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. 88293167 PROPHECY(Standard Characters, see http://uspto.report/TM/88293167/mark.png) has been amended as follows:

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

The Examiner has cited an initial 2(d) refusal against Applicant?s application for PROPHECY in Class 41 for the following services: Entertainment services in the nature of an online interactive game provided by means of a global computer network; providing information online relating to computer games, online computer games, computer game entertainment and amusement activities, and multi-player online computer game cooperation and competitions; publishing of electronic publications. The cited registration is for the same term, PROPHECY in Class 9 for the following goods: Gaming devices, namely, gaming machines and computer software associated therewith, to enable the gaming machine to run Applicant is a video game company, providing interactive video games, that have been played by more than 70 million people. See attached print-out of Applicant?s website. Applicant has been in development for a new video game called PROPHECY that it expects to launch by the end of 2019. Applicant?s video games are marketed and sold directly to video game players, along with services related to the playing of video games, in particular the services listed in Applicant?s application in Class 41: providing information online relating to computer games, online computer games, computer game entertainment and amusement activities, and multi-player online computer game cooperation and competitions; publishing of electronic publications. These games, and the related information and publications, DO NOT have a wagering component and ARE NOT provided to licensed casinos. This would be illegal. Registrant, Aristocrat Technologies Australia Pty Ltd, is a casino game manufacturer. See attached printout of Registrant?s website. Registrant?s good is a slot machine (?gaming device?) that is sold or licensed to a licensed casino. See attached specimen filed by the Registrant showing the good as a slot machine. The slot machines, covered by the registration ARE NOT offered to the public, or any actual players of the slot machine. These are only sold to licensed casinos. Only licensed casinos can offer gaming/gambling services. In the likelihood of confusion analysis, two key considerations are as follows: 1) the similarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; and 2) the relatedness of the goods or services. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). There is no mechanical test for determining likelihood of confusion, and each case must be decided on its own facts. Id., 476 F.2d at 1361, 177 USPQ at 567. In addition to the foregoing factors, the similarity of trade channels and the buyers to whom sales are made may also be considered. Id., 476 F.2d at 1362-63, 177 USPQ at 568-69. Even where the marks are similar and the goods/services are related, a determination of no confusion may be appropriate if there are significant differences in the relevant trade channels and/or the classes of purchasers. See TMEP ?1207.01. In this case, the relevant trade channels for Applicant?s services, and Registrant?s goods are prevented from overlapping by casino gaming regulations. In short, it is illegal for Applicant to provide its video games for wagering purposes. Applicant submits that by necessity this factor must be the determining factor in a likelihood of confusion analysis. A multi-factor test is used by the Patent and Trademark Office to assess whether there exists a likelihood of confusion between marks. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) (determining likelihood of confusion by thirteen factors: similarity of the marks, similarity and nature of the goods or services, similarity of established trade channels, whether purchases are impulse or sophisticated, fame of the prior mark, amount and nature of similar marks on similar goods, actual confusion, length of time of concurrent use without evidence of actual confusion, variety of goods on which mark is used, market interface between applicant and owner of prior mark, extent that applicant has a right to exclude others from use of its mark, extent of potential confusion, and any other probative fact). Some of the factors may not be relevant in a particular case. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 U.S.P.Q.2d 1201, 1204 (Fed. Cir. 2003). Additionally, there is no reason why a single DuPont factor should not outweigh all the rest. Kellogg Co. v. Pack ?Em Enters., Inc., 951 F.2d 330, 333, 21 U.S.P.Q.2d 1142, 1145 (Fed. Cir. 1991). Applicant submits that the respective marks are not confusingly similar when Gaming devices, namely, gaming machines and computer software associated therewith, to enable the gaming machine to run considered in light of the following DuPont factors: THE GOODS AND SERVICES ARE DIFFERENT Applicant?s mark and Registrant?s marks are unlikely to be confused based on the differences between the parties? respective services and goods. Even when two marks are identical, they may coexist on the Principal Register, provided that the goods or services associated with the marks are sufficiently different to obviate confusion. See, e.g., Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992) (reversing the Board's finding of likelihood of confusion between opposer's registered mark EDS for computer programming services and Applicant's mark E.D.S. for power supplies and battery chargers); Triumph Machinery Company v. Kentmaster Manufacturing Company, Inc., 1 U.S.P.Q.2d 1826 (TTAB 1987) (finding no likelihood of confusion between HYDRO-CLIPPER for power operated cattle de- horning shears and HYDRO-CLIPPER and Design for power mower attachments). Here, there exist important differences in the parties? respective goods. Registrant?s registration is for ?Gaming devices, namely, gaming machines and computer software associated therewith, to enable the gaming machine to run in Class 9. (emphasis added) Applicant?s services are for ?Entertainment services in the nature of an online interactive game provided by means of a global computer network; providing information online relating to computer games, online computer games, computer game entertainment and amusement activities, and multi-player online computer game cooperation and competitions; publishing of electronic publications in Class 41. (emphasis added) The term ?gaming? refers to ?gambling? as seen by Aristocrat?s specimen. Registrant filed its application in 2002. The USPTO made a change to the use of the term ?gaming? for Class 41- On 10-09-2014, the 06-01-2001 entry [for ?gaming machines?] was modified by inserting ?for gambling? to make clear that ?gaming? in this context refers to gambling, and not recreational computer game playing. See IDM-TMNG Term ID 041-262, and attached print out of 041-262. In this case, when Applicant filed its application for video game services in 2019, it would have had to identify the games as being ?for gambling? if in fact the games were for gambling. According to Section 1207.01(a)(vi) of the TMEP, the ?Examining Attorney must provide evidence showing that the goods and services are related to support a finding of likelihood of confusion.? Registrant?s gambling devices were not shown to be related to an online recreational computer game. These are not interchangeable products, used for similar purposes. Moreover, the parties? respective goods are not likely to travel through the same channels of trade to the same class of purchasers. Applicant is a leader in recreational video games offered to video game players (often called ?gamers?). Registrant, on the other hand, provides gambling machines. Given the unique culture and business associated with gambling- casino purchasers of Registrant gambling devises, and Applicant?s video game players are not likely to conclude that Registrant?s gambling devises originate from the same source as Applicants recreational video games. In this instance, Applicant and Registrant provide different goods and services with distinct focuses and, therefore, there appears to be little, if any, overlap. CONCLUSION For all the foregoing reasons, Applicant submits that its proposed mark is distinguishable from the cited registered marks and that confusion is unlikely and, thus requests that the refusal to register based on Section 2d of the Trademark Act be withdrawn.

EVIDENCE
Evidence in the nature of Print out of Registrant's website; Print out of Applicant's website; Registrant's Tm specimen filed with the USPTO; Print out of IDM-TMNG Term ID 041-262 has been attached.
Original PDF file:
evi_649558195-20190923180229433383_._ARISTOCRAT_CLASS_III___Aristocrat.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_649558195-20190923180229433383_._Hi-Rez_Studios.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_649558195-20190923180229433383_._Aristocrat-_PROPHECY_slot_machine.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_649558195-20190923180229433383_._IDM-TMNG_041-262.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment services in the nature of an online interactive game provided by means of a global computer network; providing information online relating to computer games, online computer games, computer game entertainment and amusement activities, and multi-player online computer game cooperation and competitions; publishing of electronic publications
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.

Proposed:
Tracked Text Description: Entertainment services in the nature of an online interactive game provided by means of a global computer network; Entertainment services, namely providing temporary use of an online non-downloadable interactive game provided by means of a global computer network; providing information online relating to computer games, online computer games, computer game entertainment and amusement activities, and multi-player online computer game cooperation and competitions; publishing of electronic publicationsClass 041 for Entertainment services, namely providing temporary use of an online non-downloadable interactive game provided by means of a global computer network; providing information online relating to computer games, online computer games, computer game entertainment and amusement activities, and multi-player online computer game cooperation and competitions; publishing of electronic publications
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.

The applicant's current attorney information: Lauri S. Thompson. Lauri S. Thompson of GREENBERG TRAURIG, LLP, is located at

      SUITE 600
      10845 GRIFFITH PEAK DRIVE
      LAS VEGAS, Nevada 89135
      US
The docket/reference number is 086185027100.

The phone number is 702-792-3773.

The fax number is 7027929002.

The email address is lvpto@gtlaw.com

The applicants proposed attorney information: Lauri S. Thompson. Lauri S. Thompson of GREENBERG TRAURIG, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 600
      10845 GRIFFITH PEAK DRIVE
      LAS VEGAS, Nevada 89135
      United States
The docket/reference number is 086185027100.

The phone number is 702-792-3773.

The fax number is 7027929002.

The email address is lvpto@gtlaw.com

Lauri S. Thompson 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: LAURI S. THOMPSON. LAURI S. THOMPSON of GREENBERG TRAURIG, LLP, is located at

      SUITE 600
      10845 GRIFFITH PEAK DRIVE
      LAS VEGAS, Nevada 89135
      US
The docket/reference number is 086185027100.

The phone number is 702-792-3773.

The fax number is 7027929002.

The email address is lvpto@gtlaw.com

The applicants proposed correspondence information: Lauri S. Thompson. Lauri S. Thompson of GREENBERG TRAURIG, LLP, is located at

      8860 Redwood Street
      8860 Redwood Street
      Las Vegas, Nevada 89139
      United States
The docket/reference number is 086185027100.

The phone number is 7025951995.

The fax number is 7027929002.

The email address is thompsonl@gtlaw.com; thompsonl@gtlaw.com

SIGNATURE(S)
Response Signature
Signature: /Lauri S. Thompson/     Date: 09/23/2019
Signatory's Name: Lauri S Thompson
Signatory's Position: Attorney of Record, NV Bar No. 6846

Signatory's Phone Number: 7029386886

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:    LAURI S. THOMPSON
   GREENBERG TRAURIG, LLP
   SUITE 600
   10845 GRIFFITH PEAK DRIVE
   LAS VEGAS, Nevada 89135
Mailing Address:    Lauri S. Thompson
   GREENBERG TRAURIG, LLP
   8860 Redwood Street
   8860 Redwood Street
   Las Vegas, Nevada 89139
        
Serial Number: 88293167
Internet Transmission Date: Mon Sep 23 18:13:23 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20190923181323849
055-88293167-6101bd0db5fc37654146b9da6b4
5f9875e2e372436e15a6467dc9d79469d1a16-N/
A-N/A-20190923180229433383