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: 4/1/2009

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

SEARCH RESULTS

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

IDENTIFICATION AND CLASSIFICATION OF GOODS

 

Identification of Goods

 

The following wording in the identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  In many instances, Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.    

 

International Class 6

-          articles of common metal for use in the oil and gas industry

-          pipes, tubes, pipelines, risers, flowlines, and coils

-          pipelines for the transport of fluids, slurries, petroleum, oil, gas and multiphase flows

-          flow conditioners and guides

-          parts and fittings for the aforesaid goods

 

International Class 7

-          machines for use in the oil and gas industry and parts and fittings therefore

-          separators

-          tubes, pipes, liners, coils, flow conditioners, baffles and guides, all being parts of machines

-          oil drilling rigs and their components

-          machines for extraction and transportation of oil and gas, and parts and fittings therefore

 

International Class 11

-          apparatus and installations for the extraction and production of oil and gas

-          upstream pre-processing apparatus and installations for the production of oil and gas

-          pipes, tubes, pipelines, risers, flowlines, liners, coils, flow conditioners, baffles and guides, all for oil and gas extraction, production, and pre-processing apparatus and installations

-          separators (not being machines)

 

International Class 17

-          flexible or semi-rigid pipes, tubes, pipelines, risers, flowlines and coils

-          synthetic liners for pipes, tubes, pipelines, risers, flowline and coils

-          parts and fittings made from rubber, plastic or synthetic materials for use in the oil and gas industry

 

Additionally, the identification of goods contains parentheses.  Generally, parentheses and brackets should not be used in identifications.  Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).”  TMEP §1402.12. 

 

Therefore, applicant must remove the parentheses from the identification of goods and incorporate the parenthetical information into the description. 

 

Applicant classified the goods “baffles” in International Classes 6 and 7; however, the correct classification is International Class 11.  Applicant must either delete these goods or add them to International Class 11 which is already part of the application.  37 C.F.R. §§2.32(a)(7),  2.85; TMEP §§1401.02(a), 1401.04(b).

 

Applicant may substitute the following wording, if accurate:

 

International Class 6: Articles of common metal for use in the oil and gas industry, namely, {insert particular articles in Class 6, e.g., metal pipes, metal conduits, metal tubes}; metal pipes, tubes, pipelines, risers, flowlines and non-electric coils; metal pipelines for the transport of fluids, slurries, petroleum, oil, gas and multiphase flows; structural parts and structural fittings for the aforesaid goods, all formed wholly or predominantly of metal; metal tubes, pipes, liners, and non-electric coils, all being parts of machines; metal pipes, tubes, pipelines, risers, flowlines, liners, and non-electric coils all for oil and gas extraction, production, and pre-processing apparatus and installations

 

International Class 7: Machines for use in the oil and gas industry, namely, {insert common commercial name for the machines in Class 7, e.g., oil-well pumping machines, oil filters, gas compressors, cleaning machines for oil and gas industrial machines}, and the structural parts and structural fittings therefor; oil separators; oil drilling rigs and their structural components; machines for extraction and transportation of oil and gas, namely, {insert common commercial name for machines, e.g., oil-well pumping machines, lifting installations for the transport of goods} and the structural parts and structural fittings therefor

 

International Class 9: Power line conditioners, namely, flow conditioners and guides; power line conditioners, namely, flow conditioners and guides being parts of machines; power line conditioners, namely, flow conditioners and guides all for oil and gas extraction, production, and pre-processing apparatus and installations

 

International Class 11: Apparatus and installations for the extraction and production of oil and gas, namely, {insert particular apparatus and installations in Class 11, e.g., fluid separation apparatus for separation of gas from liquid in a chemical or oil refinery, waste oil heaters, used oil recovery units, gas regulators}; upstream pre-processing apparatus and installations for the production of oil and gas, namely, {insert common commercial name for the apparatus and installations in Class 11}; plumbing fittings, namely, baffles; plumbing fittings, namely, baffles being parts of machines; plumbing fittings, namely, baffles for oil and gas extraction, production, and pre-processing apparatus and installations; separators for the cleaning and purification of liquids, not being machines

 

International Class 17: Flexible or semi-rigid non-metal pipes, tubes, pipelines, flowlines and non-electric coils; synthetic non-metal liners for pipes, tubes, pipelines, risers, flowlines, and coils; parts and fittings made from rubber, plastic or synthetic materials for use in the oil and gas industry, namely, {insert parts and fittings in Class 17, e.g., flexible plastic pipes for conveying natural gas, non-metal fuel oil hoses, oil absorbent pads and pillows for containing oil spills

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods 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 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.  See TMEP §1402.04.

 

Classification of Goods

 

If applicant adopts the suggested amendment of the goods, then applicant must amend the classification to International Classes 6, 7, 9, 11, and 17.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.  

 

REQUEST FOR INFORMATION

 

Applicant must submit information pertaining to the meaning of the acronym “SMAHT” to permit proper examination of the application.  See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, the application does not include a foreign registration certificate or a statement indicating whether applicant intends to rely upon the resulting foreign registration under Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration.  37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03.  It is unclear whether applicant intends to rely on Section 44(e) as an additional basis for registration.

 

Therefore, applicant must clarify the basis in the application by satisfying one of the following:

 

(1)               If applicant intends to rely on Section 44(e), in addition to Section 1(b), as a basis for registration, applicant must so specify.  In addition, (i) 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; and (ii) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin.  See 15 U.S.C. §1126(b)-(c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§806.02(f), 1002.01, 1004.  A copy of the foreign registration must be a copy of a document that issued to the applicant by or was certified by the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If the foreign registration is not written in English, then applicant must provide an English translation.  37 C.F.R. §2.34(a)(3)(ii).  The translation should be signed by the translator.  TMEP §1004.01(b).  If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant must respond to this Office action requesting suspension pending receipt of the foreign registration documentation.  TMEP §1003.04.; or

 

(2)               If applicant intends to rely solely on an intent to use basis under Section 1(b), while retaining its Section 44(d) priority filing date, applicant must specify that it does not intend to rely on Section 44(e) as a basis for registration and request that the mark be approved for publication based solely on the Section 1(b) basis.  See TMEP §§806.02(f), 806.04(b), 1003.04.  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §§1103, 1104.

 

 

 

/Lindsey H. Rubin/

Lindsey H. Rubin

Trademark Examining Attorney

Law Office 108

Phone: (571) 272-4239

Fax: (571) 273-9108

 

 

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 4/1/2009 FOR

APPLICATION SERIAL NO. 77649259

 

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=77649259&doc_type=OOA&mail_date=20090401 (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 4/1/2009.

 

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.