IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
TRADEMARK EXAMINING DIVISION
In re Application of :
Applicant :
NCS Pearson, Inc.
Mark
: CONCERT
Ser. No.
: 76/467953
Filing Date : November
18, 2002
Box Responses - No Fee
Commissioner for Trademarks
2900 Crystal Drive
Arlington, VA 22202-3514
Attention: Katherine Stoides
Law Office 110
(703) 308-9110 Ext. 166
Responding to Office Action dated May 18, 2003.
RESPONSE
A. The Marks
Applicant, NCS Pearson, Inc. does not dispute that its mark is similar in sound and appearance to U.S. Registration Nos. 2553828, 2557088, 2108029, 2174242, 2254628 and 2244083. However,
Applicant requests reconsideration of the application identified above for the reasons stated in the following paragraphs.
B. The Goods and Services
Applicant proposes to amend its recitation of services so the application does not apply to telecommunication services, and to amend the classification to International Class 42. We have
reviewed the Trademark Examiner's proposed recitation for the Application Service Provider services and we have reviewed the sample recitations from the Trademark Acceptable Identification of Goods
and Services Manual (the "Manual") for "application service provider." We believe the following recitation most accurately describes the services for which we are seeking registration of the
mark, while most closely following the Trademark Examiner's suggested amendment to the identification of services, and the Manual.
The Applicant wishes to adopt the following recitation:
"Application service provider featuring software for K-12 educational information management, in Class 42."
I hope that I have adequately responded to the Examining Attorney's concerns regarding the likelihood of confusion between Applicant's mark and Registrants' marks. We would be happy to consider
any further amendment to our description of services that the Examining Attorney believes might be helpful and/or necessary. Applicant respectfully requests that its application for
registration of the mark, CONCERT, be approved and allowed to proceed to publication.
/Daniel J. DeVoe/
Attorney for Applicant:
Daniel J. DeVoe, Esq.
Assistant General Counsel
NCS Pearson, Inc.
5601 Green Valley Drive
Bloomington, MN 55437
Telephone: (952) 681-3070
Dan.devoe@pearson.com <mailto:Dan.devoe@pearson.com>
Certificate of Attesting to the Date of Transmission
I hereby certify that this correspondence is being transmitted by electronic mail to the United States Patent and Trademark Office on the date shown below.
Nancy K. Pond
(Typed or Printed Name of Person Signing Certificate)
/Nancy K. Pond/
(Signature)
November 13, 2003
(Date)
A. The Marks
Applicant, NCS Pearson, Inc. does not dispute that its mark is similar in sound and appearance to U.S. Registration Nos. 2553828, 2557088, 2108029, 2174242, 2254628 and 2244083. However
Applicant requests reconsideration of the application identified above for the reasons stated in the following paragraphs.
B. The Goods and Services
Applicant agrees that as written in its initial application the description of services in International Class 38 could lead one to conclude that there could be relatedness of services of the
respective parties, which might support a finding of likelihood of confusion. Applicant proposes to amend its recitation of services so the application does not apply to telecommunication
services. As to the recitation of services in International Class 41, Applicant agrees the Trademark Examiner's analysis to amend the classification to International Class 42. We have
reviewed the Trademark Examiner's proposed recitation for the Application service provider services and we have reviewed the sample recitations from the Trademark Acceptable Identification of Goods
and Services Manual (the "Manual") for "application service provider." We believe the following recitation most accurately describes the services for which we are seeking registration of the
mark, while most closely following the Trademark Examiner's suggested amendment to the identification of services and the Manual.
The Applicant wishes to adopt the following recitation:
"Application service provider featuring software for K-12 educational information management."
I hope that I have adequately responded to the Examining Attorney's concerns regarding the likelihood of confusion between Applicant's mark and Registrants' marks. While we believe the amended
description of services adequately distinguishes our services, we would be happy to consider any further amendment to our description of services that the Examining Attorney believes might be helpful
and/or necessary to show this distinction. Applicant respectfully requests that its application for registration of the mark, CONCERT, be approved and allowed to proceed to publication.
___________________________
Attorney for Applicant:
Daniel J. DeVoe, Esq.
Assistant General Counsel
NCS Pearson, Inc.
5601 Green Valley Drive
Bloomington, MN 55437
Telephone: (952) 681-3070
Certificate of Attesting to the Date of Transmission
I hereby certify that this correspondence is being transmitted by electronic mail to the United States Patent and Trademark Office on the date shown below.
________________________________________
Typed or Printed Name of Person Signing Certificate
(Signature)
(Date)
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