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. 88342406 SQ42(Standard Characters, see http://uspto.report/TM/88342406/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 Video game software; computer games software; downloadable electronic publications in the nature of newsletters, journals, magazines and guidebooks in the field of combat, strategy and role playing games provided on-line from databases for the Internet; motion picture films featuring action, comedies, and dramas about a fictional universe; downloadable motion pictures and television shows featuring action, comedies, and dramas about a fictional universe; downloadable videos featuring action, comedies, and dramas about a fictional universe
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: Video game software; Downloadable video game software; computer games software;  downloadable computer games software; downloadable electronic publications in the nature of newsletters, journals, magazines and guidebooks in the field of combat, strategy and role playing games provided on-line from databases for the Internet; downloadable electronic publications in the nature of newsletters, journals, magazines and instructional user guides in the field of combat, strategy and role playing games provided on-line from databases for the Internet; motion picture films featuring action, comedies, and dramas about a fictional universe; downloadable motion pictures and television shows featuring action, comedies, and dramas about a fictional universe; downloadable videos featuring action, comedies, and dramas about a fictional universe; downloadable video recordings featuring action, comedies, and dramas about a fictional universeClass 009 for Downloadable video game software; downloadable computer games software; downloadable electronic publications in the nature of newsletters, journals, magazines and instructional user guides in the field of combat, strategy and role playing games provided on-line from databases for the Internet; motion picture films featuring action, comedies, and dramas about a fictional universe; downloadable motion pictures and television shows featuring action, comedies, and dramas about a fictional universe; downloadable video recordings featuring action, comedies, and dramas about a fictional universe
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Film and video production and distribution; production and distribution of motion pictures; production and distribution of television shows and movies
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: Film and video production and distribution; Film and video production; production and distribution of motion pictures;  film distribution;  video distribution in the field of science fiction;  production and distribution of motion pictures; production and distribution of television shows and moviesClass 041 for Film and video production; film distribution; video distribution in the field of science fiction; production and distribution of motion pictures; production and distribution of television shows and movies
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: John Paul Oleksiuk. John Paul Oleksiuk of COOLEY LLP, is located at

      1299 PENNSYLVANIA AVENUE, NW, SUITE 700
      WASHINGTON, District of Columbia 20004-2400
      US
The docket/reference number is 319440-20000.

The phone number is 310-883-6400.

The fax number is 202-842-7899.

The email address is trademarks@cooley.com

The applicants proposed attorney information: John Paul Oleksiuk. Other appointed attorneys are Salsabil Ahmed, Jane van Benten, Colleen Wellington-Caban, Susan Piascik Christoff, John W. Crittenden, Brian Focarino, Bobby A. Ghajar, Jeffrey Greene, Colette A. Ghazarian, Rebecca Givner-Forbes, Shannan Higgins, Ariana Gallisa Hiscott, Brendan J. Hughes, Judd D. Lauter, Lori A. Levine, Rose Mendenhall Kautz, Anne H. Peck, Marcus D. Peterson, Elisa Rosen, Dina Roumiantseva, Shane Rumbaugh and Karen K. Won. John Paul Oleksiuk of COOLEY LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1299 PENNSYLVANIA AVENUE, NW, SUITE 700
      WASHINGTON, District of Columbia 20004-2400
      United States
The docket/reference number is 319440-20000.

The phone number is 310-883-6400.

The fax number is 202-842-7899.

The email address is trademarks@cooley.com

John Paul Oleksiuk 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: JOHN PAUL OLEKSIUK. JOHN PAUL OLEKSIUK of COOLEY LLP, is located at

      1299 PENNSYLVANIA AVENUE, NW, SUITE 700
      WASHINGTON, District of Columbia 20004-2400
      US
The docket/reference number is 319440-20000.

The phone number is 310-883-6400.

The fax number is 202-842-7899.

The email address is trademarks@cooley.com

The applicants proposed correspondence information: John Paul Oleksiuk. John Paul Oleksiuk of COOLEY LLP, is located at

      1299 PENNSYLVANIA AVENUE, NW, SUITE 700
      WASHINGTON, District of Columbia 20004-2400
      United States
The docket/reference number is 319440-20000.

The phone number is 310-883-6400.

The fax number is 202-842-7899.

The email address is trademarks@cooley.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
A refusal is inappropriate because Applicant and the owner of the cited application, though separate legal entities, constitute a single source for purposes of TMEP 1201.07(b), so there is no likelihood of confusion. Applicant submits herewith a Declaration Under 37 C.F.R. 2.20 regarding a Unity of Control between Applicant and the owner of the cited application.

Original PDF file:
mis-249421206-20190823041959757416_._Cloud_Imperium_-_Unity_of_Control_Declaration.pdf
Converted PDF file(s) ( 1 page)
Miscellaneous File1

SIGNATURE(S)
Response Signature
Signature: /Colette Ghazarian/     Date: 08/26/2019
Signatory's Name: Colette A. Ghazarian
Signatory's Position: Attorney of Record, CA Bar Member

Signatory's Phone Number: (310) 883-6480

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:    JOHN PAUL OLEKSIUK
   COOLEY LLP
   
   1299 PENNSYLVANIA AVENUE, NW, SUITE 700
   WASHINGTON, District of Columbia 20004-2400
Mailing Address:    John Paul Oleksiuk
   COOLEY LLP
   1299 PENNSYLVANIA AVENUE, NW, SUITE 700
   WASHINGTON, District of Columbia 20004-2400
        
Serial Number: 88342406
Internet Transmission Date: Tue Aug 27 01:57:33 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20190827015733124
375-88342406-6106a144e8870baf64adeb5be8e
91f5d7a546c03f367cbf104fca7d99b4ee7761bb
-N/A-N/A-20190827014904860235