PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 04/30/2011)
`
`Response to Office Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION (no change)
`
`EVIDENCE SECTION
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)EVIDENCE FILE NAME(S)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)ORIGINAL PDF FILE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)CONVERTED PDF FILE(S)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(3 pages)
`
`DESCRIPTION OF EVIDENCE FILE
`
`The table below presents the data as entered.
`
`Entered
`
`85216471
`
`LAW OFFICE 102
`
`evi_184184115140-234354975_._2011-09-26_-WITH_FRIENDS__US__-_9_41_-
`_ROA.pdf
`
`\\TICRS\EXPORT11\IMAGEOUT11\852\164\85216471\xml6\ROA0002.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\852\164\85216471\xml6\ROA0003.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\852\164\85216471\xml6\ROA0004.JPG
`
`Attachment includes Applicant's argument and supporting evidence with respect to
`examiners rejection based on the validity of the Class 41 specimen.
`
`GOODS AND/OR SERVICES SECTION (009)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`009
`
`Computer game software; video game programs; computer software platforms for social networking; interactive video game programs;
`downloadable electronic game programs and computer software platforms for social networking that may be accessed via the Internet,
`computers and wireless devices; computer software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise
`providing electronic media or information in the fields of virtual communities, electronic gaming, entertainment, and general interest via the
`Internet or other communications networks with third parties; magnetic coded gift cards
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE IN COMMERCE DATE
`
`Section 1(a)
`
`At least as early as 12/03/2010
`
`At least as early as 12/03/2010
`
`GOODS AND/OR SERVICES SECTION (009)(proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`009
`
`Computer game software; video game programs; computer software platforms for social networking; interactive video game programs;
`downloadable electronic game programs and computer software platforms for social networking that may be accessed via the Internet,
`computers and wireless devices; downloadable electronic game programs and computer software platforms for social networking that may be
`accessed via the Internet, computers, mobile phones, smart phones and tablets; computer software to enable uploading, posting, showing,
`displaying, tagging, blogging, sharing or otherwise providing electronic media or information in the fields of virtual communities, electronic
`gaming, entertainment, and general interest via the Internet or other communications networks with third parties; computer software to enable
`uploading, posting, showing, displaying, tagging, blogging, sharing or providing electronic media or information in the fields of virtual
`communities, electronic gaming, entertainment, and general interest via the Internet or other communications networks with third parties.;
`magnetic coded gift cards
`
`FINAL(cid:160)DESCRIPTION
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`Computer game software; video game programs; computer software platforms for social networking; interactive video game programs;
`downloadable electronic game programs and computer software platforms for social networking that may be accessed via the Internet,
`computers, mobile phones, smart phones and tablets; computer software to enable uploading, posting, showing, displaying, tagging, blogging,
`sharing or providing electronic media or information in the fields of virtual communities, electronic gaming, entertainment, and general
`interest via the Internet or other communications networks with third parties.
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE IN COMMERCE DATE
`
`Section 1(a)
`
`At least as early as 12/03/2010
`
`At least as early as 12/03/2010
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)STATEMENT TYPE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)SPECIMEN FILE NAME(S)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)ORIGINAL PDF FILE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)CONVERTED PDF FILE(S)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(1 page)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)SPECIMEN DESCRIPTION
`
`"The substitute (or new, if appropriate) specimen(s) was/were in use in
`commerce at least as early as the filing date of the application"[for an
`application based on Section 1(a), Use in Commerce] OR "The substitute (or new,
`if appropriate) specimen(s) was/were in use in commerce prior either to the
`filing of the Amendment to Allege Use or expiration of the filing deadline for
`filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use].
`
`SPU0-184184115140-234354975_._Doc20.pdf
`
`\\TICRS\EXPORT11\IMAGEOUT11\852\164\85216471\xml6\ROA0005.JPG
`
`A screenshot of the Applicant's applied-for mark being used in conjunction with the
`Applicant's game being downloaded
`
`GOODS AND/OR SERVICES SECTION (041)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`041
`
`Providing online computer and electronic games, enhancements within online computer and electronic games, and game applications within
`online computer and electronic games; providing online reviews of computer games; providing information relating to computer games;
`providing an Internet website portal in the field of computer games and gaming; providing virtual environments in which users can interact
`through social games for recreational, leisure or entertainment purposes
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE IN COMMERCE DATE
`
`Section 1(a)
`
`At least as early as 12/03/2010
`
`At least as early as 12/03/2010
`
`GOODS AND/OR SERVICES SECTION (041)(proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`041
`
`Providing online computer and electronic games, enhancements within online computer and electronic games, and game applications within
`online computer and electronic games; Providing online computer and electronic games; providing online reviews of computer games;
`providing information relating to computer games; providing online information relating to computer games; providing an Internet website
`portal in the field of computer games and gaming; providing an Internet website portal in the field of computer games and online gaming;
`providing virtual environments in which users can interact through social games for recreational, leisure or entertainment purposes; providing
`virtual environments in which users can interact through social games for recreational, leisure or entertainment purposes.
`
`FINAL(cid:160)DESCRIPTION
`
`Providing online computer and electronic games; providing online reviews of computer games; providing online information relating to
`computer games; providing an Internet website portal in the field of computer games and online gaming; providing virtual environments in
`which users can interact through social games for recreational, leisure or entertainment purposes.
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE IN COMMERCE DATE
`
`Section 1(a)
`
`At least as early as 12/03/2010
`
`At least as early as 12/03/2010
`
`

`

`ADDITIONAL STATEMENTS SECTION
`
`PRIOR REGISTRATION(S)
`
`DESCRIPTION OF THE MARK
`(and Color Location, if applicable)
`
`SIGNATURE SECTION
`
`DECLARATION SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`DATE SIGNED
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`The applicant claims ownership of U.S. Registration Number(s) 3704619, 3704620,
`and 3924543.
`
`The mark consists of the word "with" over the word "friends" in a thought bubble;
`the term "friends" has a shaded wave running through it.
`
`/John M Kim/
`
`John M. Kim
`
`Attorney of record
`
`09/26/2011
`
`/John M Kim/
`
`John M. Kim
`
`Attorney of record
`
`09/26/2011
`
`YES
`
`Mon Sep 26 23:49:46 EDT 2011
`
`USPTO/ROA-XXX.XXX.XXX.XXX
`-20110926234946678239-852
`16471-480ccefa2454daae99e
`63dbf6c6c04f487c-N/A-N/A-
`20110926234354975239
`
`PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 04/30/2011)
`
`To the Commissioner for Trademarks:
`
`Application serial no. 85216471 has been amended as follows:
`
`Response to Office Action
`
`EVIDENCE
`Evidence in the nature of Attachment includes Applicant's argument and supporting evidence with respect to examiners rejection based on the
`validity of the Class 41 specimen. has been attached.
`Original PDF file:
`evi_184184115140-234354975_._2011-09-26_-WITH_FRIENDS__US__-_9_41_-_ROA.pdf
`Converted PDF file(s) (3 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 009 for Computer game software; video game programs; computer software platforms for social networking; interactive video
`game programs; downloadable electronic game programs and computer software platforms for social networking that may be accessed via the
`Internet, computers and wireless devices; computer software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or
`otherwise providing electronic media or information in the fields of virtual communities, electronic gaming, entertainment, and general interest
`via the Internet or other communications networks with third parties; magnetic coded gift cards
`
`

`

`Original Filing Basis:
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`was first used at least as early as 12/03/2010 and first used in commerce at least as early as 12/03/2010, and is now in use in such commerce.
`
`Proposed:
`Tracked Text Description: Computer game software; video game programs; computer software platforms for social networking; interactive
`video game programs; downloadable electronic game programs and computer software platforms for social networking that may be accessed via
`the Internet, computers and wireless devices; downloadable electronic game programs and computer software platforms for social networking
`that may be accessed via the Internet, computers, mobile phones, smart phones and tablets; computer software to enable uploading, posting,
`showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information in the fields of virtual communities,
`electronic gaming, entertainment, and general interest via the Internet or other communications networks with third parties; computer software to
`enable uploading, posting, showing, displaying, tagging, blogging, sharing or providing electronic media or information in the fields of virtual
`communities, electronic gaming, entertainment, and general interest via the Internet or other communications networks with third parties.;
`magnetic coded gift cards
`
`Class 009 for Computer game software; video game programs; computer software platforms for social networking; interactive video game
`programs; downloadable electronic game programs and computer software platforms for social networking that may be accessed via the Internet,
`computers, mobile phones, smart phones and tablets; computer software to enable uploading, posting, showing, displaying, tagging, blogging,
`sharing or providing electronic media or information in the fields of virtual communities, electronic gaming, entertainment, and general interest
`via the Internet or other communications networks with third parties.
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`was first used at least as early as 12/03/2010 and first used in commerce at least as early as 12/03/2010, and is now in use in such commerce.
`Applicant hereby submits a new specimen for Class 009. The specimen(s) submitted consists of A screenshot of the Applicant's applied-for mark
`being used in conjunction with the Applicant's game being downloaded.
`"The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"
`[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in
`commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for
`an application based on Section 1(b) Intent-to-Use].
`Original PDF file:
`SPU0-184184115140-234354975_._Doc20.pdf
`Converted PDF file(s) (1 page)
`Specimen File1
`
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 041 for Providing online computer and electronic games, enhancements within online computer and electronic games, and game
`applications within online computer and electronic games; providing online reviews of computer games; providing information relating to
`computer games; providing an Internet website portal in the field of computer games and gaming; providing virtual environments in which users
`can interact through social games for recreational, leisure or entertainment purposes
`Original Filing Basis:
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`was first used at least as early as 12/03/2010 and first used in commerce at least as early as 12/03/2010, and is now in use in such commerce.
`
`Proposed:
`Tracked Text Description: Providing online computer and electronic games, enhancements within online computer and electronic games, and
`game applications within online computer and electronic games; Providing online computer and electronic games; providing online reviews of
`computer games; providing information relating to computer games; providing online information relating to computer games; providing an
`Internet website portal in the field of computer games and gaming; providing an Internet website portal in the field of computer games and
`online gaming; providing virtual environments in which users can interact through social games for recreational, leisure or entertainment
`purposes; providing virtual environments in which users can interact through social games for recreational, leisure or entertainment purposes.
`
`Class 041 for Providing online computer and electronic games; providing online reviews of computer games; providing online information
`relating to computer games; providing an Internet website portal in the field of computer games and online gaming; providing virtual
`environments in which users can interact through social games for recreational, leisure or entertainment purposes.
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`was first used at least as early as 12/03/2010 and first used in commerce at least as early as 12/03/2010, and is now in use in such commerce.
`ADDITIONAL STATEMENTS
`Claim of Prior Registration(s)
`
`

`

`The applicant claims ownership of U.S. Registration Number(s) 3704619, 3704620, and 3924543.
`
`Description of mark
`The mark consists of the word "with" over the word "friends" in a thought bubble; the term "friends" has a shaded wave running through it.
`
`SIGNATURE(S)
`Declaration Signature
`If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had a bona fide intention to
`use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or
`services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona
`fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking
`registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods and/or services listed
`in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the
`applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. The undersigned, being
`hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001,
`and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly
`authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark
`sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such
`mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in
`commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the
`goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted
`unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all
`statements in the original application and this submission made on information and belief are believed to be true.
`
`Signature: /John M Kim/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 09/26/2011
`Signatory's Name: John M. Kim
`Signatory's Position: Attorney of record
`
`Response Signature
`Signature: /John M Kim/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 09/26/2011
`Signatory's Name: John M. Kim
`Signatory's Position: Attorney of record
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an
`associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not
`currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently
`filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or
`Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`Serial Number: 85216471
`Internet Transmission Date: Mon Sep 26 23:49:46 EDT 2011
`TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20110926234946
`678239-85216471-480ccefa2454daae99e63dbf
`6c6c04f487c-N/A-N/A-20110926234354975239
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`RESPONSE TO OFFICE ACTION
`
`This communication is in response to the Office Action mailed March 24, 2011 wherein
`
`the Examining Attorney refilsed registration on the grounds that the specimens submitted do not
`
`establish use in Class 41 . Applicant respectfully traverses this rejection, as follows:
`
`THE SPECIMEN SUBMITTED DOES SHOW THE APPLIED-FOR MARK
`
`USED IN CONNECTION WITH THE SERVICES CLAIMED IN THE APPLICATION.
`
`The Examining Attorney has rejected the specimen submitted for Class 41 services
`
`because he believes that “the specimen does not show the capability of playing the game online.”
`
`Applicant respectfully traverses this rejection as follows:
`
`Applicant has applied to register the subject mark for the following goods in Class 41:
`
`Providing online computer and electronic games, enhancements within online
`computer and electronic games, and game applications within online computer
`and electronic games; providing online reviews of computer games; providing
`information relating to computer games; providing an Internet website portal in
`the field of computer games and gaming; providing virtual environments in which
`users can interact through social games for recreational, leisure or entertainment
`purposes.
`
`The specimen provided does illustrate use of the applied-for mark with the services
`
`described above, namely, online computer games, for a number of reasons.
`
`First,
`
`Applicant’s game, WITH FRIENDS,
`
`is available for online play against millions of
`
`different online users. The attached screen shot indicates that there are “millions” of
`
`online users. In addition, the same screenshot shows that you can “challenge friends” and
`
`play “random opponents.” This indicates that the game is played online and not limited to
`
`“pass and play” usage. See attached website pages describing the game which indicates
`
`it is played online with others and is not a stand alone game. This is not a stand alone
`
`

`

`game that can be played by yourself like solitaire.
`
`It is a multiplayer “social” game that
`
`by its Very nature must be played with others and the other players have to be online. For
`
`these reasons, Applicant submits that
`
`the specimen provided demonstrates use in
`
`connection with the services claimed in Class 41.
`
`

`

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