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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88041369 S (Stylized and/or with Design, see http://uspto.report/TM/88041369/mark.png) has been amended as follows:

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

RESPONSE TO OFFICE ACTION
(37 C.F.R. § 2.62)

The following amendment and remarks are being submitted in response to the Office Action on the above application sent November 6, 2018 (the “Office Action”).

Amendment

Please amend the identification of the goods and services to read as follows:

Remanufactured electric motors for machines, pumps and industrial equipment (International Class 007);

Electric transformers; electrical switchgear, namely electrical equipment that regulates the flow of electricity within an electrical system (International Class 009);

Repair and maintenance services in the field of electric transformers, electrical switchgear, electric motors and related electrical equipment (International Class 037);

Manufacturing services for others in the field of electric transformers, electrical switchgear, electric motors and related electrical equipment; remanufacturing services for others in the field of electric motors (International Class 040).

Arc flash studies, namely, testing, analysis and evaluation of electric substations, electric transformers, electrical switchgear and related electrical equipment to determine conformity with certification standards; testing analysis, and evaluation of electrical substations, electric transformers, electrical switchgear and related electrical equipment to determine conformity with certification standards (International Class 042).

Remarks

The Office Action has been carefully reviewed.  Reconsideration of this application in view of the above amendments to the identification of goods and services and these remarks is respectfully requested.  These remarks are submitted in substantially the same order as the Examining Attorney’s corresponding comments in the Office Action.

Search Results

The trademark examining attorney stated that he has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  

 

Identification of the Goods/Services Indefinite

The Examining Attorney next stated the identification of goods/services is indefinite and must be clarified.  The Examining Attorney also suggested an identification of goods or services for each class.

Class 9; New Class 7

With respect to Class 9, the Examining Attorney first stated that the wording “electrical switchgear” is unacceptable as indefinite. Applicant must clarify the nature of the goods (e.g. electrical switchgear, namely, voltage boosting devices for electric power lines).  The Examining Attorney also suggested a corresponding identification.

Unfortunately, the Examining Attorney’s suggested identification is not accurate.  The term “electrical switchgear” is a known term meaning switching equipment used in the transmission of electricity; more specifically, electrical equipment that regulates the flow of electricity within an electrical system.  For example, in an electrical power system, switchgear is the combination of electrical switches, fuses and/or circuit breakers used to control, protect and/or isolate electrical equipment. 

Accordingly, instead of the Examining Attorney’s suggested identification, Applicant has listed the goods in Class 9 as “electric transformers; electrical switchgear, namely electrical equipment that regulates the flow of electricity within an electrical system.”

With respect to Class 9, the Examining Attorney also stated that the wording “remanufactured electric motors” is unacceptable as indefinite and misclassified, and that Applicant must clarify the nature of the goods by specifying the type of motor and classify accordingly (e.g. remanufactured electric motors for machines, in Class 7; remanufactured electric motors for land vehicles, in Class 12).

As to Class 7, Applicant has adopted the Examining Attorney’s suggested identification, namely remanufactured electric motors for machines; however, in order to make this identification more accurate and complete, pumps and industrial equipment have been added thereto.  Class 7 was not a part of the original application.  Accordingly, the filing fee for an additional class in submitted herewith.  Also submitted is a Declaration of Howard Eaton, Vice President of Engineering, of Applicant, in which Mr. Eaton verifies that the mark was used anywhere and in commerce in connection with the goods in Class 7 at least as early as December 31, 1975, and that the attached specimen for Class 7 was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.

Class 37

With respect to Class 37, the Examining Attorney stated that the class is acceptable as written.  Accordingly, the identification for Class 7 has not been amended.

Class 40

With respect to Class 40, the Examining Attorney stated that the wording “manufacturing services in the field of electric transformers, electrical switchgear, electric motors and related electrical equipment; remanufacturing of electric motors” is unacceptable as indefinite, and that Applicant must specify that the services are provided for others (e.g. manufacturing services for others in the field of electric transformers, electrical switchgear, electric motors and related electrical equipment; remanufacturing services for others in the field of electric motors).  The Examining Attorney suggested a corresponding identification.

Applicant has adopted the Examining Attorney’s suggested identification.

Class 42

With respect to Class 42, the Examining Attorney stated that the wording “certification and recertification of electric substations, electric transformers, electrical switchgear and related electrical equipment to confirm conformity with certification standards” is unacceptable as indefinite; specifically, “certification” is not a service in any international class and, therefore, Applicant must clarify the nature of the services (e.g. testing, analysis, and evaluation of electric substations, electric transformers, electrical switchgear and related electrical equipment to determine conformity with certification standards).  The Examining Attorney suggested a corresponding identification.

Applicant has adopted the Examining Attorney’s suggested identification.

Conclusion

In view of the above amendments and remarks, it is submitted that this application is now in condition for publication, and such action is respectfully requested.

This is intended to be a complete response to the Office Action mailed November 6, 2018.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for electric transformers; electrical switchgear; remanufactured electric motors
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 12/31/1975 and first used in commerce at least as early as 12/31/1975 , and is now in use in such commerce.

Proposed:
Tracked Text Description: electric transformers; electrical switchgear; electrical switchgear, namely electrical equipment that regulates the flow of electricity within an electrical system; remanufactured electric motorsClass 009 for electric transformers; electrical switchgear, namely electrical equipment that regulates the flow of electricity within an electrical system
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 12/31/1975 and first used in commerce at least as early as 12/31/1975 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 040 for manufacturing services in the field of electric transformers, electrical switchgear, electric motors and related electrical equipment; remanufacturing of electric motors
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 12/31/1975 and first used in commerce at least as early as 12/31/1975 , and is now in use in such commerce.

Proposed:
Tracked Text Description: manufacturing services in the field of electric transformers, electrical switchgear, electric motors and related electrical equipment; manufacturing services for others in the field of electric transformers, electrical switchgear, electric motors and related electrical equipment; remanufacturing of electric motors; remanufacturing services for others in the field of electric motorsClass 040 for manufacturing services for others in the field of electric transformers, electrical switchgear, electric motors and related electrical equipment; remanufacturing services for others in the field of electric motors
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 12/31/1975 and first used in commerce at least as early as 12/31/1975 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for arc flash studies, namely, testing, analysis and evaluation of electric substations, electric transformers, electrical switchgear and related electrical equipment to determine conformity with certification standards; certification and recertification of electric substations, electric transformers, electrical switchgear and related electrical equipment to confirm conformity with certification standards
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 12/31/1975 and first used in commerce at least as early as 12/31/1975 , and is now in use in such commerce.

Proposed:
Tracked Text Description: arc flash studies, namely, testing, analysis and evaluation of electric substations, electric transformers, electrical switchgear and related electrical equipment to determine conformity with certification standards; certification and recertification of electric substations, electric transformers, electrical switchgear and related electrical equipment to confirm conformity with certification standards; testing analysis, and evaluation of electrical substations, electric transformers, electrical switchgear and related electrical equipment to determine conformity with certification standardsClass 042 for arc flash studies, namely, testing, analysis and evaluation of electric substations, electric transformers, electrical switchgear and related electrical equipment to determine conformity with certification standards; testing analysis, and evaluation of electrical substations, electric transformers, electrical switchgear and related electrical equipment to determine conformity with certification standards
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 12/31/1975 and first used in commerce at least as early as 12/31/1975 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 007 for remanufactured electric motors for machines, pumps and industrial equipment
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 12/31/1975 and first used in commerce at least as early as 12/31/1975 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 007 . The specimen(s) submitted consists of a portion of applicant's website advertising the services .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPN0-66210203196-20190503144613887287_._Class__7_Specimen.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_66210203196-144613887_._88041369_dec_signed.pdf
Converted PDF file(s) (2 pages)
Signature File1
Signature File2
Signatory's Name: Howard Eaton
Signatory's Position: Vice President of Engineering

Response Signature
Signature: /CCD,III/     Date: 05/03/2019
Signatory's Name: Clifford C. Dougherty, III
Signatory's Position: Attorney of record, Oklahoma bar member

Signatory's Phone Number: 405-552-2302

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.

        
RAM Sale Number: 88041369
RAM Accounting Date: 05/06/2019
        
Serial Number: 88041369
Internet Transmission Date: Fri May 03 15:27:18 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201905031527181
69499-88041369-6209e3746c79cb7071e86e22d
77fc936258ef5a832ddfb88ebeff6db9a3644720
-DA-2094-20190503144613887287