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. 88503703 BIG SKY(Standard Characters, see http://uspto.report/TM/88503703/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 041 for Entertainment services in the nature of providing a web-based system, on-line portal and social networking platform, namely, a social casino environment, for customers to participate in online electronic gaming; providing on-line virtual environment for users to engage in online electronic gaming; providing temporary use of non-downloadable game software featuring games played on computers, hand held devices, mobile and wireless communication devices, and internet enabled devices; providing temporary use of non-downloadable game software featuring games played via global computer network and online social networks
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: Entertainment services in the nature of providing a web-based system, on-line portal and social networking platform, namely, a social casino environment, for customers to participate in online electronic gaming; Entertainment services in the nature of providing a web-based system and an online portal, namely, casino gaming for customers to participate in online electronic gaming and social networking; providing on-line virtual environment for users to engage in online electronic gaming; providing temporary use of non-downloadable game software featuring games played on computers, hand held devices, mobile and wireless communication devices, and internet enabled devices; providing temporary use of non-downloadable game software featuring games played via global computer network and online social networksClass 041 for Entertainment services in the nature of providing a web-based system and an online portal, namely, casino gaming for customers to participate in online electronic gaming and social networking; providing on-line virtual environment for users to engage in online electronic gaming; providing temporary use of non-downloadable game software featuring games played on computers, hand held devices, mobile and wireless communication devices, and internet enabled devices; providing temporary use of non-downloadable game software featuring games played via global computer network and online social networks
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 owner's/holder's current attorney information: LINDA MARIE NORCROSS. LINDA MARIE NORCROSS of ARISTOCRAT TECHNOLOGIES, INC., is located at

      10220 ARISTOCRAT WAY
      10220 ARISTOCRAT WAY
      LAS VEGAS, Nevada 89135
      United States
The docket/reference number is BIGSKYOZ41.
      The phone number is 702-270-1257.
      The fax number is 7022701236.
      The email address is ATUS.USPTO.MAIL@ARISTOCRAT.COM

The owner's/holder's proposed attorney information: LINDA MARIE NORCROSS. Other appointed attorneys are Jeanine M. Mitchell; Marc Foodman. LINDA MARIE NORCROSS of Aristocrat Technologies, Inc., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      10220 Aristocrat Way
      Las Vegas, Nevada 89135
      United States
The docket/reference number is BIGSKYOZ41.
      The phone number is 702-270-1257.
      The fax number is 702-270-1236.
      The email address is linda.norcross@aristocrat.com

LINDA MARIE NORCROSS 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):
      LINDA MARIE NORCROSS
      PRIMARY EMAIL FOR CORRESPONDENCE: ATUS.USPTO.MAIL@ARISTOCRAT.COM
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): KINDRA.PERRIGO-SORROW@ARISTOCRAT.COM

The docket/reference number is BIGSKYOZ41.
Correspondence Information (proposed):
      LINDA MARIE NORCROSS
      PRIMARY EMAIL FOR CORRESPONDENCE: linda.norcross@aristocrat.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): kindra.perrigo-sorrow@aristocrat.com; atus.uspto.mail@aristocrat.com

The docket/reference number is BIGSKYOZ41.

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).

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Examining Attorney has cited the prior-pending application for the mark BIG SKY COMPANY & Design, the subject of U.S. Trademark Application Serial No. 87/735,799 (the "Cited Mark"), as a potential obstacle to registration of Applicant's Mark. However, Applicant does not agree. The goods identified in the application for the Cited Mark are indoor and outdoor sporting goods and equipment. Those products are not identical to or closely related to Applicant's services. Applicant's Mark is used with services only available by first accessing Applicant's virtual casino services via mobile or computer device. On the entry screen for Applicant's services there is a notice advising that the player of Applicant's games must be 18+ years of age. See sample screenshot of mobile phone virtual casino entry point attached as Exhibit A. Upon entering the virtual casino customers can then choose among various electronic game titles. See sample screenshot of mobile phone virtual casino lobby attached as Exhibit B. Upon selecting the game title for play the customer enters another portal to play the selected game. See sample screenshot of game title access page attached as Exhibit C. Given the age requirement for Applicant's services and the controlled environment in which customers encounter and interact with Applicant's Mark, Applicant asserts that the customer, market and channels of trade for the sporting goods and equipment bearing the Cited Mark differ from the channels of trade in which Applicant's online services are provided. Moreover, those products are not subject to the same restrictions, regulations and testing as Applicant's services. For these reasons, Applicant respectfully asserts, Applicant's products are quite distinct from those which bear the Cited Mark. Due to the differences in the respective products and services, Applicant requests that the Cited Mark be withdrawn as a potential obstacle to registration of Applicant's Mark.

Original PDF file:
mis-6822413096-20200318223200423960_._Exhibits_A_through_C.pdf
Converted PDF file(s) ( 3 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Original PDF file:
mis-6822413096-20200318223200423960_._Miscellaneous_Statement_to_OA1_for_BIG_SKY_-_88503703__41_.pdf
Converted PDF file(s) ( 1 page)
Miscellaneous File1

SIGNATURE(S)
Response Signature
Signature: /JEANINEMMITCHELL/     Date: 03/18/2020
Signatory's Name: Jeanine M. Mitchell
Signatory's Position: Assistant General Counsel

Signatory's Phone Number: 702-270-1521

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:    LINDA MARIE NORCROSS
   ARISTOCRAT TECHNOLOGIES, INC.
   10220 ARISTOCRAT WAY
   10220 ARISTOCRAT WAY
   LAS VEGAS, Nevada 89135
Mailing Address:    LINDA MARIE NORCROSS
   Aristocrat Technologies, Inc.
   10220 Aristocrat Way
   Las Vegas, Nevada 89135
        
Serial Number: 88503703
Internet Transmission Date: Wed Mar 18 23:15:40 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020031823154043
8975-88503703-710fefba59169355cdc6115bd5
baf6f56c66cd68c47eceadb0bd9d7653976bb1-N
/A-N/A-20200318223200423960