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 11/30/2023)

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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 11/30/2023)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90085504 ENCOMPASS(Standard Characters, see http://uspto.report/TM/90085504/mark.png) has been amended as follows:

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

See the the attachments in the Evidence section for the arguments and supporting evidence. In addition, regarding the proposed changes to the identification of goods, the only modification not accepted was "an" before antennae as the products may include one or more antennae.

EVIDENCE
Evidence has been attached: Arguments and Exhibit A to the arguments.
Original PDF file:
evi_681361175-20201229153 710091006_._Response_to_O ffice_Action__ENCOMPASS_.pdf
Converted PDF file(s) ( 13 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13
Original PDF file:
evi_681361175-20201229153 710091006_._EXHIBIT_A.pdf
Converted PDF file(s) ( 26 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-26

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Control, navigation, positioning and communication equipment relating to water applications systems, namely, irrigation systems, and consisting of valves, a control panel, control board, and antenna, all in relation to the monitoring, operation, and control of irrigation equipment; electrical control panels and control boards for use with irrigation systems
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: Control, navigation, positioning and communication equipment relating to water applications systems, namely, irrigation systems, and consisting of valves, a control panel, control board, and antenna, all in relation to the monitoring, operation, and control of irrigation equipment; Control, navigation, positioning and communication equipment relating to water applications systems, namely, irrigation systems consisting of automatic valves, a control panel, a control board, and an antenna or antennae for monitoring, operating, and controling irrigation equipment; electrical control panels and control boards for use with irrigation systemsClass 009 for Control, navigation, positioning and communication equipment relating to water applications systems, namely, irrigation systems consisting of automatic valves, a control panel, a control board, and an antenna or antennae for monitoring, operating, and controling irrigation equipment; electrical control panels and control boards for use with irrigation systems
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.
Correspondence Information (current):
      CLINT D. CADWALLADER
      PRIMARY EMAIL FOR CORRESPONDENCE: trademark@mcgrathnorth.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ccadwallader@mcgrathnorth.com
Correspondence Information (proposed):
      Clint D. Cadwallader
      PRIMARY EMAIL FOR CORRESPONDENCE: trademark@mcgrathnorth.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ccadwallader@mcgrathnorth.com

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: /Clint D. Cadwallader/     Date: 12/29/2020
Signatory's Name: Clint D. Cadwallader
Signatory's Position: Attorney of record

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:    CLINT D. CADWALLADER
   MCGRATH NORTH MULLIN & KRATZ, PC LLO
   
   1601 DODGE ST, SUITE 3700
   OMAHA, Nebraska 68102
Mailing Address:    Clint D. Cadwallader
   MCGRATH NORTH MULLIN & KRATZ, PC LLO
   1601 DODGE ST, SUITE 3700
   OMAHA, Nebraska 68102
        
Serial Number: 90085504
Internet Transmission Date: Tue Dec 29 15:47:43 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20201229154743280
994-90085504-7504d8dec12726d27a0b041b5fa
fd351b2dc321642e42935ec6e44d1ba027cfba-N
/A-N/A-20201229153710091006