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. 88150368 HACKING STEM(Standard Characters, see http://uspto.report/TM/88150368/mark.png) has been amended as follows:

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

In the Office Action issued on January 22, 2019, the Examiner Attorney refused Applicant’s specimens arguing (i) that the specimens did not show use of Applicant’s mark in connection with any of the claimed services and (ii) the specimens submitted in connection with the goods claimed in Class 9 were mere advertising materials.  Applicant respectfully disagrees and asks that the Examiner accept the previously submitted specimens, or in the alternative the newly submitted specimens.

Class 9:  Applicant submitted a lesson plan entitled “Lesson Plan: How fast do humans run?”.  This lesson plan was not mere advertising, but the actual lesson plan including standard lesson plan components of the learning objectives for the lesson, a listing of the skills that the students are supposed to acquire through the lesson, teaching tips, as well as links to other materials to support the lesson.  The submitted specimen therefore shows a downloadable electronic publication in the nature of educational course materials in the fields of science, technology, engineering and math.  While applicant believes that its original specimen should be accepted, it has included a substitute specimen comprised of the lesson plan for “Making party lights to understand electrical circuits and switches.”

Class 41:  The specimens submitted by Applicant discuss Applicant’s development of educational lesson plans for use by teachers in teaching science technology, engineering and math in their classrooms.  For example, Applicant’s main specimen for this class including the language:

Hacking STEM Lessons & Hands-On Activities

Build affordable inquiry and project-based activities to visualize data across science, technology, engineering, and math (STEM) curriculum.  Middle school standards-based lesson plans written by teachers for teachers.

While believes its original specimens were sufficient to show use in connection with the claimed services, Applicant has included additional specimens specifically calling out the services Applicant has claimed in its application.

Class 42: As shown in Applicant’s submitted specimens it hosts a website containing significant scientific, technology, engineering and math information for use by students and teachers.  This includes information provided by third parties including, e.g., BBC Learning.  Applicant has supplemented it specimen by including its webpage on which BBC Learning materials are hosted.  Applicant’s original submission, plus its supplemental submission are evidence of use of its mark in connection with the services claimed in Class 42.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable electronic publications in the nature of educational materials in the fields of science, technology, engineering and math; software, namely, educational software featuring instruction in the fields of science, technology, engineering and math; computer hardware and computer peripherals; teaching robots
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 09/24/2016 and first used in commerce at least as early as 09/24/2016 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Downloadable electronic publications in the nature of educational materials in the fields of science, technology, engineering and math; Downloadable electronic publications in the nature of educational course materials in the fields of science, technology, engineering and math; software, namely, educational software featuring instruction in the fields of science, technology, engineering and math; software, namely, educational software featuring for providing instruction in the fields of science, technology, engineering and math; computer hardware and computer peripherals; teaching robotsClass 009 for Downloadable electronic publications in the nature of educational course materials in the fields of science, technology, engineering and math; software, namely, educational software featuring for providing instruction in the fields of science, technology, engineering and math; computer hardware and computer peripherals; teaching robots
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 09/24/2016 and first used in commerce at least as early as 09/24/2016 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 009 . The specimen(s) submitted consists of use of mark on lesson plan publications .
"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:
SPU0-64124123162-20190419165348151438_._HACKING_STEM_Class_9.pdf
Converted PDF file(s) ( 32 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8
Specimen File9
Specimen File10
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Specimen File25
Specimen File26
Specimen File27
Specimen File28
Specimen File29
Specimen File30
Specimen File31
Specimen File32

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Educational services, namely, providing inquiry and project-based activities, curriculum, next generation hardware, software, and services in the fields of science, technology, engineering and math; educational services, namely, providing educational materials and programs in the fields of science, technology, engineering and math for use by teachers and students, and distribution of educational materials in connection therewith in printed or electronic format; developing educational lesson plans for others in the fields of science, technology, engineering and math
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 09/24/2016 and first used in commerce at least as early as 09/24/2016 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Educational services, namely, providing inquiry and project-based activities, curriculum, next generation hardware, software, and services in the fields of science, technology, engineering and math; developing curriculum for others in the fields of science, technology, engineering and math; educational services, namely, providing educational materials and programs in the fields of science, technology, engineering and math for use by teachers and students, and distribution of educational materials in connection therewith in printed or electronic format; educational services, namely providing educational materials providing information in the fields of science, technology, engineering and math for teachers and students, and distribution of educational materials in connection therewith in printed or electronic format; developing educational lesson plans for others in the fields of science, technology, engineering and mathClass 041 for developing curriculum for others in the fields of science, technology, engineering and math; educational services, namely providing educational materials providing information in the fields of science, technology, engineering and math for teachers and students, and distribution of educational materials in connection therewith in printed or electronic format; developing educational lesson plans for others in the fields of science, technology, engineering and math
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 09/24/2016 and first used in commerce at least as early as 09/24/2016 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 041 . The specimen(s) submitted consists of use of mark on webpages describing offering of claims 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:
SPU1-64124123162-20190419165348151438_._HACKING_STEM_Class_41__Specimen_1.pdf
Converted PDF file(s) ( 3 pages)
Specimen File1
Specimen File2
Specimen File3
Original PDF file:
SPU1-64124123162-20190419165348151438_._HACKING_STEM_Class_41__Specimen_2.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Computer services, namely, hosting and maintaining an on-line web site for others for educational purposes in the fields of science, technology, engineering and math for use by teachers and students
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 09/24/2016 and first used in commerce at least as early as 09/24/2016 , and is now in use in such commerce.

Proposed: Class 042 for Computer services, namely, hosting and maintaining an on-line web site for others for educational purposes in the fields of science, technology, engineering and math for use by teachers and students
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 09/24/2016 and first used in commerce at least as early as 09/24/2016 , 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 use of mark in connection with hosting materials as claimed in application .
"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:
SPU2-64124123162-20190419165348151438_._HACKING_STEM_Class_42__Specimen_1.pdf
Converted PDF file(s) ( 3 pages)
Specimen File1
Specimen File2
Specimen File3
Original PDF file:
SPU2-64124123162-20190419165348151438_._HACKING_STEM_Class_42__Specimen_2.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2

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. § 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 allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have 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/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have 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/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /MEM/      Date: 04/19/2019
Signatory's Name: Matthew E. Moersfelder
Signatory's Position: Applicant's Attorney, WA Bar Member
Signatory's Phone Number: 206-757-8014


Response Signature
Signature: /MEM/     Date: 04/19/2019
Signatory's Name: Matthew E. Moersfelder
Signatory's Position: Applicant's Attorney, WA Bar Member

Signatory's Phone Number: 206-757-8014

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: 88150368
Internet Transmission Date: Fri Apr 19 17:00:34 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201904191700347
02571-88150368-620cb5cb4eaeb43e309856168
f555e63a638ce9fa345b86fe95c24486ee1fe6-N
/A-N/A-20190419165348151438