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. 88156442 CIS (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8815644 2/large) has been amended as follows:

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

Please see the full arguments and accompanying exhibits attached to the "Evidence" section herein.

EVIDENCE
Evidence has been attached: PDF of full arguments and accompanying exhibits.
Original PDF file:
evi_2096440130-2020021716 4720972478_._gn_Response_ to_Second_Office_Action__ LOC__17FEB2020-35315424.pdf
Converted PDF file(s) ( 24 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16Evidence-17Evidence-18Evidence-19Evidence-20Evidence-21Evidence-22Evidence-23Evidence-24
Original PDF file:
evi_1-2096440130-20200217 164720972478_._CIS___Desi gn_Exhibit_A-35315217.pdf
Converted PDF file(s) ( 23 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16Evidence-17Evidence-18Evidence-19Evidence-20Evidence-21Evidence-22Evidence-23
Original PDF file:
evi_1-2096440130-20200217 164720972478_._CIS___Desi gn_Exhibit_B-35315228.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2
Original PDF file:
evi_1-2096440130-20200217 164720972478_._CIS___Desi gn_Exhibit_C-35315243.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3
Original PDF file:
evi_1-2096440130-20200217 164720972478_._CIS___Desi gn_Exhibits_C1-C10-334224 43.pdf
Converted PDF file(s) ( 39 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16Evidence-17Evidence-18Evidence-19Evidence-20Evidence-21Evidence-22Evidence-23Evidence-24Evidence-25Evidence-26Evidence-27Evidence-28Evidence-29Evidence-30Evidence-31Evidence-32Evidence-33Evidence-34Evidence-35Evidence-36Evidence-37Evidence-38Evidence-39
Original PDF file:
evi_3-2096440130-20200217 164720972478_._CIS___Desi gn_Exhibit_D-35315249.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3
Original PDF file:
evi_3-2096440130-20200217 164720972478_._CIS___Desi gn_Exhibit_E-35315263.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3
Original PDF file:
evi_3-2096440130-20200217 164720972478_._CIS___Desi gn_Exhibit_F-35315291.pdf
Converted PDF file(s) ( 61 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16Evidence-17Evidence-18Evidence-19Evidence-20Evidence-21Evidence-22Evidence-23Evidence-24Evidence-25Evidence-26Evidence-27Evidence-28Evidence-29Evidence-30Evidence-31Evidence-32Evidence-33Evidence-34Evidence-35Evidence-36Evidence-37Evidence-38Evidence-39Evidence-40Evidence-41Evidence-42Evidence-43Evidence-44Evidence-45Evidence-46Evidence-47Evidence-48Evidence-49Evidence-50Evidence-51Evidence-52Evidence-53Evidence-54Evidence-55Evidence-56Evidence-57Evidence-58Evidence-59Evidence-60Evidence-61
Original PDF file:
evi_2-2096440130-20200217 164720972478_._CIS___Desi gn_Exhibit_G1-G5-35315331.pdf
Converted PDF file(s) ( 28 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16Evidence-17Evidence-18Evidence-19Evidence-20Evidence-21Evidence-22Evidence-23Evidence-24Evidence-25Evidence-26Evidence-27Evidence-28

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 035 for project management services for others for business purposes in the fields of energy and power production and transmission; project management services for others for business purposes in the field of pipeline, power plant, and refinery construction; payroll administration and management services

Applicant hereby deletes the following class of goods/services from the application.
Class 037 for consulting services in the field of offshore oil and gas facility construction; technical consulting related to the installation of oil and gas equipment, control systems, and machinery; construction management; construction management in the field of construction of pipelines, geothermal energy-based power plants, and buildings; inspection services in the course of construction, installation, maintenance and repair of pipelines, geothermal energy-based power plants, and buildings; construction project management services; construction project management services in the field of pipelines, refineries, and power plants; maintenance of pipelines, refineries, and power plants; construction project management services in the field of construction of oil and gas facilities, renewable energy and energy generation equipment support structures, and ancillary structures for supporting meteorological data gathering equipment; consulting services in the field of construction of oil and gas facilities, wind-energy facilities, pipelines, oil pipelines, and geothermal energy-based power plants; pipeline maintenance consultation; plant and pipeline construction, maintenance and construction project management services for businesses in the energy production and transmission sector; consulting services for the construction of power plants, including natural gas power plants, and other municipal infrastructure facilities; construction consultation services regarding the construction of pipelines for the transmission of fuel energy, including oil, liquid and natural gas fuel energy

Applicant hereby deletes the following class of goods/services from the application.
Class 045 for safety inspection services for energy and power production and transmission facilities; inspection of oil tanks for safety purposes; inspection of pressure vessels used to store liquids and gases within the delivery and/or transport of such liquids and gases for safety purposes; inspection of oil and gas pipelines for safety purposes

Applicant proposes to amend the following:

Current:
Class 042 for pipeline inspection services; telecommunications engineering consultancy; computer technology consultancy in the field of telecommunications; technological planning and consulting services in the field of renewable energy resources; consulting services in the field of industrial engineering as it relates to the oil and natural gas industry and municipal utility entities; technical consultation in the field of oil and natural gas power plant engineering, namely, testing and evaluation of power plant equipment to improve performance and efficiency of such equipment; consulting services in the field of design and development of engineering processes for the oil and natural gas industry and for municipal utility entities; monitoring inspections of surveying services performed for others in the oil and natural gas pipeline construction industry, including the monitoring of land surveying services regarding boundaries, rights-of-ways and easements, land surveying services performed via three-dimensional imaging, topographic surveying services, and engineering surveying services regarding pipeline construction routes all for quality control purposes; monitoring governmental permitting services performed for others in the oil and natural gas pipeline construction industry for quality control purposes; monitoring inspections of manufactured industrial pipeline components, and the testing, analysis and evaluation services related thereto to assure compliance with construction industry standards regarding destructive and nondestructive testing all for quality control purposes; testing, analysis, and evaluation of the services performed by nondestructive material testing providers and quality control inspectors to determine conformity with certification standards; monitoring inspections of manufactured concrete and pavement for product quality control purposes; quality control of regulatory compliance consulting services for the oil and gas industry via developing fitness-for-service evaluations related thereto; oil and gas pipeline inspection services for corrosion detection and prevention; inspection of electrical wiring, electrical lighting, and electric installations for the remote control of industrial operations of others to assure compliance with construction industry standards for quality control purposes; environmental testing and inspection services; quality evaluation for others in the field of maintenance, repair, and installation of gas and oil installations to assure compliance with oil and gas industry standards; inspection of coatings to ensure compliance with construction industry standards for quality control purposes; inspection of machinery and riggings used in the oil and gas industry for quality control purposes; monitoring inspections of metallurgical material testing services of others for quality control purposes; monitoring inspections of non-destructive infrared thermography services for the power, petroleum and petrochemical industries for quality control purposes; inspection of pipelines of others for the oil and gas industry for quality control purposes and pipeline testing related thereto via nondestructive means; testing of power plant equipment via nondestructive means utilizing ultrasonic testers to improve the performance and efficiency of such equipment and for functionality purposes, and technical consultation related thereto in the field of power plant engineering; inspection of oil tanks for quality control purposes; inspection of pressure vessels used to store liquids and gases within the delivery and/or transport of such liquids and gases for quality control purposes; providing quality assurance services in the field of pipeline construction for the oil and gas industry; testing, analysis and evaluation of the welding services of others to determine conformity with certification standards
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/31/2011 and first used in commerce at least as early as 12/31/2011 , and is now in use in such commerce.


Proposed:

Tracked Text Description: pipeline inspection services; telecommunications engineering consultancy; computer technology consultancy in the field of telecommunications; technological planning and consulting services in the field of renewable energy resources; consulting services in the field of industrial engineering as it relates to the oil and natural gas industry and municipal utility entities; technical consultation in the field of oil and natural gas power plant engineering, namely, testing and evaluation of power plant equipment to improve performance and efficiency of such equipment; consulting services in the field of design and development of engineering processes for the oil and natural gas industry and for municipal utility entities; monitoring inspections of surveying services performed for others in the oil and natural gas pipeline construction industry, including the monitoring of land surveying services regarding boundaries, rights-of-ways and easements, land surveying services performed via three-dimensional imaging, topographic surveying services, and engineering surveying services regarding pipeline construction routes all for quality control purposes; monitoring governmental permitting services performed for others in the oil and natural gas pipeline construction industry for quality control purposes; monitoring inspections of manufactured industrial pipeline components, and the testing, analysis and evaluation services related thereto to assure compliance with construction industry standards regarding destructive and nondestructive testing all for quality control purposes; testing, analysis, and evaluation of the services performed by nondestructive material testing providers and quality control inspectors to determine conformity with certification standards; monitoring inspections of manufactured concrete and pavement for product quality control purposes; quality control of regulatory compliance consulting services for the oil and gas industry via developing fitness-for-service evaluations related thereto; oil and gas pipeline inspection services for corrosion detection and prevention; inspection of electrical wiring, electrical lighting, and electric installations for the remote control of industrial operations of others to assure compliance with construction industry standards for quality control purposes; environmental testing and inspection services; quality evaluation for others in the field of maintenance, repair, and installation of gas and oil installations to assure compliance with oil and gas industry standards; inspection of coatings to ensure compliance with construction industry standards for quality control purposes; inspection of machinery and riggings used in the oil and gas industry for quality control purposes; monitoring inspections of metallurgical material testing services of others for quality control purposes; monitoring inspections of non-destructive infrared thermography services for the power, petroleum and petrochemical industries for quality control purposes; inspection of pipelines of others for the oil and gas industry for quality control purposes and pipeline testing related thereto via nondestructive means; testing of power plant equipment via nondestructive means utilizing ultrasonic testers to improve the performance and efficiency of such equipment and for functionality purposes, and technical consultation related thereto in the field of power plant engineering; inspection of oil tanks for quality control purposes; inspection of pressure vessels used to store liquids and gases within the delivery and/or transport of such liquids and gases for quality control purposes; providing quality assurance services in the field of pipeline construction for the oil and gas industry; testing, analysis and evaluation of the welding services of others to determine conformity with certification standardsClass 042 for pipeline inspection services
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/31/2011 and first used in commerce at least as early as 12/31/2011 , and is now in use in such commerce.
The owner's/holder's current attorney information: Courtney Jackson. Courtney Jackson of ARMSTRONG TEASDALE LLP, is located at

      7700 FORSYTH BLVD., SUITE 1800
      ST. LOUIS, Missouri 63105
      United States
The docket/reference number is 38135-TBD.
      The phone number is 314-621-5070.
      The fax number is 314-621-5065.
      The email address is iptm@armstrongteasdale.com

The owner's/holder's proposed attorney information: Courtney Jackson. Other appointed attorneys are Donna F. Schmitt, Abby Zeller, Matthew J. Gearin, Edward F. Behm, Jr.. Courtney Jackson of Armstrong Teasdale LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      7700 FORSYTH BLVD., SUITE 1800
      Saint Louis, Missouri 63105
      United States
The docket/reference number is 38135-5.
      The phone number is 314-621-5070.
      The fax number is 314-621-5065.
      The email address is iptm@armstrongteasdale.com

Courtney Jackson submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      COURTNEY JACKSON
      PRIMARY EMAIL FOR CORRESPONDENCE: iptm@armstrongteasdale.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 38135-TBD.
Correspondence Information (proposed):
      Courtney Jackson
      PRIMARY EMAIL FOR CORRESPONDENCE: iptm@armstrongteasdale.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 38135-5.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Courtney Jackson/     Date: 02/17/2020
Signatory's Name: Courtney Jackson
Signatory's Position: Attorney of Record, Missouri Bar Member

Signatory's Phone Number: 3146215070

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    COURTNEY JACKSON
   ARMSTRONG TEASDALE LLP
   
   7700 FORSYTH BLVD., SUITE 1800
   ST. LOUIS, Missouri 63105
Mailing Address:    Courtney Jackson
   Armstrong Teasdale LLP
   7700 FORSYTH BLVD., SUITE 1800
   Saint Louis, Missouri 63105
        
Serial Number: 88156442
Internet Transmission Date: Mon Feb 17 17:32:46 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2020021717324632
8603-88156442-710c51acc3cc6a2bd735a94acc
7bf4fded8fb228a6661f12ca4e09882164127fa9
-N/A-N/A-20200217164720972478