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. 88209345 COSMIC(Standard Characters, see http://uspto.report/TM/88209345/mark.png) has been amended as follows:

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

The registration of the applied-for mark is currently refused under Section 2(d).  The Applicant hereby requests suspension of the application based on the pending status of the corresponding Canadian priority application.  The Applicant therefore preserves its right to respond to this refusal under Section 2(d) after the suspension is removed. 

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer games; video games; computer software for video games and for video games machines; computer programs for creating video and computer games; video discs, hard discs, audio tapes, video cassettes, compact discs, all containing computer games; CD-ROMs containing computer games; software for playing video, computer and on-line games; software for enabling video, computer and on-line games to be run on multiple platforms; downloadable software for developing, designing, modifying and customizing video, computer and on-line games; computer games for use on mobile phones; electronic publications (downloadable), namely, newsletters, books, periodicals, all in the field of computer games and entertainment provided online from databases for the Internet; parts and fittings for all the aforesaid goods; downloadable computer games; downloadable video 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[ Canada application number 1926509 filed 10/22/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Computer games; Computer games, namely, computer game software; video games; video games, namely, video game software; computer software for video games and for video games machines; computer programs for creating video and computer games; video discs, hard discs, audio tapes, video cassettes, compact discs, all containing computer games; video discs, computer hard discs, audio tapes, video cassettes, compact discs, all containing computer games; CD-ROMs containing computer games; software for playing video, computer and on-line games; software for enabling video, computer and on-line games to be run on multiple platforms; downloadable software for developing, designing, modifying and customizing video, computer and on-line games; computer games for use on mobile phones; computer game software for use on mobile phones; electronic publications (downloadable), namely, newsletters, books, periodicals, all in the field of computer games and entertainment provided online from databases for the Internet; downloadable electronic publications, namely, newsletters, books, and periodicals, all in the field of computer games and entertainment, downloadable from databases on the Internet; parts and fittings for all the aforesaid goods; downloadable computer game software; downloadable computer games; downloadable video game software; downloadable video gamesClass 009 for Computer games, namely, computer game software; video games, namely, video game software; computer software for video games and for video games machines; computer programs for creating video and computer games; video discs, computer hard discs, audio tapes, video cassettes, compact discs, all containing computer games; CD-ROMs containing computer games; software for playing video, computer and on-line games; software for enabling video, computer and on-line games to be run on multiple platforms; downloadable software for developing, designing, modifying and customizing video, computer and on-line games; computer game software for use on mobile phones; downloadable electronic publications, namely, newsletters, books, and periodicals, all in the field of computer games and entertainment, downloadable from databases on the Internet; downloadable computer game software; downloadable video game 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 [ Canada application number 1926509 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.

The applicant hereby appoints Brent P. Johnson. Brent P. Johnson of Berg Hill Greenleaf & Ruscitti, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1712 Pearl Street
      Boulder, Colorado 80302
      United States
to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is 80945.00030.

The email address is bpj@bhgrlaw.com

Brent P. Johnson submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: . , is located at

      
      ,

The applicants proposed correspondence information: Brent P. Johnson. Brent P. Johnson of Berg Hill Greenleaf & Ruscitti, is located at

      1712 Pearl Street
      Boulder, Colorado 80302
      United States
The docket/reference number is 80945.00030.

The email address is bpj@bhgrlaw.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Applicant hereby requests suspension of the application based on the pending status of the corresponding Canadian priority application. The Examiner's suggestions are adopted for the goods in Class 9


SIGNATURE(S)
Response Signature
Signature: /Brent P. Johnson/     Date: 09/02/2019
Signatory's Name: Brent P. Johnson
Signatory's Position: Attorney of Record

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    
   
   
   
   ,
Mailing Address:    Brent P. Johnson
   Berg Hill Greenleaf & Ruscitti
   1712 Pearl Street
   Boulder, Colorado 80302
        
Serial Number: 88209345
Internet Transmission Date: Mon Sep 02 12:34:26 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019090212342659
4471-88209345-610a6e9bb176a2d6d87801ee13
7ad3aa7acfde82a23459c7872f12662132dcae4f
-N/A-N/A-20190902121946336805