| To: | Smith International, Inc. (patentservices@smith.com) |
| Subject: | TRADEMARK APPLICATION NO. 77158843 - SMITH - N/A |
| Sent: | 8/1/2007 2:50:44 PM |
| Sent As: | ECOM109@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/158843
MARK: SMITH
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Smith International, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 8/1/2007
PLEASE NOTE: All of the issues raised can be resolved by telephone. The applicant may telephone the examining attorney, instead of submitting a written response, to expedite the application.
The assigned examining attorney has reviewed the referenced application and determined the following.
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
However, before the mark can be published for opposition, the applicant must address the following informalities.
Identification of Goods in International Class 7
The wording “packer accessories” and “milling accessories” in the identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.
In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a).
In the alternative, if these accessories are sold as a unit with the packers and the mills, the applicant should amend the identification of goods to state this fact.
The identification of goods is unacceptable as indefinite. The applicant may adopt the following identification in International Class 7, if accurate: Drilling machines and parts therefore for drilling and completing oil and gas wells, comprised of drilling machines, turbodrills, downhole motors, tubing, drill pipe, casing, packers and packer accessories sold as unit, drill bits, reamers, mills and milling accessories sold as a unit, valves, submersible pumps, wireline actuated tools and subs. TMEP §1402.01.
Recitation and Classification of Services in International Class 37
The wording “drilling and production services” in the recitation of services is unacceptable as indefinite. The applicant may amend this wording to “drilling and pumping services,” if accurate. TMEP §1402.11.
The wording “wellbore remediation services” in the identification of services is indefinite and must be clarified because it is too broad and could include services in other international classes. The applicant is advised that remediation services in the nature of waste disposal is properly classified in International Class 37 while remediation services in the nature of waste treatment is properly classified in International Class 40. TMEP §§1402.01 and 1402.03. Applicant may substitute the following wording, if accurate: wellbore waste disposal services.
The recitation of services is unacceptable as indefinite. The applicant may adopt the following recitation in International Class 37, if accurate: Oil and gas well construction, drilling and production services, wellbore waste disposal services, casing, tubing and drill pipe installation and completion services and tool rental services. TMEP §1402.11.
General Guidelines – Identification and Classification of Goods and Services
Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. 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.
If applicant prosecutes this application as a combined, or multiple-class application, applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order; 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).
37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.
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.
If applicant should fail to respond to this Office action within the six month time limit, then the following goods and/or services will be deleted from the application: packer accessories, milling accessories and “production services, wellbore remediation services”. The application will then proceed with the remaining goods and/or services only. 37 C.F.R. §2.65(a).
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.
In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant’s telephone number.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Julie A. Watson/
Trademark Attorney
Law Office 109
(571) 272-9236
(571) 273-9109 (fax)
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.