Response to Office Action

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

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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