To: | Encompass Services, LLC (iptm@armstrongteasdale.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88171205 - ENCOMPASS - 38135-TBD |
Sent: | 2/5/2019 3:07:41 PM |
Sent As: | ECOM115@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88171205
MARK: ENCOMPASS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Encompass Services, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 2/5/2019
SEARCH OF OFFICE’S DATABASE OF MARKS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
CLASSIFICATION AND IDENTIFICATION OF SERVICES
Applicant must clarify some of the wording in the identification of services because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The wording is indefinite because it does not make clear the exact nature of the services. Further, the following services appear to be misclassified: “title searching, route reconnaissance and selection, plat development, right of entry, and right of way.” If applicant add a new class, then applicant must comply with the Multiple-Class Application Requirements set forth in this Office action.
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows the
changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of the identification of goods and/or services
which should be removed, it will be shown with a line through it such as this: strikethrough. When making
its amendments, applicant should enter them in standard font, not in bold, in italics, underlined and/or in ALL CAPS.
International Class 036: Land acquisition services, namely,
title searching, route reconnaissance and selection, plat development, right of entry, and right of way; project
management services for others, namely, managing land acquisition projects
International Class 037: Pipeline maintenance and construction; pipeline installation and repair; construction, installation, repair, and maintenance of geothermal energy based power plants; building construction; building construction services; construction project management services; construction project management services in the fields 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 oil and gas facility construction and wind energy facility construction, oil pipeline construction, pipeline construction and maintenance, and plant construction; maintenance and construction project management services for businesses in the energy production and transmission sector
International Class 042: Engineering services, namely, design for others in the field of energy
and power production and transmission, renewable energy, telecommunication, oil, liquids, and natural gas, and city and municipal utilities; engineering services, namely, design for others in the
field of engineering; technical writing for others, and industrial design for others; consulting services in the field of energy and power production and transmission, renewable energy,
telecommunication, oil, liquids, and natural gas, and city and municipal utilities; surveying services, namely, cadastral land surveying surveys and control surveying, topographic surveying, route engineering surveying, and construction surveying surveys, three-dimensional imageing surveying surveys, land boundary surveying surveys, rights-of-way
and easement surveys in the nature of land surveying, right of entry being land surveying, right of
way being land surveying, global positioning surveying surveys, as-built surveys being
design surveying, construction staking surveying surveys, route reconnaissance and selection surveying, plat development surveying, and permit drawing services being drafting of plans and engineering drawings for others; engineering services, namely,
civil engineering services, infrastructure engineering services, structural engineering services, environmental engineering services, and consultation in connection therewith; mapping services;
marine, aerial, and land surveying
International Class 045: Title searching
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). Specifically, the application identifies services based on use in commerce that are classified in at least four classes; however, applicant submitted fees sufficient for only three classes. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for classes 036, 037, and 042; and applicant needs a specimen for class 045. See more information about specimens.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen 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.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
ASSISTANCE
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Sahar Nasserghodsi/
Sahar Nasserghodsi
Examining Attorney
Law Office 115
(571)272-9192
Sahar.Nasserghodsi@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.