Trademark Law Office: 117
`
`Trademark Attorney: Anne Gustason
`
`Serial No.: 77/014121
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant: Nintendo Co., Ltd.
`
`Attorney Docket No.: NOAM2 34622
`
`Serial No.: 77/014121
`
`Trademark Attorney: Anne Gustason
`
`Filed:
`
`October 4, 2006
`
`Law Office: 117
`
`Mark:
`
`VIRTUALCONSOLE
`
`International Class: 9
`
`REQUEST FOR REMAND
`
`Seattle, Washington 98101
`
`July 31, 2009
`
`TO THE TRADEMARK TRIAL AND APPEAL BOARD:
`
`Appellant Nintendo Co., Ltd respectfully requests that the Trademark Trial and Appeal
`
`Board ("TTAB") remand the above referenced Trademark Application Serial No. 77/014121 to
`
`Examining Attorney Anne Gustason for consideration and entry of a Request for Submission of
`
`New Evidence and Amendment for Registration under Section 2(f), an Amendment to Allege
`
`Use, and a Declaration of Distinctiveness. Appellant believes that this request is reasonable and
`
`intended to allow the application to move forward to publication for opposition, which will
`
`dispense with the Notice of Appeal in this case presently pending before the TTAB.
`
`APPLICATION HISTORY
`
`The Office Action of 14 December 2008 maintained and made final the refusal of the
`
`present mark based on Section 2(e) of the Trademark Act. Appellant filed a timely appeal of the
`
`final Office Action on 11 March 2008, and has received extensions of time as it prepared
`
`materials to resolve the outstanding issues. The Appeal Brief in this case is due on 1 August
`
`2009; however, Appellant believes that upon entry of the Request for Submission of New
`
`Evidence and Amendment for Registration under Section 2(t), Amendment to Allege Use, and
`
`HllllllllmlllllllllllfllHlllllllllllllllllllll
`
`LAW OFFICES 01-‘
`CHRISTENSEN O'CONNOR JOHNSON KINDNESS'“*=
`1420 Fifth Avenue
`
`NOAM\34622AM4.DOC
`
`US Patent 1 Wflfc/T11 Na :1 Rap‘. 3:
`
`:7:
`
`-1-
`
`S‘“‘‘’- 23°‘)
`Seattle, Washington 98101
`206.682.8100
`
`

`
`}.
`
`Trademark Law Office: 117
`Serial No.: 77/014121
`
`Examining Attorney: Anne Gustason
`
`Declaration of Distinctiveness, the application will be in order for approval for publication.
`
`CONCLUSION
`
`Appellant respectfully requests that the application be remanded to the Examining
`
`Attorney for consideration of the Request for Submission of New Evidence and Amendment for
`
`Registration under Section 2(t), Amendment to Allege Use, and Declaration of Distinctiveness
`
`and approval of the application for publication without further delay. Appellant further requests
`
`that the TTAB suspend the pending appeal of the refusal of Application Serial No. 77/014121,
`
`pending the review of the amendment by the Examining Attorney.
`
`In the event
`
`the TTAB or the Examining Attorney has any further questions or
`
`comments, they are encouraged to contact Appellant's attorney directly by telephone at 206-695-
`
`1779, or by email to at c1aire@cojk.com.
`
`Respectfully submitted,
`
`CHRISTENSEN O'CONNOR
`JOHNSON KINDNESSPU‘
`
`74%-We
`
`Claire F. Hawkins
`Direct Dial No. 206.695.1779
`
`I hereby certify that this correspondence is being deposited with the U.S. Postal Service in a sealed
`envelope as first-class mail with postage thereon fully prepaid and addressed to the Commissioner for Trademarks,
`P.O. Box 451, Alexandria, VA 22313-1451, on the below date.
`
`Date:
`
`CFH:cfh
`
`NOAMU4622AM4.DOC
`
`0 O\
`
`i
`
`i
`
`Q Q
`
`LAW OFFICES OF
`CHRISTENSEN O'CONNOR JOHNSON KlNDNESS””‘
`1420 Fifih Avenue
`Suite 2800
`Seattle, Washington 98101
`206.682.8100
`
`-2-
`
`

`
` Trademark Law Office: 117
`
`Serial No.: 77/014121
`Trademark Attorney: Anne Gustason
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant: Nintendo Co., Ltd.
`Serial No.: 77/014121
`
`Filed:
`Mark:
`
`October 4, 2006
`VIRTUALCONSOLE
`
`Attorney Docket No.: NOAM-2-34622
`Trademark Attorney: Anne Gustason
`
`Law Office: 117
`International Class: 9
`
`REQUEST FOR SUBMISSION OF NEW EVIDENCE AND AMENDMENT FOR
`
`REGISTRATION UNDER SECTION 21::
`
`Seattle, Washington 98101
`
`July 31, 2009
`
`TO THE COMMISSIONER FOR TRADEMARKS:
`
`The Office Action of 14 December 2008 maintained and made final the refusal of
`
`registration for the VIRTUALCONSOLE mark under Section 2(e)(1) of the Trademark Act.
`
`Applicant believes it has good cause for this request and respectfully requests that the Trademark
`Attorney review her determination that
`the mark is descriptive in light of Applicant's
`
`Amendment to Allege Use and subsequent narrowing of the identification of goods therein, and
`
`additional evidence in the form of new registrations, or in the alternative consider that Applicant
`
`has sufficient use and the mark has acquired distinctiveness to allow Applicant to amend the
`
`application for registration of the mark under Section 2(f) of the Trademark Act.
`
`1.’
`
`Amendment to Allege Use
`
`Simultaneously filed with this Request for Submission ofNew Evidence and Amendment
`
`for Registration under Section 2(1) is Applicant's Amendment to Allege Use. The Amendment to
`
`Allege Use amended the present recitation of goods and requested that it be narrowed to read as
`
`follows:
`
`--Video game programs; computer game programs; other electronic machines,
`
`NOAMYMGZZAMJ DOC
`
`LAW OFFICES OF
`CHRISTENSEN O'CONNOR JOHNSON KINDNESS"-W
`1420 Fifih Avenue
`Suite 2800
`Seattle, Washington 98101
`206.682.8100
`
`-1-
`
`

`
` Trademark Law Office: 117
`
`Examining Attorney: Anne Gustason
`
`Serial No.: 77/014121
`
`apparatus and their parts, namely, electronic game software in International Class 9.--
`Applicant therefore requests that the Amendment to Allege Use be approved and the
`
`record amended to reflect the revised identification of goods as listed above.
`
`Q
`
`Applicant's Mark Is Distinctive and Is Not Descriptive of the Amended Goods
`
`The Final Office Action of December 14, 2008 maintained the refusal of registration of
`
`the above-identified mark on the Principal Register under Section 2(e)(1). by stating that: (A) the
`
`proposed mark merely describes a feature of Applicant's goods because the mark identifies goods
`
`that include simulated, or virtual, consoles used in connection with the computer and video game
`
`equipment, namely, consoles; (B) because third-party registrations showing nondescriptive use
`
`of the term VIRTUAL have not been deemed by the Examiner to be persuasive in this case;
`
`(C) because the dictionary definitions for the terms VIRTUAL and CONSOLE appear to support
`
`the Examiner's claim of descriptiveness; and (D) because a page fiom Applicant's own website
`
`appeared to use the term descriptively. On these points Applicant respectfully disagrees, and
`
`supplies the following new evidence and arguments related thereto in support of its position.
`
`Applicant has submitted an Amendment to Allege Use that significantly revises the
`
`claimed goods under the present mark, and believes that mark is not descriptive of the goods as
`
`amended. The Examiner has noted that the mark previously identified goods that included
`
`simulated, or virtual, consoles used in connection with the computer and video game equipment,
`
`namely, consoles. However,
`
`the currently claimed goods are for video game programs;
`
`computer game programs; other electronic machines, apparatus and their parts, namely,
`
`electronic game sofiware in International Class 9, which do not immediately refer to or reflect
`
`the mark VIRTUALCONSOLE.
`
`NOAM\'!4622AM3.DOC
`
`LAW OFFICES OF
`CHRISTENSEN O'CONNOR JOHNSON KINDNESS"-“
`1420 Fifth Avenue
`Suite 2800
`Seattle, Washington 98101
`206.682.8100
`
`-2-
`
`

`
` Trademark Law Office: 117
`
`Examining Attorney: Anne Gustason
`
`Serial No.: 77/014121
`
`
`
`"VIRTUAL"
`
`As noted in previous Office Action Responses, as the basic understanding of the word
`
`"virtual" has become more known and widely used,
`
`it no longer has a narrow or precise
`
`definition. Indeed, Applicant has already noted that the term "VIRTUAL" has been approved by
`
`the Trademark Office for use in numerous registered marks related to a broad range of computer
`
`goods and services, and Applicant again reiterates that the Trademark Office continues to
`
`approve the term "VIRTUAL" as sufficiently distinctive as related to a broad range of computer
`
`related goods and services. The following marks that are a sampling of those that have been
`
`approved for publication and/or registered by the Trademark Office since Applicant's last Office
`
`Action Response (dated October 6, 2008) and are in addition to those already noted in
`
`Applicant's previous responses:
`
`LMS VIRTUAL.LAB; Reg. No. 3619478, registered May 12, 2009, for use with
`computer programs and software and related services.
`
`VIRTUAL MTV; Reg. No. 3581806, registered February 24, 2009, for use with
`downloadable computer game software and related machines.
`
`VIRTUAL HEROES; Reg. No. 3577881, registered February 17, 2009, for use
`with interactive computer software and programs.
`
`VIRTUAL ASTRONAUT; Reg. No. 3538637, registered November 25, 2008, for
`use with computer sofiware and programs designed to simulate interactive
`environments and virtual reality computer software and programs.
`
`VIRTUAL SM and Design; Reg. No. 3516540, registered October 14, 2008, for
`use with sound recording, transmitting, and reproduction apparatus.
`
`VIRTUAL FLAP; Reg. No. 3512803, registered October 7, 2008, for use with
`sofiware and computer programs.
`
`NOAM\34622AM3.DOC
`
`LAW OFFICES OF
`CHRISTENSEN O'CONNOR JOHNSON K[NDNESS"'-“
`1420 Fifth Avenue
`Suite 2800
`Seattle, Washington 98101
`206.682.8100
`
`-3-
`
`

`
` Trademark Law Office: 117
`
`Serial No.: 77/014121
`
`Examining Attorney: Anne Gustason
`
`Copies of the Trademark Office's online records for these marks are attached as Exhibit A. Of
`note is that none of these registrations were registered on the Supplemental Register; all were
`
`considered worthy of the Trademark Office's Principal Register, indicating the marks as a whole
`
`are not considered merely descriptive.
`
`Similarly here, Applicant's mark, on its face, does not merely convey the nature of the
`
`claimed goods. VIRTUALCONSOLE is no more readily recognizable or immediately
`
`descriptive of Applicant's goods than are the registered marks listed above.
`
`A further search of the Trademark Office's records continues to show no other use of the
`
`term VIRTUALCONSOLE in connection with video game equipment, programs, accessories, or
`
`services.
`
`Internet
`
`searching
`
`also
`
`shows
`
`no use by third parties of
`
`the
`
`term
`
`"VIRTUALCONSOLE" for competitive goods. See Story Declaration paragraphs 8-11. Instead,
`
`all uses reference Applicant and its products. Third parties remain free to use the descriptive and
`
`generic terms (such as those listed in Applicant's recitation of goods, above) to describe any
`
`similar goods, and would not be impeded by allowing the present mark to register, just as
`
`competitors to those entities listed above have not been unfairly restrained by the registrations on
`
`the Principal Register of the "VIRTUAL" marks shown in Exhibit A.
`
`For these reasons it remains Applicant's position that the subject mark is not descriptive
`
`‘because it does not merely describe the claimed goods and is not a term required by third parties
`
`to describe competing goods, and should therefore be allowed to register with the Trademark
`
`Office.
`
`C.
`
`Diction
`
`Definitions Are Not Dis ositive in Li
`
`t of All Relevant Evidence
`
`The question of whether a particular term is merely descriptive is not decided in the
`
`abstract. Rather, the proper test in determining whether a term is merely descriptive is to
`
`NOAM\346flAM3.DOC
`
`LAW OFFICES OF
`CHRISTENSEN O'CONNOR JOHNSON KINDNE.SS"'-"-‘
`1420 Fiflh Avenue
`Suite 2800
`Seattle, Washington 98101
`206.682.8100
`
`4-
`
`

`
`Trademark Law Office: 117
`Serial No.: 77/014121
`
`Examining Attorney: Anne Gustason
`
`consider the term in relation to the goods and services for which registration is sought, the
`
`context in which the term is used or is intended to be used, and the possible significance that the
`
`term is likely to have on the average purchaser encountering the goods and services in the
`
`marketplace. See In re Intelligent Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996). See
`
`also Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 217 U.S.P.Q. 988 (5th Cir.
`
`1983), which evaluated the descriptive-suggestive distinction with four tests: (1) dictionary
`
`definition; (2) imagination test; (3) competitors’ need test; and (4) competitors’ use test). See
`
`also No Nonsense Fashions, Inc. v. Consolidated Foods Corp., 226 U.S.P.Q. 502 (TTAB 1985),
`
`which also evaluated the issue of descriptiveness in light of other relevant factors.
`
`The Office Action cites to the third definition of the term "virtual" as confirming the
`
`present mark VIRTUALCONSOLE is descriptive "because it identifies goods which include
`
`simulated, or virtual, consoles used in connection with the computer and video game equipment,
`
`namely, consoles."
`
`Applicant believes that its requested revision of goods as noted above to read "Video
`
`games programs; video game programs for handheld games with liquid crystal displays; video
`
`game programs for arcade video game machines; computer game programs"; the continuation of
`the Trademark Office to approve and register similar marks on the Principal Register, and
`
`.Applicant's arguments regarding competitors‘ need and use of the mark, as well as other
`
`arguments presented to date, when considered as a whole, establish that the dictionary definition
`
`cited in the Office Action is not sufficient grounds to conclude that the present mark is merely
`
`descriptive.
`
`11.
`
`Amendment for Re istration of the Mark Under Section 2
`
`As
`
`set
`
`for
`
`the
`
`above, Applicant does not
`
`concede
`
`its position that
`
`the
`
`NOAM\34622AM3 DOC
`
`LAW OFFICES OF
`CHRISTENSEN O'CONNOR JOHNSON KINDNESSM’
`1420 Filth Avenue
`Suite 2800
`Seattle, Washington 98101
`206.682.8100
`
`-5-
`
`

`
`Trademark Law Office: 117
`Serial No.: 77/014121
`
`Examining Attorney: Anne Gustason
`
`VIRTUALCONSOLE mark is distinctive and capable of registration under Section 1(a) of the
`
`trademark Act. However,
`
`in the interest of advancing the prosecution of the application
`
`Applicant offers in the alternative an amendment to the application for registration of the mark
`
`on the Principal Register under Section 2(1) of the Trademark Act in accordance with TMEP §
`
`1212,
`
`In order for the application to be considered for registration under Section 2(t), the
`
`Applicant must have prior use of the mark. TMEP § l2l2.09(a).
`
`In support of this prior use,
`
`Applicant submits the attached Amendment to Allege Use.
`
`Applicant's Amendment to Allege Use is to be viewed in tandem with the Declaration of
`
`Jacqualee J. Story ("Story Declaration") regarding distinctiveness of the present mark, submitted
`
`herewith. The attached Story Declaration sets forth that the present mark has been in use in
`
`commerce since at
`
`least as early as November 19, 2006; a period of almost 3 years.
`
`Accompanying the Story Declaration are several advertisements, news articles, promotional
`
`materials, and packaging supporting such use. See Story Declaration paragraphs 1-12.
`
`The evidence submitted in connection with the Story Declaration also establishes the
`
`promotional and advertising efforts made by Applicant. See Story Declaration paragraphs 2-5.
`
`Large scale expenditures in promoting and advertising goods and services under a particular
`
`mark are significant to indicate the extent to which a mark has been used. TMEP §§1212.06 et
`
`seq.
`
`The Story Declaration establishes that widespread and significant advertising and
`
`promotion of the present mark has occurred all across the United States through, for example,
`
`magazine, newspaper and other print advertisements, on-line advertisements and promotions,
`
`television advertising, trade shows and other promotional events. Tremendous resources have
`
`been invested in such promotional and advertising efforts.
`
`Further, such advertising and
`
`NCAM\34622AN|3 .DOC
`
`LAW OFFICES OF
`CHRISTENSEN O'CONNOR JOHNSON KINDNESS"”‘
`1420 Fifih Avenue
`Suite 2800
`Seattle, Washington 98101
`206.682.8100
`
`-6-
`
`

`
`Trademark Law Office: 117
`Serial No.: 77/014121
`
`Examining Attorney: Anne Gustason
`
`promotion has been very successful. As of July 21, 2009, the number of game downloads via the
`
`VIRTUALCONSOLE system have exceeded 13,159,000. See Story Declaration paragraphs 2~5
`
`and 8-9.
`
`In considering a claim of acquired distinctiveness,
`
`the issue is whether acquired
`
`distinctiveness of the mark in relation to the goods or services has in fact been established in the
`
`minds of the purchasing public, not whether the mark is capable of becoming distinctive. In re
`
`Redken Laboratories, Inc., 170 USPQ 526 (TTAB 1971); In re Fleet-Wing Corp., 122 U.S.P.Q.
`
`335 (ITAB 1959). The ultimate test in determining whether a designation has acquired
`
`distinctiveness is an applicant's success, rather than its efforts,
`
`in educating the public to
`
`associate the proposed mark with a single source. The examining attorney must examine the
`
`advertising material to determine how the term is being used, the commercial impression created
`
`by such use, and what the use would mean to purchasers. In re Redken Laboratories, Inc., 170
`
`U.S.P.Q. 526, 529 (TTAB 1971).
`
`The Story Declaration makes clear that the present mark is widely used by third parties to
`
`refer to Applicant's goods, and that it is not necessary for third parties to use Applicant's present
`
`trademark in referring to a competing product. See Story Declaration paragraphs 6-11.
`
`Accordingly, for all of the reasons stated above, Applicant believes its mark has acquired
`
`suflicient distinctiveness in the US with respect to the claimed goods. See Story Declaration
`
`paragraph 12.
`
`III.
`
`Conclusion
`
`‘
`
`Based on the foregoing arguments and new evidence submitted ir1 support thereof,
`
`Applicant respectfully requests that the Examiner approve for publication the application for
`
`registration of the VIRTUALCONSOLE mark under Section 1(a) of the Trademark Act. In the
`
`NOAM\34622A.M3 DOC
`
`LAW OFFICES OF
`CHRISTENSEN O'CONNOR JOHNSON KINDNESSNC
`1420 Fifth Avenue
`Suite 2800
`Seattle, Washington 98101
`206.682.8100
`
`-7-
`
`

`
`V‘-
`
`Trademark Law Office: 117
`
`Serial No.: 77/014121
`
`Examining Attorney: Anne Gustason
`
`alternative, Applicant requests that the Examiner approve for publication the application for
`
`registration of the mark under Section 2(f) of the Trademark Act.
`
`If there are any outstanding
`
`issues, the Examining Attorney may contact the undersigned directly.
`
`Respectfully submitted,
`
`CHRISTENSEN O'CONNOR
`JOHNSON KINDNESSPWZ
`
`otaiwfiwlaat
`
`Claire F. Hawkins
`Direct Dial No. 206.695.1779
`
`I hereby certify that this correspondence is being deposited with the U.S. Postal Service in a sealed
`envelope as first-class mail with postage thereon fully prepaid and addressed to the Commissioner for Trademarks,
`
`P.O. Box 145 Alexandria, VA 22313-1451, onthebelowdati.
`Date:
`3 i )__ Q 0
`
`:
`
`;
`
`'
`
`CFH:pag
`
`NOAM\34622A.M3 DOC
`
`LAW OFFICES OF
`CHRISTENSEN O'CONNOR JOHNSON KINDNESSWC
`1420 1'-‘iflh Avenue
`Suite 2800
`Seattle, Washington 98101
`206.682.8100
`
`-8-
`
`

`
`Applicant: Nintendo Co., Ltd.
`Serial No.: 77/014121
`Filed:
`October 4, 2006
`Mark:
`VIRTUALCONSOLE
`
`Attorney Docket No.: NOAM-2—34622
`Trademark Attorney: Anne Gustason
`Law Office: 117
`International Class: 9
`
`REQUEST FOR SUBMISSION OF NEW EVIDENCE AND AMENDMENT FOR
`
`REGISTRATION UNDER SECTION 2(1)
`
`Exhibit A
`
`

`
`
`
`Trademark Electronic Search System (TESS)
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`l'LE'._~'
`
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`Word Mark
`Goods and
`Services
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`Standard
`Characters
`Claimed
`
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`code
`Trademark
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`Code
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`
`LMS V|RTUAL.LAB
`
`IC 009. US 021 O23 O26 036 038. G & 8: Computers; computer peripherals; computer terminals; computer
`programs to test and simulate the behaviour of product designs and to manage all data, models and results
`related to these testing and simulation operations
`
`IC 042. US 100 101. G & 3: Computer programming. computer hardware and software development and
`computer engineering senrices for others; technology supervision of computer projects; design and development
`of computer systems and softvlare; computer services related to computer system methodology and
`development, namely, the deployment of software, and the management of a network of different computer
`systems that operate testing and simulation software; technical research and surveying in the field of testing and
`simulating the behavior of product designs; computer systems analysis; rental of computer software; consultancy
`and information services in the field of office and workplace automation
`
`(4) STANDARD CHARACTER MARK
`
`LETTER—3-OR-MORE LMS Combination of three or more letters as part of the mark
`NOTATION-SYMBOLS Notation Symbols such as Non-Latin characterspunctuation and mathematical
`signs.zodiac slg ns.prescription marks
`79038125
`
`December 21, 2006
`
`66A
`
`66A
`
`February 24, 2009
`
`lof2
`
`7/31/2009 8:46 AM
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`Trademark Electronic Search System (TESS)
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`http2//tess2.uspto.gov/bin/showfie1d?%doc&state=4002:i3rvti.2.6
`
`
`
`Registration
`Number
`International
`Registration
`Number
`
`361 9478
`
`0923122
`
`Registration Date
`Owner
`
`May 12, 2009
`(REGISTRANT) LMS International NV NAAMLOZE VENNOOTSCHAP (NV) BELGIUM lnterieuvenlaan 68
`B6001 Leuven BELGIUM
`
`Prior
`Registrations
`Disclaimer
`
`Type of Mark
`Register
`LiveIDead
`Indicator
`
`1 744305
`
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "VIRTUAL.LAB" APART FROM THE MARK AS
`SHOWN
`TRADEMARK. SERVICE MARK
`PRINCIPAL
`
`LIVE
`
`
`
`
`
`I.HOME | SITEINDEXI SEARCH I EBUSINESS I HEI.P I PRIVACY POLICY
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`

`
`Latest Status Info
`
`http://tarr.uspto.gov/servlet/tarr?regser=seria1&enny=79038125
`
`Thank you for your request. Here are the latest results from the TARR web server.
`
`This page was generated by the TARR system on 2009-07-31 1 1:46:54 ET
`
`Serial Number: 79038125 Assignment Information
`
`Trademark Document Retrieval
`
`Registration Number: 3619478
`
`Mark
`
`
`
`(words only): LMS VIRTUALLAB
`
`Standard Character claim: Yes
`
`Current Status: Registered.
`
`Date of Status: 2009-05-12
`
`Filing Date: 2006-12-21
`
`Transformed into a National Application: No
`
`Registration Date: 2009-05-12
`
`Register: Principal
`
`Law Office Assigned: LAW OFFICE 1 14
`
`Ifyou are the applicant or applicant's attorney and have questions about this file, please contact the
`Trademark Assistance Center at TrademarkAssistanceCenter@uspto.gov
`
`Current Location: 650 -Publication And Issue Section
`
`Date In Location: 2009-05-12
`
`LAST APPLICANT(S)/OWNER(S) OF RECORD
`
`1. LMS Intemational NV
`
`Address:
`LMS Lnternational NV
`lnterieuvenlaan 68 B-3001 Leuven
`
`Belgium
`Legal Entity ’I‘ype: NAAMLOZE VENNOOTSCI-{AP (NV)
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`http://tarr.uspto.gov/servlet/tarr'?regser=serial&entry=79038125
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`State or Country Where Organized: Belgium
`
`_._
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`GOODS AND/OR SERVICES
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`International Class: 009
`Class Status: Active
`
`Computers; computer peripherals; computer terminals; computer programs to test and simulate the behaviour of
`product designs and to manage all data, models and results related to these testing and simulation operations
`Basis: 66(a)
`First Use Date: (DATE NOT AVAILABLE)
`First Use in Commerce Date: (DATE NOT AVAILABLE)
`
`Internafional Class: 042
`Class Status: Active
`
`Computer programming, computer hardware and software development and computer engineering services for
`others; technology supervision of computer projects; design and development of computer systems and software;
`computer services related to computer system methodology and development, namely, the deployment of software,
`and the management of a network of different computer systems that operate testing and simulation software;
`technical research and surveying in the field of testing and simulating the behavior of product designs; computer
`systems analysis; rental of computer software; consultancy and information services in the field of office and
`workplace automation
`Basis: 66(a)
`First Use Date: (DATE NOT AVAILABLE)
`First Use in Commerce Date: (DATE NOT AVAILABLE)
`
`ADDITIONAL INFORMATION
`
`Disclaimer: "VlRTUAL.LAB"
`
`Prior Registration Number(s):
`1744305
`
`MADRID PROTOCOL INFORMATION
`
`International Registration Number: 0923122
`International Registration Date: 2006-12-21
`Priority Claimed: No
`Date of Section 67 Priority Claim: (DATE NOT AVAILABLE)
`International Registration Status: Request For Extension Of Protection Processed
`Date of International Registration Status: 2007-06-14
`International Registration Renewal Date: 2016-] 2-2 I
`Notification of Designation Date: 2007-06-14
`Date ofAutomatic Protection: 2008-12-14
`
`Date International Registration Cancelled: (DATE NOT AVAILABLE)
`First Refusal: Yes
`
`PROSECUTION HISTORE
`
`NOTE: To View any document referenced below, click on the link to "Trademark Document Retrieval"
`shown near the top of this page.
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`2009-05-12 - Registered - Principal Register
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`2009-02-24 — Published for opposition
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`2009-02-04 - Notice of publication
`
`2009-01-22 - Law Office Publication Review Completed
`
`2009-01-17 - Approved for Pub — Principal Register (Initial exam)
`
`2009-01-14 - Teas/Email Correspondence Entered
`
`2009-01-14 - Communication received from applicant
`
`2009-01-14 - TEAS Request For Reconsideration Received
`
`2008-12-05 - Notification Of Possible Opposition - Processed By 1B
`
`2008-11-20 - Notification Of Possible Opposition Sent To IB
`
`2008-11-20 - Notification Of Possible Opposition Created, To Be Sent To IB
`
`2008-07-20 - Notification Of Final Refusal Emailed
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`2008-07-20 - Final refusal e-mailed
`
`2008-07-20 - Final Refusal Written
`
`2008-03-28 - Teas/Email Correspondence Entered
`
`2008-03-28 3 Communication received from applicant
`
`2008-03-28 - Applicant/Correspondence Changes (Non-Responsive) Entered
`
`2008-03-27 - Assigned To LIE
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`2008-03-19 - TEAS Change Of Correspondence Received
`
`2008-03-19 - TEAS Response to Office Action Received
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`2008-03-19 - Petition To Revive~Granted
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`2008-03-19 - TEAS Petition To Revive Received
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`2008-01-22 - Abandonment Notice Mailed - Failure To Respond
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`2008-01-22 - Abandonment - Failure To Respond Or Late Response
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`2007-07-13 - Refusal Processed By IB
`
`2007-06-25 - Non-Final Action Mailed - Refusal Sent To 1B
`
`2007-06-25 - Refusal Processed By MPU
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`2007-06-23 - Non-Final Action (lb Refusal) Prepared For Review
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`2007-06-22 - Non-Final Action Written
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`2007-06-21 - Assigned To Examiner
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`2007-06-21 - New Application Entered In Tram
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`2007-06-19 - Limitation Of Goods/Services From IB Entered
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`2007-06-14 - Sn Assigned For Sect 66a Appl From IB
`
`,_P,.._
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`m%--\
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`ATTORNEYICORRESPONDENT INFORMATION
`
`Correspondent
`NEDERLANDSCH OCTROOIBUREAU
`ABELMAN FRAYNE & SCHWAB
`666 3RD AVE
`FL 10
`
`NEW YORK, NY 10017-4046
`Phone Number: 212-949-9022
`Fax Number: 2129499190
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`Trademark Electronic Search System (TESS)
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`http://tess2.uspto.gov/bin/gate.exe?f=doc&state=4009:h5msoa3.17
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`United States Patent and Trademark Office
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`TESS was last updated on Wed Mar 1 1 04:07:32 EDT 2009
`
`I'\’_).l L251
`
`l [Herr Dr:-C
`
`Word Mark
`
`VIRTUAL MTV
`
`»
`
`Goods and
`Services
`
`Standard
`Characters
`Claimed
`
`Mark Drawing
`Code
`
`Trademark
`
`Search Facility
`Classification
`Code
`
`IC 009. US 021 023 026 036 038. G & S: COMPUTER GAME SOFTWARE. COMPUTER GAME
`PROGRAMS, COMPUTER GAME SOFTWARE THAT MAY BE DOWNLOADED FROM A GLOBAL
`COMPUTER NETWORK, COMPUTER GAME CARTRIDGES TO BE USED IN COMPUTER GAME
`MACHINES ADAPTED FOR USE WITH TELEVISION RECEIVERS. FIRST USE: 20070201. FIRST
`USE IN COMMERCE: 20070201
`
`(4) STANDARD CHARACTER MARK
`
`LETTER—3-OR-MORE MTV Combination of three or more letters as part of the mark
`
`Serial Number
`
`78935716
`
`Filing Date
`
`July 24, 2006
`
`Current Filing
`Basis
`
`Original Filing
`Basis
`
`1A
`
`1B
`
`P‘”’"s'."?d f°" December 12, 2006
`Opposition
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`htipz//tes s2.uspto.gov/bin/gate.exe?f=doc&state=4009:h5msoa.3. 1 7
`
`Registration
`Number
`
`Registration
`Date
`
`Owner
`
`Attorney of
`Record
`Prior
`
`Registrations
`Disclaimer
`
`Type of Mark
`
`Register
`LivelDead
`Indicator
`
`3581806
`
`February 24, 2009
`
`(REGISTRANT) VIACOM INTERNATIONAL INC. CORPORATION DELAWARE 1515 Broadway
`New York NEW YORK 10036
`
`Lavatus Powell
`
`1310411;3136442;AND OTHERS
`
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "Virtual" APARTIFROM THE MARK AS
`SHOWN
`
`TRADEMARK
`
`PRINCIPAL
`
`LIVE
`
` I
`
`!r:s‘r Lbrgr;
`
`: I-.-3:: }. any‘ |:I<.;r.‘.~:-I
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`
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`|.HOME I SITEINDEXI SEARCH I eBUSlNESS I HELP I PRIVACY POLICY
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`http://tatr.uspto.gov/servlet/tarr?regser=serial&enW78935716
`
`Thank you for your request. Here are the latest results from the TARR web server.
`
`This page was generated by the TARR system on 2009-03-11 12:27:48 ET
`
`Serial Number: 78935716 Assignment Information
`
`Trademark Document Retrieval
`
`Registration Number: 3581806
`
`Mark
`
`
`
`(words only): VIRTUAL MTV
`
`Standard Character claim: Yes
`
`Current Status: Registered.
`
`Date of Status: 2009-02-24’
`
`Filing Date: 2006-07-24
`
`Transformed into a National Application: No
`
`Registration Date: 2009-02-24
`
`Register: Principal
`
`Law Ofiice Assigned: LAW OFFICE 103
`
`Ifyou are the applicant or applicant's attorney and have questions about this tile, please contact
`the Trademark Assistance Center at TrademarkAssistanceCenter@uspt0.gov
`
`Current Location: 650 -Publication And Issue Section
`
`Date In Location: 2009-01-22
`
`LAST APPLICANT(S)/OVVNER(S) OF RECORD
`
`1. VIACOM INTERNATIONAL INC.
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`
`Address:
`VIACOM INTERNATIONAL INC.
`
`1515 Broadway
`New York, NY 10036
`United States
`
`Legal Entity Type: Corporation
`State or Country of Incorporation: Delaware
`
`N. .
`
`._
`
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`
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`
`E141
`
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`
`GOODS AND/OR SERVICES
`
`International Class: 009
`Class Status: Active
`
`COMPUTER GAME SOFTWARE, COMPUTER GAME PROGRAMS, COMPUTER GAME
`SOFTWARE THAT MAY BE DOWNLOADED FROM A GLOBAL COMPUTER NETWORK,
`COMPUTER GAME CARTRIDGES TO BE USED IN COMPUTER GAME MACHINES ADAPTED
`
`FOR USE WITH TELEVISION RECEIVERS
`
`Basis: 1(a)
`First Use Date: 2007-02-01
`First Use in Commerce Date: 2007-02-01
`
`ADDITIONAL INFORMATION
`
`Disclaimer: "Virtual"
`
`Prior Registration Number(s):
`1 3 1 041 1
`
`3136442
`
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`
`MADRID
`
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`(NOT AVAILABLE)
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`
`.
`
`PROSECUTION HISTORY
`
`_
`
`NOTE: To view any document referenced below, click on the link to "Trademark Document
`Retrieval" shown near the top of this page.
`
`2009-02-24 - Registered - Principal Register
`
`2009-01-22 — Law Office Registration Review Completed
`
`2009-O1-22 - Assigned To LIE
`
`2009-01-07 — Allowed for Registration — Principal Register (SOU accepted)
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`http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78935716
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`2008-09-09 - Statement of use processing complete
`
`2008-09-03 — Amendment to Use filed
`
`2008-09-09 - Case Assigned To Intent To Use Paralegal
`
`2008-09-03 - TEAS Statement of Use Received
`
`2008-04-04 - Extension 2 granted
`
`2008-03-06 - Extension 2 filed
`
`2008-03-19 - Extension Received With TEAS Petition
`
`2008-03-19 - Petition To Revive-Granted
`
`2008-03-19 - TEAS Petition To Revive Received
`
`2007-05-15 - Extension 1 granted
`
`2007-05-15 - Extension 1 filed
`
`2007-05-15 - TEAS Extension Received
`
`2007-03-06 - Noa Mailed - SOU Required From Applicant
`
`2006-12-12 - Published for opposition
`
`2006-11-22 - Notice of publication
`
`2006-10-17 — Law Office Publication Review Completed
`
`2006-10-06 - Assigned To LIE
`
`2006-09-29 - Approved for Pub - Principal Register (Initial exam)
`
`2006-09-29 - Examiner's Amendment Entered
`
`2006-09-29 - Examiners amendment e-mailed
`
`2006-09-29 - Examiners Amendment -Written
`
`2006-09-22 - Assigned To Examiner
`
`2006-07-28 - New Application Entered In Tram
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`ATTORNEY/CORRESPONDENT INFORMATION
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`_....___ —-
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`._,.V.
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`http://tarr.uspto.gov/servlet/tarr?regser=serial&en1ry=78935716
`
`Attorney of Record
`Lavatus Powe