Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86651533 MJ (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/86651533/large) has been amended as follows:

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

 

AMENDMENTS

 

Please amend the identifications of the Classes 35, 37 and 42 services to read as follows:

 

Class 35: Value engineering, namely, cost and schedule analysis, time and impact analysis, and peer review services, all provided for business purposes.

 

Class 37: Construction, inspection and construction management services, all provided in the course of the construction, repair and rehabilitation of tunnels, underground structures and utilities, shafts, dams, fisheries, pipelines, penstocks, power generating facilities, spillways and waterways.

 

Class 42: Civil, geotechnical, environmental, mining, mechanical, electrical and hydraulic engineering services and project management services for the foregoing; design of tunnels, underground structures and utilities, shafts, dams, fisheries, spillways and waterways; quality assurance services in the fields of engineering and construction; quality verification services, namely, providing quality control for others. 

 

 

REMARKS

 

This is a Response to the Office Action e-mailed September 16, 2015.

 

The identifications of services for Classes 35, 37 and 42 have been amended pursuant to the Examining Attorney’s requests, and in accordance with the guidelines and requirements of TMEP §1402.01 (October 2015).  There is no change to the identification of the Class 45 services as it was previously accepted by the Examining Attorney.  Applicant believes all the identifications of services are now acceptable.

As required by Trademark Rule 2.34(a)(2), Applicant submits as Exhibit 1 Applicant’s  Declaration in support of its application. 

Applicant respectfully requests the application, as amended, be approved for publication in all four classes.

 

EVIDENCE
Evidence in the nature of Exhibit 1 Applicant's Declaration in support of its application has been attached.
Original PDF file:
evi_174781494-20160216142440251198_._Ex._1-86651533.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Value engineering, cost and schedule analysis, quality verification, time and impact analysis, peer review; quality assurance
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Value engineering, cost and schedule analysis, quality verification, time and impact analysis, peer review; Value engineering, namely, cost and schedule analysis, time and impact analysis, and peer review services, all provided for business purposes; quality assuranceClass 035 for Value engineering, namely, cost and schedule analysis, time and impact analysis, and peer review services, all provided for business purposes
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Construction, inspection, construction management, engineering services in connection with the construction, repair and rehabilitation of tunnels, underground structures and utilities, shafts, damns, fisheries, pipelines, penstocks, power generating facilities, spillways and waterways
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Construction, inspection, construction management, engineering services in connection with the construction, repair and rehabilitation of tunnels, underground structures and utilities, shafts, damns, fisheries, pipelines, penstocks, power generating facilities, spillways and waterways; Construction, inspection and construction management services, all provided in the course of the construction, repair and rehabilitation of tunnels, underground structures and utilities, shafts, dams, fisheries, pipelines, penstocks, power generating facilities, spillways and waterwaysClass 037 for Construction, inspection and construction management services, all provided in the course of the construction, repair and rehabilitation of tunnels, underground structures and utilities, shafts, dams, fisheries, pipelines, penstocks, power generating facilities, spillways and waterways
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Civil, geotechnical, environmental, mining mechanical, electrical and hydraulic engineering and program management services; design of tunnels, underground structures and utilities, shafts, damns, fisheries, spillways and waterways
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Civil, geotechnical, environmental, mining mechanical, electrical and hydraulic engineering and program management services; Civil, geotechnical, environmental, mining, mechanical, electrical and hydraulic engineering services and project management services for the foregoing; design of tunnels, underground structures and utilities, shafts, damns, fisheries, spillways and waterways; design of tunnels, underground structures and utilities, shafts, dams, fisheries, spillways and waterways; quality assurance services in the fields of engineering and construction; quality verification services, namely, providing quality control for othersClass 042 for Civil, geotechnical, environmental, mining, mechanical, electrical and hydraulic engineering services and project management services for the foregoing; design of tunnels, underground structures and utilities, shafts, dams, fisheries, spillways and waterways; quality assurance services in the fields of engineering and construction; quality verification services, namely, providing quality control for others
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
ROBERTA S. BREN
Oblon McClelland Maier and Neustadt L L P
1940 Duke St
Alexandria
Virginia
US
22314-3451

Proposed:
ROBERTA S. BREN of MUNCY, GEISSLER, OLDS & LOWE, P.C., having an address of
Suite 310 4000 Legato Road Fairfax, Virginia 22033
United States
mailroom@mg-ip.com;rsb@mg-ip.com
703-621-7140 ext. 148
703-621-7155
The docket/reference number is MJA.00001.T .



SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_174781494-142440251_._13061821-ver1-Signed_2.20_Declaration.PDF
Converted PDF file(s) (2 pages)
Signature File1
Signature File2
Signatory's Name: Daniel N. Adams
Signatory's Position: President

Response Signature
Signature: /Roberta S. Bren/sr/     Date: 02/16/2016
Signatory's Name: Roberta S. Bren
Signatory's Position: Attorney of Record, VA Bar Member

Signatory's Phone Number: 703-621-7140 ext. 148

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    ROBERTA S. BREN
   MUNCY, GEISSLER, OLDS & LOWE, P.C.
   Suite 310
   4000 Legato Road
   Fairfax, Virginia 22033
        
Serial Number: 86651533
Internet Transmission Date: Tue Feb 16 14:52:54 EST 2016
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.X-20160216145254690
982-86651533-550925fc9a7d0ba67b77d1e83b0
b7fc343d3a49997dc0c30755b9fc804da4d6-N/A
-N/A-20160216142440251198