UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

PRIORITY 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: 7/9/2009

 

 

OFFICE SEARCH:  The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 704.02. 

 

The following issues were discussed in communication with Regina M. Corrigan on July 9, 2009.

 

Identification – Class 37 Only

 

The identification is unacceptable because it includes exploration services, which are in Class 42.  Applicant’s attorney has stated her intention to add Class 42 to the application.  See TMEP §1402.01.  Applicant may adopt the following identification, if accurate:  EXTRACTION OF PETROLEUM, NATURAL GAS AND RELATED HYDROCARBONS, AND ALL OTHER GASES AND SUBSTANCES, WHETHER LIQUID OR SOLID AND WHETHER HYDROCARBONS OR NOT THAT ARE PRODUCED IN ASSOCIATION WITH THE PETROLEUM, NATURAL GAS AND RELATED HYDROCARBONS AND ARE CONTAINED IN AN OIL AND GAS RESERVOIR  in International Class 37 and/or EXPLORATION FOR PETROLEUM, NATURAL GAS AND RELATED HYDROCARBONS, AND ALL OTHER GASES AND SUBSTANCES, WHETHER LIQUID OR SOLID AND WHETHER HYDROCARBONS OR NOT THAT ARE PRODUCED IN ASSOCIATION WITH THE PETROLEUM, NATURAL GAS AND RELATED HYDROCARBONS AND ARE CONTAINED IN AN OIL AND GAS RESERVOIR  in International Class 42.

 

For assistance with identifying 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.  See TMEP §1402.04.   Applicants who do not find desirable wording for its goods and services in the Manual may wish to craft their own amendment(s) to the identification.  In so doing, applicant should use wording similar to the identification of registrations that are less than a year old.  In the alternative, applicant may wish to submit the desired identification to the following electronic mail box for potential approval:   IDSUGGEST@USPTO.GOV.    Applicants are typically notified within a week as to the approval or disapproval of the suggested identification.

 

Proper classification of goods and services is a purely administrative matter within the sole discretion of the United States Patent and Trademark Office.  In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969).

 

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

 

Multiple Class Applications

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on a foreign registration under Section 44(e):

 

(1)        Applicant must list the goods and/or services by international class; and

 

(2)        Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

 

 

Response Guidelines

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

Any arguments regarding the content of this Office action should be made in writing, as those discussions should be kept of record.

 

 

 

 

USPTO

/T. Whittaker-Brown/

Examining Attorney, LO 111

U.S. Patent & Trademark Office

Phone: 571-272-9397

Fax: 571-273-9111 Formal Responses Only

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 7/9/2009 FOR

APPLICATION SERIAL NO. 77148215

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77148215&doc_type=PAT&mail_date=20090709 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 7/9/2009.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.