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. 77809662 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Application         Serial No.:                   77/809,662 Filing Date:                 August 20, 2009                        Mark:                          SHMOOP Class:                           009, 041 Applicant:                   Shmoop University, Inc.

TRADEMARK APPLICATION      Law Office:  110      Examining Attorney:      Steven Fine

Response To Office Action

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA 22313-1451

This RESPONSE TO OFFICE ACTION is submitted in reply to the Office Action mailed December 1, 2009.    

I.                   CLARIFICATION OF GOODS/SERVICES      

            Applicant requests that the Examining Attorney replace the existing services identifications with the following identifications, which were offered by the Examining Attorney:

Class 9 - "downloadable electronic publications, namely, books, textbooks, and study guides featuring literature, history, poetry, and humanities, for use on portable electronic devices."

Class 41 - "providing on-line journals, namely, blogs featuring  literature, history, poetry and humanities." 

II.                ADDITION OF CLASS 38

            Applicant requests addition of Class 38 to the Application using the following services identification, which was offered by the Examining Attorney:

Class 38 - "providing on-line chat rooms and electronic bulletin boards for transmission of messages among computer users concerning literature, history, poetry and humanities."

Applicant states that the date of first use of the mark anywhere and the date of first use of the mark in commerce in connection with the Class 38 services is at least as early as August 2008.  Applicant submits a specimen, attached as Exhibit A, showing the mark used in commerce in connection with the Class 38 services.  Applicant states that the specimen was in use in commerce in connection with the Class 38 services at least as early as the filing date of the Application, August 20, 2009.  Applicant submits Exhibit B, the declaration of Ellen Siminoff, Chief Executive Officer of Shmoop University, Inc., in support of the addition of the Class 38 services. 

The Commissioner is authorized to charge any underpayment or credit any overpayment to Deposit Account No. 50-3548 for any matter in connection with this response.

                                                                        Respectfully submitted,

Date:  May 13, 2010                                                   /Shabnam Malek/                                              

                                                                                    Shabnam Malek,
                                                          Attorney for Shmoop University, Inc.

O'MELVENY & MYERS LLP

Two Embarcadero Center, 28^th Floor

San Francisco, California  94111-3823

415-984-8700 Telephone

415-984-8701 Facsimile

787510@omm.com



EVIDENCE
Evidence in the nature of Exhibit A - Class 38 Specimen - SHMOOP - Web pages from applicant web site Exhibit B - Siminoff Declaration in support of response to Office Action has been attached.
Original PDF file:
evi_15119421170-195457064_._Exhibit_A_-_Class_38_Specimen_-_SHMOOP.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_15119421170-195457064_.__-_Siminoff__Declaration_in_support_of_SHMOOP_Response_to_OA.PDF
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for downloadable electronic publications, namely, books, textbooks, and study guides featuring literature, history, poetry, and related topics for use on portable electronic devices
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 05/00/2009 and first used in commerce at least as early as 05/00/2009, and is now in use in such commerce.

Proposed:
Tracked Text Description: downloadable electronic publications, namely, books, textbooks, and study guides featuring literature, history, poetry, and related topics for use on portable electronic devices; downloadable electronic publications, namely, books, textbooks, and study guides featuring literature, history, poetry, and humanities for use on portable electronic devicesClass 009 for downloadable electronic publications, namely, books, textbooks, and study guides featuring literature, history, poetry, and humanities for use on portable electronic devices
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 05/00/2009 and first used in commerce at least as early as 05/00/2009, 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 providing on-line journals, namely, blogs featuring bulletin boards and discussion forums on literature, history, poetry and related topics
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 11/06/2008 and first used in commerce at least as early as 11/06/2008, and is now in use in such commerce.

Proposed:
Tracked Text Description: providing on-line journals, namely, blogs featuring bulletin boards and discussion forums on literature, history, poetry and related topics; providing on-line journals, namely, blogs featuring bulletin boards and discussion forums on literature, history, poetry and humanitiesClass 041 for providing on-line journals, namely, blogs featuring bulletin boards and discussion forums on literature, history, poetry and humanities
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 11/06/2008 and first used in commerce at least as early as 11/06/2008, and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 038 for providing on-line chat rooms and electronic bulletin boards for transmission of messages among computer users concerning literature, history, poetry, and humanities
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 08/00/2008 and first used in commerce at least as early as 08/00/2008, and is now in use in such commerce.
Applicant hereby submits a specimen for Class 038. The specimen(s) submitted consists of web pages from applicant web site featuring an on-line bulletin board.
"The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use].
Original PDF file:
SPN0-15119421170-195457064_._Class_38_Specimen_-_SHMOOP.pdf
Converted PDF file(s) (3 pages)
Specimen File1
Specimen File2
Specimen File3

FEE(S)
Fee(s) in the amount of $325 is being submitted.

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_15119421170-195457064_._Siminoff__Declaration_in_support_of_SHMOOP_Response_to_OA.PDF
Converted PDF file(s) (2 pages)
Signature File1
Signature File2
Signatory's Name: Ellen Siminoff
Signatory's Position: Chief Executive Officer

Response Signature
Signature: /Shabnam Malek/     Date: 05/13/2010
Signatory's Name: Shabnam Malek
Signatory's Position: Attorney of record, California 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.

        
RAM Sale Number: 5447
RAM Accounting Date: 05/14/2010
        
Serial Number: 77809662
Internet Transmission Date: Thu May 13 20:39:15 EDT 2010
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201005132039151
82462-77809662-460b657946198faa44499668d
c1fbceb0-DA-5447-20100513195457064464