| 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 1822 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88202137 |
| LAW OFFICE ASSIGNED | LAW OFFICE 127 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88202137/mark.png |
| LITERAL ELEMENT | BELONG |
| PENDING SERIAL NUMBER(S) | |
| Serial number(s) 86703240 should not be used as a citation(s) under Section 2(d), in the event that said serial number(s) mature(s) into a registration(s). The applicant hereby requests removal of this application from suspension, based on the following arguments. If the examining attorney is not persuaded by these arguments, the applicant hereby requests that this application be returned to suspended status, awaiting ultimate disposition of the referenced serial number(s). | |
| ARGUMENT(S) | |
|
Applicant requests that the present application be removed from suspension and the proposed amendment to the goods in class 9 be entered. The present application was suspended in view of prior pending application No. 86703240 – which is still pending. The suspension was presumably based on the premise that the goods in the two application could potentially be considered related. Applicant submits that the respective goods are unrelated, especially in view of the present amendments to the goods in class 9. For instance, prior pending application No. 86703240 includes computer hardware and software and related business and computer services, all of which are explicitly limited to the field of employee recruitment. In contrast, Applicant’s goods are amended to clarify that they are in the field of computer and video games. USPTO policy is that the computer programs must be identified with specificity (TMEP §1402.03(d)). Correspondingly, two respective goods cannot be considered per se related merely because they each are broadly related to computers and computer software. Instead, it is necessary to consider the respective users and fields of the respective marks. As relevant here, the prior pending application is explicitly limited to the field of employee recruitment. More specifically it focuses on back-end computer hardware and software used internally by businesses in the field of employee recruitment. Employee recruitment goods and services are in the field of human resources. Correspondingly the relevant consumers are business professionals in a human resources role who use such hardware and software internally within their business operations for the specific purpose of recruiting employees. Significantly different and as clarified by the present amendments, Applicant’s goods are in the field of computer and video games. The corresponding users are people who play computer video games either online or individually. The fields of employee recruitment as compared to computer and video games are sufficiently different that there is no reasonable likelihood of confusion between Applicant’s mark and the prior pending application. Applicant submits that the mark is in condition for publication and allowance, and action towards such is respectfully requested. If there are any questions with regard to the application or this response, the Examining Attorney is invited to telephone the undersigned to expedite this application. |
|
| OWNER SECTION (current) | |
| NAME | Game Retail Limited |
| MAILING ADDRESS | Unity House, Telford Road, Basingstoke, |
| CITY | Hampshire |
| ZIP/POSTAL CODE | RG216YJ |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United Kingdom |
| OWNER SECTION (proposed) | |
| NAME | Game Retail Limited |
| MAILING ADDRESS | Unity House, Telford Road, Basingstoke, |
| CITY | Hampshire |
| ZIP/POSTAL CODE | RG216YJ |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United Kingdom |
| XXXX | |
| GOODS AND/OR SERVICES SECTION (009)(current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Games software; computer game software; video game software; electronic computer game and video game software; interactive computer game and video game software; virtual reality computer game and video game software; interactive electronic computer game and video game software; computer game and video game programs; electronic computer game and video game programs; interactive computer game and video game programs; virtual reality computer game and video game programs; downloadable computer and video game software and programs; downloadable electronic computer game and video game software and programs; downloadable interactive computer game and video game software and programs; downloadable virtual reality computer game and video game software and programs; interactive multimedia computer game and video game programs and software | |
| FILING BASIS | Section 1(b) |
| FILING BASIS | Section 44(d) |
| FOREIGN APPLICATION NUMBER | 3312251 |
| FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United Kingdom |
| FOREIGN FILING DATE | 05/21/2018 |
| GOODS AND/OR SERVICES SECTION (009)(proposed) | |
| INTERNATIONAL CLASS | 009 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Computer game software; video game software; interactive computer game and video game software; virtual reality computer game and video game software; electronic computer game and video game programs; interactive computer game and video game programs; downloadable computer and video game software and programs | |
| FILING BASIS | Section 1(b) |
| FILING BASIS | Section 44(d) |
| FOREIGN APPLICATION NUMBER | 3312251 |
| FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United Kingdom |
| FOREIGN FILING DATE | 05/21/2018 |
| INTENT TO PERFECT 44(d) |
System experiences issues when trying to connect to message retriever |
| FILING BASIS | Section 44(e) |
| FOREIGN REGISTRATION NUMBER | UK3312251 |
| FOREIGN REGISTRATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United Kingdom |
| FOREIGN REGISTRATION DATE |
08/17/2018 |
| FOREIGN EXPIRATION DATE | 08/17/2028 |
| GOODS AND/OR SERVICES SECTION (038)(no change) | |
| GOODS AND/OR SERVICES SECTION (041)(no change) | |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | Charles J. Meyer |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | cjmeyer@uspatent.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | docketdept@uspatent.com |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Charles J. Meyer |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | cjmeyer@uspatent.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | docketdept@uspatent.com; danielle@uspatent.com |
| DOCKET/REFERENCE NUMBER | 34520-2 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Charles J. Meyer/ |
| SIGNATORY'S NAME | Charles J. Meyer |
| SIGNATORY'S POSITION | Attorney of Record, Indiana Bar Member |
| SIGNATORY'S PHONE NUMBER | 317-634-3456 |
| DATE SIGNED | 03/05/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Mar 05 11:28:54 ET 2020 |
| TEAS STAMP | USPTO/RSI-XXX.XX.XXX.X-20 200305112854309213-882021 37-71027ac24f1a371edf1455 6f61ff7bbeb756aef8b01aadf 82c3fcfccd267463ee-N/A-N/ A-20200305111508994782 |
| 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 1822 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Applicant requests that the present application be removed from suspension and the proposed amendment to the goods in class 9 be entered. The present application was suspended in view of prior pending application No. 86703240 – which is still pending. The suspension was presumably based on the premise that the goods in the two application could potentially be considered related. Applicant submits that the respective goods are unrelated, especially in view of the present amendments to the goods in class 9.
For instance, prior pending application No. 86703240 includes computer hardware and software and related business and computer services, all of which are explicitly limited to the field of employee recruitment. In contrast, Applicant’s goods are amended to clarify that they are in the field of computer and video games.
USPTO policy is that the computer programs must be identified with specificity (TMEP §1402.03(d)). Correspondingly, two respective goods cannot be considered per se related merely because they each are broadly related to computers and computer software. Instead, it is necessary to consider the respective users and fields of the respective marks. As relevant here, the prior pending application is explicitly limited to the field of employee recruitment. More specifically it focuses on back-end computer hardware and software used internally by businesses in the field of employee recruitment. Employee recruitment goods and services are in the field of human resources. Correspondingly the relevant consumers are business professionals in a human resources role who use such hardware and software internally within their business operations for the specific purpose of recruiting employees.
Significantly different and as clarified by the present amendments, Applicant’s goods are in the field of computer and video games. The corresponding users are people who play computer video games either online or individually. The fields of employee recruitment as compared to computer and video games are sufficiently different that there is no reasonable likelihood of confusion between Applicant’s mark and the prior pending application.
Applicant submits that the mark is in condition for publication and allowance, and action towards such is respectfully requested. If there are any questions with regard to the application or this response, the Examining Attorney is invited to telephone the undersigned to expedite this application.