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. 88400918 AIDA(Standard Characters, see http://uspto.report/TM/88400918/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of Argument section and printouts from USPTO's TESS databases capturing relevant registrations and applications. has been attached.
Original PDF file:
evi_2076785158-20200102152758725175_._Argument_Section_Response_AIDA_88400918.pdf
Converted PDF file(s) ( 8 pages)
Evidence-1
Evidence-2
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Original PDF file:
evi_2076785158-20200102152758725175_._Exhibits_A_and_B_USPTO_TESS_records.pdf
Converted PDF file(s) ( 23 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
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Evidence-23

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable mobile applications using artificial intelligence for use by instructors, learners and administrators for teaching, learning and tutoring in various disciplines; computer software using artificial intelligence for use by instructors, learners and administrators for teaching, learning and tutoring in various disciplines; downloadable mobile applications and computer software using artificial intelligence in the field of personalized learning
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: Downloadable mobile applications using artificial intelligence for use by instructors, learners and administrators for teaching, learning and tutoring in various disciplines; Downloadable mobile applications using artificial intelligence for use by instructors, learners and administrators for teaching, learning and tutoring in various disciplines at the primary, secondary, undergraduate, graduate, vocational and professional development levels; computer software using artificial intelligence for use by instructors, learners and administrators for teaching, learning and tutoring in various disciplines; downloadable computer software using artificial intelligence for use by instructors, learners and administrators for teaching, learning and tutoring in various disciplines at the primary, secondary, undergraduate, graduate, vocational and professional development levels; downloadable mobile applications and computer software using artificial intelligence in the field of personalized learning; downloadable mobile applications and computer software using artificial intelligence in the field of personalized learning in various disciplines at the primary, secondary, undergraduate, graduate, vocational and professional development levelsClass 009 for Downloadable mobile applications using artificial intelligence for use by instructors, learners and administrators for teaching, learning and tutoring in various disciplines at the primary, secondary, undergraduate, graduate, vocational and professional development levels; downloadable computer software using artificial intelligence for use by instructors, learners and administrators for teaching, learning and tutoring in various disciplines at the primary, secondary, undergraduate, graduate, vocational and professional development levels; downloadable mobile applications and computer software using artificial intelligence in the field of personalized learning in various disciplines at the primary, secondary, undergraduate, graduate, vocational and professional development levels
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Educational services, namely, providing tutoring, teaching and personal coaching services in various disciplines; educational services, namely, tutoring, teaching and personal coaching services in various disciplines using artificial intelligence; educational services, namely, personalized learning services in various disciplines using artificial intelligence
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 services, namely, providing tutoring, teaching and personal coaching services in various disciplines; Educational services, namely, providing tutoring, teaching and personal coaching services in various disciplines at the primary, secondary, undergraduate, graduate, vocational and professional development levels; educational services, namely, tutoring, teaching and personal coaching services in various disciplines using artificial intelligence; educational services, namely, tutoring, teaching and personal coaching services in various disciplines at the primary, secondary, undergraduate, graduate, vocational and professional development levels using artificial intelligence; educational services, namely, personalized learning services in various disciplines using artificial intelligence; educational services, namely, personalized learning services in various disciplines at the primary, secondary, undergraduate, graduate, vocational and professional development levels using artificial intelligenceClass 041 for Educational services, namely, providing tutoring, teaching and personal coaching services in various disciplines at the primary, secondary, undergraduate, graduate, vocational and professional development levels; educational services, namely, tutoring, teaching and personal coaching services in various disciplines at the primary, secondary, undergraduate, graduate, vocational and professional development levels using artificial intelligence; educational services, namely, personalized learning services in various disciplines at the primary, secondary, undergraduate, graduate, vocational and professional development levels using artificial intelligence
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Providing temporary use of non-downloadable computer software with artificial intelligence for use by instructors, learners and administrators for teaching, learning and tutoring in various disciplines; providing temporary use of non-downloadable computer software for use in providing an online tutoring platform with artificial intelligence for use by instructors, learners and administrators in various disciplines; providing temporary use of non-downloadable computer software with artificial intelligence in the field of personalized learning
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: Providing temporary use of non-downloadable computer software with artificial intelligence for use by instructors, learners and administrators for teaching, learning and tutoring in various disciplines; Providing temporary use of non-downloadable computer software with artificial intelligence for use by instructors, learners and administrators for teaching, learning and tutoring in various disciplines at the primary, secondary, undergraduate, graduate, vocational and professional development levels; providing temporary use of non-downloadable computer software for use in providing an online tutoring platform with artificial intelligence for use by instructors, learners and administrators in various disciplines; providing temporary use of non-downloadable computer software for use in providing an online tutoring platform with artificial intelligence for use by instructors, learners and administrators in various disciplines at the primary, secondary, undergraduate, graduate, vocational and professional development levels; providing temporary use of non-downloadable computer software with artificial intelligence in the field of personalized learning; providing temporary use of non-downloadable computer software with artificial intelligence in the field of personalized learning in various disciplines at the primary, secondary, undergraduate, graduate, vocational and professional development levelsClass 042 for Providing temporary use of non-downloadable computer software with artificial intelligence for use by instructors, learners and administrators for teaching, learning and tutoring in various disciplines at the primary, secondary, undergraduate, graduate, vocational and professional development levels; providing temporary use of non-downloadable computer software for use in providing an online tutoring platform with artificial intelligence for use by instructors, learners and administrators in various disciplines at the primary, secondary, undergraduate, graduate, vocational and professional development levels; providing temporary use of non-downloadable computer software with artificial intelligence in the field of personalized learning in various disciplines at the primary, secondary, undergraduate, graduate, vocational and professional development levels
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.

The applicant hereby appoints PATRICK J. GALLAGHER. Other appointed attorneys are Bruce H. Little; Kenneth D. Suzan; Bradley J. Walz and any other attorneys with the law firm of. PATRICK J. GALLAGHER of BARNES & THORNBURG LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      C/O TRADEMARK DOCKETING
      225 SOUTH SIXTH STREET, SUITE 2800
      MINNEAPOLIS, Minnesota 55402
      United States
to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is AIDA.

The phone number is 612-367-8711.

The fax number is 612-333-6798.

The email address is trademarks-mi@btlaw.com

PATRICK J. GALLAGHER submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: ALISA KEY, ESQ.. ALISA KEY, ESQ., is located at

      PEARSON LEGAL DEPT.
      5601 GREEN VALLEY DRIVE
      BLOOMINGTON, Minnesota 55437
      US
The docket/reference number is AIDA.

The phone number is 952-681-3000.

The fax number is 952-681-3066.

The email address is docket.trademarks@pearson.com; alisa.key@pearson.com; julie.schaffer@pearson.com

The applicants proposed correspondence information: PATRICK J. GALLAGHER. PATRICK J. GALLAGHER of BARNES & THORNBURG LLP, is located at

      C/O TRADEMARK DOCKETING
      225 SOUTH SIXTH STREET, SUITE 2800
      MINNEAPOLIS, Minnesota 55402
      United States
The docket/reference number is AIDA.

The phone number is 612-367-8711.

The fax number is 612-333-6798.

The email address is trademarks-mi@btlaw.com; docket.trademarks@pearson.com; patrick.gallagher@btlaw.com

SIGNATURE(S)
Response Signature
Signature: /patrick j. gallagher/     Date: 01/02/2020
Signatory's Name: Patrick J. Gallagher
Signatory's Position: Attorney of Record, Minnesota Bar member

Signatory's Phone Number: 612-367-8711

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.

Mailing Address:    ALISA KEY, ESQ.
   
   PEARSON LEGAL DEPT.
   5601 GREEN VALLEY DRIVE
   BLOOMINGTON, Minnesota 55437
Mailing Address:    PATRICK J. GALLAGHER
   BARNES & THORNBURG LLP
   C/O TRADEMARK DOCKETING
   225 SOUTH SIXTH STREET, SUITE 2800
   MINNEAPOLIS, Minnesota 55402
        
Serial Number: 88400918
Internet Transmission Date: Thu Jan 02 15:58:07 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2020010215580793
6601-88400918-700932ee2da1271251c65c337b
d91673719a32c394f1f42e45e8236e3cda285ba-
N/A-N/A-20200102152758725175