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
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK FILE NAME
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`ARGUMENT(S)
`
`The table below presents the data as entered.
`
`Entered
`
`88677966
`
`LAW OFFICE 123
`
`https://tmng-al.uspto.gov/resting2/api/img/88677966/large
`
`T1
`
`NO
`
`NO
`
`Applicant hereby requests that the Section 2(d) likelihood of confusion refusal be withdrawn as to U.S. Registration Nos. 5231223, 5231222,
`and 5216846 in view of the enclosed consent agreement between Applicant and SK INC.
`
`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (3 pages)
`
`DESCRIPTION OF EVIDENCE FILE
`
`evi_38982204-202112161731 22351780_._Consent_Agreem ent_SK_T1.pdf
`
`\\TICRS\EXPORT18\IMAGEOUT 18\886\779\88677966\xml11 \ROA0002.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\886\779\88677966\xml11 \ROA0003.JPG
`
`\\TICRS\EXPORT18\IMAGEOUT 18\886\779\88677966\xml11 \ROA0004.JPG
`
`consent agreement between Applicant and SK INC., which owns U.S. Registration
`Nos. 5231223, 5231222, and 5216846
`
`GOODS AND/OR SERVICES SECTION (009) (current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`009
`
`downloadable audio recordings featuring music and video game playing with player commentary and narration; downloadable video
`recordings featuring video game playing with player commentary and narration; downloadable audio and video recordings featuring video
`game playing with player commentary and narration; pre-recorded video discs, compact discs, DVDs, and high definition digital discs
`featuring video games, documentaries about the field of electronic sports, and video recordings of electronic sports competitions and
`tournaments; video games discs; downloadable computer game software; downloadable mobile video game applications for smartphones and
`tablet computers; downloadable mobile applications for smartphones and tablet computers that allow streaming, downloading, and viewing of
`audiovisual and multimedia content in the field of video gaming and electronic sports; computers; smartphones; video game devices, namely,
`virtual reality headsets; downloadable electronic publications, namely, books, magazines, newspapers, periodicals, and newsletters featuring
`video games, electronic sports, and electronic sports competitions and tournaments; downloadable music files
`
`FILING BASIS
`
`        FOREIGN REGISTRATION NUMBER
`
`       FOREIGN REGISTRATION
`       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`       FOREIGN REGISTRATION
`
`Section 44(e)
`
`78015
`
`Jamaica
`
`10/05/2020
`
`       
`       
`

`

`       DATE
`
`       FOREIGN EXPIRATION DATE
`
`06/24/2029
`
`GOODS AND/OR SERVICES SECTION (009) (proposed)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`009
`
`downloadable audio recordings featuring music and video game playing with player commentary and narration; downloadable video
`recordings featuring video game playing with player commentary and narration; downloadable audio and video recordings featuring video
`game playing with player commentary and narration; pre-recorded video discs, compact discs, DVDs, and high definition digital discs
`featuring video games, documentaries about the field of electronic sports, and video recordings of electronic sports competitions and
`tournaments; video games discs; downloadable computer game software; downloadable mobile video game applications for smartphones and
`tablet computers; downloadable mobile applications for smartphones and tablet computers that allow streaming, downloading, and viewing of
`audiovisual and multimedia content in the field of video gaming and electronic sports; computers; smartphones; video game devices, namely,
`virtual reality headsets; downloadable electronic publications, namely, books, magazines, newspapers, periodicals, and newsletters featuring
`video games, electronic sports, and electronic sports competitions and tournaments; downloadable music files
`
`        WEBPAGE URL
`
`        WEBPAGE DATE OF ACCESS
`
`FILING BASIS
`
`FILING BASIS
`
`       FOREIGN APPLICATION NUMBER
`
`       FOREIGN APPLICATION
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`       FOREIGN FILING DATE
`
`       INTENT TO
`       PERFECT 44(d)
`
`None Provided
`
`None Provided
`
`Section 1(b)
`
`Section 44(d)
`
`078015
`
`Jamaica
`
`06/24/2019
`
`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.
`
`DELETED FILING BASIS
`
`44(e).
`
`GOODS AND/OR SERVICES SECTION (018) (current)
`
`INTERNATIONAL CLASS
`
`018
`
`DESCRIPTION
`
`FILING BASIS
`
`        FOREIGN REGISTRATION NUMBER
`
`       FOREIGN REGISTRATION
`       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`       FOREIGN REGISTRATION
`       DATE
`
`       FOREIGN EXPIRATION DATE
`
`backpacks; wallets; duffel bags; luggage; handbags
`
`Section 44(e)
`
`78015
`
`Jamaica
`
`10/05/2020
`
`06/24/2029
`
`GOODS AND/OR SERVICES SECTION (018) (proposed)
`
`INTERNATIONAL CLASS
`
`018
`
`DESCRIPTION
`
`        WEBPAGE URL
`
`        WEBPAGE DATE OF ACCESS
`
`FILING BASIS
`
`FILING BASIS
`
`       FOREIGN APPLICATION NUMBER
`
`backpacks; wallets; duffel bags; luggage; handbags
`
`None Provided
`
`None Provided
`
`Section 1(b)
`
`Section 44(d)
`
`078015
`
`

`

`       FOREIGN APPLICATION
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`       FOREIGN FILING DATE
`
`       INTENT TO
`       PERFECT 44(d)
`
`Jamaica
`
`06/24/2019
`
`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.
`
`DELETED FILING BASIS
`
`44(e).
`
`GOODS AND/OR SERVICES SECTION (025) (current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`025
`
`Clothing, namely, polo shirts, sleeveless pullovers, blouses, sleeveless blouses, t-shirts, waistcoats, jerseys, frocks, bathing suits, swimwear,
`sports jackets, stadium vests, rompers, braces for clothing; shirts; knitwear in the nature of knit tops, knit bottoms, knit dresses, knit jackets,
`knit shirts, knit skirts, and polo knit tops; pullovers; slipovers; vests; singlets; tee-shirts; sleeveless jerseys, dresses; skirts; underwear;
`swimsuits; bath robes; shorts; trousers; sweaters; sashes for wear; scarves, shawls; tracksuits; sweatshirts; jackets, sports jackets, stadium
`jackets in the nature of football and soccer bibs; blazers; waterproof clothing, namely, waterproof footwear, jackets, and pants; coats; uniforms;
`neckties; bandanas; wrist bands; headbands; gloves; aprons; bibs not of paper; pajamas; play suits for infants and children; headgear, namely,
`bonnets, cap peaks, and knitted caps; sports caps; hats; caps with visors; shoes and footwear; socks and stockings; garters; belts for clothing;
`suspenders
`
`FILING BASIS
`
`        FOREIGN REGISTRATION NUMBER
`
`       FOREIGN REGISTRATION
`       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`       FOREIGN REGISTRATION
`       DATE
`
`       FOREIGN EXPIRATION DATE
`
`Section 44(e)
`
`78015
`
`Jamaica
`
`10/05/2020
`
`06/24/2029
`
`GOODS AND/OR SERVICES SECTION (025) (proposed)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`025
`
`Clothing, namely, polo shirts, sleeveless pullovers, blouses, sleeveless blouses, t-shirts, waistcoats, jerseys, frocks, bathing suits, swimwear,
`sports jackets, stadium vests, rompers, braces for clothing; shirts; knitwear in the nature of knit tops, knit bottoms, knit dresses, knit jackets,
`knit shirts, knit skirts, and polo knit tops; pullovers; slipovers; vests; singlets; tee-shirts; sleeveless jerseys, dresses; skirts; underwear;
`swimsuits; bath robes; shorts; trousers; sweaters; sashes for wear; scarves, shawls; tracksuits; sweatshirts; jackets, sports jackets, stadium
`jackets in the nature of football and soccer bibs; blazers; waterproof clothing, namely, waterproof footwear, jackets, and pants; coats; uniforms;
`neckties; bandanas; wrist bands; headbands; gloves; aprons; bibs not of paper; pajamas; play suits for infants and children; headgear, namely,
`bonnets, cap peaks, and knitted caps; sports caps; hats; caps with visors; shoes and footwear; socks and stockings; garters; belts for clothing;
`suspenders
`
`        WEBPAGE URL
`
`        WEBPAGE DATE OF ACCESS
`
`FILING BASIS
`
`FILING BASIS
`
`       FOREIGN APPLICATION NUMBER
`
`       FOREIGN APPLICATION
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`       FOREIGN FILING DATE
`
`       INTENT TO
`       PERFECT 44(d)
`
`None Provided
`
`None Provided
`
`Section 1(b)
`
`Section 44(d)
`
`078015
`
`Jamaica
`
`06/24/2019
`
`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.
`
`

`

`DELETED FILING BASIS
`
`44(e).
`
`GOODS AND/OR SERVICES SECTION (028) (current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`028
`
`Video game devices, namely, video game consoles, gaming headsets adapted for use in playing video games, game controllers for computer
`games and for game consoles
`
`FILING BASIS
`
`        FOREIGN REGISTRATION NUMBER
`
`       FOREIGN REGISTRATION
`       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`       FOREIGN REGISTRATION
`       DATE
`
`       FOREIGN EXPIRATION DATE
`
`Section 44(e)
`
`78015
`
`Jamaica
`
`10/05/2020
`
`06/24/2029
`
`GOODS AND/OR SERVICES SECTION (028) (proposed)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`028
`
`Video game devices, namely, video game consoles, gaming headsets adapted for use in playing video games, game controllers for computer
`games and for game consoles
`
`        WEBPAGE URL
`
`        WEBPAGE DATE OF ACCESS
`
`FILING BASIS
`
`FILING BASIS
`
`       FOREIGN APPLICATION NUMBER
`
`       FOREIGN APPLICATION
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`       FOREIGN FILING DATE
`
`       INTENT TO
`       PERFECT 44(d)
`
`None Provided
`
`None Provided
`
`Section 1(b)
`
`Section 44(d)
`
`078015
`
`Jamaica
`
`06/24/2019
`
`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.
`
`DELETED FILING BASIS
`
`44(e).
`
`GOODS AND/OR SERVICES SECTION (032) (current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`032
`
`Non-alcoholic beverages, namely, soft drinks, energy drinks, sports drinks, and fruit juice drinks
`
`FILING BASIS
`
`        FOREIGN REGISTRATION NUMBER
`
`       FOREIGN REGISTRATION
`       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`       FOREIGN REGISTRATION
`       DATE
`
`       FOREIGN EXPIRATION DATE
`
`Section 44(e)
`
`78015
`
`Jamaica
`
`10/05/2020
`
`06/24/2029
`
`GOODS AND/OR SERVICES SECTION (032) (proposed)
`
`

`

`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`032
`
`Non-alcoholic beverages, namely, soft drinks, energy drinks, sports drinks, and fruit juice drinks
`
`        WEBPAGE URL
`
`        WEBPAGE DATE OF ACCESS
`
`FILING BASIS
`
`FILING BASIS
`
`       FOREIGN APPLICATION NUMBER
`
`       FOREIGN APPLICATION
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`       FOREIGN FILING DATE
`
`       INTENT TO
`       PERFECT 44(d)
`
`None Provided
`
`None Provided
`
`Section 1(b)
`
`Section 44(d)
`
`078015
`
`Jamaica
`
`06/24/2019
`
`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.
`
`DELETED FILING BASIS
`
`44(e).
`
`GOODS AND/OR SERVICES SECTION (035) (current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`035
`
`Advertising services; marketing services; advertising, marketing, and promoting the goods and services of others in relation to video games
`and electronic sports; distribution of advertising, marketing and promotional material; provision of advertising space, time and media, namely,
`rental of advertising space and rental of advertising time on communications media; promotional sponsorship of electronic sports events,
`competitions, and tournaments; retail store services and online retail store services featuring clothing, footwear, headgear, sports articles,
`stationery, apparatus for recording, transmission and reproduction of sound and images, books, newspapers, magazines, publications, video
`games, toys, dolls, badges of all kinds, key rings, tickets, watches and jewelry, bags, luggage, briefcases, umbrellas, flags and pennants,
`alcoholic and non-alcoholic beverages, confectionery, interactive entertainment and education products, interactive compact disks, CD-ROMs
`and computer games, downloadable mobile applications, and computer programs
`
`FILING BASIS
`
`        FOREIGN REGISTRATION NUMBER
`
`       FOREIGN REGISTRATION
`       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`       FOREIGN REGISTRATION
`       DATE
`
`       FOREIGN EXPIRATION DATE
`
`Section 44(e)
`
`78015
`
`Jamaica
`
`10/05/2020
`
`06/24/2029
`
`GOODS AND/OR SERVICES SECTION (035) (proposed)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`035
`
`Advertising services; marketing services; advertising, marketing, and promoting the goods and services of others in relation to video games
`and electronic sports; distribution of advertising, marketing and promotional material; provision of advertising space, time and media, namely,
`rental of advertising space and rental of advertising time on communications media; promotional sponsorship of electronic sports events,
`competitions, and tournaments; retail store services and online retail store services featuring clothing, footwear, headgear, sports articles,
`stationery, apparatus for recording, transmission and reproduction of sound and images, books, newspapers, magazines, publications, video
`games, toys, dolls, badges of all kinds, key rings, tickets, watches and jewelry, bags, luggage, briefcases, umbrellas, flags and pennants,
`alcoholic and non-alcoholic beverages, confectionery, interactive entertainment and education products, interactive compact disks, CD-ROMs
`and computer games, downloadable mobile applications, and computer programs
`
`        WEBPAGE URL
`
`        WEBPAGE DATE OF ACCESS
`
`None Provided
`
`None Provided
`
`

`

`FILING BASIS
`
`FILING BASIS
`
`       FOREIGN APPLICATION NUMBER
`
`       FOREIGN APPLICATION
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`       FOREIGN FILING DATE
`
`       INTENT TO
`       PERFECT 44(d)
`
`Section 1(b)
`
`Section 44(d)
`
`078015
`
`Jamaica
`
`06/24/2019
`
`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.
`
`DELETED FILING BASIS
`
`44(e).
`
`GOODS AND/OR SERVICES SECTION (038) (current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`038
`
`video, audio and television streaming services; video, audio and television streaming services featuring electronic sports; broadcasting of
`audiovisual and multimedia content via the Internet; streaming audio and video material on the Internet; electronic network communications,
`namely, information and data transmission via electronic network communications; digital communications services, namely, transmission and
`delivery of electronic sports events, competitions, and tournaments, and entertainment events via the internet; telecommunications services
`between computer networks, namely, communications between computer networks; electronic transfer of information and data via online
`services and the Internet; providing Internet chat rooms, Internet forums and electronic bulletin boards for transmission of messages among
`computer users in relation to electronic sports; data communication by electronic means being electronic data transmission; provision of user
`access to a global computer network
`
`FILING BASIS
`
`        FOREIGN REGISTRATION NUMBER
`
`       FOREIGN REGISTRATION
`       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`       FOREIGN REGISTRATION
`       DATE
`
`       FOREIGN EXPIRATION DATE
`
`Section 44(e)
`
`78015
`
`Jamaica
`
`10/05/2020
`
`06/24/2029
`
`GOODS AND/OR SERVICES SECTION (038) (proposed)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`038
`
`video, audio and television streaming services; video, audio and television streaming services featuring electronic sports; broadcasting of
`audiovisual and multimedia content via the Internet; streaming audio and video material on the Internet; electronic network communications,
`namely, information and data transmission via electronic network communications; digital communications services, namely, transmission and
`delivery of electronic sports events, competitions, and tournaments, and entertainment events via the internet; telecommunications services
`between computer networks, namely, communications between computer networks; electronic transfer of information and data via online
`services and the Internet; providing Internet chat rooms, Internet forums and electronic bulletin boards for transmission of messages among
`computer users in relation to electronic sports; data communication by electronic means being electronic data transmission; provision of user
`access to a global computer network
`
`        WEBPAGE URL
`
`        WEBPAGE DATE OF ACCESS
`
`FILING BASIS
`
`FILING BASIS
`
`       FOREIGN APPLICATION NUMBER
`
`       FOREIGN APPLICATION
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`None Provided
`
`None Provided
`
`Section 1(b)
`
`Section 44(d)
`
`078015
`
`Jamaica
`
`

`

`       FOREIGN FILING DATE
`
`06/24/2019
`
`       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.
`
`DELETED FILING BASIS
`
`44(e).
`
`GOODS AND/OR SERVICES SECTION (041) (current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`041
`
`Entertainment services, namely, organizing and conducting events, competitions, seminars, and tournaments in the fields of electronic sports,
`video games, computer games, computers, and gaming; arranging, organizing and conducting exhibitions for entertainment purposes; digital
`video, audio and multimedia entertainment publishing services; live entertainment production services, namely, live electronic sports events,
`competitions, and tournaments; electronic games services provided by means of the Internet
`
`FILING BASIS
`
`        FOREIGN REGISTRATION NUMBER
`
`       FOREIGN REGISTRATION
`       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`       FOREIGN REGISTRATION
`       DATE
`
`       FOREIGN EXPIRATION DATE
`
`Section 44(e)
`
`78015
`
`Jamaica
`
`10/05/2020
`
`06/24/2029
`
`GOODS AND/OR SERVICES SECTION (041) (proposed)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`041
`
`Entertainment services, namely, organizing and conducting events, competitions, seminars, and tournaments in the fields of electronic sports,
`video games, computer games, computers, and gaming; arranging, organizing and conducting exhibitions for entertainment purposes; digital
`video, audio and multimedia entertainment publishing services; live entertainment production services, namely, live electronic sports events,
`competitions, and tournaments; electronic games services provided by means of the Internet
`
`        WEBPAGE URL
`
`        WEBPAGE DATE OF ACCESS
`
`FILING BASIS
`
`FILING BASIS
`
`       FOREIGN APPLICATION NUMBER
`
`       FOREIGN APPLICATION
`COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
`
`       FOREIGN FILING DATE
`
`       INTENT TO
`       PERFECT 44(d)
`
`None Provided
`
`None Provided
`
`Section 1(b)
`
`Section 44(d)
`
`078015
`
`Jamaica
`
`06/24/2019
`
`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.
`
`DELETED FILING BASIS
`
`44(e).
`
`CORRESPONDENCE INFORMATION (current)
`
`NAME
`
`Matthew A. Homyk
`
`PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE
`
`mhomyk@blankrome.com
`
`SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) NOT PROVIDED
`
`DOCKET/REFERENCE NUMBER
`
`111058-00207
`
`

`

`CORRESPONDENCE INFORMATION (proposed)
`
`NAME
`
`Matthew A. Homyk
`
`PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE
`
`mhomyk@blankrome.com
`
`SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) NOT PROVIDED
`
`DOCKET/REFERENCE NUMBER
`
`111058-00207
`
`SIGNATURE SECTION
`
`DECLARATION SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`SIGNATURE METHOD
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`/matthew homyk/
`
`Matthew A. Homyk
`
`Attorney of record, Pennsylvania bar member
`
`215-569-5360
`
`12/16/2021
`
`Signed directly within the form
`
`/matthew homyk/
`
`Matthew A. Homyk
`
`Attorney of record, Pennsylvania bar member
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`215-569-5360
`
`12/16/2021
`
`ROLE OF AUTHORIZED SIGNATORY
`
`Authorized U.S.-Licensed Attorney
`
`SIGNATURE METHOD
`
`Signed directly within the form
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Thu Dec 16 17:36:06 ET 2021
`
`USPTO/ROA-XX.XX.XXX.X-202
`11216173606718969-8867796
`6-7817759843b3c2545bb5c97
`bacb06e69e5e45d73afa4568c
`e256a33469e93e36-N/A-N/A-
`20211216173122351780
`
`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
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 88677966 T1 (Stylized and/or with Design, see https://tmng-al.uspto.gov /resting2/api/img/8867796 6/large) has been
`amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`Applicant hereby requests that the Section 2(d) likelihood of confusion refusal be withdrawn as to U.S. Registration Nos. 5231223, 5231222, and
`5216846 in view of the enclosed consent agreement between Applicant and SK INC.
`
`

`

`EVIDENCE
`Evidence has been attached: consent agreement between Applicant and SK INC., which owns U.S. Registration Nos. 5231223, 5231222, and
`5216846
`Original PDF file:
`evi_38982204-202112161731 22351780_._Consent_Agreem ent_SK_T1.pdf
`Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`
`Applicant proposes to amend the following:
`
`Current:
`Class 009 for downloadable audio recordings featuring music and video game playing with player commentary and narration; downloadable
`video recordings featuring video game playing with player commentary and narration; downloadable audio and video recordings featuring video
`game playing with player commentary and narration; pre-recorded video discs, compact discs, DVDs, and high definition digital discs featuring
`video games, documentaries about the field of electronic sports, and video recordings of electronic sports competitions and tournaments; video
`games discs; downloadable computer game software; downloadable mobile video game applications for smartphones and tablet computers;
`downloadable mobile applications for smartphones and tablet computers that allow streaming, downloading, and viewing of audiovisual and
`multimedia content in the field of video gaming and electronic sports; computers; smartphones; video game devices, namely, virtual reality
`headsets; downloadable electronic publications, namely, books, magazines, newspapers, periodicals, and newsletters featuring video games,
`electronic sports, and electronic sports competitions and tournaments; downloadable music files
`Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Jamaica registration
`number 78015 registered 10/05/2020 with a renewal date of __________ and an expiration date of 06/24/2029 ], and translation thereof, if
`appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
`
`Proposed:
`Class 009 for downloadable audio recordings featuring music and video game playing with player commentary and narration; downloadable
`video recordings featuring video game playing with player commentary and narration; downloadable audio and video recordings featuring video
`game playing with player commentary and narration; pre-recorded video discs, compact discs, DVDs, and high definition digital discs featuring
`video games, documentaries about the field of electronic sports, and video recordings of electronic sports competitions and tournaments; video
`games discs; downloadable computer game software; downloadable mobile video game applications for smartphones and tablet computers;
`downloadable mobile applications for smartphones and tablet computers that allow streaming, downloading, and viewing of audiovisual and
`multimedia content in the field of video gaming and electronic sports; computers; smartphones; video game devices, namely, virtual reality
`headsets; downloadable electronic publications, namely, books, magazines, newspapers, periodicals, and newsletters featuring video games,
`electronic sports, and electronic sports competitions and tournaments; downloadable music files
`Deleted Filing Basis: 44(e)
`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 [ Jamaica application
`number 078015 filed 06/24/2019]. 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 018 for backpacks; wallets; duffel bags; luggage; handbags
`Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Jamaica registration
`number 78015 registered 10/05/2020 with a renewal date of __________ and an expiration date of 06/24/2029 ], and translation thereof, if
`appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
`
`Proposed:
`Class 018 for backpacks; wallets; duffel bags; luggage; handbags
`Deleted Filing Basis: 44(e)
`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 good