Offc Action Outgoing

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.

Identification of Goods

The identification of goods is unacceptable as indefinite. The applicant may adopt the following identification, if accurate: down hole drilling motors. TMEP §1402.01.

If the above suggestion is not accurate, then applicant must amend the identification to indicate the kind or type of drilling motors.

The applicant must rewrite the identification of goods in its entirety because of the nature and extent of the amendment. 37 C.F.R. §2.74(b).

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

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://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

Certificate Required

If applicant is asserting §44(e) as a basis for registration (based on the foreign registration that will issue from the application that the applicant relied on for priority), then applicant must submit a true copy, photocopy, certification or certified copy of a foreign registration from the applicant’s country of origin. Applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. See TMEP §§1002.01, 1003.03 and 1004.

If the foreign certificate of registration is not written in English, then applicant must provide an English translation signed by the translator. See TMEP §§1004.01 and 1004.01(b).

Option to Delete Basis

The application specifies both intent to use under Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. 15 U.S.C. §§1051(b), 1126(d). When an application is filed pursuant to Section 44(d), the USPTO presumes, unless otherwise indicated, that applicant intends to rely upon the resulting foreign registration as a basis for registration in the U.S. 15 U.S.C. §1126(e); TMEP §§806.02(f) and 1003.03.

However, applicant may rely solely on intent to use as the basis, and still claim the benefit of the priority filing date. If applicant wants to rely on intent to use as the sole basis for registration, with the claim of priority, applicant should submit an amendment so advising the undersigned. Once all other outstanding issues are resolved, the mark would be approved for publication without requiring a copy of the foreign registration. TMEP §§806.02(f), 806.04(b). However, while the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed.

If applicant does not indicate otherwise, the USPTO will presume that applicant is relying on the foreign registration as an additional basis for registration. Thus, the application will not be approved for publication until a copy of the foreign registration and, if appropriate, an English translation signed by the translator, have been filed. TMEP §§1004.01, 1004.01(b).

Foreign Application Not from Country of Origin

The application indicates that applicant is domiciled in Youngsville, Louisiana, but the foreign application on which applicant relies for priority was filed in Canada. To obtain registration under Section 44(e) based on the foreign registration that will issue from the foreign application on which applicant relies for priority, applicant must have a bona fide and effective industrial or commercial establishment in that country. 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.02, 1002.04.

Thus, if applicant intends to rely on the registration issuing from the identified foreign application as its basis for registration, applicant must provide a written statement that it has a bona fide and effective industrial or commercial establishment in Canada.

If applicant cannot assert that the country in which the foreign application was filed is a country of origin, registration under Section 44(e) will be refused. In that case, applicant can amend the application to delete the Section 44(e) basis and rely on Sections 1(a) or 1(b) as a filing basis. See 37 C.F.R. §2.35 and TMEP §§806.03 et seq. regarding amendment of the basis.

If the U.S. application satisfies the requirements of Section 44(d) as of the filing date of the U.S. application, applicant may retain the priority filing date without perfecting the Section 44(e) basis, as long as there is otherwise a valid basis for registration under Section 1. 37 C.F.R. §§2.35(b); TMEP §806.04(b).

Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration. A party who files under Section 44(d) must also establish a basis for registration. 37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03, 1003.03.

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

/Amos T. Matthews/

Trademark Examining Attorney

Law Office 117

571-272-9346

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.