PEARSON - Trademark Details
Status: 700 - Registered
Image for trademark with serial number 79192617
Serial Number
79192617
Registration Number
5298690
Word Mark
PEARSON
Status
700 - Registered
Status Date
2017-10-03
Filing Date
2016-03-15
Registration Number
5298690
Registration Date
2017-10-03
Mark Drawing
4000 - Standard character mark Typeset
Published for Opposition Date
2017-07-18
Law Office Assigned Location Code
M80
Employee Name
JACKSON, WILLIAM D
Statements
Goods and Services
Downloadable children's educational software; downloadable educational software featuring instruction in various disciplines at the elementary, middle school, high school, higher education, vocational, and professional development levels; downloadable educational software featuring teaching assistance and curriculum development for various disciplines at the elementary, middle school, high school, and higher education levels for use by mentors, tutors, instructors and others involved in assisting students; downloadable children's educational software for mobile devices; downloadable educational software for mobile devices featuring instruction in various disciplines at the elementary, middle school, high school, higher education, vocational, and professional development levels; downloadable educational software for mobile devices featuring teaching assistance and curriculum development for various disciplines at the elementary, middle school, high school, and higher education levels for use by mentors, tutors, instructors and others involved in assisting students; prerecorded electronic media devices featuring instruction in various disciplines at the elementary, middle school, high school, higher education, vocational, and professional development levels; downloadable podcasts in various disciplines at the middle school, high school, higher education, vocational, and professional development levels; downloadable electronic books, namely, educational workbooks for students, educators, parents, mentors, tutors, and others involved in assisting students featuring various disciplines at the elementary, middle school, high school, and higher education levels; downloadable electronic textbooks featuring various disciplines at the elementary, middle school, high school, higher education, vocational, and professional development levels; downloadable electronic textbooks featuring teaching assistance and curriculum development for various disciplines at the elementary, middle school, high school, and higher education levels for use by parents, mentors, tutors, instructors and others involved in assisting students; downloadable electronic course materials featuring various disciplines at the elementary, middle school, high school, higher education, vocational, and professional development levels; downloadable electronic course materials featuring teaching assistance and curriculum development for various disciplines at the elementary, middle school, high school, and higher education levels for use by parents, mentors, tutors, instructors and others involved in assisting students; downloadable electronic publications in the nature of educational assessment materials for use by teachers, administrators, parents, and others in evaluating student performance, assessing cognitive and academic achievement, and preparing test materials for students from early learning through secondary school; downloadable electronic publications in the nature of educational assessment materials for use by students, namely, practice test questions in various disciplines at the elementary, middle school, high school, higher education, vocational, and professional development levels; downloadable electronic publications in the nature of test preparation course materials in various disciplines at the elementary, middle school, high school, higher education, vocational, and professional development levels; downloadable electronic publications in the nature of assessment materials for use in assessing teachers and administrators in elementary through secondary educational levels; downloadable electronic books and publications in the nature of newsletters in connection with fiction and non-fiction, how-to, and reference books for use by adults offered in the trade markets; prerecorded electronic media devices featuring business and finance, computer and Internet technology, and other technical subject matter; downloadable electronic reference books in the fields of business and finance, graphics and web design, networking, business processes, information security, software development and management, web development, and computer and Internet technology
Goods and Services
Printed publications, namely, textbooks, activity books, teacher's resource books, teacher's guides, workbooks, reference books, dictionaries and study guides in a variety of subject matters for all grade levels from pre-school to post-secondary, including vocational, professional and post-graduate levels; series of fiction books; non-fiction books on a variety of topics; series of fiction and non-fiction books on a variety of topics; printed instructional, educational, and teaching materials in the fields of foreign languages and English as a second language; publications, namely, books in the fields of computers, computer software, technology, the Internet, social networking, consumer electronics, handheld personal computing devices, mobile computing, business and management, information technology certification, computer databases, engineering, graphics and web design, home and office computing, information technology, computer operating systems, computer programming and web development; printed matter, namely, test forms, test booklets, answer forms, answer keys, test manuals, practice tests, score reports, and instructional manuals for assessing educational achievement levels; printed materials, namely, test booklets, test forms, answer booklets, answer forms, score reports, record forms, test manuals, stimulus booklets, and kits consisting of printed test materials, all for use in the fields of clinical psychology, psychiatry, occupational and physical therapy, speech and language assessment and intervention, cognitive ability, early childhood language and development, neuropsychology, mental health, informational technology, adult continuing education and vocational certification testing
Goods and Services
Publishing services, namely, publication of books, electronic books, course materials, tests, testing sheets, practice tests, standardized tests and scoring, and customized publications; testing services, namely, administering and scoring of standardized educational and psychological tests and professional certifications for educational purposes; online educational services, namely, classes in the elementary through post-secondary levels; providing online tutoring featuring instruction at the elementary, middle school, high school, and higher education levels; online educational services, namely, classes, workshops and seminars provided to educational institutions and school districts in the fields of assessment and improvement of student learning, instructor training, curriculum development, course management, and distribution of printed and electronic materials in connection therewith; development of educational tools, content, and materials of others via a global computer information network in connection with classes offered from the elementary, middle school, high school, and higher education levels, namely, digital textbooks, instructor's manuals, supplementary reading materials, instructional materials in the nature of self-assessment and study tools for students, homework assignments, course assessment and course management materials; online non-downloadable educational computer games; providing seminars in the fields of teacher training, professional development, computer and technical training, and business and finance; educational services, namely, providing a website featuring interactive educational instructional information and quizzes for children; information services, namely, providing information to the public in the field of education by means of a worldwide computer network and printed publications; educational services, namely, providing interactive online courses of instruction at the undergraduate and post-graduate levels via a global computer information network; distance learning at the primary, secondary, undergraduate, graduate, and corporate education levels, and providing a webliography of educational materials available over a global computer information network; education services, namely, providing training in the design, building, instruction and management of educational course work, and educational workshops offered over a global computer information network; conducting seminars and workshops on issues related to global computer information network-based technologies in education; providing online computer databases in the fields of elementary through post-secondary educational curriculums; providing online databases featuring course materials, practice tests, course assignments, textbooks and supplemental materials, and student notes in connection with classes in the elementary through post-secondary level
Goods and Services
Providing online non-downloadable software featuring educational curriculum and assessments at the K-12, post-secondary, graduate and professional education levels; providing an interactive website featuring technology that enables instructors and students at the K-12, post-secondary, graduate and professional education levels to access and use an online learning management system for aggregating course content and tracking class assignments, lesson plans, gradebooks and student performance, and other course data; providing an online virtual environment for course instruction at the K-12, post-secondary, graduate and professional education levels; providing an online hosting platform featuring a testing and assessment delivery system for assessing student learning, namely, an online test delivery platform for administration of tests online and on demand, employing interactive tools and test items for test-takers, and assessment reporting via web browser; providing an online learning management system consisting of online non-downloadable software for aggregating course content and tracking class assignments, lesson plans, student performance and other course data at the K-12, post-secondary, graduate and professional education levels; providing a web-based platform that hosts assessment and intervention tools used by mental health professionals, educators, and other professionals and clinicians for assessment, administration, scoring, and reporting services, including user registration, examinee tracking, assessment assignments, assessment score entry, and assessment reporting; providing a secure, digital assisted assessment system through a combination of web-based applications and tablet technology, namely, providing a secure web-based service which enables users within their clinical workflow to access, manage, create, give or administer and score the patient mental health assessment battery and related digital content and share the results of the assessment session administered in a dual-device environment; software as a service (SAAS) services featuring software in the field of business English language instruction to optimize corporate global communication and productivity; providing online non-downloadable computer software for English language training and education
Goods and Services
Psychological testing; psychological tests; personality testing for psychological purposes; preparation of psychological assessment reports; psychological assessment services; psychological diagnosis services; psychological assessment and examination services; providing information in the field of psychological counselling, assessment and treatment; psychological counselling; occupational psychology assessment services; occupational therapy services; providing psychological treatment; physical therapy; speech and hearing therapy; clinical psychological assessment of cognitive and occupational ability for diagnostic or treatment purposes; information, advisory and consultancy services in relation to all the aforesaid services
Classification Information
International Class
009 - Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus. - Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
US Class Codes
021, 023, 026, 036, 038
Class Status Code
6 - Active
Class Status Date
2016-10-04
Primary Code
009
International Class
016 - Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks. - Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks.
US Class Codes
002, 005, 022, 023, 029, 037, 038, 050
Class Status Code
6 - Active
Class Status Date
2016-10-04
Primary Code
016
International Class
041 - Education; providing of training; entertainment; sporting and cultural activities. - Education; providing of training; entertainment; sporting and cultural activities.
US Class Codes
100, 101, 107
Class Status Code
6 - Active
Class Status Date
2016-10-04
Primary Code
041
International Class
042 - Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services. - Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.
US Class Codes
100, 101
Class Status Code
6 - Active
Class Status Date
2016-10-04
Primary Code
042
International Class
044 - Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services. - Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
US Class Codes
100, 101
Class Status Code
6 - Active
Class Status Date
2016-10-04
Primary Code
044
Current Trademark Owners
Party Name
Party Type
30 - Original Registrant
Address
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Trademark Owner History
Party Name
Party Type
30 - Original Registrant
Address
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Party Name
Party Type
20 - Owner at Publication
Address
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Party Name
Party Type
10 - Original Applicant
Address
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Correspondences
Name
Paul W. Mussell,
Address
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Prior Registrations
Relationship TypeReel Number
Prior Registration2599724
Prior Registration2600081
Prior Registration2652792
International Registrations
International Registration Number
1311096
International Registration Date
2016-03-15
International Publication Date
2016-09-29
International Renewal Date
2026-03-15
Auto Protection Date
2018-03-29
International Status
001 - Request for extension of protection established
International Status Date
2016-10-01
Priority Claimed In
True
Priority Claimed Date
2016-01-15
First Refusal In
True
Trademark Events
Event DateEvent Description
2016-10-01SN ASSIGNED FOR SECT 66A APPL FROM IB
2016-10-04NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
2016-10-04ASSIGNED TO EXAMINER
2016-10-06NON-FINAL ACTION WRITTEN
2016-10-07NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW
2016-10-08APPLICATION FILING RECEIPT MAILED
2016-10-12REFUSAL PROCESSED BY MPU
2016-10-12NON-FINAL ACTION MAILED - REFUSAL SENT TO IB
2016-10-28REFUSAL PROCESSED BY IB
2017-02-24LIMITATION OF GOODS RECEIVED FROM IB
2017-04-05TEAS RESPONSE TO OFFICE ACTION RECEIVED
2017-04-20ASSIGNED TO LIE
2017-04-28CORRESPONDENCE RECEIVED IN LAW OFFICE
2017-04-28TEAS/EMAIL CORRESPONDENCE ENTERED
2017-04-28LIMITATION FROM THE IB EXAMINED, NO ACTION IS NEEDED
2017-05-10REPORT UNRESPONSIVE AMENDMENT - COMPLETED
2017-05-10NOTICE OF UNRESPONSIVE AMENDMENT - MAILED
2017-05-16TEAS RESPONSE TO OFFICE ACTION RECEIVED
2017-05-25CORRESPONDENCE RECEIVED IN LAW OFFICE
2017-05-25TEAS/EMAIL CORRESPONDENCE ENTERED
2017-05-31EXAMINERS AMENDMENT -WRITTEN
2017-05-31EXAMINER'S AMENDMENT ENTERED
2017-05-31EXAMINERS AMENDMENT MAILED
2017-05-31APPROVED FOR PUB - PRINCIPAL REGISTER
2017-06-15LAW OFFICE PUBLICATION REVIEW COMPLETED
2017-06-28NOTICE OF PUBLICATION
2017-07-18PUBLISHED FOR OPPOSITION
2017-10-03REGISTERED-PRINCIPAL REGISTER
2018-01-03FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB
2018-01-19FINAL DISPOSITION PROCESSED
2018-01-19FINAL DISPOSITION NOTICE SENT TO IB
2018-02-16FINAL DECISION TRANSACTION PROCESSED BY IB
2022-02-10NOTICE OF SUIT