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. 88072236 COORDINATED RESPONSE & EXCAVATOR EXERCISE(Standard Characters, see http://uspto.report/TM/88072236/mark.png) has been amended as follows:

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

RESPONSE TO OFFICE ACTION

This is in response to the Office Action dated November 28, 2018.

AMENDMENT TO ALLEGE USE

On May 28, 2019, Applicant filed its Amendment to Allege Use covering all of the services in Class 41 listed in the application.  A copy of the filing receipt is attached. 

DESCRIPTIVENESS REFUSAL - AMENDMENT TO SUPPLEMENTAL REGISTER

The Examining Attorney has refused to allow Applicant’s mark for registration on the Principal Register, asserting that the applied-for mark merely describes a feature or characteristic of applicant’s services.  Applicant therefore requests amendment to the Supplemental Register and enters the following statement on the record:

Please delete the reference to “PRINCIPAL REGISTER” in this application and substitute therefore “SUPPLEMENTAL REGISTER”.

AMENDMENT TO THE IDENTIFICATION OF SERVICES

Please amend the identification of services currently of record for Class 41, as follows:

“Educational services, namely, providing classes, seminars, workshops and instructional exercises in the fields of pipeline safety, hazards, prevention measures, and emergency protocols; Training services in the field of pipeline emergencies and pre-planning emergency response” in International Class 41.

DISCLAIMER REQUIREMENT

Please enter the following disclaimer:

            No claim is made to the exclusive right to use “EXERCISE” apart from the mark as shown.

REMARKS

Accordingly, in view of the above, it is believed that this application is now in condition for being approved for publication and such favorable action is requested when this case is next reached for attention. If any questions remain, the Examining Attorney is invited to contact the undersigned at (913) 647-9050 to resolve the same. It is believed that no fees are due in connection with this application. If any such fees are deemed necessary, the undersigned authorizes that they be charged to Deposit Account No. 19-0522.

Respectfully submitted,

Cheryl L. Burbach

Hovey Williams LLP

Attorneys for Applicant

EVIDENCE
Evidence in the nature of a copy of the filing receipt for the Amendment to Allege Use filed this date has been attached.
Original PDF file:
evi_2322816629-20190528164246704000_._1307013_1.PDF
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Educational services, namely, providing classes, seminars, workshops and exercises in the fields of pipeline safety, hazards, prevention measures, and emergency protocols; Training services in the field of pipeline emergencies and pre-planning emergency response
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: Educational services, namely, providing classes, seminars, workshops and exercises in the fields of pipeline safety, hazards, prevention measures, and emergency protocols; Educational services, namely, providing classes, seminars, workshops and instructional exercises in the fields of pipeline safety, hazards, prevention measures, and emergency protocols; Training services in the field of pipeline emergencies and pre-planning emergency responseClass 041 for Educational services, namely, providing classes, seminars, workshops and instructional exercises in the fields of pipeline safety, hazards, prevention measures, and emergency protocols; Training services in the field of pipeline emergencies and pre-planning emergency response
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.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "EXERCISE" apart from the mark as shown.


Supplemental Register
The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register'). NOTE: The applicant has separately filed an Allegation of Use, to change the basis of this application from Section 1(b), intent-to-use, to Section 1(a), use in commerce.


SIGNATURE(S)
Response Signature
Signature: /Cheryl L. Burbach/     Date: 05/28/2019
Signatory's Name: Cheryl L. Burbach
Signatory's Position: Attorney of Record, Missouri and Kansas bar member

Signatory's Phone Number: 9136479050

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.

        
Serial Number: 88072236
Internet Transmission Date: Tue May 28 16:50:36 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019052816503645
0572-88072236-6202216e6fedef75f9513139a3
589d7eaf5ffb85e9a415ba4d71bc47ae1469d0-N
/A-N/A-20190528164246704000