PTO Form 1957 (Rev 8/2005)
OMB Control #0651-0050 (Exp. 04/30/2006)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER76280018
MARK SECTION (no change)
GOODS AND/OR SERVICES SECTION (1st class)(current)
INTERNATIONAL CLASS035
DESCRIPTION
management consulting services for others; commercial and industrial asset management services namely, facilities management of commercial and public works for others, coordinating facility shut-downs, liquidating or remarketing commercial and industrial assets of others; conducting plant audits for others; energy auditing services for others
FILING BASISSection 1(b)
FILING BASISSection 44(d)
        FOREIGN APPLICATION NUMBER2257366
        FOREIGN APPLICATION COUNTRY NAMEGB
        FOREIGN FILING DATE01/08/2001
FILING BASISSection 44(e)
        FOREIGN REGISTRATION NUMBER2257366
        FOREIGN REGISTRATION COUNTRY NAMEGB
        FOREIGN REGISTRATION DATE06/04/2004
        FOREIGN EXPIRATION DATE01/08/2011
GOODS AND/OR SERVICES SECTION (1st class)(proposed)
INTERNATIONAL CLASS035
DESCRIPTION
management consulting services for others; commercial and industrial asset management services namely, facilities management of commercial and public works for others, coordinating facility shut-downs, liquidating or remarketing commercial and industrial assets of others; conducting plant audits for others; energy auditing services for others; procuring and managing engineering and construction services for others; procuring contracts with utilities
FILING BASISSection 1(b)
FILING BASISSection 44(d)
        FOREIGN APPLICATION NUMBER2257366
        FOREIGN APPLICATION COUNTRY NAMEOther
        FOREIGN FILING DATE01/08/2001
FILING BASISSection 44(e)
        FOREIGN REGISTRATION NUMBER2257366
        FOREIGN REGISTRATION COUNTRY NAMEUnited Kingdom
        FOREIGN REGISTRATION DATE06/04/2004
        FOREIGN EXPIRATION DATE01/08/2011
GOODS AND/OR SERVICES SECTION (2nd class)(no change)
GOODS AND/OR SERVICES SECTION (3rd class)(current)
INTERNATIONAL CLASS037
DESCRIPTION
Project management and consultancy services for others relating to construction of commercial and public works, namely commercial buildings, stadiums, telecommunication towers, hydro-electric plants, harbors, marinas, piers, dams, locks, bridges, roads, streets and highways; construction supervision and management namely, supervising production design, site safety and safety management, procuring and managing engineering and construction services for others; real estate and land development services, namely, planning of commercial and public works for others, namely commercial buildings, stadiums, telecommunication towers, hydro-electric plants, harbors, marinas, piers, dams, locks, bridges, roads, streets and highways and scheduling construction of such commercial and public works; laying out of commercial and public works, namely, selecting sites, estimating costs, procuring contracts with untilities, planning and managing development site traffic; design of building electrical systems for others; heating and plumbing contractor services, namely, piping systems design and layout, heating ventilating and air conditioning systems design
FILING BASISSection 1(b)
FILING BASISSection 44(e)
GOODS AND/OR SERVICES SECTION (3rd class)(proposed)
INTERNATIONAL CLASS037
DESCRIPTION
Project management and consultancy services for others relating to construction of commercial and public works, namely commercial buildings, stadiums, telecommunication towers, hydro-electric plants, harbors, marinas, piers, dams, locks, bridges, roads, streets and highways; construction supervision and management namely, supervising production design, site safety and safety management; real estate and land development services, namely, planning of commercial and public works for others, namely commercial buildings, stadiums, telecommunication towers, hydro-electric plants, harbors, marinas, piers, dams, locks, bridges, roads, streets and highways and scheduling construction of such commercial and public works; laying out of commercial and public works, namely, selecting sites, estimating costs, planning and managing development site traffic; heating and plumbing contractor services, namely, piping systems design and layout, heating ventilating and air conditioning systems design
FILING BASISSection 1(b)
FILING BASISSection 44(e)
GOODS AND/OR SERVICES SECTION (4th class)(no change)
GOODS AND/OR SERVICES SECTION (5th class)(current)
INTERNATIONAL CLASS042
DESCRIPTION
Architectural design services for others; interior design services for others; engineering services for others, namely, civil engineering, fire engineering, hydrotechnical engineering, water resources engineering, thermal engineering, geotechnical engineering, and environmental engineering; conducting engineering surveys, namely fire engineering surveys, energy surveys and flare surveys; design of software engineering and IT systems for others; environmental assessments, namely conducting environmental impact studies and reviewing standards and practices to assure compliance with environmental laws and regulations; conducting building condition surveys for others; conducting environmental inspections of commercial and public works for others
FILING BASISSection 1(b)
FILING BASISSection 44(e)
GOODS AND/OR SERVICES SECTION (5th class)(proposed)
INTERNATIONAL CLASS042
DESCRIPTION
Architectural design services for others; interior design services for others; engineering services for others, namely, civil engineering, fire engineering, hydrotechnical engineering, water resources engineering, thermal engineering, geotechnical engineering, and environmental engineering; conducting engineering surveys, namely fire engineering surveys, energy surveys and flare surveys; design of software engineering and IT systems for others; environmental assessments, namely conducting environmental impact studies and reviewing standards and practices to assure compliance with environmental laws and regulations; conducting building condition surveys for others; conducting environmental inspections of commercial and public works for others; design of building electrical systems for others
FILING BASISSection 1(b)
FILING BASISSection 44(e)
SIGNATURE SECTION
RESPONSE SIGNATURE /William D. Jackson/
SIGNATORY NAME William D. Jackson
SIGNATORY POSITION Attorney for Applicant
SIGNATURE DATE 10/03/2005
FILING INFORMATION SECTION
SUBMIT DATE Mon Oct 03 11:22:09 EDT 2005
TEAS STAMP USPTO/OA-XXXXXXX-20051003
112209611107-76280018-200
1c8ac39ae1f7738d7f6017302
48f6e-N-N-200510031115497
34584



PTO Form 1957 (Rev 8/2005)
OMB Control #0651-0050 (Exp. 04/30/2006)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 76280018 is amended as follows:    
        
Classification and Listing of Goods/Services
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 035 for management consulting services for others; commercial and industrial asset management services namely, facilities management of commercial and public works for others, coordinating facility shut-downs, liquidating or remarketing commercial and industrial assets of others; conducting plant audits for others; energy auditing services for others
Original Filing Basis: 1(b); 44d; and/or 44(e).
Proposed: Class 035 for management consulting services for others; commercial and industrial asset management services namely, facilities management of commercial and public works for others, coordinating facility shut-downs, liquidating or remarketing commercial and industrial assets of others; conducting plant audits for others; energy auditing services for others; procuring and managing engineering and construction services for others; procuring contracts with utilities
Section 44(d) Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Other application number 2257366 filed 01/08/2001]. 15 U.S.C.Section 1126(d), as amended.
        
Section 44(e) Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ United Kingdom registration number 2257366 registered 06/04/2004 with a renewal date of __________ and an expiration date of 01/08/2011 ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 037 for Project management and consultancy services for others relating to construction of commercial and public works, namely commercial buildings, stadiums, telecommunication towers, hydro-electric plants, harbors, marinas, piers, dams, locks, bridges, roads, streets and highways; construction supervision and management namely, supervising production design, site safety and safety management, procuring and managing engineering and construction services for others; real estate and land development services, namely, planning of commercial and public works for others, namely commercial buildings, stadiums, telecommunication towers, hydro-electric plants, harbors, marinas, piers, dams, locks, bridges, roads, streets and highways and scheduling construction of such commercial and public works; laying out of commercial and public works, namely, selecting sites, estimating costs, procuring contracts with untilities, planning and managing development site traffic; design of building electrical systems for others; heating and plumbing contractor services, namely, piping systems design and layout, heating ventilating and air conditioning systems design
Original Filing Basis: 1(b); and/or 44(e).
Proposed: Class 037 for Project management and consultancy services for others relating to construction of commercial and public works, namely commercial buildings, stadiums, telecommunication towers, hydro-electric plants, harbors, marinas, piers, dams, locks, bridges, roads, streets and highways; construction supervision and management namely, supervising production design, site safety and safety management; real estate and land development services, namely, planning of commercial and public works for others, namely commercial buildings, stadiums, telecommunication towers, hydro-electric plants, harbors, marinas, piers, dams, locks, bridges, roads, streets and highways and scheduling construction of such commercial and public works; laying out of commercial and public works, namely, selecting sites, estimating costs, planning and managing development site traffic; heating and plumbing contractor services, namely, piping systems design and layout, heating ventilating and air conditioning systems design
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 042 for Architectural design services for others; interior design services for others; engineering services for others, namely, civil engineering, fire engineering, hydrotechnical engineering, water resources engineering, thermal engineering, geotechnical engineering, and environmental engineering; conducting engineering surveys, namely fire engineering surveys, energy surveys and flare surveys; design of software engineering and IT systems for others; environmental assessments, namely conducting environmental impact studies and reviewing standards and practices to assure compliance with environmental laws and regulations; conducting building condition surveys for others; conducting environmental inspections of commercial and public works for others
Original Filing Basis: 1(b); and/or 44(e).
Proposed: Class 042 for Architectural design services for others; interior design services for others; engineering services for others, namely, civil engineering, fire engineering, hydrotechnical engineering, water resources engineering, thermal engineering, geotechnical engineering, and environmental engineering; conducting engineering surveys, namely fire engineering surveys, energy surveys and flare surveys; design of software engineering and IT systems for others; environmental assessments, namely conducting environmental impact studies and reviewing standards and practices to assure compliance with environmental laws and regulations; conducting building condition surveys for others; conducting environmental inspections of commercial and public works for others; design of building electrical systems for others
        
Response Signature
        
Signature: /William D. Jackson/     Date: 10/03/2005
Signatory's Name: William D. Jackson
Signatory's Position: Attorney for Applicant
        
        
        
Serial Number: 76280018
Internet Transmission Date: Mon Oct 03 11:22:09 EDT 2005
TEAS Stamp: USPTO/OA-XXXXXXX-20051003112209611107-76
280018-2001c8ac39ae1f7738d7f601730248f6e
-N-N-20051003111549734584