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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88449147 |
LAW OFFICE ASSIGNED |
LAW OFFICE 113 |
MARK SECTION |
MARK |
http://uspto.report/TM/88449147/mark.png |
LITERAL ELEMENT |
ATOM |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
OWNER SECTION (current) |
NAME |
Kaplan, Inc. |
STREET |
750 Third Avenue |
CITY |
New York |
STATE |
New York |
ZIP/POSTAL CODE |
10017 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
OWNER SECTION (proposed) |
NAME |
Kaplan, Inc. |
STREET |
750 Third Avenue |
CITY |
New York |
STATE |
New York |
ZIP/POSTAL CODE |
10017 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
EMAIL |
XXXX |
ARGUMENT(S) |
Please see the actual argument text attached within the Evidence section. |
EVIDENCE SECTION |
EVIDENCE FILE NAME(S) |
ORIGINAL PDF FILE |
evi_3810821634-20200224164024462176_._ATOM_-_Response_to_Office_Action__F3412282x96B9E_.pdf |
CONVERTED PDF FILE(S)
(12 pages) |
\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0002.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0013.JPG |
ORIGINAL PDF FILE |
evi_3810821634-20200224174220500875_._Exhibit_A__F3412474x96B9E_.pdf |
CONVERTED PDF FILE(S)
(3 pages) |
\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0014.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0016.JPG |
ORIGINAL PDF FILE |
evi_3810821634-20200224174220500875_._Exhibit_B__F3412140x96B9E_.pdf |
CONVERTED PDF FILE(S)
(2 pages) |
\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0017.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0018.JPG |
ORIGINAL PDF FILE |
evi_3810821634-20200224174220500875_._Exhibit_C__F3412221x96B9E_.pdf |
CONVERTED PDF FILE(S)
(7 pages) |
\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0019.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0020.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0021.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0023.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0025.JPG |
ORIGINAL PDF FILE |
evi_3810821634-20200224174220500875_._Exhibit_D__F3412153x96B9E_.pdf |
CONVERTED PDF FILE(S)
(28 pages) |
\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0026.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0027.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0028.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0030.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0031.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0032.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0033.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0035.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0038.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0039.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0040.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0041.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0042.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0043.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0044.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0045.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0046.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0047.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0048.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0049.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0050.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0051.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0052.JPG |
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\\TICRS\EXPORT18\IMAGEOUT18\884\491\88449147\xml2\ROA0053.JPG |
DESCRIPTION OF EVIDENCE FILE |
The evidence consists of arguments and exhibits. |
GOODS AND/OR SERVICES SECTION (009) (current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
downloadable software for employee training courses and instructional content in the areas of sales, marketing, communication, customer
service and product support, and employee efficiency, all for purposes of attracting, managing, developing, training, and retaining employees; downloadable software in the fields of education and
test preparation that allows users to create and manage educational content and curriculum, track learner progress, and conduct data analysis and reporting; downloadable software for multimedia
electronic communication that allows users to view and exchange data, documents and applications with others, to view the online status of users, and to communicate with and among users |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (009) (proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
downloadable software for employee training courses and instructional content in the areas of sales,
marketing, communication, customer service and product support, and employee efficiency, all for purposes of attracting, managing, developing, training, and retaining employees; Downloadable software for managing and creating employee training courses and instructional content in the areas of sales, marketing, communication, customer service and product
support, and employee efficiency, all for purposes of attracting, managing, developing, training, and retaining employees; downloadable software in the fields
of education and test preparation that allows users to create and manage educational content and curriculum, track learner progress, and conduct data analysis and reporting; downloadable software for creating and managing educational content and curricula, tracking learner progress, and conducting data analysis and reporting in the fields of education and
test preparation; downloadable software for multimedia electronic communication that allows users to view and exchange data, documents and applications with
others, to view the online status of users, and to communicate with and among users; Downloadable multimedia electronic communication software for viewing and
exchanging data, documents and applications with others, viewing the online status of users, and communicating with and among users |
FINAL DESCRIPTION |
Downloadable software for managing and creating employee training courses and instructional content in the areas of sales, marketing,
communication, customer service and product support, and employee efficiency, all for purposes of attracting, managing, developing, training, and retaining employees; downloadable software for
creating and managing educational content and curricula, tracking learner progress, and conducting data analysis and reporting in the fields of education and test preparation; Downloadable multimedia
electronic communication software for viewing and exchanging data, documents and applications with others, viewing the online status of users, and communicating with and among users |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (041) (current) |
INTERNATIONAL CLASS |
041 |
DESCRIPTION |
Educational services, namely, conducting courses of instruction in the field of math, reading, science, language arts, social science,
standardized tests, certification courses, and professional exams and distribution of course material and content in connection therewith; Educational services, namely, providing online content and
data analysis in the field of learning, education, curriculum management and assessment, and providing online information in the field of education |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (041) (proposed) |
INTERNATIONAL CLASS |
041 |
TRACKED TEXT DESCRIPTION |
Educational services, namely, conducting courses of instruction in the field of math, reading, science,
language arts, social science, standardized tests, certification courses, and professional exams and distribution of course material and content in connection therewith; Educational services, namely, conducting courses of instruction in the field of math, reading, language arts, social science, standardized tests, and distribution of course material and
content in connection therewith; Educational services, namely, providing online content and data analysis in the field of learning, education, curriculum
management and assessment, and providing online information in the field of education; Educational services, namely, providing online information in the fields
of learning, education, and curriculum management and assessment |
FINAL DESCRIPTION |
Educational services, namely, conducting courses of instruction in the field of math, reading, language arts, social science,
standardized tests, and distribution of course material and content in connection therewith; Educational services, namely, providing online information in the fields of learning, education, and
curriculum management and assessment |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (042) (current) |
INTERNATIONAL CLASS |
042 |
DESCRIPTION |
Computer services, namely, hosting and maintaining an online web site for others to facilitate education, learning and training, and
assessment of students and employees; computer technology support services, namely, help desk services; providing a website featuring non-downloadable software that allows users to view and exchange
data, documents and applications with others, to view the online status of users, and to communicate with and among users; software as a service (SAAS) services featuring software for businesses in
the field of learning management systems; software as a service (SAAS) services featuring software for employee training courses and instructional content in the areas of sales, marketing,
communication, customer service and product support, and employee efficiency; software as a service (SAAS) services in the fields of education and test preparation that allows users to create and
manage educational content and curriculum, track learner progress, and conduct data analysis and reporting; platform as a service (PAAS) services in the fields of education and test preparation that
allows users to create and manage educational course and curriculum, track learner progress, and conduct data analysis and reporting |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (042) (proposed) |
INTERNATIONAL CLASS |
042 |
TRACKED TEXT DESCRIPTION |
Computer services, namely, hosting and maintaining an online web site for others to facilitate
education, learning and training, and assessment of students and employees; Computer services, namely, hosting and maintaining an online website for others in the
field of education, learning and training, and assessment of students and employees; computer technology support services, namely, help desk services;
providing a website featuring non-downloadable software for viewing and exchanging data, documents and applications with others, viewing the online status of users,
and communicating with and among users; providing a website featuring non-downloadable software that allows users to view and exchange data, documents and
applications with others, to view the online status of users, and to communicate with and among users; software as a service (SAAS) services featuring software
for business management in the field of learning management systems; software as a service (SAAS) services featuring software for businesses in the field of
learning management systems; software as a service (SAAS) services featuring software for employee training courses and instructional content in the areas of sales,
marketing, communication, customer service and product support, and employee efficiency; software as a service (SAAS) services for creating and managing
educational content and curriculum, tracking learner progress, and conducting data analysis and reporting in the fields of education and test preparation; software as a service (SAAS) services in the fields of education and test preparation that allows users to create and manage educational content and curriculum, track learner progress, and
conduct data analysis and reporting; platform as a service (PAAS) services for creating and managing educational course and curriculum, tracking learner
progress, and conducting data analysis and reporting in the fields of education and test preparation; platform as a service (PAAS) services in the fields of
education and test preparation that allows users to create and manage educational course and curriculum, track learner progress, and conduct data analysis and reporting |
FINAL DESCRIPTION |
Computer services, namely, hosting and maintaining an online website for others in the field of education, learning and training, and
assessment of students and employees; providing a website featuring non-downloadable software for viewing and exchanging data, documents and applications with others, viewing the online status of
users, and communicating with and among users; software as a service (SAAS) services featuring software for business management in the field of learning management systems; software as a service
(SAAS) services featuring software for employee training courses and instructional content in the areas of sales, marketing, communication, customer service and product support, and employee
efficiency; software as a service (SAAS) services for creating and managing educational content and curriculum, tracking learner progress, and conducting data analysis and reporting in the fields of
education and test preparation; platform as a service (PAAS) services for creating and managing educational course and curriculum, tracking learner progress, and conducting data analysis and
reporting in the fields of education and test preparation |
FILING BASIS |
Section 1(b) |
ATTORNEY INFORMATION (current) |
NAME |
Allison Strickland Ricketts |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
FROSS ZELNICK LEHRMAN & ZISSU, P.C. |
STREET |
4 TIMES SQUARE, 17TH FLOOR |
CITY |
NEW YORK |
STATE |
New York |
POSTAL CODE |
10036 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
DOCKET/REFERENCE NUMBER |
KPLN 1905845 |
ATTORNEY INFORMATION (proposed) |
NAME |
Allison Strickland Ricketts |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
Fross Zelnick Lehrman & Zissu, P.C. |
STREET |
151 W. 42nd Street, 17th Floor |
CITY |
New York |
STATE |
New York |
POSTAL CODE |
10036 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
PHONE |
212-813-5900 |
EMAIL |
ricketts-docket@fzlz.com |
DOCKET/REFERENCE NUMBER |
KPLN 1905845 |
OTHER APPOINTED ATTORNEY |
Lawrence E. Apolzon, Andrew N. Fredbeck, Nancy Sabarra, Karen Lim, Charles T.J. Weigell, Ashford Tucker, Tamar Niv Bessinger, Julia
Belagorudsky |
CORRESPONDENCE INFORMATION (current) |
NAME |
ALLISON STRICKLAND RICKETTS |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
ricketts-docket@fzlz.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
belagorudsky-docket@fzlz.com |
DOCKET/REFERENCE NUMBER |
KPLN 1905845 |
CORRESPONDENCE INFORMATION (proposed) |
NAME |
Allison Strickland Ricketts |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
ricketts-docket@fzlz.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
belagorudsky-docket@fzlz.com |
DOCKET/REFERENCE NUMBER |
KPLN 1905845 |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/Julia Belagorudsky/ |
SIGNATORY'S NAME |
Julia Belagorudsky |
SIGNATORY'S POSITION |
Associate Attorney, Fross Zelnick Lehrman & Zissu, P.C., New York Bar member |
DATE SIGNED |
02/24/2020 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Mon Feb 24 18:09:38 ET 2020 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XXX.XX-2
0200224180938860999-88449
147-710fda12b282f5cea5248
8b99ae22aa512d77e248e6f18
d562ed4cab60202c1d-N/A-N/
A-20200224174220500875 |
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.
88449147 ATOM(Standard Characters, see http://uspto.report/TM/88449147/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
Please see the actual argument text attached within the Evidence section.
EVIDENCE
Evidence in the nature of The evidence consists of arguments and exhibits. has been attached.
Original PDF file:
evi_3810821634-20200224164024462176_._ATOM_-_Response_to_Office_Action__F3412282x96B9E_.pdf
Converted PDF file(s) ( 12 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
Original PDF file:
evi_3810821634-20200224174220500875_._Exhibit_A__F3412474x96B9E_.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_3810821634-20200224174220500875_._Exhibit_B__F3412140x96B9E_.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_3810821634-20200224174220500875_._Exhibit_C__F3412221x96B9E_.pdf
Converted PDF file(s) ( 7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Original PDF file:
evi_3810821634-20200224174220500875_._Exhibit_D__F3412153x96B9E_.pdf
Converted PDF file(s) ( 28 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
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Evidence-23
Evidence-24
Evidence-25
Evidence-26
Evidence-27
Evidence-28
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 009 for downloadable software for employee training courses and instructional content in the areas of sales, marketing, communication, customer service and product support, and
employee efficiency, all for purposes of attracting, managing, developing, training, and retaining employees; downloadable software in the fields of education and test preparation that allows users
to create and manage educational content and curriculum, track learner progress, and conduct data analysis and reporting; downloadable software for multimedia electronic communication that allows
users to view and exchange data, documents and applications with others, to view the online status of users, and to communicate with and among users
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 software for employee training courses and instructional content in the areas of sales, marketing, communication, customer
service and product support, and employee efficiency, all for purposes of attracting, managing, developing, training, and retaining employees;
Downloadable
software for managing and creating employee training courses and instructional content in the areas of sales, marketing, communication, customer service and product support, and employee efficiency,
all for purposes of attracting, managing, developing, training, and retaining employees;
downloadable software in the fields of education and test preparation
that allows users to create and manage educational content and curriculum, track learner progress, and conduct data analysis and reporting;
downloadable
software for creating and managing educational content and curricula, tracking learner progress, and conducting data analysis and reporting in the fields of education and test preparation;
downloadable software for multimedia electronic communication that allows users to view and exchange data, documents and applications with others, to view the online
status of users, and to communicate with and among users;
Downloadable multimedia electronic communication software for viewing and exchanging data, documents
and applications with others, viewing the online status of users, and communicating with and among usersClass 009 for Downloadable software for managing and creating employee training courses
and instructional content in the areas of sales, marketing, communication, customer service and product support, and employee efficiency, all for purposes of attracting, managing, developing,
training, and retaining employees; downloadable software for creating and managing educational content and curricula, tracking learner progress, and conducting data analysis and reporting in the
fields of education and test preparation; Downloadable multimedia electronic communication software for viewing and exchanging data, documents and applications with others, viewing the online status
of users, and communicating with and among users
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:
Current: Class 041 for Educational services, namely, conducting courses of instruction in the field of math, reading, science, language arts, social science, standardized tests, certification
courses, and professional exams and distribution of course material and content in connection therewith; Educational services, namely, providing online content and data analysis in the field of
learning, education, curriculum management and assessment, and providing online information in the field of education
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, conducting courses of instruction in the field of math, reading, science, language arts, social science,
standardized tests, certification courses, and professional exams and distribution of course material and content in connection therewith;
Educational services,
namely, conducting courses of instruction in the field of math, reading, language arts, social science, standardized tests, and distribution of course material and content in connection
therewith;
Educational services, namely, providing online content and data analysis in the field of learning, education, curriculum management and assessment,
and providing online information in the field of education;
Educational services, namely, providing online information in the fields of learning, education, and
curriculum management and assessmentClass 041 for Educational services, namely, conducting courses of instruction in the field of math, reading, language arts, social science, standardized
tests, and distribution of course material and content in connection therewith; Educational services, namely, providing online information in the fields of learning, education, and curriculum
management and assessment
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:
Current: Class 042 for Computer services, namely, hosting and maintaining an online web site for others to facilitate education, learning and training, and assessment of students and
employees; computer technology support services, namely, help desk services; providing a website featuring non-downloadable software that allows users to view and exchange data, documents and
applications with others, to view the online status of users, and to communicate with and among users; software as a service (SAAS) services featuring software for businesses in the field of learning
management systems; software as a service (SAAS) services featuring software for employee training courses and instructional content in the areas of sales, marketing, communication, customer service
and product support, and employee efficiency; software as a service (SAAS) services in the fields of education and test preparation that allows users to create and manage educational content and
curriculum, track learner progress, and conduct data analysis and reporting; platform as a service (PAAS) services in the fields of education and test preparation that allows users to create and
manage educational course and curriculum, track learner progress, and conduct data analysis and reporting
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: Computer services, namely, hosting and maintaining an online web site for others to facilitate education, learning and training, and
assessment of students and employees;
Computer services, namely, hosting and maintaining an online website for others in the field of education, learning and
training, and assessment of students and employees;
computer technology support services, namely, help desk services;
providing a website featuring non-downloadable software for viewing and exchanging data, documents and applications with others, viewing the online status of users, and communicating with and
among users;
providing a website featuring non-downloadable software that allows users to view and exchange data, documents and applications with others, to
view the online status of users, and to communicate with and among users;
software as a service (SAAS) services featuring software for business management in
the field of learning management systems;
software as a service (SAAS) services featuring software for businesses in the field of learning management
systems;
software as a service (SAAS) services featuring software for employee training courses and instructional content in the areas of sales, marketing, communication,
customer service and product support, and employee efficiency;
software as a service (SAAS) services for creating and managing educational content and
curriculum, tracking learner progress, and conducting data analysis and reporting in the fields of education and test preparation;
software as a service (SAAS)
services in the fields of education and test preparation that allows users to create and manage educational content and curriculum, track learner progress, and conduct data analysis and
reporting;
platform as a service (PAAS) services for creating and managing educational course and curriculum, tracking learner progress, and conducting data
analysis and reporting in the fields of education and test preparation;
platform as a service (PAAS) services in the fields of education and test preparation
that allows users to create and manage educational course and curriculum, track learner progress, and conduct data analysis and reportingClass 042 for Computer services, namely, hosting and
maintaining an online website for others in the field of education, learning and training, and assessment of students and employees; providing a website featuring non-downloadable software for
viewing and exchanging data, documents and applications with others, viewing the online status of users, and communicating with and among users; software as a service (SAAS) services featuring
software for business management in the field of learning management systems; software as a service (SAAS) services featuring software for employee training courses and instructional content in the
areas of sales, marketing, communication, customer service and product support, and employee efficiency; software as a service (SAAS) services for creating and managing educational content and
curriculum, tracking learner progress, and conducting data analysis and reporting in the fields of education and test preparation; platform as a service (PAAS) services for creating and managing
educational course and curriculum, tracking learner progress, and conducting data analysis and reporting in the fields of education and test 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.
OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Kaplan, Inc., a corporation of Delaware, having an address of
750 Third Avenue
New York, New York 10017
United States
Proposed: Kaplan, Inc., a corporation of Delaware, having an address of
750 Third Avenue
New York, New York 10017
United States
Email Address: XXXX
The owner's/holder's current attorney information: Allison Strickland Ricketts. Allison Strickland Ricketts of FROSS ZELNICK LEHRMAN & ZISSU, P.C., is a member of the XX bar, admitted to the
bar in XXXX, bar membership no. XXX, is located at
4 TIMES SQUARE, 17TH FLOOR
NEW YORK, New York 10036
United States
The docket/reference number is KPLN 1905845.
The owner's/holder's proposed attorney information: Allison Strickland Ricketts. Other appointed attorneys are Lawrence E. Apolzon, Andrew N. Fredbeck, Nancy Sabarra, Karen Lim, Charles T.J. Weigell,
Ashford Tucker, Tamar Niv Bessinger, Julia Belagorudsky. Allison Strickland Ricketts of Fross Zelnick Lehrman & Zissu, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar
membership no. XXX, and the attorney(s) is located at
151 W. 42nd Street, 17th Floor
New York, New York 10036
United States
The docket/reference number is KPLN 1905845.
The phone number is 212-813-5900.
The email address is ricketts-docket@fzlz.com
Allison Strickland Ricketts 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.
Correspondence Information (current):
ALLISON STRICKLAND RICKETTS
PRIMARY EMAIL FOR CORRESPONDENCE: ricketts-docket@fzlz.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): belagorudsky-docket@fzlz.com
The docket/reference number is KPLN 1905845.
Correspondence Information (proposed):
Allison Strickland Ricketts
PRIMARY EMAIL FOR CORRESPONDENCE: ricketts-docket@fzlz.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): belagorudsky-docket@fzlz.com
The docket/reference number is KPLN 1905845.
Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all
official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).
SIGNATURE(S)
Response Signature
Signature: /Julia Belagorudsky/ Date: 02/24/2020
Signatory's Name: Julia Belagorudsky
Signatory's Position: Associate Attorney, Fross Zelnick Lehrman & Zissu, P.C., New York Bar member
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: ALLISON STRICKLAND RICKETTS
FROSS ZELNICK LEHRMAN & ZISSU, P.C.
4 TIMES SQUARE, 17TH FLOOR
NEW YORK, New York 10036
Mailing Address: Allison Strickland Ricketts
Fross Zelnick Lehrman & Zissu, P.C.
151 W. 42nd Street, 17th Floor
New York, New York 10036
Serial Number: 88449147
Internet Transmission Date: Mon Feb 24 18:09:38 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020022418093886
0999-88449147-710fda12b282f5cea52488b99a
e22aa512d77e248e6f18d562ed4cab60202c1d-N
/A-N/A-20200224174220500875