PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 07/31/2017) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
85445198 |
LAW OFFICE ASSIGNED |
LAW OFFICE 102 |
MARK SECTION |
MARK |
http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85445198 |
LITERAL ELEMENT |
BLUE SKY |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
GOODS AND/OR SERVICES SECTION (009)(current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Mobile application for searching, organizing, editing, modifying, transmitting, downloading, and sharing educational content, including
audio, video, text, graphics, photographs, and images; Digital educational materials, namely downloadable audio, video, text, graphics, photograph and image files |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2608/2011 |
FOREIGN APPLICATION COUNTRY |
Iceland |
FOREIGN FILING DATE |
09/16/2011 |
GOODS AND/OR SERVICES SECTION (009)(proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
Mobile application for searching, organizing, editing, modifying, transmitting, downloading, and sharing
educational content, including audio, video, text, graphics, photographs, and images; Computer application software for mobile phones for searching, organizing,
editing, modifying, transmitting, downloading, and sharing educational content, including audio, video, text, graphics, photographs, and images; Digital
educational materials, namely downloadable audio, video, text, graphics, photograph and image files; Digital educational materials namely downloadable audio
files, video files, text files, downloadable computer graphics, photograph and image files concerning a variety of college level and graduate level academic subjects |
FINAL DESCRIPTION |
Computer application software for mobile phones for searching, organizing, editing, modifying, transmitting, downloading, and sharing
educational content, including audio, video, text, graphics, photographs, and images; Digital educational materials namely downloadable audio files, video files, text files, downloadable computer
graphics, photograph and image files concerning a variety of college level and graduate level academic subjects |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (016)(current) |
INTERNATIONAL CLASS |
016 |
DESCRIPTION |
Customized educational books and printed materials for instructor-led and training courses of study |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
GOODS AND/OR SERVICES SECTION (016)(proposed) |
INTERNATIONAL CLASS |
016 |
TRACKED TEXT DESCRIPTION |
Customized educational books and printed materials for instructor-led and training courses of
study; Customized educational books and printed instructional, educational, and teaching materials concerning a variety of college level and graduate level
academic subjects |
FINAL DESCRIPTION |
Customized educational books and printed instructional, educational, and teaching materials concerning a variety of college level and
graduate level academic subjects |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (035)(current) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
Providing an online searchable database featuring customizable educational content, including audio, video, text, graphics,
photographs, and images |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
GOODS AND/OR SERVICES SECTION (035)(proposed) |
INTERNATIONAL CLASS |
035 |
TRACKED TEXT DESCRIPTION |
Providing an online searchable database featuring customizable educational content, including audio,
video, text, graphics, photographs, and images; Providing an online searchable database featuring customizable educational content, including audio, video, text,
graphics, photographs, and images for the purpose of permitting customers to create customized curriculum materials for higher education courses |
FINAL DESCRIPTION |
Providing an online searchable database featuring customizable educational content, including audio, video, text, graphics,
photographs, and images for the purpose of permitting customers to create customized curriculum materials for higher education courses |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (041)(current) |
INTERNATIONAL CLASS |
041 |
DESCRIPTION |
Educational services, namely, providing an on-line interactive web site over a global computer information network for customizing and
creating multimedia course materials; Publishing services, namely, publication of customized educational books and other supplemental course materials |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
GOODS AND/OR SERVICES SECTION (041)(proposed) |
INTERNATIONAL CLASS |
041 |
TRACKED TEXT DESCRIPTION |
Educational services, namely, providing an on-line interactive web site over a global computer
information network for customizing and creating multimedia course materials; Publishing services, namely, publication of customized educational books and course
materials; Publishing services, namely, publication of customized educational books and other supplemental course materials |
FINAL DESCRIPTION |
Publishing services, namely, publication of customized educational books and course materials |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (042)(current) |
INTERNATIONAL CLASS |
042 |
DESCRIPTION |
Application service provider (ASP) featuring software for a web-based application for customizing, authoring and delivering multimedia
educational content and course materials, including audio, video, text, graphics, photographs, and images; Web application to create an educational platform for an on-line chat room for transmission
of messages among computer users concerning customized educational content and materials |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
GOODS AND/OR SERVICES SECTION (042)(proposed) |
INTERNATIONAL CLASS |
042 |
TRACKED TEXT DESCRIPTION |
Application service provider (ASP) featuring software for a web-based application for customizing, authoring and
delivering multimedia educational content and course materials, including audio, video, text, graphics, photographs, and images; Web application to create an
educational platform for an on-line chat room for transmission of messages among computer users concerning customized educational content and materials; Educational services, namely, providing an on-line interactive web site over a global computer information network featuring technology that allows users to customize and create multimedia
course materials; providing temporary use of a a web-based software application for creation of an educational platform allowing transmission of messages among
computer users concerning customized educational content and materials |
FINAL DESCRIPTION |
Application service provider (ASP) featuring software for a web-based application for customizing, authoring and delivering multimedia
educational content and course materials, including audio, video, text, graphics, photographs, and images; Educational services, namely, providing an on-line interactive web site over a global
computer information network featuring technology that allows users to customize and create multimedia course materials; providing temporary use of a a web-based software application for creation of
an educational platform allowing transmission of messages among computer users concerning customized educational content and materials |
FILING BASIS |
Section 1(b) |
ADDITIONAL STATEMENTS SECTION |
MISCELLANEOUS STATEMENT |
With regard to the cited prior pending application, Pearson Education, Inc., is the owner of Application No. 85442713 for BLUE SKY LEARNING.
The Assignment was filed on April 19, 2012 and is located on Reel/Frame: 4761/0077. |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark
Rules of Practice. |
RESPONSE SIGNATURE |
/Tracie Siddiqui/ |
SIGNATORY'S NAME |
Tracie Siddiqui |
SIGNATORY'S POSITION |
Attorney of record, DC bar member |
DATE SIGNED |
07/30/2012 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Mon Jul 30 21:04:06 EDT 2012 |
TEAS STAMP |
USPTO/ROA-XX.X.XX.XXX-201
20730210406669367-8544519
8-4902be4bde3714a696871ce
27dc8e3b8e54-N/A-N/A-2012
0730205920123940 |
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.
85445198 BLUE SKY(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85445198) 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 Mobile application for searching, organizing, editing, modifying, transmitting, downloading, and sharing educational content, including audio, video, text, graphics,
photographs, and images; Digital educational materials, namely downloadable audio, video, text, graphics, photograph and image files
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide
intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application.
For a
collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to
exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority
based upon a foreign application.
For a certification membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to
exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of
the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Iceland application number 2608/2011 filed 09/16/2011]. 15 U.S.C.Section
1126(d), as amended.
Proposed:
Tracked Text Description: Mobile application for searching, organizing, editing, modifying, transmitting, downloading, and sharing educational content, including
audio, video, text, graphics, photographs, and images;
Computer application software for mobile phones for searching, organizing, editing, modifying,
transmitting, downloading, and sharing educational content, including audio, video, text, graphics, photographs, and images;
Digital educational materials,
namely downloadable audio, video, text, graphics, photograph and image files;
Digital educational materials namely downloadable audio files, video files, text
files, downloadable computer graphics, photograph and image files concerning a variety of college level and graduate level academic subjectsClass 009 for Computer application software for
mobile phones for searching, organizing, editing, modifying, transmitting, downloading, and sharing educational content, including audio, video, text, graphics, photographs, and images; Digital
educational materials namely downloadable audio files, video files, text files, downloadable computer graphics, photograph and image files concerning a variety of college level and graduate level
academic subjects
Deleted Filing Basis: 44(d)
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Customized educational books and printed materials for instructor-led and training courses of study
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign
registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.
Proposed:
Tracked Text Description: Customized educational books and printed materials for instructor-led and training courses of study;
Customized educational books and printed instructional, educational, and teaching materials concerning a variety of college level and graduate level academic subjectsClass 016 for
Customized educational books and printed instructional, educational, and teaching materials concerning a variety of college level and graduate level academic subjects
Deleted Filing Basis: 44(d)
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Providing an online searchable database featuring customizable educational content, including audio, video, text, graphics, photographs, and images
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign
registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.
Proposed:
Tracked Text Description: Providing an online searchable database featuring customizable educational content, including audio, video, text, graphics,
photographs, and images;
Providing an online searchable database featuring customizable educational content, including audio, video, text, graphics, photographs,
and images for the purpose of permitting customers to create customized curriculum materials for higher education coursesClass 035 for Providing an online searchable database featuring
customizable educational content, including audio, video, text, graphics, photographs, and images for the purpose of permitting customers to create customized curriculum materials for higher
education courses
Deleted Filing Basis: 44(d)
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Educational services, namely, providing an on-line interactive web site over a global computer information network for customizing and creating multimedia course
materials; Publishing services, namely, publication of customized educational books and other supplemental course materials
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign
registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.
Proposed:
Tracked Text Description: Educational services, namely, providing an on-line interactive web site over a global computer information network for customizing and
creating multimedia course materials;
Publishing services, namely, publication of customized educational books and course materials;
Publishing services, namely, publication of customized educational books and other supplemental course materialsClass 041 for Publishing services, namely, publication of customized
educational books and course materials
Deleted Filing Basis: 44(d)
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Application service provider (ASP) featuring software for a web-based application for customizing, authoring and delivering multimedia educational content and course
materials, including audio, video, text, graphics, photographs, and images; Web application to create an educational platform for an on-line chat room for transmission of messages among computer
users concerning customized educational content and materials
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign
registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.
Proposed:
Tracked Text Description: Application service provider (ASP) featuring software for a web-based application for customizing, authoring and delivering multimedia educational
content and course materials, including audio, video, text, graphics, photographs, and images;
Web application to create an educational platform for an on-line
chat room for transmission of messages among computer users concerning customized educational content and materials;
Educational services, namely, providing an
on-line interactive web site over a global computer information network featuring technology that allows users to customize and create multimedia course materials;
providing temporary use of a a web-based software application for creation of an educational platform allowing transmission of messages among computer users concerning customized educational
content and materialsClass 042 for Application service provider (ASP) featuring software for a web-based application for customizing, authoring and delivering multimedia educational content and
course materials, including audio, video, text, graphics, photographs, and images; Educational services, namely, providing an on-line interactive web site over a global computer information network
featuring technology that allows users to customize and create multimedia course materials; providing temporary use of a a web-based software application for creation of an educational platform
allowing transmission of messages among computer users concerning customized educational content and materials
Deleted Filing Basis: 44(d)
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
ADDITIONAL STATEMENTS
Miscellaneous Statement
With regard to the cited prior pending application, Pearson Education, Inc., is the owner of Application No. 85442713 for BLUE SKY LEARNING. The Assignment was filed on April 19, 2012 and is located
on Reel/Frame: 4761/0077.
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: /Tracie Siddiqui/ Date: 07/30/2012
Signatory's Name: Tracie Siddiqui
Signatory's Position: Attorney of record, DC 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: 85445198
Internet Transmission Date: Mon Jul 30 21:04:06 EDT 2012
TEAS Stamp: USPTO/ROA-XX.X.XX.XXX-201207302104066693
67-85445198-4902be4bde3714a696871ce27dc8
e3b8e54-N/A-N/A-20120730205920123940