Response to Office Action

PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

---

PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 76385790 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

In response to the Office Action of February 13, 2006, in which the specimens previously submitted with Applicant’s Statement of Use for Class 37 have been found to be unacceptable as failing to show use of the mark for the Class 37 services, the Applicant respectfully submits that the specimens of record are sufficient.  The Applicant respectfully requests reconsideration.

Specifically, the specimens of record represent selected pages taken from the Applicant’s catalogue of products and services.  For Class 37, the cover and contents pages of the catalogue showing the appearance of the Applicant’s mark were submitted, together with a selected page from within the catalogue (specifically, Class 37 specimen page 4) (sp_037d.jpg) the text of which describes the Applicant’s services as including “erection at site and plant commissioning.”  The Applicant respectfully submits that this textual reference clearly concerns the Class 37 services of “erection of the aforesaid machines and plants…” and therefore, constitutes a satisfactory Class 37 specimen.

For sake of completeness, the applicant is also submitting herewith an additional page from the very same catalog, on which the page is titled “Synthetic Fiber Plants…Neumag – the company” and in text states that the Applicant provides “complete turnkey plants” and “turnkey plants and processes, including:…total plant installation… .”  A second specimen page, also from the same catalogue and entitled “MAC Turnkey Systems – Modular Assembly Concept (for NPT)” further explains in text that the turnkey plant systems provided include “supervision of erection and startup by a specially trained Neumag supervisor.”  A third specimen page also from the same catalogue and entitled, “Services – General Services” includes in text a subheading “Plant Installation” which describes the Applicant’s equipment erection services.

Since the additional specimen pages submitted herewith are taken from the identical catalogue as all of the specimens already submitted of record for Class 37, as well as service classes 40 and 42, it is submitted that it should be unnecessary that a further verification  be submitted by the Applicant.

Favorable reconsideration and passage of this application to registration are respectfully requested.

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 037 for Installation, namely, erection of the aforesaid machines and plants composed of such machines, maintenance and repair of the aforesaid machines and plants composed of such machines, namely, spinning machinery and staple fiber plants
Original Filing Basis: 1(b); and/or 44(e).
Proposed: Class 037 for Installation, namely, erection of the aforesaid machines and plants composed of such machines, maintenance and repair of the aforesaid machines and plants composed of such machines, namely, spinning machinery and staple fiber plants
New/Additional 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 10/19/1989 and first used in commerce at least as early as 10/19/1989, and is now in use in such commerce.
Applicant hereby submits a specimen for Class 037.
The specimen(s) submitted consists of digital photographic images of pages from Applicant's catalogue advertising and promoting the services identified by the mark.

For an application based on 1(b), Intent-to-Use, "The substitute specimen(s) was in use in commerce prior to expiration of the filing deadline for filing a Statement of Use (SOU)."
Specimen-1
Specimen-2
Specimen-3
Specimen-4
Specimen-5


Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature

Signature: /Karl S. Sawyer, Jr./     Date: 03/02/2006
Signatory's Name: Karl S. Sawyer, Jr.
Signatory's Position: Attorney for Applicant
        
Serial Number: 76385790
Internet Transmission Date: Thu Mar 02 11:07:52 EST 2006
TEAS Stamp: USPTO/ROA-XXX.XX.XX.X-200603021107528748
54-76385790-320b737d0ccbfc44ab19884fbdd5
929b7-N/A-N/A-20060302093613400736