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. 90613293 BATTLE.NET (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9061329 3/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable computer and video game programs; Downloadable computer game software, Downloadable video game software; Computer game software and video game software downloadable from a global computer network; Interactive multimedia video game and computer game programs; Video game software downloadable to mobile phones, tablets, and other electronic mobile devices
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date. For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: 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 and video game programs; Downloadable computer game and video game programs; Downloadable computer game software, Downloadable video game software; Computer game software and video game software downloadable from a global computer network; Interactive multimedia video game and computer game programs; downloadable Interactive multimedia video game and computer game programs; Video game software downloadable to mobile phones, tablets, and other electronic mobile devices; Video game software downloadable to mobile phones, tablets, laptops, and mobile gaming devices.Class 009 for Downloadable computer game and video game programs; Downloadable computer game software, Downloadable video game software; Computer game software and video game software downloadable from a global computer network; downloadable Interactive multimedia video game and computer game programs; Video game software downloadable to mobile phones, tablets, laptops, and mobile gaming devices.
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date. For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: 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 proposes to amend the following:

Current:
Class 035 for On-line retail store services featuring game software, video games, computer games, and game programs
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date. For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: 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: On-line retail store services featuring game software, video games, computer games, and game programs; On-line retail store services featuring game software, video games, computer games, and mobile game programs.Class 035 for On-line retail store services featuring game software, video games, computer games, and mobile game programs.
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date. For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: 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 proposes to amend the following:

Current:
Class 038 for Streaming of audio, visual and audiovisual material via a global computer network; video on demand transmissions; audio, video and multimedia broadcasting via the Internet and other communications networks; webcasting services via global and local computer networks; transmission of messages, data and content via the Internet and other communications networks; providing online chat rooms, bulletin boards and online forums for transmission of messages, information, and multimedia content among users over the Internet; computer transmission of information accessed via a code or a terminal; voice chat and web messaging services
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date. For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: 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: Streaming of audio, visual and audiovisual material via a global computer network; video on demand transmissions; audio, video and multimedia broadcasting via the Internet and other communications networks; webcasting services via global and local computer networks; transmission of messages, data and content via the Internet and other communications networks; transmission of messages, data, photos, GIFs, podcasts, newsfeeds, blogs, articles, infographic, and audiovisual content via the Internet and other communications networks; providing online chat rooms, bulletin boards and online forums for transmission of messages, information, and multimedia content among users over the Internet; providing online chat rooms, electronic bulletin boards and online forums for transmission of messages, information, and multimedia content among computer users in the field of general interest over the Internet; computer transmission of information accessed via a code or a terminal; voice chat and web messaging services; providing voice chat services and web messaging servicesClass 038 for Streaming of audio, visual and audiovisual material via a global computer network; video on demand transmissions; audio, video and multimedia broadcasting via the Internet and other communications networks; webcasting services via global and local computer networks; transmission of messages, data, photos, GIFs, podcasts, newsfeeds, blogs, articles, infographic, and audiovisual content via the Internet and other communications networks; providing online chat rooms, electronic bulletin boards and online forums for transmission of messages, information, and multimedia content among computer users in the field of general interest over the Internet; computer transmission of information accessed via a code or a terminal; providing voice chat services and web messaging services
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date. For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: 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 proposes to amend the following:

Current:
Class 041 for Entertainment services, namely, providing on-line computer games; Entertainment services, namely, providing on-line video games; Entertainment services, namely, providing on-line interactive multiplayer video games; Entertainment services, namely, providing temporary use of non-downloadable computer and video games; providing on-line non-downloadable electronic games that may be accessed via a global computer network; Entertainment services, namely, arranging and conducting of competitions in the field of electronic games; providing online news and information in the field of electronic games; Gaming services in the nature of conducting online computer game tournaments; providing a web-based system and on-line portal for customers to participate in on-line gaming
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date. For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: 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: Entertainment services, namely, providing on-line computer games; Entertainment services, namely, providing on-line video games; Entertainment services, namely, providing on-line interactive multiplayer video games; Entertainment services, namely, providing temporary use of non-downloadable computer and video games; providing on-line non-downloadable electronic games that may be accessed via a global computer network; entertainment services, namely, providing temporary use of on-line non-downloadable electronic games that may be accessed via a global computer network; Entertainment services, namely, arranging and conducting of competitions in the field of electronic games; providing online news and information in the field of electronic games; providing online news and information in the field of electronic games provided via the internet; Gaming services in the nature of conducting online computer game tournaments; providing a web-based system and on-line portal for customers to participate in on-line gaming; providing a web-based system and on-line portal for customers to participate in on-line gaming operations and coordination of game tournaments, leagues, and tours for recreational computer game playing purposesClass 041 for Entertainment services, namely, providing on-line computer games; Entertainment services, namely, providing on-line video games; Entertainment services, namely, providing on-line interactive multiplayer video games; Entertainment services, namely, providing temporary use of non-downloadable computer and video games; entertainment services, namely, providing temporary use of on-line non-downloadable electronic games that may be accessed via a global computer network; Entertainment services, namely, arranging and conducting of competitions in the field of electronic games; providing online news and information in the field of electronic games provided via the internet; Gaming services in the nature of conducting online computer game tournaments; providing a web-based system and on-line portal for customers to participate in on-line gaming operations and coordination of game tournaments, leagues, and tours for recreational computer game playing purposes
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date. For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: 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


The owner's/holder's current attorney information: Neil Yang. Neil Yang of Activision Legal Department, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      3100 Ocean Park Blvd
      Santa Monica, California 90405
      United States
      The email address is neil.yang@activision.com
Correspondence Information (current):
      Neil Yang
      PRIMARY EMAIL FOR CORRESPONDENCE: neil.yang@activision.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): terry.kiel@activision.com; kristian.croell@activision.com
Correspondence Information (proposed):
      Neil Yang
      PRIMARY EMAIL FOR CORRESPONDENCE: neil.yang@activision.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): terry.kiel@activision.com; kristian.croell@activision.com; tm@activision.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: /Neil Yang/     Date: 01/12/2022
Signatory's Name: Neil Yang
Signatory's Position: Attorney of Record, CA Bar Member

Signatory's Phone Number: 310-255-2000 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:    Neil Yang
   Activision Legal Department
   
   3100 Ocean Park Blvd
   Santa Monica, California 90405
Mailing Address:    Neil Yang
   Activision Legal Department
   3100 Ocean Park Blvd
   Santa Monica, California 90405
        
Serial Number: 90613293
Internet Transmission Date: Wed Jan 12 12:35:38 ET 2022
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2022011212353805
0198-90613293-800b812c742212b9228b93f387
6db6dd81d604385e7883644793494eee4a61ef-N
/A-N/A-20220112120658175344