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. 97242891 THE DAY BEFORE(Standard Characters, see http://uspto.report/TM/97242891/mark.png) has been amended as follows:

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

In the Office Action, the Examining Attorney issued a partial refusal under Section 2(d) due to U.S. Trademark Registration No. 6886492. Applicant has initiated a cancellation proceeding at the TTAB against the cited registration (Cancellation No. 92082063) and therefore requests that, after the amendments submitted elsewhere in this Response are processed, this application be suspended until the cited registration is successfully cancelled. Thank you.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable game software; computer game software downloadable from a global computer network; downloadable computer game software for use on mobile devices; recorded electronic game programs; downloadable electronic game programs; downloadable video game programs; downloadable computer game software for use on mobile and cellular phones; recorded computer game software; downloadable software for metaverses, virtual worlds and virtual reality; virtual reality software; virtual reality game software; downloadable virtual goods and digital assets for use in virtual worlds; downloadable virtual goods, namely, computer software programs featuring in-game resources, tokens and virtual currency for use in video games and online virtual worlds; downloadable software featuring virtual currency, namely, computer programs featuring in-game tokens and currency for use in online web and mobile video games; downloadable computer software for live digital communications, namely, live video and audio conferencing with multiple simultaneous users, teleconferencing, network conferencing, web conferencing, text messaging, instant messaging, and videotexting
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 game software; computer game software downloadable from a global computer network; downloadable computer game software for use on mobile devices; recorded electronic game programs; downloadable electronic game programs; downloadable video game programs; downloadable computer game software for use on mobile and cellular phones; recorded computer game software; downloadable software for metaverses, virtual worlds and virtual reality; downloadable software for providing access to virtual environments in which users can interact for recreational, leisure or entertainment purposes; virtual reality software; downloadable software for providing access to virtual reality game services; virtual reality game software; downloadable virtual reality software for playing computer games; downloadable virtual goods and digital assets for use in virtual worlds; downloadable virtual reality game software; downloadable virtual goods, namely, computer software programs featuring in-game resources, tokens and virtual currency for use in video games and online virtual worlds; downloadable virtual goods in the nature of image files of avatars, jewelry, gems, clothing and accessories, pets, buildings and furniture, vehicles, weapons, artwork and food for use in virtual worlds; downloadable software featuring virtual currency, namely, computer programs featuring in-game tokens and currency for use in online web and mobile video games; downloadable virtual goods, namely, computer software programs featuring tokens and virtual currency for use in video games and online virtual worlds; downloadable computer software for live digital communications, namely, live video and audio conferencing with multiple simultaneous users, teleconferencing, network conferencing, web conferencing, text messaging, instant messaging, and videotexting; downloadable computer game software featuring virtual currency, namely, in-game tokens and virtual currency for use in online web and mobile video games; downloadable computer software for live digital communications, namely, live video and audio conferencing with multiple simultaneous users, teleconferencing, network conferencing, web conferencing, text messaging, instant messaging, and videotexting.Class 009 for Downloadable game software; computer game software downloadable from a global computer network; downloadable computer game software for use on mobile devices; recorded electronic game programs; downloadable electronic game programs; downloadable video game programs; downloadable computer game software for use on mobile and cellular phones; recorded computer game software; downloadable software for providing access to virtual environments in which users can interact for recreational, leisure or entertainment purposes; downloadable software for providing access to virtual reality game services; downloadable virtual reality software for playing computer games; downloadable virtual reality game software; downloadable virtual goods in the nature of image files of avatars, jewelry, gems, clothing and accessories, pets, buildings and furniture, vehicles, weapons, artwork and food for use in virtual worlds; downloadable virtual goods, namely, computer software programs featuring tokens and virtual currency for use in video games and online virtual worlds; downloadable computer game software featuring virtual currency, namely, in-game tokens and virtual currency for use in online web and mobile video games; downloadable computer software for live digital communications, namely, live video and audio conferencing with multiple simultaneous users, teleconferencing, network conferencing, web conferencing, text messaging, instant messaging, and videotexting.
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 Providing on-line computer games; providing online non-downloadable game software; electronic games services provided by means of the internet; providing temporary use of non-downloadable interactive games; production of computer game software; organization of electronic game competitions; organization of electronic game competitions for entertainment purposes; gaming services in the nature of conducting online computer game tournaments; providing information in the field of computer games; entertainment services, namely, providing temporary use of non-downloadable video games; entertainment services, namely, providing online electronic games; providing information in the field of entertainment; providing on-line videos featuring video games, not downloadable; providing on-line computer games; providing entertainment information all relating to video games and computer games; providing online news, information and game strategies all related to electronic, computer and video games; entertainment services, namely, providing images and sounds in the forms of electronic games, related screen shots, photographs and music via global computer network and telecommunications network; entertainment services, namely, providing non-downloadable electronic games via communication by computer and video game machines; entertainment services, namely, providing access to non-downloadable games via telecommunication networks, namely, global computer networks; entertainment services, namely, providing online electronic computer and video games; providing non-downloadable interactive multiplayer computer and video games that may be accessed and played over computer networks and global communications networks; entertainment services, namely, providing non-downloadable video games, electronic games, and computer games that can be accessed and played over computer networks; training services in the field of computer games; entertainment services, namely, recommending and matching individual users with computer games; providing non-downloadable online electronic publications, namely, online journals and interactive online blogs featuring user generated or specified content in the field of video games and online non-downloadable publications in the nature of e-books in the field of video games; providing online metaverses and virtual worlds; entertainment services, namely, providing online, non-downloadable virtual goods and digital assets for use in virtual environments created for entertainment 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.


Proposed:

Tracked Text Description: Providing on-line computer games; providing online non-downloadable game software; electronic games services provided by means of the internet; entertainment services, namely, providing temporary use of non-downloadable interactive games; providing temporary use of non-downloadable interactive games; production of computer game software; organization of electronic game competitions; organization of electronic game competitions for entertainment purposes; gaming services in the nature of conducting online computer game tournaments; providing information in the field of computer games; entertainment services, namely, providing temporary use of non-downloadable video games; entertainment services, namely, providing online electronic games; providing information in the field of entertainment; providing on-line videos featuring video games, not downloadable; providing entertainment information all relating to video games and computer games; providing on-line computer games; providing online news, information and game strategies all related to electronic, computer and video games; entertainment services, namely, providing online non-downloadable electronic games accessible by means of computers and video game machines; entertainment services, namely, providing online non-downloadable games via telecommunication networks, namely, global computer networks; entertainment services, namely, providing images and sounds in the forms of electronic games, related screen shots, photographs and music via global computer network and telecommunications network; entertainment services, namely, providing online electronic computer and video games; entertainment services, namely, providing non-downloadable electronic games via communication by computer and video game machines; entertainment services, namely, providing online non-downloadable interactive multiplayer computer and video games that may be accessed and played over computer networks and global communications networks; entertainment services, namely, providing access to non-downloadable games via telecommunication networks, namely, global computer networks; entertainment services, namely, providing online non-downloadable video games, electronic games, and computer games that can be accessed and played over computer networks; training services in the field of computer games; providing non-downloadable interactive multiplayer computer and video games that may be accessed and played over computer networks and global communications networks; entertainment services, namely, providing recommendations on computer games and matching individual users with computer games, all of the foregoing via a website and for entertainment purposes; entertainment services, namely, providing non-downloadable video games, electronic games, and computer games that can be accessed and played over computer networks; on-line journals, namely, blogs in the field of video games; providing a website featuring blogs and non-downloadable publications in the nature of e-books in the field of video games; entertainment services, namely, recommending and matching individual users with computer games; entertainment services, namely, providing online virtual environments and virtual worlds in which users can interact for recreational, leisure or entertainment purposes; providing non-downloadable online electronic publications, namely, online journals and interactive online blogs featuring user generated or specified content in the field of video games and online non-downloadable publications in the nature of e-books in the field of video games; entertainment services, namely, providing online, non-downloadable virtual goods, namely, image files of avatars, jewelry, gems, clothing and accessories, pets, buildings and furniture, vehicles, weapons, artwork and food for use in virtual environments created for entertainment purposes.; providing online metaverses and virtual worlds; entertainment services, namely, providing online, non-downloadable virtual goods and digital assets for use in virtual environments created for entertainment purposesClass 041 for Providing on-line computer games; electronic games services provided by means of the internet; entertainment services, namely, providing temporary use of non-downloadable interactive games; production of computer game software; organization of electronic game competitions; organization of electronic game competitions for entertainment purposes; gaming services in the nature of conducting online computer game tournaments; providing information in the field of computer games; entertainment services, namely, providing temporary use of non-downloadable video games; entertainment services, namely, providing online electronic games; providing information in the field of entertainment; providing on-line videos featuring video games, not downloadable; providing entertainment information all relating to video games and computer games; providing online news, information and game strategies all related to electronic, computer and video games; entertainment services, namely, providing online non-downloadable electronic games accessible by means of computers and video game machines; entertainment services, namely, providing online non-downloadable games via telecommunication networks, namely, global computer networks; entertainment services, namely, providing online electronic computer and video games; entertainment services, namely, providing online non-downloadable interactive multiplayer computer and video games that may be accessed and played over computer networks and global communications networks; entertainment services, namely, providing online non-downloadable video games, electronic games, and computer games that can be accessed and played over computer networks; training services in the field of computer games; entertainment services, namely, providing recommendations on computer games and matching individual users with computer games, all of the foregoing via a website and for entertainment purposes; on-line journals, namely, blogs in the field of video games; providing a website featuring blogs and non-downloadable publications in the nature of e-books in the field of video games; entertainment services, namely, providing online virtual environments and virtual worlds in which users can interact for recreational, leisure or entertainment purposes; entertainment services, namely, providing online, non-downloadable virtual goods, namely, image files of avatars, jewelry, gems, clothing and accessories, pets, buildings and furniture, vehicles, weapons, artwork and food for use in virtual environments created for entertainment 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


Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for Providing online non-downloadable game software.
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


OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: MYTONA FNTASTIC LIMITED a(n) LIMITED COMPANY, legally organized under the laws of New Zealand, having an address of
      LEVEL 5, 129 HURSTMERE ROAD
      TAKAPUNA, AUCKLAND, 0622
      New Zealand

Proposed:MYTONA FNTASTIC LIMITED, LIMITED COMPANY legally organized under the laws of New Zealand, having an address of

      LEVEL 5, 129 HURSTMERE ROAD
      TAKAPUNA, AUCKLAND, 0622
      New Zealand
      Email Address: XXXX
Correspondence Information
      ROBERT B. BURLINGAME
      PRIMARY EMAIL FOR CORRESPONDENCE: sftrademarks@amplitudeip.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 081592-04594.

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

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/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; the signatory is properly authorized to execute the declaration on behalf of the applicant; 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Robert B. Burlingame/      Date: 05/16/2023
Signatory's Name: Robert B. Burlingame
Signatory's Position: Attorney of record, California Bar member
Signatory's Phone Number: 925-230-8814

Signature method: Signed directly within the form

Response Signature
Signature: /Robert B. Burlingame/     Date: 05/16/2023
Signatory's Name: Robert B. Burlingame
Signatory's Position: Attorney of record, California Bar member

Signatory's Phone Number: 925-230-8814 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:    ROBERT B. BURLINGAME
   AMPLITUDE IP
   CALENDAR/DOCKETING DEPARTMENT
   182 HOWARD STREET, #2
   SAN FRANCISCO, California 94105
Mailing Address:    Robert B. Burlingame
   AMPLITUDE IP
   CALENDAR/DOCKETING DEPARTMENT
   182 HOWARD STREET, #2
   SAN FRANCISCO, California 94105
        
PAYMENT: 97242891
PAYMENT DATE: 05/16/2023
        
Serial Number: 97242891
Internet Transmission Date: Tue May 16 15:05:05 ET 2023
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXX:XXXX:X
XXX:XXXX-20230516150506570502-97242891-8
501864284b26f4582a9d47ea0983a7fcb8d80ac1
26355dfa6747a83d39a8e28-CC-05057153-2023
0516144836408333