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. 88609292 BLOXY COLA(Standard Characters, see http://uspto.report/TM/88609292/mark.png) has been amended as follows:

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

On December 11, 2019, the Examining Attorney issued an Office Action, refusing the application for the mark BLOXY COLA (the “Application”) on the ground that the mark causes a likelihood of confusion with Registration No. 4,998,681 for the mark BLOXI (the “Cited Registration”) in International Class 9.

Applicant has filed a petition to cancel the Cited Registration. Cancellation Proceeding No. 92073977. Applicant thus requests the Examining Attorney to suspend further action on the Application until the termination of the cancellation proceeding against the Cited Registration. TMEP § 716.02(a) (“If the examining attorney refuses registration under §2(d) of the Trademark Act in view of the mark in a prior registration, the applicant may file a petition to cancel the registration under 15 U.S.C. §1064 and, within a proper response period, inform the examining attorney that the petition to cancel has been filed. . . . The examining attorney will then suspend further action until the termination of the cancellation proceeding . . . .”). This suspension request constitutes a proper response to the Examining Attorney’s §2(d) refusal. Id.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for video game software; computer software for interactive games
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: video game software; downloadable video game software; computer software for interactive games; downloadable computer software for interactive gamesClass 009 for downloadable video game software; downloadable computer software for interactive games
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: Roblox Corporation, a corporation of Delaware, having an address of
      970 Park Place
      San Mateo, California 94403
      United States

Proposed: Roblox Corporation, a corporation of Delaware, having an address of
      970 Park Place
      San Mateo, California 94403
      United States
      Email Address: XXXX
Correspondence Information (current):
      CHRISTINE K. AU-YEUNG
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@wsgr.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 30663-TM1021.
Correspondence Information (proposed):
      John L. Slafsky
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@wsgr.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ckahn@wsgr.com

The docket/reference number is 30663-TM1021.

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: /Christine K. Au-Yeung/     Date: 04/17/2020
Signatory's Name: Christine K. Au-Yeung
Signatory's Position: Attorney for Applicant; California bar member

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:    CHRISTINE K. AU-YEUNG
   WILSON SONSINI GOODRICH & ROSATI
   
   650 PAGE MILL ROAD
   PALO ALTO, California 94304-1050
Mailing Address:    John L. Slafsky
   WILSON SONSINI GOODRICH & ROSATI
   650 PAGE MILL ROAD
   PALO ALTO, California 94304-1050
        
Serial Number: 88609292
Internet Transmission Date: Fri Apr 17 19:48:55 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202004171948558
67576-88609292-710b09379b4676e929168a5b1
83ef5822f8bc7db93a84d4393c28a804818e9736
-N/A-N/A-20200417193945002977