NOTE TO THE FILE
SERIAL NUMBER: 88638838
DATE: 01/10/2020
NAME: ekajubi
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
email Attorney/ApplicantRequested Law Library search 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:X OTHER:
From: Barker, Joseph <jobarker@wiley.com>
Sent: Friday, January 10, 2020 2:28 PM
To: Kajubi, Elizabeth <Elizabeth.Kajubi@USPTO.GOV>
Cc: Christi, Colleen <cchristi@wiley.com>
Subject: RE: Official Communication: Application Serial No. 88638838 WILEY VEYA & 88676677 VEYA
Dear Examiner Kajubi:
We agree with your amendments regarding reclassification of services, as well as the amendments to the language therein.
With respect to the services initially listed as “retention services” in class 35, the amendment to the services associated with “student retention” in your revised language is acceptable to us.
The term “WILEY” in Ser. No. ending ‘838 does not refer to or identify a living individual. The term “VEYA” was created as a coined term by the applicant. (In full disclosure, please note that after receiving your email we discovered that the word “veya” means “or” in Turkish.)
Please do not hesitate to contact me if you require anything further.
Thank you, and have a great weekend.
Sincerely,
Joe Barker
Joseph J. Barker
Senior Counsel
John Wiley & Sons, Inc.
111 River Street
Hoboken, NJ 07030-5774
Phone: (201) 748-7862
Fax: (201) 748-6500
Email: jobarker@wiley.com
From: Christi, Colleen <cchristi@wiley.com>
Sent: Wednesday, January 8, 2020 10:58 AM
To: Kajubi, Elizabeth <Elizabeth.Kajubi@USPTO.GOV>
Cc: Barker, Joseph <jobarker@wiley.com>
Subject: RE: Official Communication: Application Serial No. 88638838 WILEY VEYA & 88676677 VEYA
Dear Examiner Kajubi,
I am confirming safe receipt of the below correspondence and have forwarded the same to Joseph Barker for direct response. We are certain we can address the changes you’ve suggested below and expec to revert to you shortly.
Regards,
Colleen Christi
Trademark Administrator*Please note that I am only in the office Mon-Wed-Fri*
111 River Street
Hoboken, NJ 07030-5774
Fax: 201-748-6500
From: Kajubi, Elizabeth <Elizabeth.Kajubi@USPTO.GOV>
Sent: Tuesday, January 07, 2020 9:05 PM
To: Christi, Colleen <cchristi@wiley.com>
Subject: Official Communication: Application Serial No. 88638838 WILEY VEYA & 88676677 VEYA
Dear Attorney Barker:
I am the trademark examining attorney assigned to review the above referenced applications. I completed my review thereof and would like to resolve the applications informally.
The following wording in Class 42 belongs in Class 35 and should be reclassified: “computer services, namely, search engine optimization services for university or college online education programs.”
Also, in class 35 the following entries require clarification: “student recruitment and retention services for university or college online education programs.” Student recruitment is acceptable in class 35 but retention is indefinite and potentially identifies class 41 academic services. Also, the language “consulting in the field of higher education strategy for colleges and universities,” must be amended to identify class 35 services because as currently worded it potentially identifies class 41 services. To resolve these issues, I suggest the following wording:
Class 35
Development of marketing strategies, concepts and tactics, namely, brand awareness for university or college online education programs; direct marketing services for university or college online education programs; student recruitment services for university or college online education programs; higher education market research; consultation in the field of higher education competitive market analysis and consultation in the field of development of higher education marketing strategy; recruitment of instructors and facilitators for university or college online education programs; advertising and marketing services provided by search engine marketing for university or college online education programs; consulting in the field of higher education marketing strategy for colleges and universities; online degree program management services, namely, administration of higher education programs in the nature of online degree programs; {the following services have been reclassified from international Class 42} computer services, namely, search engine optimization services for promotion of university or college online education programs.
Class 41
Education services, namely, conducting distance learning instruction at the university level; course delivery services, namely, conducting online educational programs for university or college with respect to their educational programs and courses; educational services, namely, developing curriculum for others in the nature of development of online education programs and courses for universities, colleges, companies or organizations with respect to their educational programs and courses; training services for university or college online education programs for instructors and facilitators with respect to their educational programs and courses; Providing training, educational advisory, and educational consulting services in the field of higher education in the nature of educational program design for colleges and universities; {the following wording is reclassified from class 35} student retention services for university or college online education programs all related to student academic status.
Class 42
Computer technology help desk support services for students and faculty of distance learning and learning management services; troubleshooting computer software programs; monitoring of network systems; computer services, namely, hosting an online website for others to manage learning services; computer services, namely, development and maintenance of virtual online learning environment for university or college online education; data migration services in the nature of course migration of online education courses for universities or colleges; design of trade show booth for university or college online education programs.
Could you please also confirm the marks have no meaning in a foreign language and in the case of 88638838, do not identify a living individual.
Please advise me whether the suggestions above are acceptable. I would be happy to enter the changes for both applications and move them along. This option would enable us to avoid the delay of sending office actions.
Best regards,
/Elizabeth N. Kajubi/
Trademark Examining Attorney
Law Office 107
(571) 272-2727