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. 88379132 QP BEST (Stylized and/or with Design, see http://uspto.report/TM/88379132/mark.png) has been amended as follows:

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

This is in response to the Office Action dated June 20, 2019 in which the Examining Attorney requested that Applicant agree to disclaim the exclusive right to use the word "Best" apart from the mark as shown.  Applicant respectfully declines the disclaimer request and advises the Examining Attorney that the word "Best" in the subject mark is an acronym for "BeSafer Together" and does not consist of the term "Best" used in its ordinary meaning.  As such, Applicant believes that no disclaimer of the mark should be required.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 040 for Development of health and safety procedures and processes in the field of oil and gas
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: Development of health and safety procedures and processes in the field of oil and gas; Technical consulting in the field of oil and gas processing in the nature of development of health and safety technical procedures and processesClass 040 for Technical consulting in the field of oil and gas processing in the nature of development of health and safety technical procedures and processes
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Scientific, technological and research services relating to health and safety procedures and processes in the field of oil and gas
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: Scientific, technological and research services relating to health and safety procedures and processes in the field of oil and gas; Scientific, technological and research services relating to research and design in the field of health and safety procedures and processes in the field of oil and gasClass 042 for Scientific, technological and research services relating to research and design in the field of health and safety procedures and processes in the field of oil and gas
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 045 for Information services relating to health and safety procedures and processes in the field of oil and gas; consultancy services relating to health and safety procedures and processes in the field of oil and gas; advisory services relating to health and safety procedures and processes in the field of oil and gas
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: Information services relating to health and safety procedures and processes in the field of oil and gas; Information services relating to designing and implementing safety procedures and processes in the field of oil and gas; consultancy services relating to health and safety procedures and processes in the field of oil and gas; consultancy services relating to designing and implementing safety procedures and processes in the field of oil and gas; advisory services relating to health and safety procedures and processes in the field of oil and gas; advisory services relating to designing and implementing safety procedures and processes in the field of oil and gasClass 045 for Information services relating to designing and implementing safety procedures and processes in the field of oil and gas; consultancy services relating to designing and implementing safety procedures and processes in the field of oil and gas; advisory services relating to designing and implementing safety procedures and processes in the field of oil and gas
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.

The applicant's current attorney information: Julia Anne Matheson. Julia Anne Matheson of HOGAN LOVELLS US LLP, is located at

      555 13TH STREET, NW
      WASHINGTON, District of Columbia 20004
      US
The docket/reference number is 1V0627.0000.

The phone number is 202-637-5600.

The fax number is 202-637-5910.

The email address is DCPTOTrademarkMail@hoganlovells.com

The applicants proposed attorney information: Julia Anne Matheson. Other appointed attorneys are Anna Kurian Shaw, Celine J. Crowson, Timothy J. Lyden, Valerie Brennan, Lauren C. Chamblee, Katherine Bastian, Lauren B. Cury, Brendan Quinn. Julia Anne Matheson of HOGAN LOVELLS US 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

      555 13TH STREET, NW
      WASHINGTON, District of Columbia 20004
      United States
The docket/reference number is 1V0627.0000.

The phone number is 202-637-5600.

The fax number is 202-637-5910.

The email address is DCPTOTrademarkMail@hoganlovells.com

Julia Anne Matheson 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.
The applicant's current correspondence information: JULIA ANNE MATHESON. JULIA ANNE MATHESON of HOGAN LOVELLS US LLP, is located at

      555 13TH STREET, NW
      WASHINGTON, District of Columbia 20004
      US
The docket/reference number is 1V0627.0000.

The phone number is 202-637-5600.

The fax number is 202-637-5910.

The email address is DCPTOTrademarkMail@hoganlovells.com; julia.matheson@hoganlovells.com; HLDCTMGroup@hoganlovells.com; dctmfiling@hoganlovells.com; cheryl.fountain@hoganlovells.com

The applicants proposed correspondence information: Julia Anne Matheson. Julia Anne Matheson of HOGAN LOVELLS US LLP, is located at

      555 13TH STREET, NW
      WASHINGTON, District of Columbia 20004
      United States
The docket/reference number is 1V0627.0000.

The phone number is 202-637-5600.

The fax number is 202-637-5910.

The email address is DCPTOTrademarkMail@hoganlovells.com; HLDCTMGroup@hoganlovells.com; dctmfiling@hoganlovells.com; julia.matheson@hoganlovells.com

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: /Edoardo Disetti/      Date: 08/20/2019
Signatory's Name: /Edoardo Angelo Disetti/
Signatory's Position: /Senior Counsel/
Signatory's Phone Number: 202-637-5600


Response Signature
Signature: /Julia Anne Matheson/     Date: 08/20/2019
Signatory's Name: Julia Anne Matheson
Signatory's Position: Attorney of Record, DC Bar

Signatory's Phone Number: 202-637-5600

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:    JULIA ANNE MATHESON
   HOGAN LOVELLS US LLP
   
   555 13TH STREET, NW
   WASHINGTON, District of Columbia 20004
Mailing Address:    Julia Anne Matheson
   HOGAN LOVELLS US LLP
   555 13TH STREET, NW
   WASHINGTON, District of Columbia 20004
        
Serial Number: 88379132
Internet Transmission Date: Tue Aug 20 09:44:16 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201908200944167
47226-88379132-610fd2a75c73982c1c169aa28
be39b3e88296579fc781a594782479f4707cdd-N
/A-N/A-20190819082909968365