If an image for a specimen, the pixel range is not an issue; instead, ensure that the overall size of the attachment does not exceed 5 megabytes.
A 21 Aug 14 S N
94 041 Providing information and news in the field of teaching methodology and education
1401.08 Classification and the Identification of Goods and Services
The items listed in the identification of goods and services must be limited to those on or in connection with which the applicant uses or has a bona fide intention to use the mark in commerce. The entire contents of a class, as represented by the short title of the class, should not be set forth as the identification of goods or services. The short titles of the classes indicate the general scope of the classes and are generally too broad and inclusive to be used to identify particular goods or services.
State Trademark Information Links
To acquire trademark and/or service mark registration at the state level, applicants must file an application with the trademark office of the specific state in which protection is sought. For information about state registration requirements, applicants must contact the individual state trademark office.
The difference between software classified in Class 9 and in Class 42 is that Class 9 software is downloadable – i.e. storable and retrievable in and from one’s own system like when the software is on a CD, although nowadays it is simply downloaded from the internet, but it must remain in the computer hard drive (or an external memory device). Software in Class 42 is “nondownloadable” software, e.g. “software as a service” or application software generally only available for use when the user accesses a particular website but not stored in their own system retrievable at will. This nondownloadable software is considered to be like a computer service which is why it is classified in Class 42.
An applicant is not required to register in all classes in which it provides information, but may instead choose to register only the classes of the fields that are most important to it. The examining attorney will ask the applicant to indicate the fields of information to assist in classification. The applicant must decide if it wishes to: (1) go forward and register the information services in all of the appropriate classes; or (2) choose the class(es) that are most important to its business, and amend the identification to delete reference to fields of information that fall into other classes. See TMEP §1401.04(b).
Since information services must now be classified according to the subject matter of the information, the nature or subject matter of the information provided must be specified to allow for proper classification. For example, “information in the field of automobiles” is not sufficiently definite to allow for proper classification. If the information pertains to purchasing an automobile, then the service is classified in Class 35. If the information pertains to the care and maintenance of automobiles, the service is classified in Class 37. If the service involves insurance or financing of automobiles, then Class 36 is the proper class. The best way to ensure that the information is classified correctly may be to identify the subject matter of the service. For example, “information in the field of automobile financing” is adequate to classify the service in Class 36. Another way to clarify the classification of information services is to characterize the information itself. Thus, “providing financing information in the field of automobiles” clearly puts the service in Class 36. As with many other service identifications that require an indication of the subject matter or field, the subject matter or field does not have to be as specific as would be required if the subject matter or field were the service itself. However, an indication of the nature of the information must be included, either by reference to the type of information or the subject matter of the information provided, to allow for proper classification of the activity.
100 041 Providing information about education A 25 Aug 11 S N T
Each entry in the ID Manual is given a particular letter to indicate the status of the entry. Entries with a status of “A” (Added), “M” (Modified), or “X” (Example) are active entries which are acceptable in the class specified.
Acceptable Identification of Goods and Services Manual (ID Manual)
The ID Manual lists identifications of goods and services and their respective classifications that the USPTO examining attorneys will accept without further inquiry if the specimens of record support the identification and classification.
Word Mark TECHNOLOGY 4-LIFE
Goods and Services (ABANDONED) IC 041. US 100 101 107. G & S: (Based on Use in Commerce) Educational services, namely, conducting live and online: camps, classes in the fields of Career Readiness, Career Exploration, Personal Exploration, Workforce development, Information Technology, High-Tech and distribution of training materials inconnection therewith(Based on Intent to Use) Educational services, namely, conducting live and online: seminars, conferences, workshops, mentoring, train-the-trainer classes in the field of Career Readiness, Career Exploration, Personal Exploration, Workforce development, Information Technology, High-Tech and distribution of training material in connectiontherewith
Word Mark TECHNOLOGY FOR BUSINESS
Goods and Services IC 009. US 021 023 026 036 038. G & S: Computer software for enhanced computer telephony applications used in telephone call centers. FIRST USE: 19990901. FIRST USE IN COMMERCE: 19990901
Word Mark TECH 4 KIDS
Goods and Services IC 011. US 013 021 023 031 034. G & S: flashlights for children; lamps; nightlights
IC 028. US 022 023 038 050. G & S: toys and games, namely, plush toys, stuffed toys, toy gliders, toy airplanes, toy rockets, toy action figures, toy vehicles, board games, dice games, card games, parlor games and jigsaw puzzles; snow boards; snowsleds for recreational use; toboggans; lighted toys, namely, toy projectors; battery operated action toys; mechanical action toys; children’s multiple activity toys
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Trademark Search Facility Classification Code NUM-4 The number 4 or the word Four
Serial Number 77708362
Filing Date April 7, 2009
Current Basis 44E
Original Filing Basis 1B
Published for Opposition July 27, 2010
Registration Number 3858853
Registration Date October 12, 2010
Owner (REGISTRANT) TECH 4 KIDS INC. CORPORATION CANADA 1200 AEROWOOD DRIVE UNIT 28 MISSISSAUGA, ONTARIO CANADA L4W 2S7
Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record Christopher J. Bischoff
Priority Date October 7, 2008
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “FOR KIDS” APART FROM THE MARK AS SHOWN
Type of Mark TRADEMARK
Live/Dead Indicator LIVE
In Dial-A-Mattress, the court held that an alphanumeric telephone number “bears closer conceptual resemblance to a phrase than a compound word.” 57 USPQ2d at 1811. The court found that 1-888-M-A-T-R-E-S-S was not generic as applied to “telephone shop-at-home retail services in the field of mattresses,” because there was no evidence of record that the public understood the term to refer to shop-at-home telephone mattress retailers. Therefore, to establish that a mnemonic telephone number is generic, the examining attorney must show that the relevant public would understand the mark as a whole to have generic significance.
However, the entry of a disclaimer does not render registrable a mark that is otherwise unregistrable. For example, if a mark is comprised entirely of generic wording and some or all of the wording in the mark is the phonetic equivalent of the generic wording, the entire mark may not be disclaimed, even in the proper spelling, and approved for registration on the Supplemental Register. See TMEP §1209.01(c).
Example 1: If the mark includes the term SOFT-TOYS for stuffed animals, the applicant must disclaim the two separate words “SOFT TOYS” apart from the mark as shown.
Example 2: If the mark includes the term OVER-COAT for winter coats, the applicant must disclaim the compound word “OVERCOAT,” because this is how the term is commonly spelled.
However, if a telescoped word is itself unregistrable, a disclaimer of the telescoped word may be required. See In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987) (affirming refusal to register FIRSTIER and design for banking services in the absence of a disclaimer of “FIRST TIER,” in view of evidence that the term describes a class of banks). See TMEP §1213.08(c) regarding disclaimers of misspelled words, in general.
If a composite mark consists of a compound word combined with arbitrary matter, and the compound word is unregistrable, a disclaimer of the compound word may be required. The form of the disclaimer of the compound word – that is, whether the disclaimed portion of the mark appears as one compound word or as two or more distinct words – should be consistent with the evidence of descriptiveness. If the compound word itself (with no spaces) is used descriptively, it should be disclaimed in that form. Otherwise, the disclaimed portion should appear as two or more distinct words, separated by spaces. See TMEP §1213.08(c) regarding disclaimer of misspelled words.
Word Mark KHAN ACADEMY
Goods and Services (ABANDONED) IC 041. US 100 101 107. G & S: providing online games in the fields of humanities and economics
(ABANDONED) IC 042. US 100 101. G & S: providing a web site featuring temporary use of non-downloadable software allowing web users to upload, post and display online videos on a wide variety of educational topics and subjects, such as math, science, humanities, and economics
Word Mark KHAN ACADEMY
Goods and Services IC 041. US 100 101 107. G & S: education courses, instructions, lectures, classes, exercises and test preparation in the field of a wide variety of topics and subjects such as math, science, humanities, and economics offered through online non-downloadable videos and instructor assistance. FIRST USE: 20061116. FIRST USE IN COMMERCE: 20061116
IC 042. US 100 101. G & S: application service provider, namely, hosting, managing, developing and maintaining applications, software and a web site featuring a wide variety of educational topics and subjects for wireless delivery of content to global mobile electronic and optical devices; computer services, namely, creating an online community for users to participate in discussions, volunteer for tutoring, and engage in social networking, all featuring educational topics and subjects. FIRST USE: 20061114. FIRST USE IN COMMERCE: 20061114
For more information about conducting a clearance search, please watch the news broadcast-style video titled “Searching” (video #3 in the Trademark Information Network (TMIN) series).
All online publications are classified in Class 41 no matter what the subject matter. An acceptable identification would be:
“Computer services, namely providing online [indicate specific nature of publications, e.g., magazines, newsletters, etc.] in the field of [indicate subject matter of publication], in Class 41.”
Prior to January 1, 2002, the service of providing an online database via the Internet was classified in Class 42 if the database included a wide variety of subject matter. However, effective January 1, 2002, the subject matter or content of the online database now governs the classification of the services. Applicants must now separate the subject matter or content of the databases into their appropriate individual international classes. Acceptable identifications include:
“Providing an online electronic database on the Internet in the field of business evaluations of automobile companies, in Class 35.”
Generally, these services are in Class 42. It is important to remember that these services must be performed for the benefit of others. If an applicant is developing its own software, it is not engaging in a recognized service. (See TMEP §§1301.01 et seq. regarding activities that do not constitute services.) If the services are identified as “computer design and development services,” the specimens must show that the applicant provides these services for other parties. Some acceptable identifications are:
“Computer software design and development services for others, in Class 42.”
“Computer services, namely, creating and maintaining websites for others, in Class 42.”
“Duplication of computer programs, in Class 42.”
If the services involve providing a website from which a user can receive “webcasted” transmissions over the Internet: “Broadcasting (radio programs, television programs, multimedia programming, etc.) via the Internet, in Class 38.”
If the services consist of providing a particular online show “webcasted” over the Internet: “Entertainment, namely a continuing [indicate type, e.g., variety, news, comedy] show broadcasted over the Internet, in Class 41.”
Just because the applicant is conducting an activity that may involve transmission of data on the Internet does not mean the applicant’s service is a Class 38 service. For example, an applicant who merely has a website is not conducting “electronic transmission of messages and data,” in Class 38. The companies providing the Internet connections are conducting the actual transmissions; the applicant is merely making the information available.
“Online bulletin boards” and “chat rooms” are classified in Class 38 regardless of the content or subject matter. The rationale for this stems from the fact that these services allow individuals to communicate with each other, like other Class 38 services.
1402.11(a) Computer Services
Services Classified in Classes 35, 36, 37, 39, 40, 41, 44, and 45
Any activity consisting of a service that ordinarily falls in these classes (e.g., real estate agency services, banking services, dating services), and that happens to be provided over the Internet, is classified in the class where the underlying service is classified. For example, banking services are classified in Class 36 whether provided in a bank or online.
The distinction between research services in Class 42 and research services classified according to subject matter is based on whether the research activity involves science-based testing and analysis. Research services that involve science-based testing and analysis are classified in Class 42, and those that involve other types of non-scientific analysis, e.g., business analysis, financial analysis, legal analysis, etc., are classified according to the activities underlying the research service.
As a general rule, research services in a scientific or technological field (such as bacteriology or computer software, respectively) are in Class 42