Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77142901 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

 

Dear Ms. Levine:

 

Re:  United States Trademark Application No. 77/142901 (PROPAK & Design)

Reference is made to the Office Action dated December 11, 2008.

In regards to the objections raised to the identification of services, the application has been amended to transfer the services of "procurement of modules for oil and gas plants; oil and gas plant project management, scheduling and planning" to International Class 035, as per the examining attorney's recommendations.

With respect to the services described as "advanced flow engineering cost development and project economics for oil and gas plants" and "evaluating economic performance of oil and gas plants", it is respectfully submitted that such services are engineering services and are properly listed under International Class 042.  Said services are engineering services pertaining to the analysis and reduction of operating costs of oil and gas plants and it is noted that the Trademark ID Manual lists "engineering services in the field of reducing operating costs.." as falling within International Class 042 (see Attachment #1, items 29, 37 and 38).  As such, it is submitted that these services do not fall within International Class 036 and that payment of an additional class fee is not warranted.

In the alternative, if the Examining Attorney is of the view that "advanced flow engineering cost development and project economics for oil and gas plants" and "evaluating economic performance of oil and gas plants", are business services which more properly fall within International Class 035 (see Attachment #1, item 8 - which lists "value engineering, namely, cost analysis" as within Class 035), then the Applicant would be prepared to move said services to International Class 035.

Finally, with respect to the request for clarification of the term "debottlenecking", it is submitted that this is a term commonly used in the trade to describe the process which seeks to alleviate or eliminate "bottlenecks" in manufacturing production.  We attach a printout from the Google search engine (Attachment #2) which, with over 81,000 "hits", demonstrates that the term "debottlenecking" is commonly used by others, as well as printouts from Wikipedia (Attachment #3) and from a webpage located at www.intelligen.com (Attachment #4) which, respectively, provide a definition of "bottleneck (logistics)" and describe "debottlenecking theory".  Finally, we enclose printouts of US Trademark Registration Nos. 3050945 and 2619467 wherein the term "debottlenecking" appears in the description of services in International Class 042 (See Attachment #5 and #6).

Respectfully submitted,

Christopher T. Dejardin

 

 

 

 

 

 

 

 

 

EVIDENCE

Original PDF file:
evi_642617519-142248837_._Attachment_1.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_642617519-142248837_._Attachment_2.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_642617519-142248837_._Attachment_3.pdf
Converted PDF file(s) (1 page)
Evidence-1
Original PDF file:
evi_642617519-142248837_._Attachment_4.pdf
Converted PDF file(s) (7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Original PDF file:
evi_642617519-142248837_._Attachment_5.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_642617519-142248837_._Attachment_6.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Professional engineering services in the oil and gas industry, namely, oil and gas plant process development and studies, advanced flow engineering cost development and project economics for oil and gas plants, evaluating economic performance of oil and gas plants, preparation of oil and gas process plant bid packages, detailed process and equipment design for oil and gas plants, trouble shooting and debottlenecking services for oil and gas plants, redesign and retrofit services for oil and gas plants, design and procurement of modules for oil and gas plants, oil and gas plant project management, scheduling and planning
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

Filing Basis: 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 [Canada application number 1321789 filed 10/26/2006]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Professional engineering services in the oil and gas industry, namely, oil and gas plant process development and studies, advanced flow engineering cost development and project economics for oil and gas plants, evaluating economic performance of oil and gas plants, preparation of oil and gas process plant bid packages, detailed process and equipment design for oil and gas plants, trouble shooting and debottlenecking services for oil and gas plants, redesign and retrofit services for oil and gas plants, design and procurement of modules for oil and gas plants, oil and gas plant project management, scheduling and planning; Professional engineering services in the oil and gas industry, namely, oil and gas plant process development and studies, advanced flow engineering cost development and project economics for oil and gas plants, evaluating economic performance of oil and gas plants, preparation of oil and gas process plant bid packages, detailed process and equipment design for oil and gas plants, trouble shooting and debottlenecking services for oil and gas plants, redesign and retrofit services for oil and gas plants, design of modules for oil and gas plantsClass 042 for Professional engineering services in the oil and gas industry, namely, oil and gas plant process development and studies, advanced flow engineering cost development and project economics for oil and gas plants, evaluating economic performance of oil and gas plants, preparation of oil and gas process plant bid packages, detailed process and equipment design for oil and gas plants, trouble shooting and debottlenecking services for oil and gas plants, redesign and retrofit services for oil and gas plants, design of modules for oil and gas plants
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

Filing Basis: 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 [Canada application number 1321789 filed 10/26/2006]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: 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 [ Canada registration number TMA704374 registered 01/10/2008 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

Applicant hereby adds the following class of goods/services to the application:
New: Class 035 for Procurement of modules for oil and gas plants; oil and gas plant project management, scheduling and planning
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

Filing Basis: 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 [Canada application number 1321789 filed 10/26/2006]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: 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 [Canada registration number TMA704374 registered 01/10/2008 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

FEE(S)
Fee(s) in the amount of $325 is being submitted.

SIGNATURE(S)
Declaration Signature
If the 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. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(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.

Signature: /ctd/      Date: 03/30/2009
Signatory's Name: Christopher T. Dejardin
Signatory's Position: Authorized Canadian Agent

Response Signature
Signature: /ctd/     Date: 03/30/2009
Signatory's Name: Christopher T. Dejardin
Signatory's Position: Authorized Canadian Agent

The signatory has confirmed that he/she is a Canadian attorney/agent who has been granted reciprocal recognition under 37 C.F.R. §11.14(c) by the USPTO's Office of Enrollment and Discipline to represent Canadian applicants before the USPTO; and he/she is currently the applicant's Canadian attorney/agent, or an associate thereof; and that to the best of his/her knowledge, if prior to his/her appointment another Canadian attorney/agent or a U.S. attorney 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 Canadian attorney/agent or U.S. attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
RAM Sale Number: 11914
RAM Accounting Date: 03/30/2009
        
Serial Number: 77142901
Internet Transmission Date: Mon Mar 30 14:36:36 EDT 2009
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20090330143636665
435-77142901-430f95064fc7c43428688212fa7
54da712b-CC-11914-20090330142248837287