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 11/30/2023)

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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 11/30/2023)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88866130 BACKBONE(Standard Characters, see http://uspto.report/TM/88866130/mark.png) has been amended as follows:

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

Please see the written response attached as a .pdf in the Evidence Section

EVIDENCE
Evidence has been attached: a written response and Exhibits A-F, consisting of TTAB decisions, Wikipedia pages and website printouts
Original PDF file:
evi_9765103130-2020122917 0423362985_._2F09912.PDF
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3
Original PDF file:
evi_9765103130-2020122917 0423362985_._2F09919.PDF
Converted PDF file(s) ( 7 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7
Original PDF file:
evi_9765103130-2020122917 0423362985_._2F09920.PDF
Converted PDF file(s) ( 15 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15
Original PDF file:
evi_9765103130-2020122917 0423362985_._2F09913.PDF
Converted PDF file(s) ( 13 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13
Original PDF file:
evi_9765103130-2020122917 0423362985_._2F09916.PDF
Converted PDF file(s) ( 9 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9
Original PDF file:
evi_9765103130-2020122917 0423362985_._2F09917.PDF
Converted PDF file(s) ( 39 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16Evidence-17Evidence-18Evidence-19Evidence-20Evidence-21Evidence-22Evidence-23Evidence-24Evidence-25Evidence-26Evidence-27Evidence-28Evidence-29Evidence-30Evidence-31Evidence-32Evidence-33Evidence-34Evidence-35Evidence-36Evidence-37Evidence-38Evidence-39
Original PDF file:
evi_9765103130-2020122917 0423362985_._2F09918.PDF
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Computer gaming software; Downloadable electronic game programs; Downloadable information relating to games and gaming; Virtual reality game software; Interactive game software; Electronic publications, downloadable, relating to games and gaming; Games software for use with video game consoles; Electronic game software for mobile phones; Augmented reality game software
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018222643 filed 04/08/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Computer gaming software; Downloadable Computer gaming software; Downloadable electronic game programs; Downloadable information relating to games and gaming; Downloadable information in the nature of downloadable electronic newsletters, game guides, instructions, manuals, and articles relating to games and gaming; Virtual reality game software; Downloadable Virtual reality game software; Interactive game software; Electronic publications, downloadable, relating to games and gaming; Electronic publications in the nature of newsletters, game guides, instructions, manuals, and articles, downloadable, relating to games and gaming; Games software for use with video game consoles; Downloadable Games software for use with video game consoles; Electronic game software for mobile phones; Downloadable Electronic game software for mobile phones; Augmented reality game software; Downloadable Augmented reality game softwareClass 009 for Downloadable Computer gaming software; Downloadable electronic game programs; Downloadable information in the nature of downloadable electronic newsletters, game guides, instructions, manuals, and articles relating to games and gaming; Downloadable Virtual reality game software; Interactive game software; Electronic publications in the nature of newsletters, game guides, instructions, manuals, and articles, downloadable, relating to games and gaming; Downloadable Games software for use with video game consoles; Downloadable Electronic game software for mobile phones; Downloadable Augmented reality game software
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018222643 filed 04/08/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
Correspondence Information (current):
      RHETT V. BARNEY
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@leehayes.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rhettb@leehayes.com; karig@leehayes.com

The docket/reference number is O064-0083TMU.
Correspondence Information (proposed):
      Rhett V. Barney
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@leehayes.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rhettb@leehayes.com; karig@leehayes.com

The docket/reference number is O064-0083TMU.

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: /Rhett Barney/     Date: 12/29/2020
Signatory's Name: Rhett V. Barney
Signatory's Position: Attorney of Record, WA State Bar Member

Signatory's Phone Number: 509-944-4642

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:    RHETT V. BARNEY
   LEE & HAYES, PC
   
   601 W. RIVERSIDE AVE SUITE 1400
   SPOKANE, Washington 99201
Mailing Address:    Rhett V. Barney
   LEE & HAYES, PC
   601 W. RIVERSIDE AVE SUITE 1400
   SPOKANE, Washington 99201
        
Serial Number: 88866130
Internet Transmission Date: Tue Dec 29 18:20:36 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2020122918203677
0866-88866130-75014a3e82d5b7a0dcfb3ce7a6
3b3481e9f6434eeef02c0fcb1b79b3dbab346-N/
A-N/A-20201229170423362985