Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 76688547 has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for PUBLICATION IN ELECTRONIC FORMAT OF INSTRUCTIONAL, TRAINING, TEACHING, TESTING, EXAMINATION AND ASSESSMENT MATERIALS FOR THE TESTING OF ENGLISH LANGUAGE SKILLS
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 11/01/1999 and first used in commerce at least as early as 11/01/1999, and is now in use in such commerce.

Proposed:
Tracked Text Description: [PUBLICATION IN ELECTRONIC FORMAT OF INSTRUCTIONAL], Publication in electronic format, specifically, CDs, DVDs and downloadable books in the field of instructional, training, teaching, testing, examination and assessment materials for the testing of English language skillsClass 009 for Publication in electronic format, specifically, CDs, DVDs and downloadable books in the field of instructional, training, teaching, testing, examination and assessment materials for the testing of English language skills
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 11/01/1999 and first used in commerce at least as early as 11/01/1999, and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for STANDARDIZED TESTS FOR ASSESSING A PERSON'S ABILITY TO COMMUNICATE IN ENGLISH FOR EDUCATION, IMMIGRATION AND PROFESSIONAL ACCREDITATION; PUBLICATION IN PAPER FORMAT OF INSTRUCTIONAL, TRAINING, TEACHING, TESTING, EXAMINATION AND ASSESSMENT MATERIALS FOR THE TESTING OF ENGLISH LANGUAGE SKILLS
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 11/01/1999 and first used in commerce at least as early as 11/01/1999, and is now in use in such commerce.

Proposed:
Tracked Text Description: [STANDARDIZED TESTS FOR ASSESSING A PERSON'S ABILITY TO COMMUNICATE IN ENGLISH FOR EDUCATION, IMMIGRATION AND PROFESSIONAL ACCREDITATION]; Educational publications, namely, workbooks featuring standardized tests for assessing a person's ability to communicate in English for education, immigration and professional accreditation; [PUBLICATION IN PAPER FORMAT OF INSTRUCTIONAL, TRAINING, TEACHING, TESTING, EXAMINATION AND ASSESSMENT MATERIALS FOR THE TESTING OF ENGLISH LANGUAGE SKILLS]; publication in paper format, namely, books and workbooks featuring instructional, training, teaching, testing, examination and assessment materials for the testing of English language skillsClass 016 for Educational publications, namely, workbooks featuring standardized tests for assessing a person's ability to communicate in English for education, immigration and professional accreditation; publication in paper format, namely, books and workbooks featuring instructional, training, teaching, testing, examination and assessment materials for the testing of English language skills
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 11/01/1999 and first used in commerce at least as early as 11/01/1999, and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for EDUCATIONAL SERVICES, NAMELY TESTING OF ENGLISH LANGUAGE SKILLS AND PROVISION OF INSTRUCTIONAL, TRAINING, TEACHING, TESTING, EXAMINATION AND ASSESSMENT SERVICES PROVIDED BY COMPUTER ASSISTED, COMPUTER BASED OR DISTANCE LEARNING PROGRAMS; INFORMATION, ADVISORY AND CONSULTING SERVICES IN THE FIELD OF INSTRUCTIONAL, TRAINING, TEACHING, TESTING, EXAMINATION AND ASSESSMENT SERVICES
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 11/01/1999 and first used in commerce at least as early as 11/01/1999, and is now in use in such commerce.

Proposed:
Tracked Text Description: [EDUCATIONAL SERVICES, NAMELY TESTING OF ENGLISH LANGUAGE SKILLS AND PROVISION OF INSTRUCTIONAL, TRAINING, TEACHING, TESTING, EXAMINATION AND ASSESSMENT SERVICES PROVIDED BY COMPUTER ASSISTED, COMPUTER BASED OR DISTANCE LEARNING PROGRAMS]; Educational services, namely testing of English language skills, and educational services, namely, conducting classes, seminars, conferences, and workshops in the field of English-language instructional, training, teaching, testing, examination and assessment services provided by computer assisted, computer based and distance learning programs; [INFORMATION, ADVISORY AND CONSULTING SERVICES IN THE FIELD OF INSTRUCTIONAL, TRAINING, TEACHING, TESTING, EXAMINATION AND ASSESSMENT SERVICES]; information, advisory and consulting services in the field of English-language instructional, training, teaching, testing, examination and assessment services; non-downloadable electronic books in the field of instructional, training, teaching, testing, examination and assessment materials for the testing of English language skillsClass 041 for Educational services, namely testing of English language skills, and educational services, namely, conducting classes, seminars, conferences, and workshops in the field of English-language instructional, training, teaching, testing, examination and assessment services provided by computer assisted, computer based and distance learning programs; information, advisory and consulting services in the field of English-language instructional, training, teaching, testing, examination and assessment services; non-downloadable electronic books in the field of instructional, training, teaching, testing, examination and assessment materials for the testing of English language skills
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 11/01/1999 and first used in commerce at least as early as 11/01/1999, and is now in use in such commerce.
SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /Michael A. Herbst/     Date: 01/16/2009
Signatory's Name: Michael A. Herbst
Signatory's Position: Attorney of record, Washington bar member

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 76688547
Internet Transmission Date: Fri Jan 16 17:43:15 EST 2009
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2009011617431532
4238-76688547-44065a2c9ea16a4457f671f805
96643db12-N/A-N/A-20090112135427734668