NOTE TO THE FILE
SERIAL NUMBER: 88430191
DATE: 03/05/2020
NAME: ssnabb
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:From: Brian Davis <bdavis@vlplawgroup.com>
Sent: Thursday, March 5, 2020 5:37 PM
To: Snabb, Sandra <Sandra.Snabb@USPTO.GOV>
Subject: RE: Examiner's Amendment suggested - U.S. Trademark Application Serial No. 88430191 ("QUIZLET")
Thank you Sandra.
The client has agreed to the revisions in Option 1.
Let me know if you need anything further from us.
Regards
Brian
Brian M. Davis | Partner | VLP Law Group LLPCharlotte, NC| Office: 704.245.6515
From: Snabb, Sandra <Sandra.Snabb@USPTO.GOV>
Sent: Monday, March 2, 2020 9:15 AM
To: Brian Davis <bdavis@vlplawgroup.com>
Subject: Examiner's Amendment suggested - U.S. Trademark Application Serial No. 88430191 ("QUIZLET")
Dear Mr. Davis,
I have reviewed your February 21, 2020 response to Office action. There are outstanding identification and specimen issues that may be able to be resolved by Examiner’s Amendment.
The following wording is not acceptable in International Class 044: “Providing an online computer database of educational information in the field of sports and hobbies, namely, floral design, cooking, meditation, yoga, hiking, photography, travel, video gaming, football, basketball, baseball, soccer, hockey, golf, gymnastics and board games”
All services of providing educational information in the field of sports are properly classified in International Class 041, and applicant has already included “Providing an online computer database of educational information in the field of sports” in International Class 041. For this reason, applicant has also not provided an acceptable specimen for International Class 044 (applicant’s specimen for this class shows information in the field of yoga – this would be classified in International Class 041. Similarly, the services of providing information in the field of video gaming, board games, meditation, and photography are properly classified in International Class 041.
Also, “Providing an online computer database of educational information in the field of cooking” would be correctly classified in International Class 043 and “Providing an online computer database of educational information in the field of travel” would be correctly classified in International Class 039.
I have two suggestions for how this can proceed:
1) Applicant may choose to delete International Class 044 from the application and proceed with the following identification if accurate (this can be done by Examiner’s Amendment in which case I would immediately approve the mark for publication):
International Class 041: Online educational services, namely, providing online non-downloadable study guides and learning tools, namely, online non-downloadable flash cards; Providing an online computer database of educational information in the academic fields of science, mathematics, history, languages, computer science and technology, arts and humanities, literature, medicine, law, and social sciences for the purpose of academic study; Providing an online computer database of educational information in the field of standardized testing; Providing an online computer database of educational information in the field of sports, including yoga, hiking, football, basketball, baseball, soccer, hockey, golf, gymnastics; Providing an online computer database of educational information in the field of video gaming and board games; Providing an online computer database of educational information in the field of meditation; Providing an online computer database of educational information in the field of photography
International Class 042: Providing an online computer database of educational information in the field of testing, analysis, and evaluation of the knowledge, skills and abilities of others in the fields of information technology, real estate, fitness and nutrition, health and nursing, and emergency response services to determine conformity with occupational and professional certification standards
International Class 045: Providing an online computer database of educational information featuring legal information
2) Applicant may also proceed with the following identification if accurate, but this cannot be entered by Examiner’s Amendment, as it will require specimens for International Classes 039, 043, and 044 (and additional class fees for International Classes 039 and 043):
International Class 039: Providing an online computer database of educational information in the field of travel
International Class 041: Online educational services, namely, providing online non-downloadable study guides and learning tools, namely, online non-downloadable flash cards; Providing an online computer database of educational information in the academic fields of science, mathematics, history, languages, computer science and technology, arts and humanities, literature, medicine, law, and social sciences for the purpose of academic study; Providing an online computer database of educational information in the field of standardized testing; Providing an online computer database of educational information in the field of sports, including yoga, hiking, football, basketball, baseball, soccer, hockey, golf, gymnastics; Providing an online computer database of educational information in the field of video gaming and board games; Providing an online computer database of educational information in the field of meditation; Providing an online computer database of educational information in the field of photography
International Class 042: Providing an online computer database of educational information in the field of testing, analysis, and evaluation of the knowledge, skills and abilities of others in the fields of information technology, real estate, fitness and nutrition, health and nursing, and emergency response services to determine conformity with occupational and professional certification standards
International Class 043: Providing an online computer database of educational information in the field of cooking
International Class 044: Providing an online computer database of educational information in the field of hobbies, namely, floral design
International Class 045: Providing an online computer database of educational information featuring legal information
Please let me know by close of business Monday, March 9, 2020 if you would like to proceed with the identification outlined in 1) above by Examiner’s Amendment. With your approval, I will enter the Examiner’s Amendment and immediately approve the mark for publication. If you would prefer I issue an Office action please let me know.
Best,
Sandra
/Sandra Snabb/
Examining Attorney
Law Office 120
571-272-4633
Please note that all relevant email communications will be placed in the official application record; however, an email communication will not be accepted as a response to an Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02; 709.04-.05.
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