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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88314952 |
LAW OFFICE ASSIGNED |
LAW OFFICE 111 |
MARK SECTION |
MARK FILE NAME |
http://uspto.report/TM/88314952/mark.png |
LITERAL ELEMENT |
TITAN QUEST |
STANDARD CHARACTERS |
NO |
USPTO-GENERATED IMAGE |
NO |
GOODS AND/OR SERVICES SECTION (009)(current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
downloadable computer software; downloadable computer game programs; computer game software; electronic publications, downloadable;
computer peripheral devices; video game discs; programs for handheld electronic game apparatus; memory cards for video game machines |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
018019660 |
FOREIGN APPLICATION COUNTRY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
02/07/2019 |
GOODS AND/OR SERVICES SECTION (009)(proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
downloadable computer software; Downloadable computer game
software; downloadable computer game programs; computer game software; recorded computer game
software; electronic publications, downloadable; downloadable electronic publications namely, books, magazines, and
manuals featuring computer games recorded on computer media; computer peripheral devices; video game discs; programs for handheld electronic game apparatus; recorded computer game programs for handheld electronic game apparatus; memory cards for video game machines |
FINAL DESCRIPTION |
Downloadable computer game software; downloadable computer game programs; recorded computer game software; downloadable electronic
publications namely, books, magazines, and manuals featuring computer games recorded on computer media; computer peripheral devices; video game discs; recorded computer game programs for handheld
electronic game apparatus; memory cards for video game machines |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
018019660 |
FOREIGN APPLICATION COUNTRY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
02/07/2019 |
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. |
DELETED FILING BASIS |
1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
018019660 |
FOREIGN REGISTRATION
COUNTRY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
06/06/2019 |
FOREIGN REGISTRATION FILE NAME(S) |
ORIGINAL PDF FILE |
FRU0-38111352-135803703_._071US00_Registration_Certificate_TITAN_QUEST_018019660_EUIPO.PDF |
CONVERTED PDF FILE(S)
(4 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\883\149\88314952\xml4\ROA0002.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\883\149\88314952\xml4\ROA0003.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\883\149\88314952\xml4\ROA0004.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\883\149\88314952\xml4\ROA0005.JPG |
STANDARD CHARACTERS
OR EQUIVALENT |
NO |
GOODS AND/OR SERVICES SECTION (028)(current) |
INTERNATIONAL CLASS |
028 |
DESCRIPTION |
video game machines for use with televisions |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
018019660 |
FOREIGN APPLICATION COUNTRY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
02/07/2019 |
GOODS AND/OR SERVICES SECTION (028)(proposed) |
INTERNATIONAL CLASS |
028 |
DESCRIPTION |
video game machines for use with televisions |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
018019660 |
FOREIGN APPLICATION COUNTRY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
02/07/2019 |
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. |
DELETED FILING BASIS |
1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
018019660 |
FOREIGN REGISTRATION
COUNTRY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
06/06/2019 |
FOREIGN REGISTRATION FILE NAME(S) |
ORIGINAL PDF FILE |
FRU1-38111352-135803703_._071US00_Registration_Certificate_TITAN_QUEST_018019660_EUIPO.PDF |
CONVERTED PDF FILE(S)
(4 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\883\149\88314952\xml4\ROA0006.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\883\149\88314952\xml4\ROA0007.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\883\149\88314952\xml4\ROA0008.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\883\149\88314952\xml4\ROA0009.JPG |
STANDARD CHARACTERS
OR EQUIVALENT |
NO |
GOODS AND/OR SERVICES SECTION (041)(current) |
INTERNATIONAL CLASS |
041 |
DESCRIPTION |
teaching; training; organisation of competitions for education or entertainment purposes; providing online electronic publications, not
downloadable; publication of electronic books and journals on-line; writing and publishing of texts, other than publicity texts; video game entertainment services |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
018019660 |
FOREIGN APPLICATION COUNTRY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
02/07/2019 |
GOODS AND/OR SERVICES SECTION (041)(proposed) |
INTERNATIONAL CLASS |
041 |
TRACKED TEXT DESCRIPTION |
teaching; Teaching in the field of computer games;
training; training services in the field of computer games; organisation of competitions
for education or entertainment purposes; entertainment and educational services in the nature of competitions in the field of entertainment, education, and other
non-business and non-commercial fields; providing online electronic publications, not downloadable; providing
non-downloadable electronic publications in the nature of on-line news and information in the field of computer games; publication of electronic books and
journals on-line; publication of on-line electronic books and journals; writing and publishing of texts, other than
publicity texts; writing of articles for journals other than for advertising or publicity; video game entertainment
services; online electronic publishing services, namely, publication of text and graphic works of others featuring information on computer games;
entertainment services, namely, providing online video games |
FINAL DESCRIPTION |
Teaching in the field of computer games; training services in the field of computer games; entertainment and educational services in
the nature of competitions in the field of entertainment, education, and other non-business and non-commercial fields; providing non-downloadable electronic publications in the nature of on-line news
and information in the field of computer games; publication of on-line electronic books and journals; writing of articles for journals other than for advertising or publicity; online electronic
publishing services, namely, publication of text and graphic works of others featuring information on computer games; entertainment services, namely, providing online video games |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
018019660 |
FOREIGN APPLICATION COUNTRY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
02/07/2019 |
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. |
DELETED FILING BASIS |
1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
018019660 |
FOREIGN REGISTRATION
DATE |
06/06/2019 |
FOREIGN REGISTRATION FILE NAME(S) |
ORIGINAL PDF FILE |
FRU2-38111352-135803703_._071US00_Registration_Certificate_TITAN_QUEST_018019660_EUIPO.PDF |
CONVERTED PDF FILE(S)
(4 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\883\149\88314952\xml4\ROA0010.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\883\149\88314952\xml4\ROA0011.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\883\149\88314952\xml4\ROA0012.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\883\149\88314952\xml4\ROA0013.JPG |
STANDARD CHARACTERS
OR EQUIVALENT |
NO |
ATTORNEY SECTION (new) |
NAME |
Douglas R. Wolf, Esq. |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
Wolf Greenfield & Sacks, P.C. |
STREET |
600 Atlantic Avenue |
CITY |
Boston |
STATE |
Massachusetts |
POSTAL CODE |
02210 |
COUNTRY |
United States |
PHONE |
617-646-8000 |
FAX |
617-646-8646 |
EMAIL |
drwtrademarks@wolfgreenfield.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
N05472007100 |
OTHER APPOINTED ATTORNEY |
Michael A. Albert, Nicole Davis Amar, Eric L. Amundsen, Michael J. Attisha, C. Hunter Baker, Jason W. Balich, Melissa Beede, Cristin
Berkey, Brandon S. Blackwell, Joshua M. Brandt, David F. Cauble, Tani Chen, Thomas S. Chlebeck, Bryan S. Conley, Gregory F. Corbett, Elizabeth A. DiMarco, Heather J. DiPietrantonio, Stuart V. Duncan
Smith, Roque El-Hayek, Neil P. Ferraro, Emma L. Frank, Thomas A. Franklin, Emily J. Gardel, Edward R. Gates, David S. Gesner, Richard F. Giunta, Matthew H. Grady, Patricia L. Granahan, Michael A.
Greene, Eric P. Greenwald, James M. Hanifin, Jr., John S. Harmon, , Jason M. Honeyman, Gerald B. Hrycyszyn, Jeffrey D. Hsi, Elizabeth A. Hudson, Elisabeth H. Hunt, Robert E. Hunt, Daniel M. Huttle,
Robert A. Jensen, Marc S. Johannes, Oona M. Johnstone, Hunter D. Keeton, Jessamine M. Lee, Sardiaa S. Leney, Christina M. Licursi, Helen C. Lockhart, Chelsea Loughran, Ethan W. Marks, William R.
McClellan, Gabriel J. McCool, Marie A. McKiernan, Andrea D. Merin, Kevin Mosier, James H. Morris, Elizabeth S. Mulski, Michelle K. Nyein, Timothy J. Oyer, Zachary P. Piccolomini, Michael J. Pomianek,
Randy J. Pritzker, Michael N. Rader, Jonathan B. Roses, Daniel G. Rudoy, Edward J. Russavage, Eric J. Rutt, Robert N. Sahr, Anant K. Saraswat, Turhan F. Sarwar, Claire E. Schuster, Karan Singh,
Amanda Slade, Laura B. Sole, Nathan R. Speed, Charles T. Steenburg, Stephanie G. Stella, John L. Strand, Andrew J. Tibbetts, Maria A. Trevisan, Michael J. Twomey, John R. Van Amsterdam, Ryan M. Van
Olst, Janice A. Vatland, Jessica A. vonReyn, Robert H. Walat, Patrick R.H. Waller, Edmund J. Walsh, Jennifer J. Wang, Daniel T. Wehner, John L. Welch, Andrew W. Williams, Douglas R. Wolf, Daniel W.
Young, Lock See Yu-Jahnes, Wei Zhang, Chelsea E. Witte-Garcia, Adam Z. Zeiger |
CORRESPONDENCE SECTION (current) |
CORRESPONDENCE SECTION (proposed) |
NAME |
Douglas R. Wolf, Esq. |
FIRM NAME |
Wolf Greenfield & Sacks, P.C. |
STREET |
600 Atlantic Avenue |
CITY |
Boston |
STATE |
Massachusetts |
POSTAL CODE |
02210 |
COUNTRY |
United States |
PHONE |
617-646-8000 |
FAX |
617-646-8646 |
EMAIL |
drwtrademarks@wolfgreenfield.com; rmvtrademarks@wolfgreenfield.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
N05472007100 |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark
Rules of Practice. |
RESPONSE SIGNATURE |
/RMV/ |
SIGNATORY'S NAME |
Ryan M. Van Olst |
SIGNATORY'S POSITION |
Associate Attorney - Wolf Greenfield & Sacks, P.C. - Massachusetts Bar Member |
SIGNATORY'S PHONE NUMBER |
617-646-8000 |
DATE SIGNED |
11/06/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Wed Nov 06 09:30:33 EST 2019 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XX.X-201
91106093033014006-8831495
2-700349441aea03df3d0afa8
5207c81165fc13c69f5625b57
a1b5dba618510ad1-N/A-N/A-
20191105135803703354 |
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.
88314952 TITAN QUEST (Stylized and/or with Design, see http://uspto.report/TM/88314952/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 downloadable computer software; downloadable computer game programs; computer game software; electronic publications, downloadable; computer peripheral devices; video
game discs; programs for handheld electronic game apparatus; memory cards for video game machines
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[ European Union Trademark - EUTM application number 018019660 filed 02/07/2019]. 15 U.S.C.Section
1126(d), as amended.
Proposed:
Tracked Text Description: downloadable computer software;
Downloadable computer game software;
downloadable computer game programs;
computer game software;
recorded computer game software;
electronic publications, downloadable;
downloadable electronic publications namely, books, magazines, and manuals featuring computer games
recorded on computer media;
computer peripheral devices;
video game discs;
programs for handheld
electronic game apparatus;
recorded computer game programs for handheld electronic game apparatus;
memory cards for video game
machinesClass 009 for Downloadable computer game software; downloadable computer game programs; recorded computer game software; downloadable electronic publications namely, books, magazines,
and manuals featuring computer games recorded on computer media; computer peripheral devices; video game discs; recorded computer game programs for handheld electronic game apparatus; memory cards
for video game machines
Deleted Filing Basis: 1(b)
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 [ European Union Trademark - EUTM application number 018019660 filed
02/07/2019]. 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.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018019660
registered 06/06/2019 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-38111352-135803703_._071US00_Registration_Certificate_TITAN_QUEST_018019660_EUIPO.PDF
Converted PDF file(s) ( 4 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for video game machines for use with televisions
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[ European Union Trademark - EUTM application number 018019660 filed 02/07/2019]. 15 U.S.C.Section
1126(d), as amended.
Proposed: Class 028 for video game machines for use with televisions
Deleted Filing Basis: 1(b)
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 [ European Union Trademark - EUTM application number 018019660 filed
02/07/2019]. 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.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018019660
registered 06/06/2019 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-38111352-135803703_._071US00_Registration_Certificate_TITAN_QUEST_018019660_EUIPO.PDF
Converted PDF file(s) ( 4 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for teaching; training; organisation of competitions for education or entertainment purposes; providing online electronic publications, not downloadable; publication of
electronic books and journals on-line; writing and publishing of texts, other than publicity texts; video game entertainment services
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[ European Union Trademark - EUTM application number 018019660 filed 02/07/2019]. 15 U.S.C.Section
1126(d), as amended.
Proposed:
Tracked Text Description: teaching;
Teaching in the field of computer games;
training;
training services in the field of computer games;
organisation of competitions for education or
entertainment purposes;
entertainment and educational services in the nature of competitions in the field of entertainment, education, and other non-business and
non-commercial fields;
providing online electronic publications, not downloadable;
providing non-downloadable electronic
publications in the nature of on-line news and information in the field of computer games;
publication of electronic books and journals on-line;
publication of on-line electronic books and journals;
writing and publishing of texts, other than publicity texts;
writing of articles for journals other than for advertising or publicity;
video game entertainment services;
online electronic publishing services, namely, publication of text and graphic works of others featuring information on computer games;
entertainment services, namely, providing online video gamesClass 041 for Teaching in the field of computer games; training services in the field of computer games; entertainment and
educational services in the nature of competitions in the field of entertainment, education, and other non-business and non-commercial fields; providing non-downloadable electronic publications in
the nature of on-line news and information in the field of computer games; publication of on-line electronic books and journals; writing of articles for journals other than for advertising or
publicity; online electronic publishing services, namely, publication of text and graphic works of others featuring information on computer games; entertainment services, namely, providing online
video games
Deleted Filing Basis: 1(b)
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 [ European Union Trademark - EUTM application number 018019660 filed
02/07/2019]. 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.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018019660
registered 06/06/2019 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate.
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.
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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU2-38111352-135803703_._071US00_Registration_Certificate_TITAN_QUEST_018019660_EUIPO.PDF
Converted PDF file(s) ( 4 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
The applicant hereby appoints Douglas R. Wolf, Esq.. Other appointed attorneys are Michael A. Albert, Nicole Davis Amar, Eric L. Amundsen, Michael J. Attisha, C. Hunter Baker, Jason W. Balich,
Melissa Beede, Cristin Berkey, Brandon S. Blackwell, Joshua M. Brandt, David F. Cauble, Tani Chen, Thomas S. Chlebeck, Bryan S. Conley, Gregory F. Corbett, Elizabeth A. DiMarco, Heather J.
DiPietrantonio, Stuart V. Duncan Smith, Roque El-Hayek, Neil P. Ferraro, Emma L. Frank, Thomas A. Franklin, Emily J. Gardel, Edward R. Gates, David S. Gesner, Richard F. Giunta, Matthew H. Grady,
Patricia L. Granahan, Michael A. Greene, Eric P. Greenwald, James M. Hanifin, Jr., John S. Harmon, , Jason M. Honeyman, Gerald B. Hrycyszyn, Jeffrey D. Hsi, Elizabeth A. Hudson, Elisabeth H. Hunt,
Robert E. Hunt, Daniel M. Huttle, Robert A. Jensen, Marc S. Johannes, Oona M. Johnstone, Hunter D. Keeton, Jessamine M. Lee, Sardiaa S. Leney, Christina M. Licursi, Helen C. Lockhart, Chelsea
Loughran, Ethan W. Marks, William R. McClellan, Gabriel J. McCool, Marie A. McKiernan, Andrea D. Merin, Kevin Mosier, James H. Morris, Elizabeth S. Mulski, Michelle K. Nyein, Timothy J. Oyer, Zachary
P. Piccolomini, Michael J. Pomianek, Randy J. Pritzker, Michael N. Rader, Jonathan B. Roses, Daniel G. Rudoy, Edward J. Russavage, Eric J. Rutt, Robert N. Sahr, Anant K. Saraswat, Turhan F. Sarwar,
Claire E. Schuster, Karan Singh, Amanda Slade, Laura B. Sole, Nathan R. Speed, Charles T. Steenburg, Stephanie G. Stella, John L. Strand, Andrew J. Tibbetts, Maria A. Trevisan, Michael J. Twomey,
John R. Van Amsterdam, Ryan M. Van Olst, Janice A. Vatland, Jessica A. vonReyn, Robert H. Walat, Patrick R.H. Waller, Edmund J. Walsh, Jennifer J. Wang, Daniel T. Wehner, John L. Welch, Andrew W.
Williams, Douglas R. Wolf, Daniel W. Young, Lock See Yu-Jahnes, Wei Zhang, Chelsea E. Witte-Garcia, Adam Z. Zeiger. Douglas R. Wolf, Esq. of Wolf Greenfield & Sacks, P.C., is a member of the
XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at
600 Atlantic Avenue
Boston, Massachusetts 02210
United States
to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is N05472007100.
The phone number is 617-646-8000.
The fax number is 617-646-8646.
The email address is drwtrademarks@wolfgreenfield.com
Douglas R. Wolf, Esq. 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: Douglas R. Wolf, Esq.. Douglas R. Wolf, Esq. of Wolf Greenfield & Sacks, P.C., is located at
600 Atlantic Avenue
Boston, Massachusetts 02210
United States
The docket/reference number is N05472007100.
The phone number is 617-646-8000.
The fax number is 617-646-8646.
The email address is drwtrademarks@wolfgreenfield.com; rmvtrademarks@wolfgreenfield.com
SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the
Trademark Rules of Practice.
Response Signature
Signature: /RMV/ Date: 11/06/2019
Signatory's Name: Ryan M. Van Olst
Signatory's Position: Associate Attorney - Wolf Greenfield & Sacks, P.C. - Massachusetts Bar Member
Signatory's Phone Number: 617-646-8000
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: Douglas R. Wolf, Esq.
Wolf Greenfield & Sacks, P.C.
600 Atlantic Avenue
Boston, Massachusetts 02210
Serial Number: 88314952
Internet Transmission Date: Wed Nov 06 09:30:33 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-201911060930330140
06-88314952-700349441aea03df3d0afa85207c
81165fc13c69f5625b57a1b5dba618510ad1-N/A
-N/A-20191105135803703354