Request for Reconsideration afier Final Action
`
`Page 1 of 12
`
`PTO Form 1930 (Rev 9/2007)
`
`OMB No. 0651-0050 (Exp. 4/30/2009)
`
`Request for Reconsideration after Final Action
`
`The table below presents the data as entered.
`
`Input Field
`
`SERIAL NUMBER
`
`77366584
`
`LAW OFFICE ASSIGNED
`
`LAW OFFICE 113
`
`MARK SECTION (no change)
`
`ARGUMENT(S)
`
`RESPONSE
`
`We respectfully respond to the Office Action dated September 29, 2008 on behalf of our
`
`client, Pearson Education, Inc.
`
`Date of First Use
`
`AMENDMENT
`
`Upon further investigation Applicant discovered that the date of first use listed in the
`
`application was incorrect. Applicant hereby submits that the date of first use anywhere and the date of
`
`first use in commerce is December 2006. A declaration by Applicant is submitted certifying this new
`
`date of first use.
`
`REMARKS
`
`The Examining Attorney has refused registration on the Principal Register for the above-referenced application on the ground
`
`that the mark BIOFLIX is merely descriptive as used in connection with Applicant’s services. Specifically, the Examining Attorney
`
`objects to BIOFLIX as being merely descriptive of Applicanfs educational services in the field of biology since “bio is a prefix that
`
`refers to biology and the word “FLICK” is a slang term for movie.”
`
`Applicant continues to maintain that the mark is inherently distinctive for the reasons stated in o11r previous submissions.
`
`However, in lieu ofrepeating those arguments again and Without in any way conceding that the mark is not inherently distinctive,
`
`Applicant provides the evidence of acquired distinctiveness under Section 2(t) of the Trademark Act. Applicant specifically reserves its
`
`right to appeal the issue of acquired distinctiveness, and has therefore filed a Notice of Appeal.
`
`Applicant respectfully requests the
`
`Attorney reconsider the refusal in light of the independent argurnents made
`
`file ://\\ticrs- ais-01\ticrsexport\HtmlToTifflnput\R_FRO00l2009_O4_l5_14_l7_47_TTABO...
`
`4/ 15/2009
`
`

`
`Request for Reconsideration afier Final Action
`
`Page 2 of 12
`
`below.
`
`L
`
`In the Alternative, Appllcanfs Mark Has Acguired Dlstinctlveuess
`
`RESPONSE
`
`In the event that the Examining Attomey maintains the refusal to register based on inherent distinctiveness, Applicant submits
`
`that its BIOFLIX mark has acquired distinctiveness in the market place. Applicant is attaching the Declaration of Stephanie M. Foster
`
`as Exhibit A in further support of its claim of acquired distinctiveness.
`
`It is well established that a mark can be merely descriptive of “the services for purposes of Section 2(e)(I), but
`
`not so highly descriptive as to be incapable of functioning as a service mark to identify app1icant’s services and distinguish them from
`
`like services of others.” In re Capital Fomxarion Counselors, Inc, 219 USPQ 916, 918 (ITAB 1983). Clearly, the term BIOFLIX is not
`
`such a common tenn that it is incapable of serving as a trademark. Indeed, byvirtue of the fact that the Examining Attorney has offered
`
`Applicant the opportunity to register the mark on the Supplemental Register neflects his determination that the mark is capable of acting
`
`as a trademark. The only question therefore is whether the mark has in fact acquired distinctiveness such that consumers perceive it as a
`
`source designation
`
`II.
`
`The Evidence of Acquired Distinctiveness
`
`As described in the Declaration of Stephanie Foster, Applicant is the global leader in educational publishing. Applicant offers
`
`what is considered by many to be the most comprehensive range of educational programs, in all subjects, for every age and level of
`
`student, from pre-K-12 through higher education and beyond In fact, Applicant has provided services to more than 100 million students
`
`around the globe with the largest number being located in the United States. Indeed, Applicant’s educational materials are so widely
`
`used that virtually every high school and/or college graduate in this country has used one of Applicant’s products at sometime in their
`educational career.
`
`The BIOFLIX brand refers to an educational supplement offered to the purchasers of certain college level textbooks in the field
`
`of biology. Specifically, BIOFLIX allows students to view educational videos on their computer via the Internet that highlight and
`
`expand on certain subjects covered in the textbook and classrooms. For instance, a particular BIOFLIX feature may show how neutrons
`
`work or provide a virtual tour of an animal cell.
`
`Notwithstanding that the mark has only been in existence for less than three years, more than 200,000 students have registered
`
`to have access to the BIOFLIX service. Of course, the number of students and others within the educational community that are aware
`
`of the DIOFLIX brand is far larger. Students and other potential users ofthis mark are exposed to Applicar1t’s BIOFLIX branded
`
`service in five different ways: (1) as a supplement to the textbook; (2) as an in class teaching tool; and (3) as a link from other websites;
`
`(4) as part ofthe Pearson on-line catalog, and (5) in connection with Pearson’s efforts to difierentiate the textbooks linked to this
`
`product as part of its sales efforts to persuade instructors to select these textbooks over the textbooks ofits competitors.
`
`Students first receive information about this online supplement with the purchase of one of the
`
`many textbooks that are linked to this brand. This information provided at the time that the textbook
`
`is purchased. An interested student can then register on-line for this service. As a result of this
`
`registration requirement, Pearson knows that since December of 2006 more than 300,000 students
`
`file://\\ticrs-ais-01\ticrsexport\HtmlToTifi'lnput\RFRO00l2009_04_l 5_14_17_47_TTABO...
`
`4/ 1 5/2009
`
`

`
`Request for Reconsideration after Final Action
`
`Page 3 of 12
`
`have used its BIOFLIX product. This program is experiencing expediential growth. For instance, the
`
`number of registered students doubled between 2007 and 2008 (from approximately 83,000 to just
`
`over 182,000) and is on track so far to more than double again by the end of this year. Thus by the
`
`end of 2009 we expect that more than 500,000 students will have accessed and used the BIOFLIX
`
`service.
`
`Significantly, the web pages using the BIOFLIX mark do so in an “attention getting” style
`
`such as a head line or in set apart type that signals that this designation is not being used merely a
`
`generic descriptor but as a brand. It is also equally significant that that the BIOFLIX mark typically
`
`appears with a “tm” symbol thereby reinforcing the consumers’ perception that this term functions as
`
`a source designation.
`
`Of course, even students who do not register for the BIOFLIX service come into contact with
`
`the mark. Obviously, any student who buys one of the ten or so textbooks currently linked to this
`
`product service are all provided information about the BIOFLIX supplemental Internet educational
`
`material. These students encounter the BIOFLIX trademark through websites introducing students to
`
`their relevant text, see www.f1rstdayofclass.com, through the mybiology website which presents all
`
`the student supplements and by reference in the print or eBook version of the main textbook. A
`
`particular BIOFLIX educational video may also be used by a professor or teaching instructor as part
`
`of a class room presentation on a particular topic. In this fashion, every student in the class room is
`
`exposed to the brand.
`
`In addition, other websites link to the BIOFLIX website and in doing so, prominently display
`
`the BIOFLDSI trademark. According to Applicant’s own tracking of this information there are at the
`
`present time at least 12 other web sites that link to the BIOFLIX web page. Thus, all of the visitors to
`
`these other web pages have also been exposed to this mark.
`
`We also note that the Pearson on-line catalog also features this mark. Thus, users of the
`
`catalog will see the details of this service. The mark BIOFLIX is set apart from the remainder of the
`
`text by use of the “tm” symbol. See
`
`http://vig.pearsoned. co.uk/catalog/academic/product/0, 1 144,032 1 5 1261 8,00.html.
`
`Finally, the BIOFLIX supplemental offering is an integral part of the sales pitch given to college
`
`file://\\ticrs-ais-01\ticrsexport\HtmlToTifiInput\R_FR000 l2009_04_1 5_l4_l7_47__TTABO.. .
`
`4/ 1 5/2009
`
`

`
`Request for Reconsideration afier Final Action
`
`'
`
`Page 4 of 12
`
`professors and other influencers of such decisions as to why a Applicant’s product should be selected
`
`over its competitors.
`
`In considering the probative value of this information we note that the Lanham Act
`
`creates a presumption that a mark which has been in use for five (5) years has acquired
`
`distinctiveness. While this mark has not yet been in use for five (5) years, the clear evidence
`
`establishes that it functions as a trademark along the relevant consumers and has become associated as
`
`a designation or origin.
`
`III.
`
`Applicant’s 2(1) argument Does Not Negate the Need for the Examining
`Attorney to Reconsider the Determination of Whether the Mark is
`Inherently Distinctive.
`
`However, while Applicant submits this evidence of acquired disiinctness, it specifically requests that the Examining Attorney not
`
`approve this mark for publication until he has advised Applicant that it may either elect to appeal the denial of inherent distinctiveness or
`
`accept a 2(t) registration. This is no more than the TMEP requires.
`
`In the Last Altemative, Applicant Accepts the Examining Attorney’s Invitation t9_
`IV.
`Supplemental Register.
`
`Re ster the mark on The
`
`The Examining Attorney has already invited Applicant to accept registration on the Supplemental Register. Applicant
`
`requests that in the event that it elects to appeal the denial of the inherent distinctivess and/or the denial of the 2(t) evidence that the
`
`Examining Attorney then accept Applications’ acceptance ofthis offer. However, Applicant again emphasizes that its acceptance of the
`
`Supplemental Registration is only in the event that both its inherent distinctness and 2(t) arguments do not persuade the examining
`
`attomey. See TBMP §§ 1201, 1204; and TMEP § 715.03(b).
`
`In order to preserve its rights in this application, Application submits that
`
`if it has no other choice, it will agree to amend the mark to the Supplemental Register.
`V.
`Conclusion
`
`For all of the reasons stated above, Applicant respectfully requests that the Examining Attorney withdraw the refusals to register
`
`Applica.nt’s BIOFLIX trademark on the Principal Register and pass the application to publication without a claim of acquired
`
`distinctiveness. In the alternative, the Applicant. requests that the Examining Attorney indicate his acceptance ofthe mark under 2(t) but
`
`issue a final oflice action on inherent distinctiveness so that the Applicant can pursue an appeal.
`
`file://\\ticrs-ais-01\ticrsexport\HtmlToTifiInput\RFR00012009_O4_l 5_14__17_47_TTABO . ..
`
`4/15/2009
`
`

`
`Request for Reconsideration after Final Action
`
`Page 5 of 12
`
`EVIDENCE SECTION
`
`EVIDENCE
`
`FILE NA1\'IE(S)
`
`
`
`\\TICRS\EXPORT6\IMAGEOUT6 \773\665\77366584
`\xml1\RF RO002.JPG
`
`\\TICRS\EXPORT6\IMAGEOUT6 \773\665\773665 84
`\xmll\RF R0003.JPG
`
`\\TICRS\EXPORT6\IMAGEOUT6 \773\665\773665 84
`\xml1\RF R0004.JPG
`
`\\TICRS\EXPORT6\IMAGEOUT6 \773\665\77366584
`\xrn11\RF R0005.JPG
`
`\\TICRS\EXPORT6\IMAGEOUT6 \773\665\77366584
`\xmll\RF R0006.JPG
`
`\\TICRS\EXPORT6\IMAGEOUT6 \773\665\77366584
`"\xrnll\RF R0007.JPG
`
`\\TICRS\EXPORT6\IMAGEOUT6 \773\665\77366584
`\xmll\RF R0008.JPG
`
`|""""||||||||
`
`DESCRIPTION OF EVIDENCE FILE
`
`Declaration of Stephanie M. Foster in Support of Claim of
`Acquired Distinctiveness
`
`GOODS AND/OR SERVICES SECTION (current)
`
`INTERNATIONAL CLASS
`
`'
`
`041"
`
`DESCRIPTION
`
`Educational services, namely, online tutorials for students and instructors in the field of biology;
`online tutorials for students and instructors in the field of biology featuring 3D animations
`
`FILING BASIS
`
`p
`
`Section 1(a)
`
`FIRST USE ANYWHERE DATE
`
`At least as early as 08/06/2007
`
`FIRST USE IN COMMERCE DATE
`
`At least as early as 08/29/2007
`
`GOODS AND/OR SERVICES SECTION (proposed)
`
`INTERNATIONAL CLASS
`
`041
`
`DESCRIPTION
`
`online tutorials for students and instructors in the field of biology featuring 3D animations
`
`
`
`
`
`Educational services, namely, online tutorials for students and instructors in the field of biology;
`
`
`
`FILING BASIS
`
`Section 1(a)
`
`FIRST USE ANYWHERE DATE
`
`FIRST USE IN COMMIERCE DATE
`
`At least as early as 12/00/2006
`
`At least as early as 12/O0/2006
`
`file://\\ticrs-ais-01\ticrsexport\HtmlToTifiInput\RFR000 12009_04_1 5_14_17__47__TTABO . . .
`
`4/ 15/2009
`
`

`
`Request for Reconsideration afier Final Action
`
`V
`
`Page 6 of 12
`
`
`
`
`
`
`
`
`
`
`SIGNATURE SECTION
`
`
`
`
`
`
`
`
`
`
`
`
`
`TEAS STAMP
`
`
`
`
`USPTO/RFR-208.45. 142.105-
`20090330225-920484332-7736
`6584-4302fbe303e74080e622
`bO3c82lb5468l5-N/A-N/A-20
`0903302l3949943816
`
`
`
`
`
`
`
`
`
`
`
`PTO Fom1 1930 (Rev 9/2007)
`
`OMB No. 0651-0050 (Exp. 4/300009)
`
`Request for Reconsideration after Final Action
`
`To the Commissioner for Trademarks:
`
`Application serial no. 77366584 has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`RESPONSE
`
`We respectfully respond to the Office Action dated September 29, 2008 on behalf of our client,
`
`Pearson Education, Inc.
`
`file://\\ticrs-ais-01\ticrsexport\HtmlToTifi‘Input\RFRO0012009_04_15_l4_17_47_TTABO...
`
`4/15/2009
`
`

`
`Request for Reconsideration after Final Action
`
`Page 7 of 12
`
`Date of First Use
`
`AMENDMENT
`
`Upon further investigation Applicant discovered that the date of first use listed in the
`
`application was incorrect. Applicant hereby submits that the date of first use anywhere and the date of
`
`first use in commerce is December 2006. A declaration by Applicant is submitted certifying this new
`
`date of first use.
`
`REMARKS
`
`The Examining Attorney has refused registration on the Principal Register for the above-referenced application on the grotmd that
`
`the mark BIOFLIX is merely descriptive as used in connection with Applicant’s services. Specifically, the Examining Attomey objects to
`
`BIOFLIX as being merely descriptive of Applica.nt’s educational services in the field of biology since “bio is a prefix that refers to biology
`
`and the word “FLlCK" is a slang term for movie.”
`
`Applicant continues to maintain that the mark is inherently distinctive for the reasons stated in our previous submissions.
`
`However, inlieu of repeating those arguments again and without in any way conceding that the mark is not inherently distinctive,
`
`Applicant provides the evidence of acquired distinctiveness under Section 2(t) of the Trademark Act. Applicant specifically reserves its
`
`right to appeal the issue of acquired distinctiveness, and has therefore filed a Notice of Appeal.
`
`Applicant respectfiilly requests the Examining Attorney reconsider the refusal in light of the independent arguments made below.
`
`I.
`
`In the Alternative, Appllamt’ s Mark Has Acquired Distinctiveness
`
`RESPONSE
`
`In the event that the Examining Attomey maintains the refusal to register based on inherent distinctiveness, Applicant submits
`
`that its BIOFLIX mark has acquired distinctiveness in the market place. Applicant is attaching the Declaration of Stephanie M. Foster as
`
`Exhibit A in further support of its claim of acquired distinctiveness.
`
`It is well established that a mark can be merely descriptive of “the services for purposes of Section 2(e)(l), but
`
`not so highly descriptive as to be incapable of fimctioning as a service mark to identify applicant’s services and distinguish them from like
`
`services of others.” In re Capital Formation Counselors, Inc, 219 USPQ 916, 918 ("ITAB 1983). Clearly, the term BIOFLIX is not such a
`
`common term that it is incapable of serving as a trademark. Indeed, by virtue of the fact that the Examining Attorney has offered Applicant
`
`the opportunity to register the mark on the Supplemental Register retlects his determination that the mark is capable of acting as a
`
`trademark. The only question therefore is whether the mark has in fact acquired distinctiveness such that consumers perceive it as a source
`
`designation.
`
`II.
`
`The Evidence of Acquired Distinctiveness
`
`As described in the Declaration of Stephanie Foster, Applicant is the global leader in educational publishing. Applicant offers
`
`what is considered by many to be the most comprehensive range of educational programs, in all subjects, for every age and level of student,
`
`from pre-K-12 through higher education and beyond In fact, Applicant has provided services to more than 100 million students around the
`
`globe with the largest number being located in the United States. Indeed, Applicant’s educational materials are so widely used that
`
`file://\\ticrs-ais-01\ticrsexport\HtmlToTifflnput\RFR00012009_O4_15__l4_l7_47__TTABO...
`
`4/ 1 5/200 9
`
`

`
`Request for Reconsideration after Final Action
`
`Page 8 of 12
`
`virtually every high school and/or college graduate in this country has used one of Applicant’s products at sometime in their
`educational career.
`
`The BIOFLIX brand refers to an educational supplement offered to the purchasers of certain college level textbooks in the field of
`
`biology. Specifically, BIOFLIX allows students to view educational videos on their computer via the Internet that highlight and expand on
`
`certain subjects covered in the textbook and classrooms. For instance, a particular BIOFLIX feature may show how neutrons work or
`
`provide a virtual tour of an animal cell.
`
`Notwithstanding that the mark has only been in existence for less than three years, more than 200,000 students have registered to
`
`have access to the BIOFLIX service. Of course, the number of students and others within the educational community that are aware of the
`
`BIOFLIX brand is far larger. Students and other potential users of this mark are exposed to Applicant’s BIOFLIX branded service in five
`
`different Ways: (1) as a supplement to the textbook; (2) as an in class teaching tool; and (3) as a link from other websites; (4) as part of the
`
`Pearson on-line catalog, and (5) in cormection with Pearson’s efforts to differentiate the textbooks linked to this product as part of its sales
`
`efforts to persuade instructors to select these textbooks over the textbooks of its competitors.
`
`Students first receive information about this online supplement with the purchase of one of the
`
`many textbooks that are linked to this brand. This information provided at the time that the textbook is
`
`purchased. An interested student can then register on-line for this service. As a result of this
`
`registration requirement, Pearson knows that since December of 2006 more than 300,000 students have
`
`used its BIOFLIX product. This program is experiencing expediential growth. For instance, the number
`
`of registered students doubled between 2007 and 2008 (from approximately 83,000 to just over 182,000)
`
`and is on track so far to more than double again by the end of this year. Thus by the end of 2009 we
`
`expect that more than 500,000 students will have accessed and used the BIOFLIX service.
`
`Significantly, the web pages using the BIOFLIX mark do so in an “attention getting” style such
`
`as a head line or in set apart type that signals that this designation is not being used merely a generic
`
`descriptor but as a brand.
`
`It is also equally significant that that the BIOFLIX mark typically appears
`
`with a “rm” symbol thereby reinforcing the consumers’ perception that this term functions as a source
`
`designation.
`
`Of course, even students who do not register for the BIOFLIX service come into contact with the
`
`mark. Obviously, any student who buys one of the ten or so textbooks currently linked to this product
`
`service are all provided information about the BIOFLIX supplemental Internet educational material.
`
`These students encounter the BIOFLIX trademark through websites introducing students to their
`
`relevant text, see www.f1rstdayofc1ass.com, through the mybiology website which presents all the
`
`student supplements and by reference in the print or eBook version of the main textbook A particular
`
`file://\\ticrs-ais—01\ticrsexport\HtmlToTifi'lnput\RFR00012009_04_15__l4_17_47_TTABO...
`4/ 15/2009
`
`
`

`
`Request for Reconsideration afier Final Action
`
`Page 9 of 12
`
`BIOFLIX educational video may also be used by a professor or teaching instructor as part of a class
`
`room presentation on a particular topic. In this fashion, every student in the class room is exposed to the
`
`brand.
`
`In addition, other websites link to the BIOFLIX website and in doing so, prominently display
`
`the BIOFLIX trademark. According to App1icant’s own tracking of this information there are at the
`
`present time at least 12 other Web sites that link to the BIOFLIX web page. Thus, all of the visitors to
`
`these other web pages have also been exposed to this mark.
`
`We also note that the Pearson on-line catalog also features this mark Thus, users of the catalog
`
`will see the details of this service. The mark BIOFLIX is set apart from the remainder ofthe text by use
`
`of the “tin” symbol. See
`
`http://vig.pearsoned.co.uk/catalog/academic/product/O,1 144,032 1 5 1261 8,0O.htn1l.
`
`Finally, the BIOFLIX supplemental offering is an integral part ofthe sales pitch given to college
`
`professors and other influencers of such decisions as to why a App1icant’s product should be selected
`
`over its competitors.
`
`In considering the probative value of this information we note that the Lanham Act
`
`creates a presumption that a mark which has been in use for five (5) years has acquired distinctiveness.
`
`While this mark has not yet been in use for five (5) years, the clear evidence establishes that it fimctions
`
`as a trademark along the relevant consumers and has become associated as a designation or origin.
`III.
`Applicant’s 2(1) argument Does Not Negate the Need for the Examining
`Attorney to Reconsider the Determination of Whether the Mark is
`Inherently Distinctive.
`
`However, while Applicant submits this evidence of acquired distinctness, it specifically requests that the Examining Attorney not
`
`approve this mark for publication until he has advised Applicant that it may either elect to appeal the denial ofinherent distinctiveness or
`
`accept a 2(t) registration. This is no more than the TMEP requires.
`
`In the Last Altemative, Applicant Accepts the Examining Attorney’s Invitation t_o_
`IV.
`Supplemental Register.
`
`Register the mark on The
`
`The Examining Attorney has already invited Applicant to accept registration on the Supplemental Register. Applicant requests
`
`that in the event that it elects to appeal the denial of the inherent distinctivess and/or the denial of the 2(i) evidence that the Examining
`
`Attorney then accept Applications’ acceptance ofthis offer. However, Applicant again emphasizes that its acceptance of the Supplemental
`Registration is only in the event that both its inherent distinctness and 2(t) arguments do not persuade the examining attomey. See TBMP
`
`§§ 1201, 1204; and TMEP § 715.03(b). In order to preserve its rights in this application, Application submits that if it has no other choice,
`
`file://\\ticrs-ais-01\ticrsexport\HtmlToTiflInput\RFR00Ol2009_04_15_14_17_47_TTABO...
`
`4/15/2009
`
`

`
`Request for Reconsideration after Final Action
`
`Page 10 of 12
`
`it will agree to amend the mark to the Supplemental Register.
`Conclusion
`'
`
`V.
`
`For all of the reasons stated above, Applicant respectfully requests that the Examining Attorney withdraw the refusals to register
`
`Applicant’s BIOFLIX trademark on the Principal Register and pass the application to publication without a claim of acquired
`
`distinctiveness. In the alternative, the Applicant requests that the Examining Attorney indicate his acceptance ofthe mark under 2(1) but
`
`issue a final ofiice action on inherent distinctiveness so that the Applicant can pursue a.n appeal.
`
`EVIDENCE
`
`Evidence in the nature of Declaration of Stephanie M. Foster in Support of Claim of Acquired
`Distinctiveness has been attached.
`Evidenc e- 1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence—7
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 041 for Educational services, namely, online tutorials for students and instructors in the
`field of biology; online tutorials for students and instructors in the field of biology featuring 3D
`animations
`
`Original Filing Basis:
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the
`applicant's related company or licensee is using the mark in commerce, on or in connection with the
`identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at
`least as early as 08/06/2007 and first used in commerce at least as early as 08/29/2007, and is now in use
`in such commerce.
`
`Proposed: Class 041 for Educational services, namely, online tutorials for students and instructors in
`the field of biology; online tutorials for students and instructors in the field of biology featuring 3D
`animations
`
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the
`
`file://\\ticrs-ais-01\ticrsexport\HtmlToTifiInput\RFR00012009_04_15_14__17_47__TTABO...
`
`4/15/2009
`
`

`
`Request for Reconsideration afier Final Action
`
`Page 11 of 12
`
`applicant's related company or licensee is using the mark in commerce, on or in connection with the
`identified goods and/or services. 15 U.S.C. Section l051(a), as amended. The mark was first used at
`least as early as 12/00/2006 and first used in commerce at least as early as 12/00/2006, and is now in use
`in such commerce.
`
`SIGNATURE(S)
`Declaration Signature
`Ifthe applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the
`applicant has had a bona fide intention to use or use through the applicant's related company or licensee
`the mark in commerce on or in connection with the identified goods and/or services as of the filing date
`of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant
`has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its
`members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the
`Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed
`in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has
`exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 244.
`The undersigned, being hereby warned that willful false statements and the like so made are punishable
`by fine or imprisonment, or both, under 18 U.S.C. §l00l, and that such willful false statements may
`jeopardize the validity ofthe application or any resulting registration, declares that he/she is properly
`authorized to execute this application on behalf ofthe applicant; he/she believes the applicant to be the
`owner ofthe trademark/service mark sought to be registered, or, if the application is being filed under 15
`U.S.C. §l05l(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of
`his/her knowledge and belief no other person, firm, corporation, or association has the right to use the
`mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be
`likely, when used on or in connection with the goods/services of such other person, to cause confusion,
`or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all
`statements in the original application and this submission made of the declaration signer's knowledge are
`true; and all statements in the original application and this submission made on information and belief
`are believed to be true.
`
`Date: 03/30/2009
`Signature: /Elyse A. Marcus/
`Signa1ory's Name: Elyse A. Marcus
`Signatory's Position: Attorney of Record
`
`Request for Reconsideration Signature
`Signature: /Elyse A. Marcus/ Date: 03/30/2009
`Signatory's Name: Elyse A. Marcus
`Signatory's Position: Attorney of Record
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of
`the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal
`territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to
`the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian
`attomey/agent not currently associated with his/her company/firm previously represented the applicant
`in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute
`power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the
`applicant's appointed U.S. attorney or Canadian attomey/agent has filed a power of attorney appointing
`him/her as an associate attorney in this matter.
`
`The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.
`
`file://\\ticrs-ais-01\ticrsexp0rt\HtmlToTifflnput\RFR00012009_04_15_l4_17_47_TTABO...
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`4/15/2009
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`Request for Reconsideration afier Final Action
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`Page 12 of 12
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`Serial Number: 77366584
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`Internet Transmission Date: Mon Mar 30 22:59:20 EDT 2009
`TEAS Stamp: USPTO/RFR-208.45.142.105-200903302259204
`84332-773665 84-4302fbe303e74080e622b03c8
`21b546815-N/A-N/A-20090330213949943816
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`file://\\ticrs-ais-01\ticrsexport\HtmlToTiflInput\RFR00012009__04_15_14_17_47_TTABO...
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`4/ 1 5/2009
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`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Jason Eric Lott
`Examining Attorney
`
`Law Office 113
`
`I I I E
`
`[ I E
`
`1 I
`
`In re Application of
`
`Pearson Education, Inc.
`
`Serial No.: 77/366,584
`
`Filed: January 8, 2008
`
`Mark: BIOFLIX
`
`Our Ref.: 405097.121520
`
`DECLARATION OF STEPHANIE M. FOSTER
`
`STEPHANIE M. FOSTER declares under penalty ofperjury as follows:
`
`1.
`
`I am the Vice President and Senior Counsel of Pearson Education, Inc., the applicant
`
`herein (“Applicant”). I have been employed by the Applicant for more than five (5) years.
`
`In my capacity as Vice President, I have either personal first hand knowledge of the facts
`
`stated herein or base my statements on the appropriate company records.
`
`I make these
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`statements in support of Applicant’s claim of acquired distinctiveness for the above~
`
`referenced application.
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`General Background About Applicant
`
`2. Applicant is the global
`
`leader in educational publishing. Applicant offers what is
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`considered by many to be the most comprehensive range of educational programs, in all
`
`subjects, for every age and level of student, from pre K-12 through higher education and
`
`beyond. In fact, Applicant has provided services to more than 100 million students
`
`around the globe with the largest number being located in the United States.
`
`Indeed,
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`Applicant’s educational materials are so widely used that virtually every high school
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`83 l 56239A0 103 3009
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`

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`and/or college graduate in this country has used one of Applicant’s products at some
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`point in their educational career.
`
`3. Applicant’s unparalleled businesses and brands include Scott Foresman, Prentice Hall,
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`Longman, Addison Wesley, Allyn & Bacon, Benjamin Cummings, PASeries, ELLis,
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`Celebration Press, PEMSolutions, SucccssMaker, and Family Education Network.
`
`Applicant’s parent company, Pearson plc, also owns and operates other publishing and
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`educational related companies including the Financial Times Group, the Penguin Group,
`
`and E-College.
`
`4.
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`In addition to publishing traditional educational materials such as textbooks, Applicant
`
`has also developed innovative ways to utilize emerging technologies to provide students
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`with new ways to learn at their own pace, in their own way.
`
`THE BIOFLIX Mark
`
`5. Applicant has been using the BIOFLIX trademark for education services rendered to the
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`higher education market since at least as early as December 2006’. The BIOFLIX brand
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`refers to an educational supplement offered to the purchasers of certain college level
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`textbooks in the field of biology. Specifically, BIOFLIX allows students and professors
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`to view educational videos on their computer via the Internet that highlight and expand
`
`on certain subjects covered in the textbook and classroom. For instance, a particular
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`BIOFLIX feature may provide a visual demonstration illustrating neutrons work or
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`provide a virtual tour of an animal cell.
`
`6. As I describe in more detail below,