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. 90061680 NUVERSE(Standard Characters, see http://uspto.report/TM/90061680/mark.png) has been amended as follows:

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

As required, Applicant has amended the identification of goods and services. Applicant believes it has sufficiently addressed the issues raised in the Office Action and notes that the Examining Attorney's search of the Office records revealed no registered mark or pending application that would bar registration of its mark. Therefore, Applicant respectfully requests that this application be approved for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable computer software, namely, game engine software for video game development and operation
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: Downloadable computer software, namely, game engine software for video game development and operation; Downloadable electronic game programsClass 009 for Downloadable computer software, namely, game engine software for video game development and operation; Downloadable electronic game programs
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 028 for Games and playthings, namely, electronic game equipment for playing video games, electronic game programs, player-operated electronic controllers for electronic video game machines; action figures and accessories therefor
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: Games and playthings, namely, electronic game equipment for playing video games, electronic game programs, player-operated electronic controllers for electronic video game machines; Games and playthings, namely, electronic game equipment for playing video games, namely, handheld joy stick units; player-operated electronic controllers for electronic video game machines; action figures and accessories thereforClass 028 for Games and playthings, namely, electronic game equipment for playing video games, namely, handheld joy stick units; player-operated electronic controllers for electronic video game machines; action figures and accessories therefor
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 042 for Video game development services; Designing and modifying computer programs and video games for others; Video game programming development services; Design and development of computer game software
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 development services; Video game development services for others; Designing and modifying computer programs and video games for others; Video game programming development services; Video game programming development services for others; Design and development of computer game software; Design and development of computer game software for others; Software as a service (SAAS) featuring software in the nature of electronic game programsClass 042 for Video game development services for others; Designing and modifying computer programs and video games for others; Video game programming development services for others; Design and development of computer game software for others; Software as a service (SAAS) featuring software in the nature of electronic game programs
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.
Correspondence Information (current):
      B. BRETT HEAVNER
      PRIMARY EMAIL FOR CORRESPONDENCE: docketing@finnegan.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 14972.0164.
Correspondence Information (proposed):
      B. Brett Heavner
      PRIMARY EMAIL FOR CORRESPONDENCE: docketing@finnegan.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 14972.0164.

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: /B. Brett Heavner/     Date: 09/15/2020
Signatory's Name: B. Brett Heavner
Signatory's Position: Attorney of record, DC Bar member

Signatory's Phone Number: 202-408-4000

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:    B. BRETT HEAVNER
   FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
   
   901 NEW YORK AVENUE NW
   WASHINGTON, District of Columbia 20001
Mailing Address:    B. Brett Heavner
   FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
   901 NEW YORK AVENUE NW
   WASHINGTON, District of Columbia 20001
        
Serial Number: 90061680
Internet Transmission Date: Tue Sep 15 11:56:00 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.X.X-2020091511560007595
7-90061680-750a0c46aa2c170b29e2b1d269f4d
3d5a783ceaed44752e3e7af38980f91eb944-N/A
-N/A-20200911082447777509