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

---

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. 90398634 HI-FI RUSH(Standard Characters, see http://uspto.report/TM/90398634/mark.png) has been amended as follows:

EVIDENCE
Evidence has been attached: arguments and evidence
Original PDF file:
evi_20812794208-202112171 31649773668_._Office_Acti on_Response_-_HI-FI_RUSH.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_20812794208-202112171 31649773668_._Exhibit_A.pdf
Converted PDF file(s) ( 74 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-39Evidence-40Evidence-41Evidence-42Evidence-43Evidence-44Evidence-45Evidence-46Evidence-47Evidence-48Evidence-49Evidence-50Evidence-51Evidence-52Evidence-53Evidence-54Evidence-55Evidence-56Evidence-57Evidence-58Evidence-59Evidence-60Evidence-61Evidence-62Evidence-63Evidence-64Evidence-65Evidence-66Evidence-67Evidence-68Evidence-69Evidence-70Evidence-71Evidence-72Evidence-73Evidence-74

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Mobile application software, namely, electronic game programs; computer game software for use with on-line interactive games; video games for mobile devices, electronic game programs; downloadable electronic game programs; electronic game software; computer game programs; interactive game programs; interactive game software; downloadable computer game software offered via the internet and wireless devices; Computer game software for use with computers and video game consoles; downloadable computer and video game software offered via the internet and wireless devices; electronic devices featuring computer game software for use with computers and video game consoles; pre-recorded digital media in the nature of CD-ROMs and DVDs featuring computer games and video games, wallpapers, screensavers, digital music files, and graphics, videos, films, multimedia files, motion pictures, and animation in the field of video games and computer games; downloadable digital media, namely, downloadable images, downloadable artwork, downloadable text files, downloadable audio files, downloadable video files, downloadable game software, and downloadable motion pictures
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.

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[ Honduras application number 2020-19682 filed 07/09/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Mobile application software, namely, electronic game programs; Downloadable mobile application software, namely, downloadable electronic game programs; computer game software for use with on-line interactive games; downloadable computer game software for use with on-line interactive games; video games for mobile devices, electronic game programs; downloadable video game programs for mobile devices; downloadable electronic game programs; electronic game software; downloadable electronic game software; computer game programs; downloadable computer game programs; interactive game programs; downloadable interactive game programs; interactive game software; downloadable interactive game software; downloadable computer game software offered via the internet and wireless devices; Computer game software for use with computers and video game consoles; downloadable computer game software for use with computers and video game consoles; downloadable computer and video game software offered via the internet and wireless devices; electronic devices featuring computer game software for use with computers and video game consoles; pre-recorded electronic media devices featuring downloadable computer game software for use with computers and video game consoles; pre-recorded digital media in the nature of CD-ROMs and DVDs featuring computer games and video games, wallpapers, screensavers, digital music files, and graphics, videos, films, multimedia files, motion pictures, and animation in the field of video games and computer games; pre-recorded digital media in the nature of CD-ROMs and DVDs featuring computer games and video games, wallpapers, screensavers, graphics, videos, films, motion pictures, and animation in the field of video games and computer games; downloadable digital media, namely, downloadable images, downloadable artwork, downloadable text files, downloadable audio files, downloadable video files, downloadable game software, and downloadable motion pictures; downloadable digital media, namely, downloadable images, downloadable artwork, downloadable text files, downloadable game software, and downloadable motion pictures, all in the field of video games and computer gamesClass 009 for Downloadable mobile application software, namely, downloadable electronic game programs; downloadable computer game software for use with on-line interactive games; downloadable video game programs for mobile devices; downloadable electronic game programs; downloadable electronic game software; downloadable computer game programs; downloadable interactive game programs; downloadable interactive game software; downloadable computer game software offered via the internet and wireless devices; downloadable computer game software for use with computers and video game consoles; downloadable computer and video game software offered via the internet and wireless devices; pre-recorded electronic media devices featuring downloadable computer game software for use with computers and video game consoles; pre-recorded digital media in the nature of CD-ROMs and DVDs featuring computer games and video games, wallpapers, screensavers, graphics, videos, films, motion pictures, and animation in the field of video games and computer games; downloadable digital media, namely, downloadable images, downloadable artwork, downloadable text files, downloadable game software, and downloadable motion pictures, all in the field of video games and computer 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


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 [ Honduras application number 2020-19682 filed 07/09/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority.

Applicant proposes to amend the following:

Current:
Class 041 for Entertainment services, namely, providing on-line interactive computer games; online interactive games accessible via mobile phones and wireless devices; entertainment services, namely, providing information and entertainment in the nature of news, information, non-downloadable art pictures, non-downloadable video clips, and non-downloadable trailers relating to electronic computer games via the Internet; Providing non-downloadable electronic publications in the nature of books, magazines, journals and newspapers in the field of novels, comics and cartoons; movie film production; movie film distribution; television productions: rental of amusement machines and apparatus; rental of game machines and apparatus
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.

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[ Honduras application number 2020-19683 filed 07/09/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Entertainment services, namely, providing on-line interactive computer games; online interactive games accessible via mobile phones and wireless devices; entertainment services, namely, providing information and entertainment in the nature of news, information, non-downloadable art pictures, non-downloadable video clips, and non-downloadable trailers relating to electronic computer games via the Internet; Providing non-downloadable electronic publications in the nature of books, magazines, journals and newspapers in the field of novels, comics and cartoons; movie film production; movie film distribution; television productions: rental of amusement machines and apparatus; television show production; rental of amusement machines and apparatus; rental of game machines and apparatusClass 041 for Entertainment services, namely, providing on-line interactive computer games; online interactive games accessible via mobile phones and wireless devices; entertainment services, namely, providing information and entertainment in the nature of news, information, non-downloadable art pictures, non-downloadable video clips, and non-downloadable trailers relating to electronic computer games via the Internet; Providing non-downloadable electronic publications in the nature of books, magazines, journals and newspapers in the field of novels, comics and cartoons; movie film production; movie film distribution; television show production; rental of amusement machines and apparatus; rental of game machines and apparatus
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


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 [ Honduras application number 2020-19683 filed 07/09/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority.
Correspondence Information (current):
      ANN K. FORD
      PRIMARY EMAIL FOR CORRESPONDENCE: dctrademarks@dlapiper.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): gregory.esau@dlapiper.com
Correspondence Information (proposed):
      Ann K. Ford
      PRIMARY EMAIL FOR CORRESPONDENCE: dctrademarks@dlapiper.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): gregory.esau@dlapiper.com

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: /Thomas E. Zutic/     Date: 12/17/2021
Signatory's Name: Thomas E. Zutic
Signatory's Position: Attorney of record, DC Bar Member
Signature method: Signed directly within the form

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:    ANN K. FORD
   DLA PIPER LLP (US)
   
   500 EIGHTH STREET, NW
   WASHINGTON, District of Columbia 20004
Mailing Address:    Ann K. Ford
   DLA PIPER LLP (US)
   500 EIGHTH STREET, NW
   WASHINGTON, District of Columbia 20004
        
Serial Number: 90398634
Internet Transmission Date: Fri Dec 17 13:25:47 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-202112171325479
42130-90398634-7813256f285a5fd272dc9821f
65d68983bf37f2eedcd0fa5d885984d7a884b2e7
eb-N/A-N/A-20211217131649773668