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. 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