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. 88177012 PLAYGROUND(Standard Characters, see http://uspto.report/TM/88177012/mark.png) has been amended as follows:

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

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 

Applicant:                   Microsoft Corporation   Application Serial No.:                   88177012   Mark:                          PLAYGROUND   Class(es):                     9, 41, 42   Office Action Date:    January 22, 2019   Examiner:                    Katherine S. Chang

RESPONSE TO OFFICE ACTION

 

This correspondence is filed in response (“Response”) to the Office Action (“Action”) and Application referenced above. In the Action, the Examiner refused registration on the ground that the Mark is likely to be confused with Registration Nos. 2888095, 3463757, 4130978, 4169315, 4865329, 5057879 and 5174086 (“Registrations”). In addition, the Examiner warned that the Application may be refused if U.S. Application Nos. 86705445 and 86705562 register due to a likelihood of confusion with the applied-for marks; and requested clarification of identified goods and services in the Application.

As detailed below, there is no likelihood of confusion between the Mark and the marks covered by the Registrations because consumers are able to discriminate between and among the marks in a crowded field of PLAYGROUND-related registrations on the Principal Register. Applicant also clarifies the identified goods and services in the Application.

I. NO LIKELIHOOD OF CONFUSION

1.         The Mark is entitled to join the crowded field of registered marks incorporating “PLAYGROUND” for games.

The number and nature of registered marks on the Principal Register that incorporate a common term in the relevant field is one of the DuPont likelihood of confusion factors to be given great weight when evidence pertaining thereto is of record. In re E. I. DuPont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The greater the number of similar marks in the market, the more consumers are able to distinguish between and among them. See TMEP 1207.01(d)(iii). Thus, with respect to this factor, the Examiner is required to assess the relative strength or weakness of the cited registrations in the relevant field in order to define the scope of protection afforded to them. See id.

The Principal Register contains several applications and registrations, including the Registrations, owned by different entities that incorporate PLAYGROUND for game-related goods or services in Class(es) 9, 41, and/or 42, including the following:

Ser. No.	Reg. No.	Mark	Owner
88217238		PLAYGROUND INSULTS	The British Broadcasting Corporation
88331253		PLAY PLAYGROUND	Immersive Activations Group LLC
88286827		THE JAZZ PLAYGROUND	Nedelchev Rosen; Bryden Benjamin
87051518	5114535	MAKE THE WORLD YOUR PLAYGROUND	Universal Entertainment Group, LLC
86896225		BULLSEYE'S PLAYGROUND	Target Brands,Inc.
86915880	5049600	M MOBLAB A PLAYGROUND FOR DECISIONS	MobLab, Inc.
86536879	4986348	NOOBS PLAYGROUND	Maciag, David
86739642	4959358	COPETV - YOUR ENTERTAINMENT PLAYGROUND	Change of Pace Entertainment, Inc.
85496908	4419140	PAVO PLAYGROUND FOR IMAGINATIVE CHILDREN	Jin Hyung Kim
79222835	5567771	URBAN TRIAL PLAYGROUND	TATE MULTIMEDIA S.A
79143483	4623062	ANGRY BIRDS PLAYGROUND	Rovio Entertainment Corporation
79204612	5288392	THE SOUND PLAYGROUND	JAMAHOOK AG
78182677	3005612	IP INTERACTIVE PLAYGROUNDS	Interactive Playgrounds Inc.
76360254	2706528	PEACEFUL PLAYGROUNDS	Bossenmeyer, Melinda

See the TSDR reports for the foregoing third party registrations and applications attached as Exhibit A.

We note that the marks covered by the Registrations and the third party applications and registrations listed above are relatively weak compared to each other. Further, due to the numerous registrations and applications for marks incorporating “playground” for games, consumers will surely be able to discriminate between the Mark and the marks covered by the Registrations. See In re Broadway Chicken Inc., 38 U.S.P.Q.2d 1559, 1565 (TTAB 1996) (holding that applicant’s evidence of widespread third-party use of marks containing the term BROADWAY for restaurant services and closely related goods and services is sufficient to show that confusion is not likely to result from the contemporaneous use of applicant’s and registrant’s marks incorporating “BROADWAY” in connection with restaurant services); see also Primrose Retirement Communities, LLC v. Edward Rose Senior Living, LLC, 122 U.S.P.Q.2d 1030 (TTAB 2016) (the Board concluded that customers have been exposed to so many different marks incorporating a common term in connection with relevant services that they are able to distinguish between such marks by focusing on “minute distinctions” between them). Accordingly, the Mark should be allowed to coexist with similar registrations on the Principal Register.

2.         Applicant and applicable registrants have dissimilar marks and services.

In addition to the foregoing arguments, the Mark is sufficiently distinguishable from the cited registered marks to avoid likelihood of confusion for the following reasons. First, the Mark – PLAYGROUND – is visually and aurally distinguishable from the marks covered by the Registrations. Visual differences are important in likelihood of confusion analysis because they alter the overall consumer impression associated with the marks in question. See, e.g., In re Electrolyte Labs, Inc., 16 U.S.P.Q.2d 1239, 1240 (Fed. Cir. 1990). In the Action, the Examiner concludes that the marks are similar because they share a common term. See Action at 3. To the contrary, the Examiner is required to compare such marks and the Mark in their entireties without improperly dissecting portions thereof. See In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985) (noting that “[t]he basic principle in determining confusion between marks is that the marks must be compared in their entireties and must be considered in connection with the particular goods and services for which they are used.”); TMEP § 1207.01(b). Here, compared to the Mark, the cited registered marks combine “PLAYGROUND” with other words like “ELECTRIC,” “EA,” “MATH,” “VIRTUAL,” “CITY,” “DEVIL,” and “POKER.” Compared in their entireties, it is evident that the Mark appears and/or is pronounced differently than the cited registered marks.

Second, certain registrants’ goods/services are limited as described in the applicable Registrations and thus do not overlap with Applicant’s goods and/or services. Specifically, the identified goods for MATH PLAYGROUND (Reg. No. 4130978) is limited to the field of “math education.” Further, identified goods for DEVIL’S PLAYGROUND (Reg. No. 5174086) and PLAYGROUND POKER (Reg. No. 5057879) are limited to gambling games. In contrast, Applicant’s goods and services are in the field of recreational video games with the exception of gambling games. Moreover, due to the nature of the goods and services provided by Applicant and applicable third party registrants in the crowded field, consumers will be able to discriminate between and among the marks with respect to recreational, educational, and gambling games. See In re Broadway Chicken Inc., 38 U.S.P.Q.2d at 1565.

Third, Applicant owns the PLAYGROUND GAMES & Design mark (Reg. No. 4865329) through acquisition. Applicant acquired the registrant, Playground Games Limited, in 2018 and the former is the parent company of the latter. See relevant article attached as Exhibit B. The registrant uses the registered PLAYGROUND GAMES & Design mark in connection with the goods and services recited in registration ‘329, and Applicant exercises control over the nature and quality of such goods and services. It follows that Applicant is the owner of the mark because use of the mark by the registrant inures to the benefit of Applicant. TMEP § 1201.03; 15 U.S.C. § 1055 (“[w]here a registered mark or a mark sought to be registered is or may be used legitimately by related companies, such use shall inure to the benefit of the registrant or applicant for registration, and such use shall not affect the validity of such mark or of its registration, provided such mark is not used in such manner as to deceive the public.”). Thus, the likelihood-of-confusion issue in the Action with respect to registration ‘329 is moot.

3.         Cancelled registration.

 On February 15, 2019, the USPTO cancelled Registration No. 3463757 for EA PLAYGROUND because registrant did not file an acceptable declaration under Section 8. See cancelled status attached as Exhibit C. Accordingly, the likelihood-of-confusion issue with respect to this registration is moot.

4.         Cited prior applications have been abandoned.

The Examiner asserted that there is a likelihood of confusion between the Mark and prior-filed application Serial Nos. 86705445 and 86705562 (“Prior Applications”), and indicated that the Application may be suspended pending disposition of the Prior Applications. According to the record, due to failure to file Statements of Use within the required period, the USPTO issued Notices of Abandonment for the Prior Applications. See relevant documents attached as Exhibit D. We also understand that the period to revive such applications have expired. See TMEP § 1714; 37 C.F.R. § 2.66.

Accordingly, the likelihood-of-confusion issues with respect to Prior Applications, to the extent they were raised in the Action, are moot because such applications have been abandoned and no longer qualify as prior-filed applications with respect to Applicant’s Application.

II. CLARIFICATION OF GOODS AND SERVICES

As provided in the TEAS form, Applicant clarifies the goods and services in the Application as follows:

Class 9

“Entertainment software, namely, electronic game software; interactive entertainment software, namely, electronic game software; application software, namely, electronic game software; sound recordings featuring electronic game sound tracks; video recordings featuring electronic game tournaments; pre-recorded motion picturefilms featuring electronic game tournaments; animated motion picturefilms featuring electronic game tournaments; motion picture films featuring electronic game tournaments”

Class 41

“Entertainment services, namely, providing online non-downloadable electronic games; provision of entertainment software, namely, online non-downloadable electronic game software; providing entertainment information on video games, computer games and related products, and on the video game and computer game industries; providing non-downloadable online videos in the field of video games by computer networks; providing educational and instructional services, namely, classes, seminars, expos, and conferences, relating to video games and providing information about video games; entertainment services, namely, providing online electronic games; providing non-downloadable online electronic publications, namely, online journals and interactive online logs featuring user generated or specified content in the field of video games; providing non-downloadable online music by computer networks; providing non-downloadable online games by computer network; providing temporary use of non-downloadable electronic games; information, advisory and consultancy services relating to all of the foregoing”

Class 42

“Computer software design; designing of entertainment software; developing of entertainment software; design, development and implementation of entertainment software for the purpose of testing of entertainment software; design, programming, and maintenance of software for consumer video games; updating of entertainment software; information, advisory and consultancy services relating to all of the foregoing”

III. CONCLUSION

Based on the foregoing, Applicant respectfully requests that the Examiner withdraw the refusal and allow the Application to proceed.

 

EVIDENCE
Evidence in the nature of attached Exhibits A-D has been attached.
Original PDF file:
evi_69821736-20190719172621642282_._Exhibit_A.pdf
Converted PDF file(s) ( 47 pages)
Evidence-1
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Original PDF file:
evi_69821736-20190719172621642282_._Exhibit_B.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
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Original PDF file:
evi_69821736-20190719172621642282_._Exhibit_C.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_69821736-20190719172621642282_._Exhibit_D.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 009 for Entertainment software, namely, electronic game software; interactive entertainment software, namely, electronic game software; application software, namely, electronic game software; sound recordings featuring electronic games; video recordings featuring electronic games; pre-recorded films featuring electronic games; animated films; motion picture films featuring electronic games
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[ Azerbaijan application number 201834210 filed 05/03/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Entertainment software, namely, electronic game software; interactive entertainment software, namely, electronic game software; application software, namely, electronic game software; sound recordings featuring electronic games; sound recordings featuring electronic game sound tracks; video recordings featuring electronic games; video recordings featuring electronic game tournaments; pre-recorded films featuring electronic games; pre-recorded motion picture films featuring electronic game tournaments; animated films; animated motion picture films featuring electronic game tournaments; motion picture films featuring electronic games; motion picture films featuring electronic game tournamentsClass 009 for Entertainment software, namely, electronic game software; interactive entertainment software, namely, electronic game software; application software, namely, electronic game software; sound recordings featuring electronic game sound tracks; video recordings featuring electronic game tournaments; pre-recorded motion picture films featuring electronic game tournaments; animated motion picture films featuring electronic game tournaments; motion picture films featuring electronic game tournaments
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 [ Azerbaijan application number 201834210 filed 05/03/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment services, namely, providing online non-downloadable electronic games; provision of entertainment software, namely, online non-downloadable electronic game software; providing entertainment information on video games, computer games and related products, and on the video game and computer game industries; providing non-downloadable online videos in the field of video games by computer networks, providing educational and instructional services relating to video games and providing information thereon; entertainment services, namely, providing online electronic games; providing non-downloadable online electronic publications, namely, online journals and interactive online logs featuring user generated or specified content in the field of video games; providing non-downloadable online music by computer networks, providing non-downloadable online games by computer network; providing temporary use of non-downloadable electronic games; information and advisory and consultancy services relating to all of the foregoing
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[ Azerbaijan application number 201834210 filed 05/03/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Entertainment services, namely, providing online non-downloadable electronic games; provision of entertainment software, namely, online non-downloadable electronic game software; providing entertainment information on video games, computer games and related products, and on the video game and computer game industries; providing non-downloadable online videos in the field of video games by computer networks, providing educational and instructional services relating to video games and providing information thereon; providing non-downloadable online videos in the field of video games by computer networks; providing educational and instructional services, namely, classes, seminars, expos, and conferences, relating to video games and providing information about video games; entertainment services, namely, providing online electronic games; providing non-downloadable online music by computer networks, providing non-downloadable online games by computer network; providing non-downloadable online electronic publications, namely, online journals and interactive online logs featuring user generated or specified content in the field of video games; providing non-downloadable online music by computer networks; information and advisory and consultancy services relating to all of the foregoing; providing non-downloadable online games by computer network; providing temporary use of non-downloadable electronic games; information, advisory and consultancy services relating to all of the foregoingClass 041 for Entertainment services, namely, providing online non-downloadable electronic games; provision of entertainment software, namely, online non-downloadable electronic game software; providing entertainment information on video games, computer games and related products, and on the video game and computer game industries; providing non-downloadable online videos in the field of video games by computer networks; providing educational and instructional services, namely, classes, seminars, expos, and conferences, relating to video games and providing information about video games; entertainment services, namely, providing online electronic games; providing non-downloadable online electronic publications, namely, online journals and interactive online logs featuring user generated or specified content in the field of video games; providing non-downloadable online music by computer networks; providing non-downloadable online games by computer network; providing temporary use of non-downloadable electronic games; information, advisory and consultancy services relating to all of the foregoing
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 [ Azerbaijan application number 201834210 filed 05/03/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Computer software design; Designing of entertainment software; developing of entertainment software; design, development and implementation of entertainment software for the purpose of testing of entertainment software; design, programming, and maintenance of software for consumer video games; updating of entertainment software; information and advisory and consultancy services relating to all of the foregoing
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[ Azerbaijan application number 201834210 filed 05/03/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 042 for Computer software design; Designing of entertainment software; developing of entertainment software; design, development and implementation of entertainment software for the purpose of testing of entertainment software; design, programming, and maintenance of software for consumer video games; updating of entertainment software; information and advisory and consultancy services relating to all of the foregoing
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 [ Azerbaijan application number 201834210 filed 05/03/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

SIGNATURE(S)
Response Signature
Signature: /MEM/     Date: 07/19/2019
Signatory's Name: Matthew E. Moersfelder
Signatory's Position: Attorney of record, Washington bar member

Signatory's Phone Number: 206-757-8014

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: 88177012
Internet Transmission Date: Fri Jul 19 19:32:25 EDT 2019
TEAS Stamp: USPTO/ROA-XX.X.XXX.XX-201907191932253792
32-88177012-6203e1de3d7b8440308dd993bc72
72f8104285b86f3d6565b8e3353d8045ed1be-N/
A-N/A-20190719190742634644