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. 86274865 COURSERA (Stylized and/or with Design, see http://uspto.report/TM/86274865/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: COURSERA (Stylized and/or with Design, see http://uspto.report/TM/86274865/mark.png)
Proposed: COURSERA (Stylized and/or with Design, see mark)
The applicant is not claiming color as a feature of the mark.
The mark consists of the word coursera with the letters c and o in the form of an infinity symbol.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Providing online employment information and employment services, namely, employee lead generation for employers, recruitment of employees, job listings, and resumes; providing online employment counseling, career placement services, and personnel recruitment; providing online employment placement; providing online resume matching services; providing employee and student assessments and screenings, namely, providing a web site with online video, audio and textual interviewing applications to support recruiting, admissions and general candidate screening processes; providing online advertising; promotional sponsorship of academic and skills-building courses
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 07/17/2012 and first used in commerce at least as early as 07/17/2012 , and is now in use in such commerce.

Proposed: Class 035 for Providing online employment information and employment services, namely, employee lead generation for employers, recruitment of employees, job listings, and resumes; providing online employment counseling, career placement services, and personnel recruitment; providing online employment placement; providing online resume matching services; providing employee and student assessments and screenings, namely, providing a web site with online video, audio and textual interviewing applications to support recruiting, admissions and general candidate screening processes; providing online advertising; promotional sponsorship of academic and skills-building courses
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 07/17/2012 and first used in commerce at least as early as 07/17/2012 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 035 . The specimen(s) submitted consists of Digital images of the mark used on applicant's webpage in association with promotional sponsorship of academic and skills-building courses. Examples include: 1) promotion of course from Brazil?s top two public universities, 2) blog post promoting the fact that Applicant has partnered with 13 new organizations including the Copenhagen Business School and the National Geographic Society, 3) promotion of partners such as Georgia Institute of Technology, providing courses through Applicant's online platform, 4) promotion of courses offered through Swedish Partner, Walkomna! Lund University; 5) promotion of relationship with Turkey's largest mobile provider to offer courses; digital images of the mark used on applicant?s webpage in association with Applicant's career services and recruiting services .
"The substitute (or new, or originally submitted, 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, or originally submitted, 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]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU1-749536161-20141203130510543119_._COURSERA_Stylized_Trademark_-_Class_35_Specimens_of_Use.pdf
Converted PDF file(s) ( 8 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Providing authoring and access tools for online content and talk, namely, electronic site authoring; providing temporary use of online non-downloadable software for providing educational testing, instruction and grading; hosting of digital content on the internet
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 07/17/2012 and first used in commerce at least as early as 07/17/2012 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Providing authoring and access tools for online content and talk, namely, electronic site authoring; Providing authoring tools for online content and talk, namely, electronic site authoring tools; providing tools for accessing online content and talk; hosting of digital content on the internet; providing temporary use of online non-downloadable software for providing educational testing, instruction and grading; hosting of digital content on the internet.Class 042 for Providing authoring tools for online content and talk, namely, electronic site authoring tools; providing tools for accessing online content and talk; providing temporary use of online non-downloadable software for providing educational testing, instruction and grading; hosting of digital content on the internet.
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 07/17/2012 and first used in commerce at least as early as 07/17/2012 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 042 . The specimen(s) submitted consists of Digital images of the mark used on applicant's webpage in association with hosting digital content on the internet. Examples include: 1) image of page listing courses from the Ludwig-Maximilians-Universitat Munchen and Columbia University, 2) image of page explaining Applicant's mission of partnering with universities to offer courses online, 3) image of a page disclosing the University of New Mexico courses offered on Applicant's website; 4) image of page listing numerous partner universities whose digital content is hosted on Applicant's website, 5) image of a Stanford University course offering hosted through Applicant's online platform, 6) image of post on Applicant's website celebrating courses offered on Applicant's platform directed to teachers and educators .
"The substitute (or new, or originally submitted, 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, or originally submitted, 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]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU3-749536161-20141203130510543119_._COURSERA_Stylized_Trademark_-_Class_42_Specimens_of_Use.pdf
Converted PDF file(s) ( 9 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8
Specimen File9

ADDITIONAL STATEMENTS
Miscellaneous Statement
In response to the Office Action dated August 18, 2014, regarding the COURSERA & design trademark application (U.S. Application No. 86274865), Applicant submits the enclosed amendments to the description of International Class 42. Furthermore, Applicant submits the enclosed verified specimens showing the applied-for mark in use in commerce for international class 35 and 42 at least as early as the date set forth in the application for those two classes. Applicant submits a new drawing showing a clear depiction of the mark. Applicant submits the following regarding the significance of wording: COURSERA appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as applied to the goods/services listed in the application, or any geographical significance. The word(s) COURSERA has no meaning in a foreign language. Applicant submits the following claim of prior registration: Applicant is the owner of U.S. Registration No. 4310572.


SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or amendment to allege use (AAU) unsigned, all statements in the application or AAU and this submission based on the signatory's own knowledge are true, and all statements in the application or AAU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(a) or AAU under 15 U.S.C. Section 1051(c), the signatory additionally believes that: the applicant is the owner of the trademark/service mark sought to be registered; the applicant or the applicant's related company or licensee is using the mark in commerce and has been using the mark in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU, and such use by the applicant's related company or licensee inures to the benefit of the applicant; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU; and to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(b), Section 1126(d), and/or Section 1126(e), the signatory additionally believes that: the applicant is entitled to use the mark in commerce; the applicant has a bona fide intention and has had a bona fide intention as of the application filing date to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the goods/services in the application; and to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive.

Signature: /Ted D. Karr/      Date: 12/03/2014
Signatory's Name: Ted D. Karr
Signatory's Position: Attorney of Record OR State Bar
Signatory's Phone Number: 5034396500


Response Signature
Signature: /Ted D. Karr/     Date: 12/03/2014
Signatory's Name: Ted D. Karr
Signatory's Position: Attorney of Record, OR State Bar

Signatory's Phone Number: 5034396500

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: 86274865
Internet Transmission Date: Wed Dec 03 14:20:18 EST 2014
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20141203142018487
509-86274865-500b1b16a32794ea6c21649fe88
569b93c764722c94f8aee876cb22f996a5d9-N/A
-N/A-20141203141043077699