5806c15a65f8f67bc145-N/A
-N/A-20190701110949542288