| 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 |
86055747 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 104 |
| MARK SECTION |
| MARK |
http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=86055747 |
| LITERAL ELEMENT |
YU |
| 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)(no change) |
| GOODS AND/OR SERVICES SECTION (012)(no change) |
| GOODS AND/OR SERVICES SECTION (016)(current) |
| INTERNATIONAL CLASS |
016 |
| DESCRIPTION |
| Blank journals; decals; pens; printed materials, namely, books, periodicals, magazines, newsletters and newspapers |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 07/31/2006 |
| FIRST USE IN COMMERCE DATE |
At least as early as 07/31/2006 |
| GOODS AND/OR SERVICES SECTION (016)(proposed) |
| INTERNATIONAL CLASS |
016 |
| TRACKED TEXT DESCRIPTION |
Blank journals; decals; pens; printed materials, namely, books, periodicals, magazines, newsletters and newspapers; printed materials, namely, books, periodicals, magazines, and
newsletters in the fields of Science, Judaism, Law, Medicine, Psychology, History, Social Work, Education, and Business; printed materials, namely,
newspapers |
| FINAL DESCRIPTION |
| Blank journals; decals; pens; printed materials, namely, books, periodicals, magazines, and newsletters in the fields of Science,
Judaism, Law, Medicine, Psychology, History, Social Work, Education, and Business; printed materials, namely, newspapers |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 07/31/2006 |
| FIRST USE IN COMMERCE DATE |
At least as early as 07/31/2006 |
| GOODS AND/OR SERVICES SECTION (018)(current) |
| INTERNATIONAL CLASS |
018 |
| DESCRIPTION |
Tote bags, messenger bags, computer bags, backpacks |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 07/31/2006 |
| FIRST USE IN COMMERCE DATE |
At least as early as 07/31/2006 |
| GOODS AND/OR SERVICES SECTION (018)(proposed) |
| INTERNATIONAL CLASS |
018 |
| TRACKED TEXT DESCRIPTION |
Tote bags, messenger bags, computer bags, backpacks; Tote bags,
messenger bags, backpacks |
| FINAL DESCRIPTION |
Tote bags, messenger bags, backpacks |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 07/31/2006 |
| FIRST USE IN COMMERCE DATE |
At least as early as 07/31/2006 |
| GOODS AND/OR SERVICES SECTION (021)(no change) |
| GOODS AND/OR SERVICES SECTION (024)(no change) |
| GOODS AND/OR SERVICES SECTION (025)(no change) |
| GOODS AND/OR SERVICES SECTION (028)(no change) |
| GOODS AND/OR SERVICES SECTION (035)(current) |
| INTERNATIONAL CLASS |
035 |
| DESCRIPTION |
| Online retail bookstore and variety store services featuring a wide variety of consumer goods |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 07/31/2006 |
| FIRST USE IN COMMERCE DATE |
At least as early as 07/31/2006 |
| GOODS AND/OR SERVICES SECTION (035)(proposed) |
| INTERNATIONAL CLASS |
035 |
| TRACKED TEXT DESCRIPTION |
| Online retail bookstore and variety store services featuring a wide variety of consumer goods; promoting the exhibitions, lectures, concerts and theater productions of others |
| FINAL DESCRIPTION |
| Online retail bookstore and variety store services featuring a wide variety of consumer goods; promoting the exhibitions, lectures,
concerts and theater productions of others |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 07/31/2006 |
| FIRST USE IN COMMERCE DATE |
At least as early as 07/31/2006 |
| GOODS AND/OR SERVICES SECTION (041)(current) |
| INTERNATIONAL CLASS |
041 |
| DESCRIPTION |
| Educational services, namely, providing courses of instruction at the high school and postgraduate levels and distributing course
material in connection therewith; providing online seminars of instruction at the high school, graduate, postgraduate and professional levels; libraries; online academic library services;
entertainment services, namely, organizing, promoting and conducting athletic contests and exhibitions, lectures, concerts and theater productions; providing museum services; non-downloadable
electronic publications, namely, articles, newsletters, newspapers and magazines in the fields of education, alumni relations and student life |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 12/31/1945 |
| FIRST USE IN COMMERCE DATE |
At least as early as 12/31/1945 |
| GOODS AND/OR SERVICES SECTION (041)(proposed) |
| INTERNATIONAL CLASS |
041 |
| TRACKED TEXT DESCRIPTION |
Educational services, namely, providing courses of instruction at the high school and postgraduate levels and
distributing course material in connection therewith; providing online seminars of instruction at the high school, graduate, postgraduate and professional levels;
libraries; online academic library services; entertainment services, namely, organizing, promoting and
conducting athletic contests and exhibitions, lectures, concerts and theater productions; entertainment services, namely, organizing, conducting athletic
contests, concerts and theater productions; entertainment services, namely, organizing and conducting exhibitions for entertainment purposes; entertainment services, namely, organizing and conducting lectures in the fields of Science, Judaism, Law, Medicine, Psychology, History, Social Work, Education, and
Business; providing museum services; non-downloadable electronic publications, namely, articles, newsletters, newspapers and magazines in the
fields of education, alumni relations and student life |
| FINAL DESCRIPTION |
| Educational services, namely, providing courses of instruction at the high school and postgraduate levels and distributing course
material in connection therewith; providing online seminars of instruction at the high school, graduate, postgraduate and professional levels; libraries; online academic library services;
entertainment services, namely, organizing, conducting athletic contests, concerts and theater productions; entertainment services, namely, organizing and conducting exhibitions for entertainment
purposes; entertainment services, namely, organizing and conducting lectures in the fields of Science, Judaism, Law, Medicine, Psychology, History, Social Work, Education, and Business; providing
museum services; non-downloadable electronic publications, namely, articles, newsletters, newspapers and magazines in the fields of education, alumni relations and student life |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 12/31/1945 |
| FIRST USE IN COMMERCE DATE |
At least as early as 12/31/1945 |
| GOODS AND/OR SERVICES SECTION (044)(current) |
| INTERNATIONAL CLASS |
044 |
| DESCRIPTION |
| Counseling services in the fields of mental health, psychiatric medication management, medical crisis management and emergency
services; health center services |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 04/01/1998 |
| FIRST USE IN COMMERCE DATE |
At least as early as 04/01/1998 |
| GOODS AND/OR SERVICES SECTION (044)(proposed) |
| INTERNATIONAL CLASS |
044 |
| TRACKED TEXT DESCRIPTION |
Counseling services in the fields of mental health, psychiatric medication management, medical crisis
management and emergency services; Counseling services in the fields of mental health, psychiatric medication management, namely, prescription of psychiatric
medication, psychiatric crisis management, namely, evaluation of psychiatric conditions; health center services; health
care services provided by a licensed health care practitioner |
| FINAL DESCRIPTION |
| Counseling services in the fields of mental health, psychiatric medication management, namely, prescription of psychiatric medication,
psychiatric crisis management, namely, evaluation of psychiatric conditions; health care services provided by a licensed health care practitioner |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 04/01/1998 |
| FIRST USE IN COMMERCE DATE |
At least as early as 04/01/1998 |
| ADDITIONAL STATEMENTS SECTION |
| ACTIVE PRIOR REGISTRATION(S) |
The applicant claims ownership of U.S. Registration Number(s) 3766703, 2686392, 2930309, and others. |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/rachelle dubow/ |
| SIGNATORY'S NAME |
Rachelle A. Dubow |
| SIGNATORY'S POSITION |
Attorney for Applicant |
| SIGNATORY'S PHONE NUMBER |
617-951-8000 |
| DATE SIGNED |
12/30/2013 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Mon Dec 30 15:23:48 EST 2013 |
| TEAS STAMP |
USPTO/ROA-XXX.XXX.XXX.X-2
0131230152348608340-86055
747-500ea1d85066149d15d5b
b48dae3473e889d816c5ddc0b
9a5495e2583a06811-N/A-N/A
-20131230145144040341 |
| 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.
86055747 YU(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=86055747) 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 016 for Blank journals; decals; pens; printed materials, namely, books, periodicals, magazines, newsletters and newspapers
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 07/31/2006 and first used in commerce at least as early as 07/31/2006 , and
is now in use in such commerce.
Proposed:
Tracked Text Description: Blank journals;
decals;
pens;
printed materials, namely,
books, periodicals, magazines, newsletters and newspapers;
printed materials, namely, books, periodicals, magazines, and newsletters in the fields of Science,
Judaism, Law, Medicine, Psychology, History, Social Work, Education, and Business;
printed materials, namely, newspapersClass 016 for Blank journals;
decals; pens; printed materials, namely, books, periodicals, magazines, and newsletters in the fields of Science, Judaism, Law, Medicine, Psychology, History, Social Work, Education, and Business;
printed materials, namely, newspapers
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 07/31/2006 and first used in commerce at least as early as 07/31/2006 , and
is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for Tote bags, messenger bags, computer bags, backpacks
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 07/31/2006 and first used in commerce at least as early as 07/31/2006 , and
is now in use in such commerce.
Proposed:
Tracked Text Description: Tote bags, messenger bags, computer bags, backpacks;
Tote bags, messenger bags,
backpacksClass 018 for Tote bags, messenger bags, backpacks
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 07/31/2006 and first used in commerce at least as early as 07/31/2006 , and
is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Online retail bookstore and variety store services featuring a wide variety of consumer goods
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 07/31/2006 and first used in commerce at least as early as 07/31/2006 , and
is now in use in such commerce.
Proposed:
Tracked Text Description: Online retail bookstore and variety store services featuring a wide variety of consumer goods;
promoting the
exhibitions, lectures, concerts and theater productions of othersClass 035 for Online retail bookstore and variety store services featuring a wide variety of consumer goods; promoting the
exhibitions, lectures, concerts and theater productions of others
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 07/31/2006 and first used in commerce at least as early as 07/31/2006 , 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, providing courses of instruction at the high school and postgraduate levels and distributing course material in connection therewith;
providing online seminars of instruction at the high school, graduate, postgraduate and professional levels; libraries; online academic library services; entertainment services, namely, organizing,
promoting and conducting athletic contests and exhibitions, lectures, concerts and theater productions; providing museum services; non-downloadable electronic publications, namely, articles,
newsletters, newspapers and magazines in the fields of education, alumni relations and student life
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 12/31/1945 and first used in commerce at least as early as 12/31/1945 , and
is now in use in such commerce.
Proposed:
Tracked Text Description: Educational services, namely, providing courses of instruction at the high school and postgraduate levels and distributing course material in
connection therewith;
providing online seminars of instruction at the high school, graduate, postgraduate and professional levels;
libraries;
online academic library services;
entertainment services, namely, organizing, promoting and conducting athletic
contests and exhibitions, lectures, concerts and theater productions;
entertainment services, namely, organizing, conducting athletic contests, concerts and
theater productions;
entertainment services, namely, organizing and conducting exhibitions for entertainment purposes;
entertainment services, namely, organizing and conducting lectures in the fields of Science, Judaism, Law, Medicine, Psychology, History, Social Work, Education, and Business;
providing museum services;
non-downloadable electronic publications, namely, articles, newsletters, newspapers and magazines in the fields of education,
alumni relations and student lifeClass 041 for Educational services, namely, providing courses of instruction at the high school and postgraduate levels and distributing course material in
connection therewith; providing online seminars of instruction at the high school, graduate, postgraduate and professional levels; libraries; online academic library services; entertainment services,
namely, organizing, conducting athletic contests, concerts and theater productions; entertainment services, namely, organizing and conducting exhibitions for entertainment purposes; entertainment
services, namely, organizing and conducting lectures in the fields of Science, Judaism, Law, Medicine, Psychology, History, Social Work, Education, and Business; providing museum services;
non-downloadable electronic publications, namely, articles, newsletters, newspapers and magazines in the fields of education, alumni relations and student life
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 12/31/1945 and first used in commerce at least as early as 12/31/1945 , and
is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 044 for Counseling services in the fields of mental health, psychiatric medication management, medical crisis management and emergency services; health center 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 04/01/1998 and first used in commerce at least as early as 04/01/1998 , and
is now in use in such commerce.
Proposed:
Tracked Text Description: Counseling services in the fields of mental health, psychiatric medication management, medical crisis management and emergency
services;
Counseling services in the fields of mental health, psychiatric medication management, namely, prescription of psychiatric medication, psychiatric
crisis management, namely, evaluation of psychiatric conditions;
health center services;
health care services provided by
a licensed health care practitionerClass 044 for Counseling services in the fields of mental health, psychiatric medication management, namely, prescription of psychiatric medication,
psychiatric crisis management, namely, evaluation of psychiatric conditions; health care services provided by a licensed health care practitioner
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 04/01/1998 and first used in commerce at least as early as 04/01/1998 , and
is now in use in such commerce.
ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 3766703, 2686392, 2930309, and others.
SIGNATURE(S)
Response Signature
Signature: /rachelle dubow/ Date: 12/30/2013
Signatory's Name: Rachelle A. Dubow
Signatory's Position: Attorney for Applicant
Signatory's Phone Number: 617-951-8000
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: 86055747
Internet Transmission Date: Mon Dec 30 15:23:48 EST 2013
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.X-2013123015234860
8340-86055747-500ea1d85066149d15d5bb48da
e3473e889d816c5ddc0b9a5495e2583a06811-N/
A-N/A-20131230145144040341