UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

THIS IS A FINAL ACTION.

 

FINAL PRIORITY ACTION

 

The following confirms the telephone conversation between the trademark examining attorney and Sunisha S. Choksi, Esq. several times, including on September 20, 2007.  The trademark examining attorney has reviewed applicant's response filed on August 31, 2007.  As discussed, the following requirements are maintained and made FINAL.  37 C.F.R. §2.64.  If applicant amends the application to comply with the requirements listed below within two months of the above mailing date, the trademark examining attorney will give priority handling to the amended application.  The six-month deadline for filing a response specified above, or, in the alternative, for filing an appeal to the Trademark Trial and Appeal Board, remains in effect.  37 C.F.R. §2.64(a).

 

The following requirements are now made FINAL: (1) an amended identification of goods; (2) amended color claim and location statement.  37 C.F.R. §2.64(a).

 

Identification of Goods

 

The wording “Oilfield drilling tools, namely, casing sidetrack systems for well drilling comprising a combination packer and whipstock tool assembly” in the identification of goods needs clarification because more specificity is needed about the nature of the goods for identification and classification.  TMEP §1402.01.  Hand operated tools are in International Class 8, whereas applicant’s goods are in International Class 7 if they are hydraulic, powered, etc.

 

Applicant may adopt the following identification of goods, if accurate: 

 

“Oilfield drilling power tools, namely, casing sidetrack systems for well drilling comprising a combination packer and whipstock tool,” in International Class 7. 

 

TMEP §1402.01.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Color Claim and Location Statement

 

As the original color claim and location statement included only orange but the drawing also included black and white, applicant was advised in the first Office action that the color claim and location statement must be amended to correspond with the drawing.  Applicant must submit a complete color claim and color description of the mark that reference all the colors appearing in the drawing of the mark.  37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(ii). 

 

Applicant must submit both a color claim and color location statement using the following format: 

 

(1)    Color claim:  “The colors black, white, orange and blue are claimed as a feature of the mark”; and

(2)    Color location statement:  “The mark consists of the wording “ITS EASY” and “TRAK” in black, an orange oval between this wording with the wording “ITS” in white, and a blue band on the outer edge of the orange oval.”

 

Advisory: Amending the Drawing

 

Applicant may overcome the requirement for a corrected color claim and location statement by (1) deleting the color claim and location statement; and (2) submitting a black and white drawing.

 

Please note that amendments or changes to the applied-for mark in a substitute drawing will not be accepted if the changes would materially alter the mark.  37 C.F.R. §2.72; TMEP §807.14.

 

To submit a special-form drawing electronically via the Trademark Electronic Application System (TEAS), applicant must attach a digitized image of the mark to the communication.  The requirements for an electronically submitted special-form drawing are as follows:

 

• The digitized image must be in JPG format, formatted at no less than 300 dots per inch and no more than 350 dots per inch. 

 

• The Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels. 

 

• The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

 

• All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high-quality image when copied. 

 

37 C.F.R. §§2.52(b) and 2.53(c); TMEP §§807.04 et seq and 807.05(c). 

 

Proper Response to Final Action

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

 

/RJPovarchuk/

Rebecca J. Povarchuk

Trademark Examining Attorney

Law Office 115

Tel: (571) 270-1529

Fax: (571) 270-2529

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm.  If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification.  Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.