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)

---

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. 88411068 WSG(Standard Characters, see http://uspto.report/TM/88411068/mark.png) has been amended as follows:

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

This is in responseto the Examining Attorney’s letter dated June 11, 2019, for U.S. Application Serial No. 88411068 for the Mark “WSG” for the following services in Class 41 and Class 9:

 

Class 41:

            “Arranging and conducting athletic competitions; Entertainment in the nature of golf tournaments; Entertainment in the nature of competitions in the field of athletic and sports events; Entertainment services, namely, arranging and conducting of competitions for athletic and sports events, competitions, exhibitions, tournaments and international tournaments rendered live and through broadcast media including television and radio, and via a global computer network or a commercial on-line service; Entertainment services, namely, providing computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications via the Internet; Providing information on-line relating to games enhancements within computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications; Providing online reviews of computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications; Entertainment services, namely, organizing and conducting an array of athletic events rendered live and recorded for the purpose of distribution through broadcast media; Entertainment services, namely, providing computer model of reality in which users can interact through social games for recreational, leisure or entertainment purposes; Production and distribution of motion pictures; Production and distribution of radio programs; Production and distribution of television shows and movies; Production of cable television programs; Providing news and information in the field of sports; Providing various facilities for an array of sporting events, sports and athletic competitions and awards programs; Providing games and game applications on social, mobile, personal electronic devices, portable electronic devices and gaming platforms; Providing interactive games and gaming via internet website portal; Providing electronic games by means of the Internet; Conducting and providing facilities for gaming contests and tournaments; Providing a web-based system and on-line portal for customers to participate in on-line gaming, operation and coordination of game tournaments, leagues and tours for recreational computer game playing purposes; Radio program syndication; Television program syndication; Betting services; Gambling services; Wagering services; Educational services, namely, conducting classes, seminars and workshops in the field of computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications; Providing of information relating to computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications; On-line gaming services; Entertainment services, namely, providing temporary use of non-downloadable interactive games; Organizing and conducting contests, tournaments and other games of chance for entertainment purposes; Organizing, conducting and operating live gaming contests and tournaments”

 

Class 9:

            “Downloadable computer game software; Downloadable electronic game programs; Downloadable computer game programs; Downloadable interactive game programs; Downloadable computer software platforms for on-line computer games, online e-sport computer games, online interactive computer games, online computer games in mobile wireless form, online computer games for social interaction, and online computer game applications; Electronic software updates, namely, downloadable computer software and associated data files for updating computer software in the fields of on-line computer games, online e-sport computer games, online interactive computer games, online computer games in mobile wireless form, online computer games for social interaction, and online computer game applications, provided via computer and communication networks; Downloadable video game software; Downloadable video game programs; Downloadable computer software platforms for social networking; Downloadable interactive video game programs; Downloadable electronic game programs; Downloadable computer software platforms for social networking that may be accessed via the internet, computers, computer operating systems and wireless devices; Downloadable computer software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information in the fields of virtual communities, electronic gaming, entertainment, and general interest via the internet or other communications networks with third parties; Downloadable computer programs for video and computer games; Downloadable electronic game software for cellular telephones; Downloadable electronic game software for wireless devices; Downloadable electronic game software for use with social networking applications and on social networking websites”

 

 

REMARKS

The Examining Attorney has refused registration of Applicant’s Mark “WSG” under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d). Additionally, the Examining Attorney requires amendments to the identification statements. Applicant respectfully submits that the refusal should be withdrawn for the reasons set forth below.

 

Rejection Under Section 2(d)(1) of the Trademark Act:

The non-final Office Action states that there is a likelihood of confusion between the applied-for mark and U.S. Registration No. 4286242 “WSGF”.  Applicant respectfully disagrees. This office action was issued on June 11, 2019. At that time, no Declaration of Use and/or Excusable Nonuse under §8 of the Trademark Act had been filed for the cited registration by the regular maintenance deadline of February 5, 2019. The six-month grace period ended on August 5, 2019. The Trademark database shows that the registration was cancelled on September 6, 2019, 30 days after the grace period expired. See Attachment A. As such, the refusal under § 2(d) can be withdrawn. See, TMEP 713.03 and 716.02(e).

Applicant notes that Attachments 19 and 20 to the Examining Attorney’s June 11, 2019 letter, U.S. Registration No. 4973990, “No Limit Slots”, are not cited or discussed in the text of the letter as a basis for refusal under § 2(d). The Examining Attorney issued a letter the following day for another of Applicant’s applications, U.S. Application Serial No. 88351973, “No Limit Golf”, in which U.S. Registration No. 4973990 is fully addressed. See Attachment B. Based on the foregoing, Applicant reasonably believes these attachments were unintentionally included in the Examining Attorney’s June 11, 2019 letter and do not function as a basis for refusal under § 2(d) in the context of this application. Applicant respectfully requests the opportunity to present a more detailed argument if Attachments 19 and 20 were not inadvertently included. Otherwise, Applicant requests that the refusal under § 2(d) be withdrawn.

 

Amendment to the Identification of Goods and Services:

            The goods and services identifications for “WSG” in Class 41 and Class 9 are hereby amended for clarification, under 37 C.F.R. §2.71(a), as proposed in this response.

 

CONCLUSION

In light of the foregoing, it is respectfully requested that the Examining Attorneywithdraw the refusal of record and pass this application to publication on the Principal register in due course.

 

EVIDENCE

Original PDF file:
evi_8987165-20191211232157840554_._Attachment_B.pdf
Converted PDF file(s) ( 42 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Evidence-23
Evidence-24
Evidence-25
Evidence-26
Evidence-27
Evidence-28
Evidence-29
Evidence-30
Evidence-31
Evidence-32
Evidence-33
Evidence-34
Evidence-35
Evidence-36
Evidence-37
Evidence-38
Evidence-39
Evidence-40
Evidence-41
Evidence-42
Original PDF file:
evi_8987165-20191211232157840554_._Attachment_A.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

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 game software; Downloadable electronic game programs; Downloadable computer game programs; Downloadable interactive game programs; Downloadable computer software platforms for on-line computer games, online e-sport computer games, online interactive computer games, online computer games in mobile wireless form, online computer games for social interaction, and online computer game applications; Electronic software updates, namely, downloadable computer software and associated data files for updating computer software in the fields of on-line computer games, online e-sport computer games, online interactive computer games, online computer games in mobile wireless form, online computer games for social interaction, and online computer game applications, provided via computer and communication networks; Downloadable video game software; Downloadable video game programs; Downloadable computer software platforms for social networking; Downloadable interactive video game programs; Downloadable electronic game programs; Downloadable computer software platforms for social networking that may be accessed via the internet, computers, computer operating systems and wireless devices; Downloadable computer software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information in the fields of virtual communities, electronic gaming, entertainment, and general interest via the internet or other communications networks with third parties; Downloadable computer programs for video and computer games; Downloadable electronic game software for cellular telephones; Downloadable electronic game software for wireless devices; Downloadable electronic game software for use with social networking applications and on social networking websites
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/24/2019 and first used in commerce at least as early as 04/24/2019 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Downloadable computer game software; Downloadable electronic game programs; Downloadable computer game programs; Downloadable interactive game programs; Downloadable computer software platforms for on-line computer games, online e-sport computer games, online interactive computer games, online computer games in mobile wireless form, online computer games for social interaction, and online computer game applications; Electronic software updates, namely, downloadable computer software and associated data files for updating computer software in the fields of on-line computer games, online e-sport computer games, online interactive computer games, online computer games in mobile wireless form, online computer games for social interaction, and online computer game applications, provided via computer and communication networks; Downloadable video game software; Downloadable video game programs; Downloadable computer software platforms for social networking; Downloadable interactive video game programs; Downloadable electronic game programs; Downloadable computer software platforms for social networking that may be accessed via the internet, computers, computer operating systems and wireless devices; Downloadable computer software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information in the fields of virtual communities, electronic gaming, entertainment, and general interest via the internet or other communications networks with third parties; Downloadable computer software to enable the uploading, posting, showing, displaying, tagging, blogging, sharing and other presentation of items of media or information that are in electronic format via an interactive electronic user interface, in the fields of virtual social network communities, electronic gaming, entertainment, and general interest via the internet and other communications networks in the nature of a global computer network with third parties; Downloadable computer programs for video and computer games; Downloadable electronic game software for cellular telephones; Downloadable electronic game software for wireless devices; Downloadable electronic game software for use with social networking applications and on social networking websitesClass 009 for Downloadable computer game software; Downloadable electronic game programs; Downloadable computer game programs; Downloadable interactive game programs; Downloadable computer software platforms for on-line computer games, online e-sport computer games, online interactive computer games, online computer games in mobile wireless form, online computer games for social interaction, and online computer game applications; Electronic software updates, namely, downloadable computer software and associated data files for updating computer software in the fields of on-line computer games, online e-sport computer games, online interactive computer games, online computer games in mobile wireless form, online computer games for social interaction, and online computer game applications, provided via computer and communication networks; Downloadable video game software; Downloadable video game programs; Downloadable computer software platforms for social networking; Downloadable interactive video game programs; Downloadable electronic game programs; Downloadable computer software platforms for social networking that may be accessed via the internet, computers, computer operating systems and wireless devices; Downloadable computer software to enable the uploading, posting, showing, displaying, tagging, blogging, sharing and other presentation of items of media or information that are in electronic format via an interactive electronic user interface, in the fields of virtual social network communities, electronic gaming, entertainment, and general interest via the internet and other communications networks in the nature of a global computer network with third parties; Downloadable computer programs for video and computer games; Downloadable electronic game software for cellular telephones; Downloadable electronic game software for wireless devices; Downloadable electronic game software for use with social networking applications and on social networking websites
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/24/2019 and first used in commerce at least as early as 04/24/2019 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Arranging and conducting athletic competitions; Entertainment in the nature of golf tournaments; Entertainment in the nature of competitions in the field of athletic and sports events; Entertainment services, namely, arranging and conducting of competitions for athletic and sports events, competitions, exhibitions, tournaments and international tournaments rendered live and through broadcast media including television and radio, and via a global computer network or a commercial on-line service; Entertainment services, namely, providing computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications via the Internet; Providing information on-line relating to games enhancements within computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications; Providing online reviews of computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications; Entertainment services, namely, organizing and conducting an array of athletic events rendered live and recorded for the purpose of distribution through broadcast media; Entertainment services, namely, providing computer model of reality in which users can interact through social games for recreational, leisure or entertainment purposes; Production and distribution of motion pictures; Production and distribution of radio programs; Production and distribution of television shows and movies; Production of cable television programs; Providing news and information in the field of sports; Providing various facilities for an array of sporting events, sports and athletic competitions and awards programs; Providing games and game applications on social, mobile, personal electronic devices, portable electronic devices and gaming platforms; Providing interactive games and gaming via internet website portal; Providing electronic games by means of the Internet; Conducting and providing facilities for gaming contests and tournaments; Providing a web-based system and on-line portal for customers to participate in on-line gaming, operation and coordination of game tournaments, leagues and tours for recreational computer game playing purposes; Radio program syndication; Television program syndication; Betting services; Gambling services; Wagering services; Educational services, namely, conducting classes, seminars and workshops in the field of computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications; Providing of information relating to computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications; On-line gaming services; Entertainment services, namely, providing temporary use of non-downloadable interactive games; Organizing and conducting contests, tournaments and other games of chance for entertainment purposes; Organizing, conducting and operating live gaming contests and tournaments
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/24/2019 and first used in commerce at least as early as 04/24/2019 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Arranging and conducting athletic competitions; Entertainment in the nature of golf tournaments; Entertainment in the nature of competitions in the field of athletic and sports events; Entertainment in the nature of sports events; Entertainment services, namely, arranging and conducting of competitions for athletic and sports events, competitions, exhibitions, tournaments and international tournaments rendered live and through broadcast media including television and radio, and via a global computer network or a commercial on-line service; Entertainment in the nature of athletic competitions; Entertainment services, namely, providing computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications via the Internet; Entertainment in the nature of arranging and conducting competitions in the field of athletic events and sports events, namely, land-based sports competitions, online sports competitions and combinations thereof; Providing information on-line relating to games enhancements within computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications; Entertainment services, namely, arranging and conducting of athletic events and sports events in the nature of land-based sports tournaments, online sports tournaments and combinations thereof, land-based sports competitions, online sports competitions and combinations thereof, land-based sports exhibitions, online sports exhibitions and combinations thereof, nationally and internationally, such events being rendered live and through broadcast media including television and radio, and via a global computer network and a commercial on-line service; Providing online reviews of computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications; Entertainment services, namely, providing online computer gaming, electronic sport computer gaming, on-line computer games, interactive computer games, mobile computer games, computer electronic social games and computer game applications via the Internet; Providing information on-line relating to games enhancements within computer gaming, electronic sport computer gaming, on-line computer games, interactive computer games, mobile computer games, computer electronic social games and computer game applications; Entertainment services, namely, providing computer model of reality in which users can interact through social games for recreational, leisure or entertainment purposes; Providing online reviews of computer gaming, electronic sport computer gaming, on-line computer games, interactive computer games, mobile computer games, computer electronic social games and computer game applications; Entertainment services, namely, organizing and conducting an array of athletic events rendered live and recorded for the purpose of distribution through broadcast media; Entertainment services, namely, providing computer model of reality in the nature of virtual reality game services in which users can interact through social games for recreational, leisure or entertainment purposes on-line from a computer network; Production and distribution of motion pictures; Production and distribution of radio programs; Production and distribution of television shows and movies; Production of cable television programs; Providing games and game applications on social, mobile, personal electronic devices, portable electronic devices and gaming platforms; Providing news and information in the field of sports; Providing interactive games and gaming via internet website portal; Providing various facilities for an array of sporting events, sports and athletic competitions and awards programs; Providing electronic games by means of the Internet; Providing online computer games in the form of game applications that are compatible with use on social network platforms, mobile electronic devices, personal electronic devices, portable electronic devices and computer gaming platforms; Conducting and providing facilities for gaming contests and tournaments; Providing interactive computer games and online computer gaming via internet website portal; Providing online electronic games by means of the Internet; Conducting and providing facilities for e-sports gaming contests and tournaments; Providing a web-based system and on-line portal for customers to participate in on-line gaming, operation and coordination of game tournaments, leagues and tours for recreational computer game playing purposes; Radio program syndication; Television program syndication; Betting services; Gambling services; Providing of information relating to computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications; Wagering services; On-line gaming services; Educational services, namely, conducting classes, seminars and workshops in the field of computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications; Providing of information relating to computer gaming, electronic sport computer gaming, on-line computer games, interactive computer games, mobile computer games, computer electronic social games and computer game applications; Organizing and conducting contests, tournaments and other games of chance for entertainment purposes; On-line gaming services, namely, providing online computer games, and online electronic games; Organizing, conducting and operating live gaming contests and tournaments; Entertainment services, namely, providing temporary use of non-downloadable interactive games; Organizing and conducting contests in the nature of online electronic gaming competitions and tournaments featuring e-sports and featuring games of chance for entertainment purposes; Organizing, conducting and operating live gaming contests in the nature of online electronic gaming competitions and tournaments featuring e-sports and featuring games of chance for entertainment purposesClass 041 for Arranging and conducting athletic competitions; Entertainment in the nature of golf tournaments; Entertainment in the nature of sports events; Entertainment in the nature of athletic competitions; Entertainment in the nature of arranging and conducting competitions in the field of athletic events and sports events, namely, land-based sports competitions, online sports competitions and combinations thereof; Entertainment services, namely, arranging and conducting of athletic events and sports events in the nature of land-based sports tournaments, online sports tournaments and combinations thereof, land-based sports competitions, online sports competitions and combinations thereof, land-based sports exhibitions, online sports exhibitions and combinations thereof, nationally and internationally, such events being rendered live and through broadcast media including television and radio, and via a global computer network and a commercial on-line service; Entertainment services, namely, providing online computer gaming, electronic sport computer gaming, on-line computer games, interactive computer games, mobile computer games, computer electronic social games and computer game applications via the Internet; Providing information on-line relating to games enhancements within computer gaming, electronic sport computer gaming, on-line computer games, interactive computer games, mobile computer games, computer electronic social games and computer game applications; Providing online reviews of computer gaming, electronic sport computer gaming, on-line computer games, interactive computer games, mobile computer games, computer electronic social games and computer game applications; Entertainment services, namely, organizing and conducting an array of athletic events rendered live and recorded for the purpose of distribution through broadcast media; Entertainment services, namely, providing computer model of reality in the nature of virtual reality game services in which users can interact through social games for recreational, leisure or entertainment purposes on-line from a computer network; Production and distribution of motion pictures; Production and distribution of radio programs; Production and distribution of television shows and movies; Production of cable television programs; Providing news and information in the field of sports; Providing various facilities for an array of sporting events, sports and athletic competitions and awards programs; Providing online computer games in the form of game applications that are compatible with use on social network platforms, mobile electronic devices, personal electronic devices, portable electronic devices and computer gaming platforms; Providing interactive computer games and online computer gaming via internet website portal; Providing online electronic games by means of the Internet; Conducting and providing facilities for e-sports gaming contests and tournaments; Providing a web-based system and on-line portal for customers to participate in on-line gaming, operation and coordination of game tournaments, leagues and tours for recreational computer game playing purposes; Radio program syndication; Television program syndication; Betting services; Gambling services; Wagering services; Educational services, namely, conducting classes, seminars and workshops in the field of computer gaming, e-sport gaming, on-line games, interactive games, mobile games, social games and game applications; Providing of information relating to computer gaming, electronic sport computer gaming, on-line computer games, interactive computer games, mobile computer games, computer electronic social games and computer game applications; On-line gaming services, namely, providing online computer games, and online electronic games; Entertainment services, namely, providing temporary use of non-downloadable interactive games; Organizing and conducting contests in the nature of online electronic gaming competitions and tournaments featuring e-sports and featuring games of chance for entertainment purposes; Organizing, conducting and operating live gaming contests in the nature of online electronic gaming competitions and tournaments featuring e-sports and featuring games of chance for entertainment purposes
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/24/2019 and first used in commerce at least as early as 04/24/2019 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /Stephanie Nott/     Date: 12/11/2019
Signatory's Name: Stephanie Nott
Signatory's Position: Attorney of Record, New York bar member

Signatory's Phone Number: 585-218-9999 ext 407; 516-328-2300

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.

        
Serial Number: 88411068
Internet Transmission Date: Wed Dec 11 23:58:43 EST 2019
TEAS Stamp: USPTO/ROA-X.X.XX.XXX-2019121123584390130
4-88411068-7009d42b6f45039e7d9d4d07231d3
eff46204a8bc930921fb464f094b53cfb61-N/A-
N/A-20191211232157840554