Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

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

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86959536 PASTES+ (Stylized and/or with Design, see http://uspto.report/TM/86959536/mark.png) has been amended as follows:

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

Applicant has herein amended the description of goods and services to address the  issues raised in the Office Action dated July 22, 2016.  Additional time is required to provide a copy of the foreign registration and Applicant hereby requests that this application be suspended until that time.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Teaching apparatus and instruments; computer software relating to education and training; computer software applications for mobile telephones and tablet computers, relating to education and training; downloadable electronic publications; electronic education and training materials in electronic format; electronic education and training materials recorded on computer media
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 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[ United Kingdom application number 00003144925 filed 01/18/2016]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Teaching apparatus and instruments; Teaching apparatus and instruments, namely, examination materials, practice examinations and mobile applications; computer software relating to education and training; computer software relating to education and training, namely, downloadable software for medical education, medicine, and exam preparation; computer software applications for mobile telephones and tablet computers, relating to education and training; computer software relating to education and training, namely, online non-downloadable software for medical education, medicine, and exam preparation; downloadable electronic publications; computer software applications for mobile telephones and tablet computers, namely, software for medical education, medicine, and exam preparation relating to education and training; electronic education and training materials in electronic format; downloadable electronic publications in the nature of electronic books, practice examinations, and study guides in the field of medical education, medicine, and exam preparation; electronic education and training materials recorded on computer media; electronic education and training materials in electronic format in the nature of practice examinations, study guides, and mobile applications for examination preparation; electronic education and training materials in electronic format available online in the nature of practice examinations, study guides, and mobile applications for examination preparation; electronic education and training materials, namely, practice examinations, study guides, and mobile applications for examination preparation recorded on computer mediaClass 009 for Teaching apparatus and instruments, namely, examination materials, practice examinations and mobile applications; computer software relating to education and training, namely, downloadable software for medical education, medicine, and exam preparation; computer software relating to education and training, namely, online non-downloadable software for medical education, medicine, and exam preparation; computer software applications for mobile telephones and tablet computers, namely, software for medical education, medicine, and exam preparation relating to education and training; downloadable electronic publications in the nature of electronic books, practice examinations, and study guides in the field of medical education, medicine, and exam preparation; electronic education and training materials in electronic format in the nature of practice examinations, study guides, and mobile applications for examination preparation; electronic education and training materials in electronic format available online in the nature of practice examinations, study guides, and mobile applications for examination preparation; electronic education and training materials, namely, practice examinations, study guides, and mobile applications for examination preparation recorded on computer media
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 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 [ United Kingdom application number 00003144925 filed 01/18/2016]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Books; printed matter; printed publications; stationery; instructional and teaching 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.

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 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[ United Kingdom application number 00003144925 filed 01/18/2016]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Books; Books in the field of medical education, medicine, and exam preparation; printed matter; printed matter, namely, books, textbooks, magazines, pamphlets, study guides and practice examinations in the field of medical education, medicine, and exam preparation; printed publications; printed publications in the nature of books, textbooks, magazines, pamphlets, study guides and practice examinations in the field of medical education, medicine, and exam preparation; stationery; instructional and teaching materials; printed instructional and teaching materials in the field of medical education, medicine, and exam preparationClass 016 for Books in the field of medical education, medicine, and exam preparation; printed matter, namely, books, textbooks, magazines, pamphlets, study guides and practice examinations in the field of medical education, medicine, and exam preparation; printed publications in the nature of books, textbooks, magazines, pamphlets, study guides and practice examinations in the field of medical education, medicine, and exam preparation; stationery; printed instructional and teaching materials in the field of medical education, medicine, and exam preparation
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 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 [ United Kingdom application number 00003144925 filed 01/18/2016]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Education and training services; arranging and conducting of symposiums relating to education; arranging and conducting of conferences for educational purposes; arranging and conducting of conferences relating to trade; organisation of conferences relating to vocational training; planning of conferences for educational purposes; planning of symposiums for educational purposes; arranging for students to participate in educational courses; conducting instructional courses; courses (training) relating to medicine; design of educational courses; organisation of courses using distance learning methods; production of course material distributed at professional courses; electronic publication services; providing electronic publications (not downloadable)
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 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[ United Kingdom application number 00003144925 filed 01/18/2016]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Education and training services; Education and training services, namely, providing online courses, classes, seminars, workshops, podcasts and practice assessments in the field of medical education, medicine, and exam preparation; arranging and conducting of symposiums relating to education; Education services, namely, arranging and conducting symposiums relating to education in the field of medical education, medicine, and exam preparation; arranging and conducting of conferences for educational purposes; arranging and conducting conferences for educational purposes; arranging and conducting of conferences relating to trade; arranging and conducting conferences for educational purposes relating to trade; organisation of conferences relating to vocational training; Education services, namely, organisation of conferences relating to vocational training; planning of conferences for educational purposes; planning of symposiums for educational purposes; arranging for students to participate in educational courses; educational services, namely, arranging for students to participate in educational courses; conducting instructional courses; conducting instructional courses in the field of medical education, medicine, and exam preparation; courses (training) relating to medicine; medical training, namely, providing courses relating to medicine; design of educational courses; design of educational courses in the nature of providing online courses, classes, seminars, workshops, podcasts and practice assessments in the field of medical education, medicine, and exam preparation; organisation of courses using distance learning methods; educational services, namely, organisation of courses in the field of medical education, medicine, and exam preparation using distance learning methods; production of course material distributed at professional courses; production of course material distributed at professional courses, namely, production of videos in the field of medical education, medicine, and exam preparation; electronic publication services; electronic publication services in the nature of publishing of electronic publications; providing electronic publications (not downloadable); providing on-line non-downloadable electronic publications in the nature of books, textbooks, magazines, pamphlets, study guides and practice examinations in the field of medical education, medicine, and exam preparationClass 041 for Education and training services, namely, providing online courses, classes, seminars, workshops, podcasts and practice assessments in the field of medical education, medicine, and exam preparation; Education services, namely, arranging and conducting symposiums relating to education in the field of medical education, medicine, and exam preparation; arranging and conducting conferences for educational purposes; arranging and conducting conferences for educational purposes relating to trade; Education services, namely, organisation of conferences relating to vocational training; planning of conferences for educational purposes; planning of symposiums for educational purposes; educational services, namely, arranging for students to participate in educational courses; conducting instructional courses in the field of medical education, medicine, and exam preparation; medical training, namely, providing courses relating to medicine; design of educational courses in the nature of providing online courses, classes, seminars, workshops, podcasts and practice assessments in the field of medical education, medicine, and exam preparation; educational services, namely, organisation of courses in the field of medical education, medicine, and exam preparation using distance learning methods; production of course material distributed at professional courses, namely, production of videos in the field of medical education, medicine, and exam preparation; electronic publication services in the nature of publishing of electronic publications; providing on-line non-downloadable electronic publications in the nature of books, textbooks, magazines, pamphlets, study guides and practice examinations in the field of medical education, medicine, and exam preparation
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 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 [ United Kingdom application number 00003144925 filed 01/18/2016]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

SIGNATURE(S)
Response Signature
Signature: /tls/     Date: 01/23/2017
Signatory's Name: Tiffany L. Schwartz
Signatory's Position: Attorney of record, Missouri bar member

Signatory's Phone Number: 816 460 2503

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 86959536
Internet Transmission Date: Mon Jan 23 18:55:44 EST 2017
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201701231855442
30260-86959536-5805a4ec3525a9444c90332ac
5486a1e0c937e747f6c7b8e1c7d3a0a5a4bda0f7
-N/A-N/A-20170123173636521791