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. 86416679 FRACTRACK(Standard Characters, see http://uspto.report/TM/86416679/mark.png) has been amended as follows:

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

AMENDMENT

 

This amendment is being filed in response to the Office Action dated February 3, 2015. 

 

Please amend the description of goods by deleting the present description of goods and substituting therefore:

 

Educational manipulatives for teaching a relationship between whole numbers, fractions, and decimals in International Class 28.

 

Reconsideration and allowance of this application is respectfully requested.

 

REMARKS

 

The Examining Attorney has indicated that the identification of goods in the present application must be clarified because it is too broad and includes goods in other international classes.  In that regard, Applicant submits that its educational manipulatives are not games, and therefore, cannot accept the Examining Attorney's suggested amendment.  Rather, Applicant has amended the goods to recite that such goods are educational manipulatives for teaching a relationship between whole numbers, fractions, and decimals.  Applicant submits based upon this clarification and specificity as to what the manipulatives are used for, the identification of goods is now acceptable.  Accordingly, Applicant respectfully requests the Examining Attorney withdraw the objection to the identification of goods.

 

Applicant submits concurrently herewith an amendment to allege use identifying the fact that Applicant's mark has been used on the goods in question, and therefore, Applicant's application should be amended from an application pursuant to Section 1(b) of the Trademark Act to Section 1(a) of the Trademark Act.

 

Based upon the foregoing amendment, and the accompanying remarks, and further based upon the fact that a search of the Office records has found no similar registered or pending mark which would bar registration under Trademark Act 2(d), Applicant respectfully requests that its mark be passed to publication.   If for any reason there is any question with respect to Applicant's response, the Examining Attorney is requested to contact Applicant's counsel.  Reconsideration and allowance of the present application is respectfully requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Educational manipulatives
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.

Proposed:
Tracked Text Description: Educational manipulatives; Educational manipulatives for teaching a relationship between whole numbers, fractions, and decimalsClass 028 for Educational manipulatives for teaching a relationship between whole numbers, fractions, and decimals
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.

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_2079991-153946064_._20150430OfficeActionSignature.pdf
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: PAUL H. KOCHANSKI
Signatory's Position: ATTORNEY OF RECORD, NJ BAR MEMBER
Signatory's Phone Number: 908-654-5000


Response Signature
Signature: /PAUL H. KOCHANSKI/     Date: 04/30/2015
Signatory's Name: PAUL H. KOCHANSKI
Signatory's Position: ATTORNEY OF RECORD, NJ BAR MEMBER

Signatory's Phone Number: 908-654-5000

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: 86416679
Internet Transmission Date: Thu Apr 30 15:41:49 EDT 2015
TEAS Stamp: USPTO/ROA-XXX.XX.X.X-2015043015414985137
7-86416679-5304e37126fe8642d1c83dd878b5c
77831a66aeb74681d9229a6f35f81ad5b35e-N/A
-N/A-20150430153946064359