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. 88497660 FRAMES WIN GAMES(Standard Characters, see http://uspto.report/TM/88497660/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 028 for Hand-held units for playing electronic, computer, interactive, and video games; Toys, games and playthings; Gaming devices; Mobile gaming devices; Portable gaming devices; Amusement game machines; Electronic games other than those adapted for use with television receivers only; Electronic gaming machines for use with an external display screen or monitor; Electronic video game machines other than those adapted for use with an external display screen or monitor for receipt, storage and transmission of text, graphics and multimedia content; Apparatus for electronic games other than those adapted for use with an external display screen or monitor; Arcade video game machines; Computer game consoles for use with an external display screen or monitor; Computer game joysticks; Hand held joy stick units for playing video games; Video game joysticks; Gaming mice; Gaming keypads; Gaming peripherals; Computer gaming consoles for recreational game playing; Video game consoles; Video game interactive hand held remote controls for playing electronic games; Video game interactive remote control units; Video game machines; Video gaming consoles for playing computer games; Video output game machines for use with external display screen or monitor; Video output game machines for use with televisions; Electronic game equipment with a watch function; Face plates for video game consoles for use with external monitors; Game controllers for computer games; Game controllers in the nature of keyboards for computer games; Games adapted for use with television receivers; Gaming devices and mobile gaming devices, namely, gaming machines with or without video output for playing computer games and video games; Gaming headsets adapted for use in playing video games; Virtual reality headsets adapted for use in playing augmented reality video games; Virtual reality headsets and helmets adapted for use in playing video games; Audio and visual headsets for use in playing video games; Hand-held electronic games adapted for use with television receivers only; Handheld game consoles; Hand-held games with liquid crystal displays; Hand-held units for playing electronic games for use with external display screen or monitor; Hand-held units for playing electronic, computer, interactive, and video games; Home video game machines; LCD game machines; Player-operated electronic controllers for electronic video game machines; Portable games with liquid crystal displays; Stand alone video game machines; Tabletop units for playing electronic games other than in conjunction with a television or computer; Fitted covers specially adapted to protect video game consoles for use with an external display screen or monitor; Fitted plastic films known as skins for covering and protecting electronic game playing apparatus, namely, video game consoles and hand-held video game units; floor-standing units for playing electronic games other than in conjunction with a television or computer; Bags specially adapted for handheld video games and video game consoles; Protective carrying cases specially adapted for handheld video games and video game consoles; Protective covers specially adapted for electronic game playing apparatus, namely, video game consoles and hand-held video game units; Stands for electronic game playing apparatus, namely, video game consoles and hand-held video game units
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: Hand-held units for playing electronic, computer, interactive, and video games; Toys, games and playthings; Gaming devices, mobile gaming devices and portable gaming devices, namely, game machines with or without video output for playing computer games and video games; Gaming devices; Amusement game machines; Mobile gaming devices; Electronic games other than those adapted for use with television receivers only; Portable gaming devices; Electronic gaming machines for use with an external display screen or monitor; Electronic video game machines other than those adapted for use with an external display screen or monitor for receipt, storage and transmission of text, graphics and multimedia content; Apparatus for electronic games other than those adapted for use with an external display screen or monitor; Arcade video game machines; Computer game consoles for use with an external display screen or monitor; Computer game joysticks; Hand held joy stick units for playing video games; Video game joysticks; Gaming mice; Gaming keypads; Gaming peripherals, namely, gaming controllers, gaming joysticks, gaming trackpads, and gaming touchpads; Computer gaming consoles for recreational game playing; Video game consoles; Gaming peripherals; Video game interactive hand held remote controls for playing electronic games; Video game interactive remote control units; Video game machines; Video gaming consoles for playing computer games; Video output game machines for use with external display screen or monitor; Video output game machines for use with televisions; Electronic game equipment with a watch function; Face plates for video game consoles for use with external monitors; Game controllers for computer games; Game controllers in the nature of keyboards for computer games; Games adapted for use with television receivers; Gaming devices and mobile gaming devices, namely, gaming machines with or without video output for playing computer games and video games; Gaming headsets adapted for use in playing video games; Audio and visual headsets for use in playing video games; Hand-held electronic games adapted for use with television receivers only; Handheld game consoles; Virtual reality headsets adapted for use in playing augmented reality video games; Hand-held games with liquid crystal displays; Virtual reality headsets and helmets adapted for use in playing video games; Hand-held units for playing electronic games for use with external display screen or monitor; Hand-held units for playing electronic, computer, interactive, and video games; Home video game machines; LCD game machines; Player-operated electronic controllers for electronic video game machines; Portable games with liquid crystal displays; Standalone video game machines; Tabletop units for playing electronic games other than in conjunction with a television or computer; Fitted covers specially adapted to protect video game consoles for use with an external display screen or monitor; Fitted plastic films known as skins for covering and protecting electronic game playing apparatus, namely, video game consoles and hand-held video game units; floor-standing units for playing electronic games other than in conjunction with a television or computer; Stand alone video game machines; Bags specially adapted for handheld video games and video game consoles; Protective carrying cases specially adapted for handheld video games and video game consoles; Protective covers specially adapted for electronic game playing apparatus, namely, video game consoles and hand-held video game units; Stands for electronic game playing apparatus, namely, video game consoles and hand-held video game unitsClass 028 for Hand-held units for playing electronic, computer, interactive, and video games; Gaming devices, mobile gaming devices and portable gaming devices, namely, game machines with or without video output for playing computer games and video games; Amusement game machines; Electronic games other than those adapted for use with television receivers only; Electronic gaming machines for use with an external display screen or monitor; Electronic video game machines other than those adapted for use with an external display screen or monitor for receipt, storage and transmission of text, graphics and multimedia content; Apparatus for electronic games other than those adapted for use with an external display screen or monitor; Arcade video game machines; Computer game consoles for use with an external display screen or monitor; Computer game joysticks; Hand held joy stick units for playing video games; Video game joysticks; Gaming mice; Gaming keypads; Gaming peripherals, namely, gaming controllers, gaming joysticks, gaming trackpads, and gaming touchpads; Computer gaming consoles for recreational game playing; Video game consoles; Video game interactive hand held remote controls for playing electronic games; Video game interactive remote control units; Video game machines; Video gaming consoles for playing computer games; Video output game machines for use with external display screen or monitor; Video output game machines for use with televisions; Electronic game equipment with a watch function; Face plates for video game consoles for use with external monitors; Game controllers for computer games; Game controllers in the nature of keyboards for computer games; Games adapted for use with television receivers; Gaming devices and mobile gaming devices, namely, gaming machines with or without video output for playing computer games and video games; Gaming headsets adapted for use in playing video games; Audio and visual headsets for use in playing video games; Hand-held electronic games adapted for use with television receivers only; Handheld game consoles; Hand-held games with liquid crystal displays; Hand-held units for playing electronic games for use with external display screen or monitor; Hand-held units for playing electronic, computer, interactive, and video games; Home video game machines; LCD game machines; Player-operated electronic controllers for electronic video game machines; Portable games with liquid crystal displays; Standalone video game machines; Tabletop units for playing electronic games other than in conjunction with a television or computer; Fitted covers specially adapted to protect video game consoles for use with an external display screen or monitor; Fitted plastic films known as skins for covering and protecting electronic game playing apparatus, namely, video game consoles and hand-held video game units; floor-standing units for playing electronic games other than in conjunction with a television or computer; Bags specially adapted for handheld video games and video game consoles; Protective carrying cases specially adapted for handheld video games and video game consoles; Protective covers specially adapted for electronic game playing apparatus, namely, video game consoles and hand-held video game units; Stands for electronic game playing apparatus, namely, video game consoles and hand-held video game units
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:
Current: Class 041 for Arranging and conducting competitions and facilitating events for video gamers and computer game players; Arranging and conducting of workshops in the field of computer programming, electronic, computer and video games, media, multi-media and communications processors and related software; Arranging and conducting of workshops related to gaming and gaming hardware; Broadcasts of e-sports and other gaming events; Entertainment services; Entertainment services, namely, arranging and conducting competitions and facilitating events for players of electronic or interactive multimedia games; Entertainment services, namely, arranging and conducting of competitions for encouraging use and development of interactive entertainment, consumer electronics, and video game entertainment software and hardware; Entertainment services, namely, facilitating interactive and multiplayer and single player game services for games played via the internet or communications networks; Entertainment services, namely, providing access to online computer and video games; Entertainment services, namely, providing an internet website portal featuring online video and electronic games; Entertainment services, namely, providing computer games via a global computer network; Entertainment services, namely, providing electronic games on-line; Entertainment services, namely, providing non-downloadable on-line interactive computer games, on-line interactive virtual reality games, on-line computer games, on-line virtual reality games, and on-line multi-player electronic computer games; Gaming-related promotional, educational, training, management, and design services; Organization of games and e-sports tournaments; Organizing contest and incentive award programs; Organizing exhibitions in the field of interactive entertainment, consumer electronics and video game entertainment industries for cultural or educational purposes; Organizing recreational sports and cultural activities; Organizing, promoting and conducting exhibitions, trade shows and events for business purposes; Platform as a service (PaaS) featuring computer software platforms for playing computer and video games; Platform as a service (PaaS) featuring software platforms for providing online electronic gaming; Computer software for gaming purposes in the nature of providing online video games; Electronic games services provided by means of the internet; Providing non-downloadable interactive multiplayer computer and video games; Providing non-downloadable interactive multiplayer computer and video games that may be accessed and played over computer networks and global communications networks; Providing online non-downloadable computer software for gaming purposes in the nature of providing online video games; Providing online non-downloadable electronic game software; Rental of video games; Software as a service (SaaS) featuring software platforms for electronic gaming; Virtual reality arcade services; Virtual reality game services provided on-line from a computer network; Consulting services in the field of gaming technology; Education services; Education services, namely, providing non-downloadable courses of instruction and training in the use of electronic computer and video games; Education services, namely, providing training sessions in the field of computer electronics and computer programming at trade shows and computer and developer conferences, and providing training-course materials used together therewith
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: Arranging and conducting competitions and facilitating events for video gamers and computer game players; Arranging and conducting of workshops in the field of computer programming, electronic, computer and video games, media, multi-media and communications processors and related software; Arranging and conducting of workshops related to gaming and gaming hardware; Broadcasts of e-sports and other gaming events; Entertainment services, namely, arranging and conducting computer and video gaming competitions and facilitating events for players of electronic or interactive multimedia games; Entertainment services; Entertainment services, namely, arranging and conducting of computer and video gaming and game development competitions for encouraging use and development of interactive entertainment, consumer electronics, and video game entertainment software and hardware; Entertainment services, namely, arranging and conducting competitions and facilitating events for players of electronic or interactive multimedia games; Entertainment services, namely, facilitating interactive and multiplayer and single player game services for games played via the internet or communications networks; Entertainment services, namely, arranging and conducting of competitions for encouraging use and development of interactive entertainment, consumer electronics, and video game entertainment software and hardware; Entertainment services, namely, providing access to online computer and video games; Entertainment services, namely, providing an internet website portal featuring online video and electronic games; Entertainment services, namely, providing computer games via a global computer network; Entertainment services, namely, providing electronic games on-line; Entertainment services, namely, providing non-downloadable on-line interactive computer games, on-line interactive virtual reality games, on-line computer games, on-line virtual reality games, and on-line multi-player electronic computer games; providing recognition and incentives to promote computer and video gaming; educational and training services, namely, classes, seminars and workshops in the field of gaming; Gaming-related promotional, educational, training, management, and design services; designing computer and video games; Organization of games and e-sports tournaments; Organization of games and e-sports tournaments in the field of computer and video games; Organizing contest and incentive award programs; educational services, namely, organizing contest and incentive award programs to promote interest in computer and video games; Organizing exhibitions in the field of interactive entertainment, consumer electronics and video game entertainment industries for cultural or educational purposes; Organizing recreational sports and cultural activities; Organizing, promoting and conducting exhibitions, trade shows and events for business purposes; Platform as a service (PaaS) featuring computer software platforms for playing computer and video games; Platform as a service (PaaS) featuring software platforms for providing online electronic gaming; Computer software for gaming purposes in the nature of providing online video games; Electronic games services provided by means of the internet; Providing non-downloadable interactive multiplayer computer and video games; Providing non-downloadable interactive multiplayer computer and video games that may be accessed and played over computer networks and global communications networks; Providing online non-downloadable computer software for gaming purposes in the nature of providing online video games; Providing online non-downloadable electronic game software; Rental of video games; Software as a service (SaaS) featuring software platforms for electronic gaming; Virtual reality arcade services; Virtual reality game services provided on-line from a computer network; Consulting services in the field of gaming technology; Education services, namely, providing non-downloadable courses of instruction and training in the use of electronic computer and video games; Education services; Education services, namely, providing training sessions in the field of computer electronics and computer programming at trade shows and computer and developer conferences, and providing training-course materials used together therewithClass 041 for Arranging and conducting competitions and facilitating events for video gamers and computer game players; Arranging and conducting of workshops in the field of computer programming, electronic, computer and video games, media, multi-media and communications processors and related software; Arranging and conducting of workshops related to gaming and gaming hardware; Entertainment services, namely, arranging and conducting computer and video gaming competitions and facilitating events for players of electronic or interactive multimedia games; Entertainment services, namely, arranging and conducting of computer and video gaming and game development competitions for encouraging use and development of interactive entertainment, consumer electronics, and video game entertainment software and hardware; Entertainment services, namely, facilitating interactive and multiplayer and single player game services for games played via the internet or communications networks; Entertainment services, namely, providing access to online computer and video games; Entertainment services, namely, providing an internet website portal featuring online video and electronic games; Entertainment services, namely, providing computer games via a global computer network; Entertainment services, namely, providing electronic games on-line; Entertainment services, namely, providing non-downloadable on-line interactive computer games, on-line interactive virtual reality games, on-line computer games, on-line virtual reality games, and on-line multi-player electronic computer games; providing recognition and incentives to promote computer and video gaming; educational and training services, namely, classes, seminars and workshops in the field of gaming; designing computer and video games; Organization of games and e-sports tournaments in the field of computer and video games; educational services, namely, organizing contest and incentive award programs to promote interest in computer and video games; Organizing exhibitions in the field of interactive entertainment, consumer electronics and video game entertainment industries for cultural or educational purposes; Organizing recreational sports and cultural activities; Platform as a service (PaaS) featuring computer software platforms for playing computer and video games; Platform as a service (PaaS) featuring software platforms for providing online electronic gaming; Computer software for gaming purposes in the nature of providing online video games; Electronic games services provided by means of the internet; Providing non-downloadable interactive multiplayer computer and video games; Providing non-downloadable interactive multiplayer computer and video games that may be accessed and played over computer networks and global communications networks; Providing online non-downloadable computer software for gaming purposes in the nature of providing online video games; Providing online non-downloadable electronic game software; Rental of video games; Software as a service (SaaS) featuring software platforms for electronic gaming; Virtual reality arcade services; Virtual reality game services provided on-line from a computer network; Consulting services in the field of gaming technology; Education services, namely, providing non-downloadable courses of instruction and training in the use of electronic computer and video games; Education services, namely, providing training sessions in the field of computer electronics and computer programming at trade shows and computer and developer conferences, and providing training-course materials used together therewith
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: NVIDIA Corporation, a corporation of Delaware, having an address of
      2788 San Tomas Expressway
      Santa Clara, California 95051
      United States

Proposed: NVIDIA Corporation, a corporation of Delaware, having an address of
      2788 San Tomas Expressway
      Santa Clara, California 95051
      United States
      Email Address: tmcorrespondence@fenwick.com

The owner's/holder's current attorney information: Sally M. Abel, Esq.. Sally M. Abel, Esq. of FENWICK & WEST LLP, is located at

      801 CALIFORNIA STREET
      MOUNTAIN VIEW, California 94041
      United States
The docket/reference number is 25999-70129.
      The phone number is 650-988-8500.
      The fax number is 650-938-5200.
      The email address is trademarks@fenwick.com

The owner's/holder's proposed attorney information: Sally M. Abel, Esq.. Other appointed attorneys are all other attorneys of Fenwick & West LLP. Sally M. Abel, Esq. of Fenwick & West 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

      801 California Street
      Mountain View, California 94041
      United States
The docket/reference number is 25999-70129.
      The phone number is 650-988-8500.
      The fax number is 650-938-5200.
      The email address is trademarks@fenwick.com

Sally M. Abel, Esq. 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.Correspondence Information (current):
      SALLY M. ABEL, ESQ.
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@fenwick.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 25999-70129.
Correspondence Information (proposed):
      Sally M. Abel, Esq.
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@fenwick.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): kfalco@fenwick.com

The docket/reference number is 25999-70129.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /alongobucco/     Date: 03/12/2020
Signatory's Name: Anne Marie Longobucco, Esq.
Signatory's Position: Associate Attorney, Fenwick & West LLP, New York Bar member

Signatory's Phone Number: 212-921-2001

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:    SALLY M. ABEL, ESQ.
   FENWICK & WEST LLP
   
   801 CALIFORNIA STREET
   MOUNTAIN VIEW, California 94041
Mailing Address:    Sally M. Abel, Esq.
   Fenwick & West LLP
   801 California Street
   Mountain View, California 94041
        
Serial Number: 88497660
Internet Transmission Date: Thu Mar 12 15:59:33 ET 2020
TEAS Stamp: USPTO/ROA-X.XX.XXX.XXX-20200312155933477
592-88497660-710e77b7b9c1924ba3a8eff8341
236ebc4cf5a21a5f6fba0f1292de1d1401c2731-
N/A-N/A-20200312143345472224