The Office Action rejects the specimens submitted for class 016 as not being goods in
trade. Specifically, the Office Action contends that the specimens for class 016 are business
forms that are used in conjunction with the Applicant’s own construction services, and not sold
or offered as commodities.

Before substantively responding, the Applicant notes that there is a discrepancy between
the content of the Office Action and the TARR system. Specifically, while the office action
states that the rejection of the specimens is final, the TARR system does not identify the office
action as final. Consequently, the Applicant could not prepare a Request for Reconsideration
after Final Refusal, or submit a Notice of Appeal. The Applicant has therefore submitted the
form that the TEAS system would permit, that is, a response to a non-final action.

The Applicant respectfully disagrees with the assessment in the office action that the
specimens for class 016 are not goods in trade, and respectfully requests the withdrawal of this
rejection. The Applicant offers the following in response to this rejection, and also submits the
declaration of Mr. Steven Gray, corporate counsel for the Applicant Zachry Industrial Inc.

The Applicant respectfully submits that a specimen need not be “sold or offered as
commodities” as contended by the Office Action. Rather, a specimen is valid if it is “transported
in commerce for use by others.” MPEP § 1202.06. As noted in the previous response, the
specimen comprises a digital image of a frame or an outline for drawings and plans for an
industrial plant.1 The Applicant respectfully submits that this specimen is transported in
commerce for use by others. Specifically, when the Applicant contracts with a customer to
construct, revamp, and/or service a customer’s plant or other facility, the Applicant generates
plans and drawings related to that project. Thereafter, the Applicant provides these plans to the
customer, and the Applicant and the customer use these plans in connection with and throughout
the project. (See Decl. of Mr. Gray, ¶ 4) Therefore, these plans are used by others, and as such,
are goods in trade and are valid specimens.

The Applicant makes two further points about the specimens. First, a copy of the
specimens are normally provided to and left in the possession of the customer for the customer’s
use. The cost of such drawings or plans are included in the cost of the project to the customer
(See Decl. of Mr. Gray, ¶ 4 ). Second, the submitted specimen is admittedly a blank form.
However, the content of such drawings and plans are highly confidential, and neither the
Applicant nor its customers are at liberty to disclose the contents of such drawings and plans.
(See Decl. of Mr. Gray, ¶ 5). The Applicant therefore relies on the blank form that was
1
The identification of the goods in class 016 includes printed material sold together as a unit for use in connection
with construction projects, namely, drawings, plans, industrial plant specifications, and operations manuals,
maintenance manuals, and user manuals.
submitted to the U.S. Trademark Office on August 21, 2011, and the declaration of Mr. Gray
indicating that these templates are used to generate drawings and plans, and that these drawings
and plans are provided to customers.

For the above reasons, the Applicant respectfully submits that the specimen submitted in
connection with class 016 are transported in commerce for use by others, and respectfully
requests the withdrawal of the refusal to accept this specimen.