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. 88234205 MONSTER ROCK(Standard Characters, see http://uspto.report/TM/88234205/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 Computer game software for gambling machines; computer game software for gaming machines, namely, slot machines and video lottery terminals; games that accept virtual or monetary wagers sold as a feature of game software; downloadable computer software and firmware for playing games of chance on any computerized platform, including dedicated gaming consoles, video based slot machines, reel based slot machines, video lottery terminals, hand held devices, mobile and wireless communication devices, and internet enabled devices
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[ Australia application number 1966422 filed 11/01/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Computer game software for gambling machines; Downloadable computer game software for gambling machines; computer game software for gaming machines, namely, slot machines and video lottery terminals; downloadable computer game software for gaming machines, namely, slot machines and video lottery terminals; games that accept virtual or monetary wagers sold as a feature of game software; downloadable computer software and firmware for playing games of chance on any computerized platform, including dedicated gaming consoles, video based slot machines, reel based slot machines, video lottery terminals, hand held devices, mobile and wireless communication devices, and internet enabled devicesClass 009 for Downloadable computer game software for gambling machines; downloadable computer game software for gaming machines, namely, slot machines and video lottery terminals; games that accept virtual or monetary wagers sold as a feature of game software; downloadable computer software and firmware for playing games of chance on any computerized platform, including dedicated gaming consoles, video based slot machines, reel based slot machines, video lottery terminals, hand held devices, mobile and wireless communication devices, and internet enabled devices
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 [ Australia application number 1966422 filed 11/01/2018]. 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 Jeanine M. Mitchell. Other appointed attorneys are Linda Marie Norcross; Marc Foodman. Jeanine M. Mitchell of Aristocrat Technologies, Inc., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      10220 Aristocrat Way
      Las Vegas, Nevada 89135
      United States
to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is MONROCKST609.

The phone number is 702-270-1521.

The fax number is 702-270-1299.

The email address is atus.uspto.mail@aristocrat.com

Jeanine M. Mitchell 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: Jeanine M. Mitchell. Jeanine M. Mitchell of Aristocrat Technologies, Inc., is located at

      10220 Aristocrat Way
      Las Vegas, Nevada 89135
      United States
The docket/reference number is MONROCKST609.

The phone number is 702-270-1521.

The fax number is 702-270-1299.

The email address is atus.uspto.mail@aristocrat.com; kindra.perrigo-sorrow@aristocrat.com

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
MONSTER, MONSTER ROCK, or ROCK appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.


Miscellaneous Statement
Applicant notes that the Australian application that serves as the 44(d) basis for this U.S. application, namely Australian Application No. 1966422, has not yet matured to registration. Having responded to the other objections raised by the Examining Attorney, Applicant hereby requests that the application be suspended pending submission of the Australian registration.


SIGNATURE(S)
Response Signature
Signature: /JEANINEMMITCHELL/     Date: 09/16/2019
Signatory's Name: Jeanine M. Mitchell
Signatory's Position: Trademark Counsel

Signatory's Phone Number: (702) 270-1521

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:    Jeanine M. Mitchell
   Aristocrat Technologies, Inc.
   10220 Aristocrat Way
   Las Vegas, Nevada 89135
        
Serial Number: 88234205
Internet Transmission Date: Mon Sep 16 16:33:17 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019091616331728
4223-88234205-610b2a4c5dfa8d0ff2160dc7c6
157dca5f8f7a4c9c81e1d1a5dba2d9c301eb3ded
4-N/A-N/A-20190916162517118781