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. 88135205 JACOBS(Standard Characters, see http://uspto.report/TM/88135205/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Consulting in the field of business process improvement and enterprise architecture; business project management; supply chain management; procurement, namely, researching, finding, negotiating terms, and purchasing goods and services for others; market research and business intelligence; business data analysis; conducting economic feasibility studies; business risk management; outsource service provider in the field of business operation and management of buildings, infrastructure, and industrial facilities
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 00/00/1947 and first used in commerce at least as early as 00/00/1947 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Consulting in the field of business process improvement and enterprise architecture; Consulting in the field of business process improvement and enterprise architecture design; business project management; supply chain management; procurement, namely, researching, finding, negotiating terms, and purchasing goods and services for others; negotiation of business contracts for others; market research and business intelligence; business data analysis; conducting economic feasibility studies; business risk management; outsource service provider in the field of business operation and management of buildings, infrastructure, and industrial facilities; outsource service provider in the field of business management of industrial facilitiesClass 035 for Consulting in the field of business process improvement and enterprise architecture design; business project management; supply chain management; negotiation of business contracts for others; market research and business intelligence; business data analysis; conducting economic feasibility studies; business risk management; outsource service provider in the field of business management of industrial facilities
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 00/00/1947 and first used in commerce at least as early as 00/00/1947 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Architectural design; interior design; construction of buildings, infrastructure, and industrial facilities; inspection, maintenance, repair and renovation of buildings, infrastructure, and industrial facilities; decommission and demolition of buildings, infrastructure and industrial facilities; construction project management; consulting in the field of construction; consulting in the field of oil, gas, petroleum and mining exploration and extraction; installation, maintenance and repair of computer hardware
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 00/00/1947 and first used in commerce at least as early as 00/00/1947 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Architectural design; Construction of buildings, municipal and commercial infrastructure facilities, and industrial facilities; interior design; inspection of buildings in the course of construction; construction of buildings, infrastructure, and industrial facilities; maintenance, repair and renovation of buildings, municipal and commercial infrastructure facilities, and industrial facilities; inspection, maintenance, repair and renovation of buildings, infrastructure, and industrial facilities; decommission and demolition of buildings, municipal and commercial infrastructure facilities and industrial facilities; decommission and demolition of buildings, infrastructure and industrial facilities; construction project management; consulting in the field of construction; consulting services in the field of mining extraction; consulting in the field of oil, gas, petroleum and mining exploration and extraction; installation, maintenance and repair of computer hardwareClass 037 for Construction of buildings, municipal and commercial infrastructure facilities, and industrial facilities; inspection of buildings in the course of construction; maintenance, repair and renovation of buildings, municipal and commercial infrastructure facilities, and industrial facilities; decommission and demolition of buildings, municipal and commercial infrastructure facilities and industrial facilities; construction project management; consulting in the field of construction; consulting services in the field of mining extraction; installation, maintenance and repair of computer hardware
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 00/00/1947 and first used in commerce at least as early as 00/00/1947 , 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 Engineering; chemical engineering; civil engineering; electrical engineering; mechanical engineering; environmental engineering; hydraulic engineering; wastewater engineering; petroleum engineering; aerospace engineering; nuclear engineering; manufacturing engineering; design engineering; process engineering; structural engineering; energy engineering; automotive engineering; engineering project management; consulting in the field of engineering and architecture; conducting engineering feasibility studies; conducting scientific feasibility studies; scientific research; environmental testing and inspection; planning, design, management, and support for information technology and computer network systems; electronic data storage; design and development of electronic data security systems; consulting in the field of datacenter architecture, cloud computing solutions, and evaluation and implementation of internet technology and services; research, testing and evaluation of weapons, flight and space exploration systems
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 00/00/1947 and first used in commerce at least as early as 00/00/1947 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Architectural design; interior design; Engineering; chemical engineering; civil engineering; electrical engineering; mechanical engineering; environmental engineering; hydraulic engineering; wastewater engineering; petroleum engineering; aerospace engineering; nuclear engineering; process engineering; manufacturing engineering; design engineering; structural engineering; energy engineering; automotive engineering; engineering project management; consulting in the field of engineering and architecture; conducting engineering feasibility studies; conducting scientific feasibility studies; scientific research; planning, design, management, and support for information technology and computer network systems; environmental testing and inspection; planning, design, management, and technical support for information technology and computer network systems; electronic data storage; consulting in the field of datacenter architecture, cloud computing solutions, and evaluation and implementation of internet technology and services; design and development of electronic data security systems; technical consulting in the field of datacenter architecture, private and public cloud computing solutions, and evaluation and implementation of internet technology and services; research, testing and evaluation of weapons, flight and space exploration systems; consulting services in the field of mining explorationClass 042 for Architectural design; interior design; Engineering; chemical engineering; civil engineering; electrical engineering; mechanical engineering; environmental engineering; hydraulic engineering; wastewater engineering; petroleum engineering; aerospace engineering; nuclear engineering; manufacturing engineering; design engineering; structural engineering; energy engineering; automotive engineering; engineering project management; consulting in the field of engineering and architecture; conducting engineering feasibility studies; conducting scientific feasibility studies; scientific research; environmental testing and inspection; planning, design, management, and technical support for information technology and computer network systems; electronic data storage; design and development of electronic data security systems; technical consulting in the field of datacenter architecture, private and public cloud computing solutions, and evaluation and implementation of internet technology and services; research, testing and evaluation of weapons, flight and space exploration systems; consulting services in the field of mining exploration
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 00/00/1947 and first used in commerce at least as early as 00/00/1947 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 036 for Outsource service provider in the field of management of buildings for others
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 00/00/1947 and first used in commerce at least as early as 00/00/1947 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 036 . The specimen(s) submitted consists of website screenshot showing the mark as used in connection with the sale and/or advertising of 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:
SPN0-38142163218-20190314142357239033_._JACOBS_Specimen_IC_36.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, based on Active Prior Registration(s)
The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 3675466 and 1908817


SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.


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

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, 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 filing date of the application or AOU; 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Carrie Etherton/      Date: 03/21/2019
Signatory's Name: Carrie Etherton
Signatory's Position: Senior Counsel, Corporate & Securities
Signatory's Phone Number: xxxxxxxx


Response Signature
Signature: /jah10267/     Date: 03/21/2019
Signatory's Name: Jacob A. Holt
Signatory's Position: Attorney of record, Colorado bar member

Signatory's Phone Number: 303-629-3413

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: 88135205
RAM Accounting Date: 03/22/2019
        
Serial Number: 88135205
Internet Transmission Date: Thu Mar 21 19:37:52 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201903211937529
32713-88135205-6206933fad8c18037a9c694a5
82aca892cfd9a5be63827a97ebe570c6ac28a537
-CC-6121-20190320175152032628