Response to Office Action

RESPONSE TO OFFICE ACTION AND AMENDMENT

            In two Office Actions dated March 8, 2005, the Examining Attorney rejected Applicant's actual use application on the basis of:  (i) prior pending applications - likelihood of confusion; (ii) indefinite identification of goods and services; (iii) combined classes; (iv) drawing - standard character and (v) disclaimer of "technology."  Applicant hereby responds to the same and amends the application in an effort to comply with the Examining Attorney's objections.

1.  PRIOR PENDING APPLICATIONS - LIKELIHOOD OF CONFUSION

            The Examining Attorney has refused registration of Applicant's mark based on likelihood of confusion with pending applications under Serial Nos. 78400507 for "ENTECH" and 78400514 for "ENTECH ENVIRONMENTAL."   Applicant responds as follows.

            With regard to the prior application under Serial No. 78400514, Applicant submits that, to the best of its knowledge, the prior application has been deemed abandoned for failure to respond to an office action.  Specifically, the prior applicant filed its applications through counsel, but counsel withdrew based on the prior applicant's failure to communicate with counsel and failure to pay counsel.  Prior applicant was advised of deadlines and obligations to respond to the then-pending office actions.  Prior applicant failed to respond.  The prior application under Serial No. 78400514 was deemed abandoned.  As a result, Applicant submits that the prior pending application under Serial No. 78400507 will not mature to registration and should no longer be deemed to bar registration of Applicant's mark on the basis of a Section 2(d) likelihood of confusion.

            Curiously, the other prior pending application under Serial No. 78400507, which was filed by the same applicant (and involves the same California company), was assigned to a separate Examining Attorney who apparently overlooked the nature of the prior applicant's abandonment.  As stated above, the Examining Attorney assigned to 78400514 considered the failure to respond to an office action an abandonment, and to the best of our knowledge the prior applicant has not revived the application.  The second Examining Attorney, however, unilaterally amended the application under Serial No. 78400507, without apparent contact or communication with prior applicant, and this second application is now proceeding to publication.  It does not appear from the records of the Patent and Trademark Office that prior Applicant has done anything to advance or prosecute its applications, and the same should be considered abandoned.  Applicant herein will oppose registration of the prior application under Serial No. 78400507 for the reason that the application should have been considered abandoned, as was the similar, related application under Serial No. 78400514.

            In light of these circumstances, these prior applications should not be considered a bar to registration of the mark herein.  Certainly, at the very least, the instant Application should be suspended for a sufficient period of time to clear up the confusion regarding the appropriate treatment of the prior applications and resolve the intended opposition. 

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            The remaining sections below address the informalities or substantive issues raised by the Examining Attorney.

2.  AMENDMENT:  IDENTIFICATION OF GOODS AND SERVICES

Applicant requests the following amendment to the identification of services:

Underground storage tank services, namely, the removal of underground storage tanks and leaking underground storage tanks; and underground storage tank compliance management, in International Class 37;

Soil and groundwater remediation services, namely, subsurface characterization; material treatment services, namely, decontamination, treatment and removal of hazardous waste and materials; environmental remediation services, namely, soil, waste and/or water treatment services; hazardous waste storage tank management; wastewater; sludge and storm water management services; hazardous waste management services; waste management and disposal, in International Class 40;

Environmental consulting and remediation services, namely, environmental site characterizations and assessments, soil and groundwater remediation services, water and wastewater treatment services, detection of contaminants in water, technical supervision and inspection services in the field of underground storage tanks, including tank registration, permitting documents and compliance reporting; accessing state cleanup funds; reviewing standards and practices of others to assure compliance with environmental laws and regulations; preparing Phase I Environmental Site Assessment reports, in International Class 42;

Pursuant to the above amendment, please note that the USPTO is authorized to charge Gallagher & Kennedy's Deposit Account No. 070135 in the amount of $750.00 to cover the filing fees for International Classes 037 and 042.  The USPTO is also authorized to charge the same Deposit Account for any additional fess not covered by this amount in connection with this Application.

3.  AMENDMENT:  COMBINED CLASSES AND SPECIMENS AND DECLARATION OF FIRST USE DATES

Applicant submits the enclosed specimens for International Classes 37 and 42 and a Declaration of  First Use as to the date of first use for the enclosed specimens.

4.  AMENDMENT:  REVISED DRAWING PAGE

            The mark is presented in standard character format without claim to any particular font style, size, or color.

5.  AMENDMENT:  DISCLAIMER

No claim is made to the exclusive right to use "technology" apart from the mark as shown.

In view of the foregoing, Applicant submits that its Application is in condition for allowance, and requests that it be promptly passed for publication.