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. 88327797 UNIBET (Stylized and/or with Design, see http://uspto.report/TM/88327797/mark.png) has been amended as follows:

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

The Examining attorney has refused registration under Section 2(d) of the Trademark Act in light of U.S. Registration Nos. 4260036 and 4260037, owned of record by Global IP and Support Services LP (“Global IP”).  Global IP and applicant Kindred IP Limited are closely related companies that are headquartered at the same address in Tortola, British Virgin Islands and have the same business office in Belgium.  The companies also share the same directors.

In December 2018 Global IP assigned essentially all of its trademarks (primarily EUTM registrations) to applicant.  The U.S. registrations cited by the Examining Attorney herein, Nos. 4260036 and 4260037 for the mark UNIBET & Design, were not included in the assignment  because applicant had no intention of maintaining those registrations by filing the required Section 8 declarations in connection therewith.

In fact, the final deadline for filing declarations of use under Section 8 of the Trademark Act with respect to each of the cited registrations was June 18, 2019.  The grace period ended on that date with no declaration being filed in either case.  Accordingly, each registration will be cancelled in due course.

It is noted that applicant has now claimed ownership of U.S. Reg. No. 4848622 for the mark UNIBET & Design.  That registration was assigned from Global IP to applicant Kindred IP Limited, as reflected in the USPTO assignment records.

In light of the foregoing, it is respectfully requested that the Section 2(d) refusal of registration be withdrawn and the present application be approved for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Apparatus for recording, transmission or reproduction of sounds or images; pre-recorded magnetic data carriers, recording discs, compacts discs, DVDs and other digital recording media, namely, CD-roms relating to the fields of racing, wagers and betting, games of chance, poker and other card games and bingo; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software for the purpose of providing products and services in the fields of racing, wagers and betting, games of chance, poker and other card games; fire-extinguishing apparatus
Original Filing Basis:
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 018031964 filed 03/06/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Apparatus for recording, transmission or reproduction of sounds or images; pre-recorded magnetic data carriers, recording discs, compacts discs, DVDs and other digital recording media, namely, CD-roms relating to the fields of racing, wagers and betting, games of chance, poker and other card games and bingo; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software for the purpose of providing products and services in the fields of racing, wagers and betting, games of chance, poker and other card games; downloadable computer software for the purpose of providing products and services in the fields of racing, wagers and betting, games of chance, poker and other card games; fire-extinguishing apparatusClass 009 for Apparatus for recording, transmission or reproduction of sounds or images; pre-recorded magnetic data carriers, recording discs, compacts discs, DVDs and other digital recording media, namely, CD-roms relating to the fields of racing, wagers and betting, games of chance, poker and other card games and bingo; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; downloadable computer software for the purpose of providing products and services in the fields of racing, wagers and betting, games of chance, poker and other card games; fire-extinguishing apparatus
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 018031964 filed 03/06/2019]. 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.

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 4848622.


SIGNATURE(S)
Response Signature
Signature: /Martin W. Schiffmiller/     Date: 06/21/2019
Signatory's Name: Martin W. Schiffmiller
Signatory's Position: Attorney

Signatory's Phone Number: 212-697-3750

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88327797
Internet Transmission Date: Fri Jun 21 09:16:41 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019062109164182
0394-88327797-6201c6becc15a7531521fd42c3
5bd9d6345959cc9a6f718ac6efbc85667b6d1-N/
A-N/A-20190621091310976179