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. 88315128 TITAN QUEST(Standard Characters, see http://uspto.report/TM/88315128/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 018019145 filed 02/06/2019]. 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 018019145 filed 02/06/2019]. 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 018019145 registered 05/27/2019 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:
FRU0-38111352-124155848_._030US00_Registration_Certificate_TITAN_QUEST_018019145_EUIPO.PDF
Converted PDF file(s) ( 4 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

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 018019145 filed 02/06/2019]. 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 018019145 filed 02/06/2019]. 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 018019145 registered 05/27/2019 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:
FRU1-38111352-124155848_._030US00_Registration_Certificate_TITAN_QUEST_018019145_EUIPO.PDF
Converted PDF file(s) ( 4 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

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 018019145 filed 02/06/2019]. 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 018019145 filed 02/06/2019]. 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 018019145 registered 05/27/2019 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:
FRU2-38111352-124155848_._030US00_Registration_Certificate_TITAN_QUEST_018019145_EUIPO.PDF
Converted PDF file(s) ( 4 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

The applicant's current attorney information: Douglas R. Wolf. Douglas R. Wolf of WOLF, GREENFIELD & SACKS, P.C., is located at

      600 ATLANTIC AVENUE
      BOSTON, Massachusetts 02210
      US
The docket/reference number is N054720030US.

The phone number is 617-646-8000.

The fax number is 617-646-8646.

The email address is drwtrademarks@wolfgreenfield.com

The applicants proposed attorney information: Douglas R. Wolf. 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 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
The docket/reference number is N054720030US.

The phone number is 617-646-8000.

The fax number is 617-646-8646.

The email address is drwtrademarks@wolfgreenfield.com

Douglas R. Wolf 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: DOUGLAS R. WOLF. DOUGLAS R. WOLF of WOLF, GREENFIELD & SACKS, P.C., is located at

      600 ATLANTIC AVENUE
      BOSTON, Massachusetts 02210
      US
The docket/reference number is N054720030US.

The phone number is 617-646-8000.

The fax number is 617-646-8646.

The email address is drwtrademarks@wolfgreenfield.com

The applicants proposed correspondence information: Douglas R. Wolf. Douglas R. Wolf of WOLF, GREENFIELD & SACKS, P.C., is located at

      600 ATLANTIC AVENUE
      BOSTON, Massachusetts 02210
      United States
The docket/reference number is N054720030US.

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:    DOUGLAS R. WOLF
   WOLF, GREENFIELD & SACKS, P.C.
   
   600 ATLANTIC AVENUE
   BOSTON, Massachusetts 02210
Mailing Address:    Douglas R. Wolf
   WOLF, GREENFIELD & SACKS, P.C.
   600 ATLANTIC AVENUE
   BOSTON, Massachusetts 02210
        
Serial Number: 88315128
Internet Transmission Date: Wed Nov 06 09:26:48 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-201911060926483553
61-88315128-70099cfc78b4ecb66642aa22d339
52aed5863844d38b7fa411ca62909490ada070-N
/A-N/A-20191105124155848270