PTO- 1957 |
Approved for use through 11/30/2023. OMB 0651-0050 |
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
90142794 |
LAW OFFICE ASSIGNED |
LAW OFFICE 106 |
MARK SECTION |
MARK |
mark |
LITERAL ELEMENT |
FACEBOOK |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) |
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
APPLICANT:
|
Facebook, Inc.
|
)
)
|
|
MARK:
|
FACEBOOK
|
)
|
Tejbir Singh
|
|
|
)
|
Examining Attorney
|
SERIAL NO.:
|
90/142,794
|
)
|
Law Office 106
|
|
|
)
|
|
CLASS:
|
28
|
)
|
|
|
|
)
|
|
FILING DATE:
|
August 27, 2020
|
)
|
|
RESPONSE TO OFFICE ACTION
Applicant has received and reviewed the non-final Office Action dated January 4, 2021, from Examining Attorney Tejbir Singh, Law
Office 106, regarding the above-referenced application for FACEBOOK, Serial No. 90/142,794 (“Applicant’s Mark”), which requests certain amendments to the goods described therein, as well a division
of the application to include Class 9.
As discussed during Applicant’s counsel’s phone call with the Examining Attorney on May 11, 2021, Applicant maintains that the following goods are acceptable
and properly described in Class 28, namely: “Wearable peripherals for playing video games specially adapted for computers, tablet computers, mobile devices, and mobile
telephones; Hand-held units for playing electronic, computer, interactive, and video games”.
Applicant’s affiliate holds several registrations in Class 28 for identical language, namely, “wearable peripherals for playing video games specially adapted
for computers, tablet computers, mobile devices, and mobile telephones”, including but not limited to U.S. Reg. Nos. 5443890 and 5311964. Applicant’s affiliate also holds additional registrations
involving nearly identical language for “wearable peripherals” in Class 28, including but limited to U.S. Reg. Nos. 6278272, 5448746, 4965639, and 4762036.
In addition, as noted in the USPTO’s Trademark ID Manual regarding the classification of “hand-held units” in Class 28, “[h]and-held units for playing
electronic games is acceptable; further specification is also acceptable, but it is not required”. See Exhibit A, an excerpt from USPTO Trademark ID Manual, NCL Version
10-2016 (available at http://idm-tmng.gov.uspto.report/id-master-list-public.html).
Accordingly, and as agreed during the May 11, 2021 phone call, the foregoing descriptions do not require further amendments or clarifications, and Applicant
respectfully requests that the Examining Attorney’s objection be withdrawn with regard to “Wearable peripherals for playing video games specially adapted for computers,
tablet computers, mobile devices, and mobile telephones; Hand-held units for playing electronic, computer, interactive, and video games”.
Finally, as addressed in the corresponding section of this Office Action Response, Applicant has paid the required fee necessary to add Class 9 to the pending
application, and move the following description of goods to that Class: “Virtual, augmented, and mixed reality headsets and helmets adapted for use in playing electronic and interactive multimedia
games; Virtual reality headsets for playing video games for connection to computers, tablet computers, mobile devices, and mobile phones in order to enable virtual reality experiences”.
Conclusion
Having fully responded to the matters raised in the initial Office Action dated January 4, 2021, Applicant respectfully requests that Applicant’s application be
passed to publication in due course.
Dated: May 28, 2021
|
Respectfully submitted,
/Ana-Claudia Roderick/
Ana-Claudia Roderick
KILPATRICK TOWNSEND & STOCKTON LLP
The Grace Building
1114 Avenue of the Americas
New York, New York 10036
Telephone: (212) 775-8700
Facsimile: (212) 775-8800
E-mail: aroderick@kilpatricktownsend.com
Attorneys for Applicant
Facebook, Inc.
|
|
|
|
EVIDENCE SECTION |
EVIDENCE FILE NAME(S) |
ORIGINAL PDF FILE |
evi_453762216-20210528124 147767105_._Exhibit_A_-_F
ACEBOOK__Cl._28_.pdf |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS\EXPORT18\IMAGEOUT 18\901\427\90142794\xml6\ ROA0002.JPG |
GOODS AND/OR SERVICES SECTION (028) (current) |
INTERNATIONAL CLASS |
028 |
DESCRIPTION |
Virtual, augmented, and mixed reality headsets and helmets adapted for use in playing electronic and interactive multimedia games;
Virtual reality headsets for playing video games for connection to computers, tablet computers, mobile devices, and mobile phones in order to enable virtual reality experiences; Video game
interactive remote control units; Wearable peripherals for playing video games specially adapted for computers, tablet computers, mobile devices, and mobile telephones; Game controllers for computer
games; Audio and visual headsets for use in playing video games; Hand-held units for playing electronic, computer, interactive, and video games; Gaming devices, mobile gaming devices, namely, gaming
machines with or without video output for playing computer games and video games; Apparatus for electronic games other than those adapted for use with an external display screen or monitor; Apparatus
for electronic games adapted for use with an external display screen or monitor; Bags specially adapted for handheld video games and video game consoles; Game controllers in the nature of keyboards
for computer games; Games adapted for use with television receivers; Gaming headsets adapted for use in playing video games; Video game interactive hand held remote controls for playing electronic
games |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (028) (proposed) |
INTERNATIONAL CLASS |
028 |
TRACKED TEXT DESCRIPTION |
Virtual, augmented, and mixed reality headsets and helmets adapted for use in playing electronic and
interactive multimedia games; Video game interactive remote control units; Virtual reality headsets for playing video games for
connection to computers, tablet computers, mobile devices, and mobile phones in order to enable virtual reality experiences; Wearable peripherals for playing video games
specially adapted for computers, tablet computers, mobile devices, and mobile telephones; Game controllers for computer games; Audio and visual
headsets for use in playing video games; Hand-held units for playing electronic, computer, interactive, and video games; Gaming devices, mobile
gaming devices, namely, gaming machines with or without video output for playing computer games and video games; Apparatus for electronic games other than those adapted for
use with an external display screen or monitor; Apparatus for electronic games adapted for use with an external display screen or monitor; Bags
specially adapted for handheld video games and video game consoles; Game controllers in the nature of keyboards for computer games; Games adapted
for use with television receivers; Gaming headsets adapted for use in playing video games; Video game interactive hand held remote controls for
playing electronic games |
FINAL DESCRIPTION |
Video game interactive remote control units; Wearable peripherals for playing video games specially adapted for computers, tablet
computers, mobile devices, and mobile telephones; Game controllers for computer games; Audio and visual headsets for use in playing video games; Hand-held units for playing electronic, computer,
interactive, and video games; Gaming devices, mobile gaming devices, namely, gaming machines with or without video output for playing computer games and video games; Apparatus for electronic games
other than those adapted for use with an external display screen or monitor; Apparatus for electronic games adapted for use with an external display screen or monitor; Bags specially adapted for
handheld video games and video game consoles; Game controllers in the nature of keyboards for computer games; Games adapted for use with television receivers; Gaming headsets adapted for use in
playing video games; Video game interactive hand held remote controls for playing electronic games |
WEBPAGE URL |
None Provided |
WEBPAGE DATE OF ACCESS |
None Provided |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (009)(class added) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Virtual, augmented, and mixed reality headsets and helmets adapted for use in playing electronic and interactive multimedia games;
Virtual reality headsets for playing video games for connection to computers, tablet computers, mobile devices, and mobile phones in order to enable virtual reality experiences |
WEBPAGE URL |
None Provided |
WEBPAGE DATE OF ACCESS |
None Provided |
FILING BASIS |
Section 1(b) |
CORRESPONDENCE INFORMATION (current) |
NAME |
ALLISEN PAWLENTY |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
tmadmin@kilpatricktownsend.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
FBProsecution@kilpatricktownsend.com |
DOCKET/REFERENCE NUMBER |
1164127 |
CORRESPONDENCE INFORMATION (proposed) |
NAME |
Allisen Pawlenty |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
tmadmin@kilpatricktownsend.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
FBProsecution@kilpatricktownsend.com |
DOCKET/REFERENCE NUMBER |
1164127 |
PAYMENT SECTION |
APPLICATION FOR REGISTRATION PER CLASS |
350 |
NUMBER OF CLASSES |
1 |
TOTAL FEES DUE |
350 |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
The undersigned has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules
of Practice. The undersigned acknowledges that the USPTO may, upon later review, require a signed declaration. |
RESPONSE SIGNATURE |
/Ana-Claudia Roderick/ |
SIGNATORY'S NAME |
Ana-Claudia Roderick |
SIGNATORY'S POSITION |
Associate Attorney, Kilpatrick Townsend & Stockton LLP, New York Bar Member |
SIGNATORY'S PHONE NUMBER |
212-775-8700 |
DATE SIGNED |
05/28/2021 |
ROLE OF AUTHORIZED SIGNATORY |
Authorized U.S.-Licensed Attorney |
SIGNATURE METHOD |
Sent to third party for signature |
FILING INFORMATION SECTION |
SUBMIT DATE |
Fri May 28 14:01:04 ET 2021 |
TEAS STAMP |
USPTO/ROA-XX.XX.XX.XXX-20
210528140104389557-901427
94-7801c9663131a25f99941b
a8646fa992d3958327f3d1d0d
f2ea826f1c1272f3e2-CC-010
12962-2021052812414776710
5 |
PTO- 1957 |
Approved for use through 11/30/2023. OMB 0651-0050 |
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
90142794 FACEBOOK(Standard Characters, see http://uspto.report/TM/90142794/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
APPLICANT:
|
Facebook, Inc.
|
)
)
|
|
MARK:
|
FACEBOOK
|
)
|
Tejbir Singh
|
|
|
)
|
Examining Attorney
|
SERIAL NO.:
|
90/142,794
|
)
|
Law Office 106
|
|
|
)
|
|
CLASS:
|
28
|
)
|
|
|
|
)
|
|
FILING DATE:
|
August 27, 2020
|
)
|
|
RESPONSE TO OFFICE ACTION
Applicant has received and reviewed the non-final Office Action dated January 4, 2021, from Examining Attorney Tejbir Singh, Law
Office 106, regarding the above-referenced application for FACEBOOK, Serial No. 90/142,794 (“Applicant’s Mark”), which requests certain amendments to the goods described therein, as well a division
of the application to include Class 9.
As discussed during Applicant’s counsel’s phone call with the Examining Attorney on May 11, 2021, Applicant maintains that the following goods are acceptable
and properly described in Class 28, namely: “Wearable peripherals for playing video games specially adapted for computers, tablet computers, mobile devices, and mobile
telephones; Hand-held units for playing electronic, computer, interactive, and video games”.
Applicant’s affiliate holds several registrations in Class 28 for identical language, namely, “wearable peripherals for playing video games specially adapted
for computers, tablet computers, mobile devices, and mobile telephones”, including but not limited to U.S. Reg. Nos. 5443890 and 5311964. Applicant’s affiliate also holds additional registrations
involving nearly identical language for “wearable peripherals” in Class 28, including but limited to U.S. Reg. Nos. 6278272, 5448746, 4965639, and 4762036.
In addition, as noted in the USPTO’s Trademark ID Manual regarding the classification of “hand-held units” in Class 28, “[h]and-held units for playing
electronic games is acceptable; further specification is also acceptable, but it is not required”. See Exhibit A, an excerpt from USPTO Trademark ID Manual, NCL Version
10-2016 (available at http://idm-tmng.gov.uspto.report/id-master-list-public.html).
Accordingly, and as agreed during the May 11, 2021 phone call, the foregoing descriptions do not require further amendments or clarifications, and Applicant
respectfully requests that the Examining Attorney’s objection be withdrawn with regard to “Wearable peripherals for playing video games specially adapted for computers,
tablet computers, mobile devices, and mobile telephones; Hand-held units for playing electronic, computer, interactive, and video games”.
Finally, as addressed in the corresponding section of this Office Action Response, Applicant has paid the required fee necessary to add Class 9 to the pending
application, and move the following description of goods to that Class: “Virtual, augmented, and mixed reality headsets and helmets adapted for use in playing electronic and interactive multimedia
games; Virtual reality headsets for playing video games for connection to computers, tablet computers, mobile devices, and mobile phones in order to enable virtual reality experiences”.
Conclusion
Having fully responded to the matters raised in the initial Office Action dated January 4, 2021, Applicant respectfully requests that Applicant’s application be
passed to publication in due course.
Dated: May 28, 2021
|
Respectfully submitted,
/Ana-Claudia Roderick/
Ana-Claudia Roderick
KILPATRICK TOWNSEND & STOCKTON LLP
The Grace Building
1114 Avenue of the Americas
New York, New York 10036
Telephone: (212) 775-8700
Facsimile: (212) 775-8800
E-mail: aroderick@kilpatricktownsend.com
Attorneys for Applicant
Facebook, Inc.
|
|
|
EVIDENCE
Original PDF file:
evi_453762216-20210528124
147767105_._Exhibit_A_-_F ACEBOOK__Cl._28_.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current:
Class 028 for Virtual, augmented, and mixed reality headsets and helmets adapted for use in playing electronic and interactive multimedia games; Virtual reality headsets for playing video games for
connection to computers, tablet computers, mobile devices, and mobile phones in order to enable virtual reality experiences; Video game interactive remote control units; Wearable peripherals for
playing video games specially adapted for computers, tablet computers, mobile devices, and mobile telephones; Game controllers for computer games; Audio and visual headsets for use in playing video
games; Hand-held units for playing electronic, computer, interactive, and video games; Gaming devices, mobile gaming devices, namely, gaming machines with or without video output for playing computer
games and video games; Apparatus for electronic games other than those adapted for use with an external display screen or monitor; Apparatus for electronic games adapted for use with an external
display screen or monitor; Bags specially adapted for handheld video games and video game consoles; Game controllers in the nature of keyboards for computer games; Games adapted for use with
television receivers; Gaming headsets adapted for use in playing video games; Video game interactive hand held remote controls for playing electronic 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: Virtual, augmented, and mixed reality headsets and helmets adapted for use in playing electronic and interactive multimedia
games;
Video game interactive remote control units;
Virtual reality headsets for playing video games for connection to computers,
tablet computers, mobile devices, and mobile phones in order to enable virtual reality experiences;
Wearable peripherals for playing video games specially adapted for
computers, tablet computers, mobile devices, and mobile telephones;
Game controllers for computer games;
Audio and visual headsets for use in
playing video games;
Hand-held units for playing electronic, computer, interactive, and video games;
Gaming devices, mobile gaming devices,
namely, gaming machines with or without video output for playing computer games and video games;
Apparatus for electronic games other than those adapted for use with an
external display screen or monitor;
Apparatus for electronic games adapted for use with an external display screen or monitor;
Bags specially
adapted for handheld video games and video game consoles;
Game controllers in the nature of keyboards for computer games;
Games adapted for use
with television receivers;
Gaming headsets adapted for use in playing video games;
Video game interactive hand held remote controls for playing
electronic gamesClass 028 for Video game interactive remote control units; Wearable peripherals for playing video games specially adapted for computers, tablet computers, mobile devices, and
mobile telephones; Game controllers for computer games; Audio and visual headsets for use in playing video games; Hand-held units for playing electronic, computer, interactive, and video games;
Gaming devices, mobile gaming devices, namely, gaming machines with or without video output for playing computer games and video games; Apparatus for electronic games other than those adapted for use
with an external display screen or monitor; Apparatus for electronic games adapted for use with an external display screen or monitor; Bags specially adapted for handheld video games and video game
consoles; Game controllers in the nature of keyboards for computer games; Games adapted for use with television receivers; Gaming headsets adapted for use in playing video games; Video game
interactive hand held remote controls for playing electronic 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.
Webpage URL: None Provided
Webpage Date of Access: None Provided
Applicant hereby adds the following class of goods/services to the application:
New: Class 009 for Virtual, augmented, and mixed reality headsets and helmets adapted for use in playing electronic and interactive multimedia games; Virtual reality headsets for playing video
games for connection to computers, tablet computers, mobile devices, and mobile phones in order to enable virtual reality experiences
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.
Webpage URL: None Provided
Webpage Date of Access: None Provided
Correspondence Information (current):
ALLISEN PAWLENTY
PRIMARY EMAIL FOR CORRESPONDENCE: tmadmin@kilpatricktownsend.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): FBProsecution@kilpatricktownsend.com
The docket/reference number is 1164127.
Correspondence Information (proposed):
Allisen Pawlenty
PRIMARY EMAIL FOR CORRESPONDENCE: tmadmin@kilpatricktownsend.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): FBProsecution@kilpatricktownsend.com
The docket/reference number is 1164127.
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).
FEE(S)
Fee(s) in the amount of $350 is being submitted.
SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the
Trademark Rules of Practice.
Response Signature
Signature: /Ana-Claudia Roderick/ Date: 05/28/2021
Signatory's Name: Ana-Claudia Roderick
Signatory's Position: Associate Attorney, Kilpatrick Townsend & Stockton LLP, New York Bar Member
Signatory's Phone Number: 212-775-8700 Signature method: Sent to third party for signature
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: ALLISEN PAWLENTY
KILPATRICK TOWNSEND & STOCKTON LLP
607 14TH STREET NW, SUITE 900
WASHINGTON, District of Columbia 20005-2018
Mailing Address: Allisen Pawlenty
KILPATRICK TOWNSEND & STOCKTON LLP
607 14TH STREET NW, SUITE 900
WASHINGTON, District of Columbia 20005-2018
PAYMENT: 90142794
PAYMENT DATE: 05/28/2021
Serial Number: 90142794
Internet Transmission Date: Fri May 28 14:01:04 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20210528140104389
557-90142794-7801c9663131a25f99941ba8646
fa992d3958327f3d1d0df2ea826f1c1272f3e2-C
C-01012962-20210528124147767105