Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79071252 KNOWLEDGE (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=79071252) has been amended as follows:

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

In the Office Action, the Examining Attorney has cited several registrations as a bar to registration.  Applicant has amended its identification of goods and services and submits that it is now sufficiently different so that there will be no likelihood of confusion with the cited prior registrations.

Additionally, with regard to the TIETO registrations, the mark is a Finnish word, and is not a common language in the United States that is likely to be interpreted as KNOWLEDGE by most people.  Therefore it is believed that Applicant's mark would not be confused with the prior registrations for TIETO.  Regardless, Applicant has amended its identification of goods and services to sufficiently differentiate its mark from these prior registrations.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 041 for Provision of entertainment, education, and training namely arranging of educational conferences and workshops in the field of science, history and nature; production, presentation and distribution of audio, video, still and moving images and data; organization, production and presentation of shows, competitions, games, concerts exhibitions and events

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Data recordings, namely, audio, and video recordings featuring still and moving images and text in the nature of science, history and nature; computer software namely, educational software featuring instruction in science, history and nature; computer, electronic and video games programmes and equipment, namely, software, tapes, discs, joy sticks, remote controls, and interactive floor mats; mouse pads; electronic instructional and teaching materials in the field of science, history and nature; television and radio signal transmitters and receivers
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Data recordings, namely, audio, and video recordings featuring still and moving images and text in the nature of science, history and nature; Computer, electronic and video games programs and equipment, namely software, tapes, discs, joy sticks, remote controls and interactive floor mats; computer software namely, educational software featuring instruction in science, history and nature; mouse pads; computer, electronic and video games programmes and equipment, namely, software, tapes, discs, joy sticks, remote controls, and interactive floor mats; electronic instructional and teaching materials in the field of science, history and nature; television and radio signal transmitters and receiversClass 009 for Computer, electronic and video games programs and equipment, namely software, tapes, discs, joy sticks, remote controls and interactive floor mats; mouse pads

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Photographs; stationery; artists' materials namely, artists' brushes, artists' pastels, artists' pens, and paint brushes; printed instructional and teaching material in the field of science, history and nature; printing blocks; posters; cards; postcards; greetings cards; trading cards; invitation cards; diaries; calendars; photograph albums; prints; paper gift bags, gift boxes, paper gift tags and gift wrap paper; notepads; writing instruments and crayons; stickers; transfers; stamps, namely, rubber stamps; personal organizers; address books; note books; pen and pencil holders; desk mats boards; embroidery, sewing and knitting patterns; postage stamps
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Photographs; Event programs; stationery; paint brushes; artists' materials namely, artists' brushes, artists' pastels, artists' pens, and paint brushes; printing blocks; printed instructional and teaching material in the field of science, history and nature; posters; cards, postcards; greetings cards; cards; trading cards; postcards; invitation cards; diaries; calendars; photograph albums; prints; paper gift bags, gift boxes, paper gift tags and gift wrap paper; notepads; writing instruments and crayons; stickers and transfers; stamps, namely, rubber stamps; personal organisers; stickers; address books; transfers; note books; pen and pencil holders; personal organizers; desk mat boards; embroidery, sewing and knitting patterns; postage stamps; desk mats boardsClass 016 for Event programs; paint brushes; printing blocks; posters; cards, postcards; greetings cards; trading cards; invitation cards; diaries; calendars; photograph albums; prints; paper gift bags, gift boxes, paper gift tags and gift wrap paper; notepads; writing instruments and crayons; stickers and transfers; stamps, namely, rubber stamps; personal organisers; address books; note books; pen and pencil holders; desk mat boards; embroidery, sewing and knitting patterns; postage stamps

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Television and radio broadcasting; audio and video broadcasting; broadcasting programs via the internet; streaming of audio and video material across broad band networks and the internet; audio and video broadcasting services rendered through terrestrial broadcasting, satellites, webcasting, and transmission to wireless communications devices, handheld computers, personal digital assistants, and mobile and cellular phones; electronic transmission of data, documents, messages, text, sound, images, graphics, entertainment, and education via a global computer network; video-on-demand transmission services; news information and news agency services, namely the transmission of news; providing discussion forums on topics of general interest in class 38
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Television and radio broadcasting; News agency services, namely the transmission of news; audio and video broadcasting; broadcasting programs via the internet; streaming of audio and video material across broad band networks and the internet; audio and video broadcasting services rendered through terrestrial broadcasting, satellites, webcasting, and transmission to wireless communications devices, handheld computers, personal digital assistants, and mobile and cellular phones; electronic transmission of data, documents, messages, text, sound, images, graphics, entertainment, and education via a global computer network; video-on-demand transmission services; news information and news agency services, namely the transmission of news; providing discussion forums on topics of general interest in class 38Class 038 for News agency services, namely the transmission of news

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
LYNN M. JORDAN
FINNEGAN, HENDERSON, FARABOW, GARRETT &
901 NEW YORK AVENUE, NW
WASHINGTON
District of Columbia (DC)
US
20001-4413

Proposed:
Lynn M. Jordan of Kelly IP, LLP, having an address of
1330 Connecticut Avenue, NW, Suite 300 WASHINGTON, District of Columbia 20036
United States
docketing@kelly-ip.com;lynn.jordan@kelly-ip.com
202.808.3575
202.354.5232
The docket/reference number is 08332.0143 .



SIGNATURE(S)
Response Signature
Signature: /lynn m. jordan/     Date: 05/23/2013
Signatory's Name: Lynn M. Jordan
Signatory's Position: Attorney of Record, DC Bar Member

Signatory's Phone Number: 202.808.3575

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.

Mailing Address:    Lynn M. Jordan
   Kelly IP, LLP
   1330 Connecticut Avenue, NW, Suite 300
   WASHINGTON, District of Columbia 20036
        
Serial Number: 79071252
Internet Transmission Date: Thu May 23 09:43:07 EDT 2013
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2013052309430744
6393-79071252-500862b8a24f8af26545f1e659
b159e760f042385887637016e5c05eec0cfbe-N/
A-N/A-20130523093247884918