UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/584562
APPLICANT: Sylvan Education Solutions, LLC
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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CORRESPONDENT’S REFERENCE/DOCKET NO: 42328-202627
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/584562
The assigned examining attorney has reviewed the referenced application and determined the following.
NO CONFLICTING MARKS
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
The applicant’s preliminary amendment filed April 30, 2004 has been received. The applicant’s signed declaration has been included in the record.
INFORMALITIES
The applicant must respond to the following informalities.
The wording “EDUCATIONAL SERVICES; PROGRAMS ON THE K-12 LEVEL OFFERED TO SCHOOLS, SCHOOL DISTRICTS, COMMUNITY BASED ORGANIZATIONS” in the recitation of services is unacceptable as indefinite. The nature of the services is unclear. The applicant must provide the subject matter of the programs offered. The applicant may amend this wording to “educational services; namely, programs on the K-12 level offered to schools, school districts, community based organizations in the field of [specify subject matter] in Class 41,” if accurate. TMEP §1402.11.
The applicant has classified “RECRUITMENT AND PLACEMENT OF TEMPORARY HEALTHCARE PERSONNEL TO WORK IN MEDICAL FACILITIES ACROSS THE UNITED STATES” in International Class 41. The correct classification is International Class 35. The applicant must either delete this wording or add International Class 35 to the application. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).
The applicant has classified “SPEECH THERAPY, LANGUAGE THERAPY, OCCUPATIONAL THERAPY AND PHYSICAL THERAPY SERVICES; HEALTH CARE SERVICES; NAMELY, IN-SCHOOL SPEECH THERAPY, LANGUAGE THERAPY, OCCUPATIONAL THERAPY AND PHYSICAL THERAPY SERVICES” in International Class 41. The correct classification is International Class 44. The applicant must either delete this wording or add International Class 44 to the application. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).
The wording “ASSESSMENT, EXAMINATION AND EVALUATION OF STUDENTS” in the recitation of services is unacceptable as indefinite. The nature of the services is unclear. The applicant must list the specific services intended by this wording. TMEP §1402.11.
The applicant has classified CONSULTATION SERVICES IN THE FIELDS OF . . . SPEECH THERAPY, LANGUAGE THERAPY, OCCUPATIONAL THERAPY AND PHYSICAL THERAPY” in International Class 41. The correct classification is International Class 44. The applicant must either delete this wording or add International Class 44 to the application. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).
The applicant has classified “BOOKS, . . . AND PRINTED CURRICULUMS IN THE FIELD OF EDUCATION AND HEALTH” in International Class 41. The correct classification is International Class 16. The applicant must either delete this wording or add International Class 16 to the application. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).
The applicant has classified “PRERECORDED TAPES, PRE-RECORDED CDS . . . IN THE FIELD OF EDUCATION AND HEALTH” in International Class 41. The correct classification is International Class 9. The applicant must either delete this wording or add International Class 9 to the application. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).
The wording “COMPUTER SOFTWARE IN THE FIELD OF EDUCATION AND HEALTH” in the identification is unacceptable as indefinite. The applicant must provide the function of the software. TMEP §1402.11.
The applicant has classified “COMPUTER SOFTWARE IN THE FIELD OF EDUCATION AND HEALTH” in International Class 41. The correct classification is International Class 9. The applicant must either delete this wording or add International Class 9 to the application. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.
Additional Fees
The application identifies goods that may be classified in several international classes. The applicant has submitted fees for one class. Therefore, the applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es). 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.
If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.
(1) The applicant must list the goods/services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
Drawing
The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. Section 2.52. TMEP section 807.05. The drawing is not acceptable because it contains speckling which will result in a poor quality reproduction.
The requirements for a special-form drawing are as follows:
· The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.
· Drawings must be typed or made with a pen or by a process that will provide high definition when copied. A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used. All lines must be clean, sharp and solid, and must not be fine or crowded.
· The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.
· If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.
37 C.F.R. §§2.52(b); See TMEP §§807.01(b) and 807.07(a).
If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long). One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge. 37 C.F.R. §2.54.
The Office strictly enforces these drawing requirements.
To submit a special form drawing electronically, applicant must attach a digitized image of the mark to the submission. The Office will only accept an image in .jpg format. The image must be formatted at no less than 300 dots per inch and no more than 350 dots per inch; and with a length and width of no less than 250 pixels and no more than 944 pixels. All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high quality image when copied. 37 C.F.R. §2.53.
APPLICANT’S RESPONSE
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. To reach the undersigned attorney by telephone after October 12, 2004, please call (571) 272 - 9260.
/Karla Perkins/
Trademark Examining Attorney
Law Office 102
703-308-9102 ext. 169
703-746-8102 (fax)
How to respond to this Office Action:
You may respond using the Office's Trademark Electronic Application System (TEAS) (visit http://www.gov.uspto.report/teas/index.html and follow the instructions therein), but you must wait until at least 72 hours after receipt of the e-mailed office action. PLEASE NOTE: For those with applications filed pursuant to Section 66(a) of the Trademark Act, all responses to Office actions that include amendments to the identifications of goods and/or services must be filed on paper, using regular mail (or hand delivery) to submit such response. TEAS cannot be used under these circumstances. If the response does not include an amendment to the goods and/or services, then TEAS can be used to respond to the Office action.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.