Zapak Digital Entertainment Limited
Online social networking services
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
Miscellaneous Statement
ZAPAK
Serial No. 77/733,427
I. Request to Divide
Applicant attaches as Exhibit A the Request to Divide that it filed on February 9,
2010, and requests that the Examiner enter the Request to Divide prior to amending the
application based on the instructions in this Response to Office Action. Applicants
intent in filing the Request to Divide is to divide into a new application all goods and
services to which the Section 44(e) filing basis does not apply. The new, divided-out
application will cover the following goods and services:
International Class: 014 (Section 1(b) Filing Basis)
Watches containing a game function, watches containing an electronic
game function
International Class: 020 (Section 1(b) Filing Basis)
Works of art of wood, wax, plaster or plastic
International Class: 035 (Section 1(a) Filing Basis)
Arranging of subscriptions for the publications of others
International Class: 045 (Section 1(b) Filing Basis)
Online social networking services provided through a sports and other
community website
II. Amended Drawing
Applicant has amended the drawing in the Response to the Office Action to match
the drawing of the ZAPAK mark registered in India so that it may continue to claim a
Section 44(e) filing basis. Applicant requests that this amendment apply only to the
goods and services that remain in the application under Section 44(e). Applicant desires
to maintain the standard character claim for the divided-out application in which the
goods and services claim a Section 1(a) or Section 1(b) filing basis.
III. Clarification of Amendments to Filing Bases
Applicant wishes to clarify the amendments made to the filing bases for each of
the Classes in the application.
A. Class 009
Delete Sections 1(a) and 1(b) filing bases; maintain Section 44(e) filing basis.
B. Class 014
Delete Sections 1(a) and 44(e) filing bases; maintain Section 1(b) filing basis.
Applicant claimed only a Section 1(b) filing basis for Class 014 in the original
application. Any reference in the PTO database to any other filing basis is incorrect.
The entirety of Class 014 is being divided out into a new application under the
Section 1(b) filing basis.
C. Class 016
Delete Sections 1(a) and 1(b) filing bases; maintain Section 44(e) filing basis.
Applicant based Class 016 on Indian Registration No. 1489480 registered on
09/21/2006. Any reference in the PTO database to any other Indian registration is
incorrect.
D. Class 020
Delete Sections 1(a) and 44(e) filing bases; maintain Section 1(b) filing basis.
Applicant claimed only a Section 1(b) filing basis for Class 020 in the original
application. Any reference in the PTO database to any other filing basis is incorrect.
The entirety of Class 020 is being divided out into a new application under the
Section 1(b) filing basis.
E. Class 025
Delete Sections 1(a) and 1(b) filing bases; maintain Section 44(e) filing basis.
Applicant claimed only Sections 1(a) and 44(e) filing bases for Class 025 in the
original application. Any reference in the PTO database to any other filing basis is
incorrect. Additionally, Applicant based Class 025 on Indian Registration No. 1488479,
registered on 09/21/2006. Any reference in the PTO database to any other Indian
registration is incorrect.
F. Class 028
Delete Sections 1(a) and 1(b) filing bases; maintain Section 44(e) filing basis.
Applicant based Class 028 on Indian Registration No. 1489478, registered on
09/21/2006. Any reference in the PTO database to any other Indian registration is
incorrect.
G. Class 035
Divide out Arranging subscriptions of the online publications of others into the
new application under the Section 1(a) filing basis. For the remainder of this Class,
delete the Sections 1(a) and 1(b) filing bases and maintain the Section 44(e) filing basis.
Applicant based Class 035 on Indian Registration No. 1489477, registered on
09/21/2006. Any reference in the PTO database to any other Indian registration is
incorrect.
H. Class 038
Delete Sections 1(a) and 1(b) filing bases; maintain Section 44(e) filing basis.
Applicant based Class 038 on Indian Registration No. 1600787, registered on
09/12/2007. Any reference in the PTO database to any other Indian registration is
incorrect.
I. Class 041
Delete Sections 1(a) and 1(b) filing bases; maintain Section 44(e) filing basis.
Applicant based Class 041 on Indian Registration No. 1489476, registered on
09/21/2006. Any reference in the PTO database to any other Indian registration is
incorrect.
J. Class 042
Delete Section 1(a) filing basis; maintain Section 44(e) filing basis.
Applicant based Class 042 on Sections 1(a) and 44(e) filing bases. Any reference
in the PTO database to any other filing basis is incorrect. Additionally, Applicant based
Class 042 on Indian Registration No. 1489475, registered on 09/21/2006. Any reference
in the PTO database to any other Indian registration is incorrect.
K. Class 045
Delete the Sections 1(a) and 44(e) filing bases and maintain the Section 1(b) filing
basis.
Applicant based Class 045 on only a Section 1(b) filing basis in the original
application. Any reference in the PTO database to any other filing basis is incorrect.
The entirety of Class 045 is being divided out into a new application under the
Section 1(b) filing basis.
Exhibit A
Miscellaneous Statement
ZAPAK
Serial No. 77/733,427
I. Request to Divide
Applicant attaches as Exhibit A the Request to Divide that it filed on February 9,
2010, and requests that the Examiner enter the Request to Divide prior to amending the
application based on the instructions in this Response to Office Action. Applicants
intent in filing the Request to Divide is to divide into a new application all goods and
services to which the Section 44(e) filing basis does not apply. The new, divided-out
application will cover the following goods and services:
International Class: 014 (Section 1(b) Filing Basis)
Watches containing a game function, watches containing an electronic
game function
International Class: 020 (Section 1(b) Filing Basis)
Works of art of wood, wax, plaster or plastic
International Class: 035 (Section 1(a) Filing Basis)
Arranging of subscriptions for the publications of others
International Class: 045 (Section 1(b) Filing Basis)
Online social networking services provided through a sports and other
community website
II. Amended Drawing
Applicant has amended the drawing in the Response to the Office Action to match
the drawing of the ZAPAK mark registered in India so that it may continue to claim a
Section 44(e) filing basis. Applicant requests that this amendment apply only to the
goods and services that remain in the application under Section 44(e). Applicant desires
to maintain the standard character claim for the divided-out application in which the
goods and services claim a Section 1(a) or Section 1(b) filing basis.
III. Clarification of Amendments to Filing Bases
Applicant wishes to clarify the amendments made to the filing bases for each of
the Classes in the application.
A. Class 009
Delete Sections 1(a) and 1(b) filing bases; maintain Section 44(e) filing basis.
B. Class 014
Delete Sections 1(a) and 44(e) filing bases; maintain Section 1(b) filing basis.
Applicant claimed only a Section 1(b) filing basis for Class 014 in the original
application. Any reference in the PTO database to any other filing basis is incorrect.
The entirety of Class 014 is being divided out into a new application under the
Section 1(b) filing basis.
C. Class 016
Delete Sections 1(a) and 1(b) filing bases; maintain Section 44(e) filing basis.
Applicant based Class 016 on Indian Registration No. 1489480 registered on
09/21/2006. Any reference in the PTO database to any other Indian registration is
incorrect.
D. Class 020
Delete Sections 1(a) and 44(e) filing bases; maintain Section 1(b) filing basis.
Applicant claimed only a Section 1(b) filing basis for Class 020 in the original
application. Any reference in the PTO database to any other filing basis is incorrect.
The entirety of Class 020 is being divided out into a new application under the
Section 1(b) filing basis.
E. Class 025
Delete Sections 1(a) and 1(b) filing bases; maintain Section 44(e) filing basis.
Applicant claimed only Sections 1(a) and 44(e) filing bases for Class 025 in the
original application. Any reference in the PTO database to any other filing basis is
incorrect. Additionally, Applicant based Class 025 on Indian Registration No. 1488479,
registered on 09/21/2006. Any reference in the PTO database to any other Indian
registration is incorrect.
F. Class 028
Delete Sections 1(a) and 1(b) filing bases; maintain Section 44(e) filing basis.
Applicant based Class 028 on Indian Registration No. 1489478, registered on
09/21/2006. Any reference in the PTO database to any other Indian registration is
incorrect.
G. Class 035
Divide out Arranging subscriptions of the online publications of others into the
new application under the Section 1(a) filing basis. For the remainder of this Class,
delete the Sections 1(a) and 1(b) filing bases and maintain the Section 44(e) filing basis.
Applicant based Class 035 on Indian Registration No. 1489477, registered on
09/21/2006. Any reference in the PTO database to any other Indian registration is
incorrect.
H. Class 038
Delete Sections 1(a) and 1(b) filing bases; maintain Section 44(e) filing basis.
Applicant based Class 038 on Indian Registration No. 1600787, registered on
09/12/2007. Any reference in the PTO database to any other Indian registration is
incorrect.
I. Class 041
Delete Sections 1(a) and 1(b) filing bases; maintain Section 44(e) filing basis.
Applicant based Class 041 on Indian Registration No. 1489476, registered on
09/21/2006. Any reference in the PTO database to any other Indian registration is
incorrect.
J. Class 042
Delete Section 1(a) filing basis; maintain Section 44(e) filing basis.
Applicant based Class 042 on Sections 1(a) and 44(e) filing bases. Any reference
in the PTO database to any other filing basis is incorrect. Additionally, Applicant based
Class 042 on Indian Registration No. 1489475, registered on 09/21/2006. Any reference
in the PTO database to any other Indian registration is incorrect.
K. Class 045
Delete the Sections 1(a) and 44(e) filing bases and maintain the Section 1(b) filing
basis.
Applicant based Class 045 on only a Section 1(b) filing basis in the original
application. Any reference in the PTO database to any other filing basis is incorrect.
The entirety of Class 045 is being divided out into a new application under the
Section 1(b) filing basis.
Exhibit A