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. 88353873 THE WORLD IS THE GAME(Standard Characters, see http://uspto.report/TM/88353873/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 Software for computers, smart phones, and smart devices, namely, software for the transmission, distribution, recording, reproduction, display, organization, management, manipulation and review of messages, text, images, files, audio, video and audio-visual content and other data for the facilitation of communications between two or multiple users via computer networks, cell phone networks, communication networks and the global information network; computer, smart phone and smart device software for conducting voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; computer, smart phone, and smart device software for determining and communicating geographic locations; computer, smart phone, and smart device software for organizing and calendaring events; computer, smart phone and smart device gaming software
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: Software for computers, smart phones, and smart devices, namely, software for the transmission, distribution, recording, reproduction, display, organization, management, manipulation and review of messages, text, images, files, audio, video and audio-visual content and other data for the facilitation of communications between two or multiple users via computer networks, cell phone networks, communication networks and the global information network; Downloadable software for computers, smart phones, and smart devices, namely, software for the transmission, distribution, recording, reproduction, display, organization, management, manipulation and review of messages, text, images, files, audio, video and audio-visual content and other data for the facilitation of communications between two or multiple users via computer networks, cell phone networks, communication networks and the global information network; computer, smart phone and smart device software for conducting voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; computer, smart phone and smart device downloadable software for conducting voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; computer, smart phone, and smart device software for determining and communicating geographic locations; computer, smart phone, and smart device downloadable software for determining and communicating geographic locations; computer, smart phone, and smart device software for organizing and calendaring events; computer, smart phone and smart device downloadable gaming software; computer, smart phone and smart device gaming softwareClass 009 for Downloadable software for computers, smart phones, and smart devices, namely, software for the transmission, distribution, recording, reproduction, display, organization, management, manipulation and review of messages, text, images, files, audio, video and audio-visual content and other data for the facilitation of communications between two or multiple users via computer networks, cell phone networks, communication networks and the global information network; computer, smart phone and smart device downloadable software for conducting voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; computer, smart phone, and smart device downloadable software for determining and communicating geographic locations; computer, smart phone and smart device downloadable gaming software
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 042 for Providing online, non-downloadable software for virtual reality, mixed reality, and/or augmented reality visualization, manipulation, immersion and integration of audio, video, text, binary, still images, graphics and multimedia files; providing online, non-downloadable operating system software for computer hardware and computer peripherals; computer services, namely, interactive hosting services which allow users to publish and share content and images online; providing an online portal featuring non-downloadable software that gives users the ability to upload, exchange, and share content relating to audio, video, text, binary, still images, graphics, multimedia files and computer games; computer services, namely, creating an online community for registered users to participate in discussions, get feedback from their peers, form virtual communities and engage in social networking services; electronic storage of electronic media, namely, images, text and video and audio data; software as a services (SaaS) featuring computer programs for assisting developers in creating program code for use in application programs; software as a service (SaaS) featuring computer programs for running development programs and application programs in a common development environment; software as a service (SaaS) featuring computer programs for use in developing and publishing websites, information, and content; Computer services, namely, hosting online web facilities for others for organizing and conducting meetings, events and interactive discussions via communication networks; Hosting an online website featuring technology that enables online users to create personal profiles featuring social and business networking information and to transfer and share such information among multiple online websites; Providing an on-line computer database in the field of computer programming featuring searchable indexes of information, including text, electronic documents, databases, graphics, photographic images and audio visual information, regarding virtual reality, mixed reality, and/or augmented reality; Computer services in the nature of providing customized online web pages featuring user-defined or specified information, personal profiles, and virtual reality, mixed reality, and/or augmented reality content and data; Computer services, namely, providing search engines for obtaining data on a global computer and communication networks; Providing temporary use of non-downloadable e-commerce software to allow users to perform electronic business transactions via a global computer and communication networks
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: Providing online, non-downloadable software for virtual reality, mixed reality, and/or augmented reality visualization, manipulation, immersion and integration of audio, video, text, binary, still images, graphics and multimedia files; Providing online, non-downloadable software that gives users the ability to upload, exchange, and share content relating to audio, video, text, binary, still images, graphics, multimedia files and computer games via an online portal; providing online, non-downloadable operating system software for computer hardware and computer peripherals; online computer services featuring user-defined or specified information, personal profiles, and social media networks, and virtual reality, mixed reality, and/or augmented reality content and data; computer services, namely, interactive hosting services which allow users to publish and share content and images online; providing an online portal featuring non-downloadable software that gives users the ability to upload, exchange, and share content relating to audio, video, text, binary, still images, graphics, multimedia files and computer games; computer services, namely, creating an online community for registered users to participate in discussions, get feedback from their peers, form virtual communities and engage in social networking services; electronic storage of electronic media, namely, images, text and video and audio data; software as a services (SaaS) featuring computer programs for assisting developers in creating program code for use in application programs; software as a service (SaaS) featuring computer programs for running development programs and application programs in a common development environment; software as a service (SaaS) featuring computer programs for use in developing and publishing websites, information, and content; Computer services, namely, hosting online web facilities for others for organizing and conducting meetings, events and interactive discussions via communication networks; Hosting an online website featuring technology that enables online users to create personal profiles featuring social and business networking information and to transfer and share such information among multiple online websites; Providing an on-line computer database in the field of computer programming featuring searchable indexes of information, including text, electronic documents, databases, graphics, photographic images and audio visual information, regarding virtual reality, mixed reality, and/or augmented reality; Computer services in the nature of providing customized online web pages featuring user-defined or specified information, personal profiles, and virtual reality, mixed reality, and/or augmented reality content and data; Computer services, namely, providing search engines for obtaining data on a global computer and communication networks; Providing temporary use of non-downloadable e-commerce software to allow users to perform electronic business transactions via a global computer and communication networksClass 042 for Providing online, non-downloadable software that gives users the ability to upload, exchange, and share content relating to audio, video, text, binary, still images, graphics, multimedia files and computer games via an online portal; online computer services featuring user-defined or specified information, personal profiles, and social media networks, and virtual reality, mixed reality, and/or augmented reality content and data
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: Robert D. Fish. Robert D. Fish of FISH IP LAW, LLP, is located at

      SUITE 1000
      2603 MAIN STREET
      IRVINE, California 92614
      US
The docket/reference number is 102271.34US.

The phone number is 949-943-8300.

The fax number is 949-943-8358.

The applicants proposed attorney information: Robert D. Fish. Other appointed attorneys are all other attorneys at Fish IP Law, LLP. Robert D. Fish of FISH IP LAW, 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

      2603 MAIN STREET, SUITE 1000
      IRVINE, California 92614
      United States
The docket/reference number is 102271.34US.

The phone number is 949-943-8300.

The fax number is 949-943-8358.

The email address is trademarks@fishiplaw.com

Robert D. Fish 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: ROBERT D. FISH. ROBERT D. FISH of FISH IP LAW, LLP, is located at

      SUITE 1000
      2603 MAIN STREET
      IRVINE, California 92614
      US
The docket/reference number is 102271.34US.

The phone number is 949-943-8300.

The fax number is 949-943-8358.

The email address is trademarks@fishiplaw.com; ojakubowska@fishiplaw.com; rfish@fishiplaw.com

The applicants proposed correspondence information: Robert D. Fish. Robert D. Fish of FISH IP LAW, LLP, is located at

      2603 MAIN STREET, SUITE 1000
      IRVINE, California 92614
      United States
The docket/reference number is 102271.34US.

The phone number is 949-943-8300.

The fax number is 949-943-8358.

The email address is trademarks@fishiplaw.com; tlightman@fishiplaw.com; bkim@fishiplaw.com

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_1210720242-161747297_._GNED_Trademark_application_THE_WORLD_IS_THE_GAME_102271.34US.pdf
Converted PDF file(s) (4 pages)
Signature File1
Signature File2
Signature File3
Signature File4
Signatory's Name: Curtis Hutten
Signatory's Position: Chief Executive Officer

Response Signature
Signature: /Robert D. Fish/     Date: 12/05/2019
Signatory's Name: Robert D. Fish
Signatory's Position: Attorney of record, CA bar member

Signatory's Phone Number: 949-943-8300

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:    ROBERT D. FISH
   FISH IP LAW, LLP
   SUITE 1000
   2603 MAIN STREET
   IRVINE, California 92614
Mailing Address:    Robert D. Fish
   FISH IP LAW, LLP
   2603 MAIN STREET, SUITE 1000
   IRVINE, California 92614
        
Serial Number: 88353873
Internet Transmission Date: Thu Dec 05 16:41:43 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019120516414310
0226-88353873-70034cfc9d77a8cb3ec8d5207d
f48ba11256d719ef86326d837d8cfc438d1afb8d
-N/A-N/A-20191205161747297277