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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87942743 LV (Stylized and/or with Design, see http://uspto.report/TM/87942743/mark.png) 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 042 for providing online educational testing services in the nature of proctoring of examinations and verification of attendance in training programs; Providing temporary use of online non-downloadable software to verify a candidate's identity when attending a course and when taking an exam, and to determine whether the candidate has an acceptable level of attendance; software as a service (SAAS) services featuring software for verifying a candidate's identity and attendance when taking an online course or online exam, for determining whether the candidate has an acceptable level of attendance, for delivering the questions and monitoring the testing, for issuing digital certificates on successful completion of courses and exams, and for storing the data; providing temporary use of online non-downloadable computer based software for administering tests online, and storing the test results; software as a service (SAAS) services featuring software for administering courses and exams for others, storing the examination results, and issuing digital certificates on successful completion of courses and exams
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number TMA1064895 registered 12/02/2019 with a renewal date of __________ and an expiration date of 12/02/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: providing online educational testing services in the nature of proctoring of examinations and verification of attendance in training programs; Providing temporary use of online non-downloadable software to verify a candidate's identity when attending a course and when taking an exam, and to determine whether the candidate has an acceptable level of attendance; software as a service (SAAS) services featuring software for verifying a candidate's identity and attendance when taking an online course or online exam, for determining whether the candidate has an acceptable level of attendance, for delivering the questions and monitoring the testing, for issuing digital certificates on successful completion of courses and exams, and for storing the data; providing temporary use of online non-downloadable computer based software for administering tests online, and storing the test results; software as a service (SAAS) services featuring software for administering courses and exams for others, storing the examination results, and issuing digital certificates on successful completion of courses and examsClass 042 for Providing temporary use of online non-downloadable software to verify a candidate's identity when attending a course and when taking an exam, and to determine whether the candidate has an acceptable level of attendance; software as a service (SAAS) services featuring software for verifying a candidate's identity and attendance when taking an online course or online exam, for determining whether the candidate has an acceptable level of attendance, for delivering the questions and monitoring the testing, for issuing digital certificates on successful completion of courses and exams, and for storing the data; providing temporary use of online non-downloadable computer based software for administering tests online, and storing the test results; software as a service (SAAS) services featuring software for administering courses and exams for others, storing the examination results, and issuing digital certificates on successful completion of courses and exams
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA1064895 registered 12/02/2019 with a renewal date of __________ and an expiration date of 12/02/2029 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /Kimberly I. Shimomura/     Date: 02/03/2020
Signatory's Name: Kimberly I. Shimomura
Signatory's Position: Attorney of Record, New York bar member

Signatory's Phone Number: 585-231-1382

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 87942743
Internet Transmission Date: Tue Feb 04 08:16:57 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020020408165785
4419-87942743-7007ed2d897030d92fb75a77a2
70faf7fee423178f5d61e583a57d1946ae4e18-N
/A-N/A-20200203135115718627