TEAS Request Reconsideration after FOA

PTO Form (Rev 4/2000)

OMB No. 0651-.... (Exp. 08/31/2004)

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PTO Form (Rev 4/2000)

OMB No. 0651-.... (Exp. 08/31/2004)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 77649259 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant overcomes the final Office Action by amending the identification of goods and adding Class 19 with payment of the filing fee. The amendments are in accord with the suggestions in the Office Action.

Applicant maintains that the identification of goods is in full compliance with the statute and regulations, but in order to expedite the application, please amend the identification of goods as stated herein. Applicant makes the present amendment of the identification of goods without surrendering any of the scope of the previous identification of goods. Thus, if any further amendments are required in order to obtain approval, then Applicant is entitled to the full scope of the previous identification of goods. At the time that the application is approved, Applicant surrenders the scope of the previous identification of goods to the extent that it exceeds the approved identification of goods.

Please consider this a request for reconsideration. Applicant believes that this Amendment places the case in conditional for approval. In the alternative, Applicant submits that a new issue has been raised by the presently amended identification of goods, and that a new, non-final Office Action should be issued, in accord with TMEP　§715.03.

Applicant submits that the application should be approved for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 006 for Articles of common metal for use in the oil and gas industry, namely, 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; pipes, tubes, pipelines, risers, flowlines, liners, and non-electric coils, all formed wholly or predominantly of metal or of composites of metal and all for oil and gas extraction, transportation, production, and pre-processing apparatus and installations
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [United Kingdom application number 2505673 filed 01/02/2009]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ United Kingdom registration number 2505673 registered 07/03/2009 with a renewal date of __________ and an expiration date of 01/02/2019 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 006 for Articles of common metal for use in the oil and gas industry, namely, 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; pipes, tubes, pipelines, risers, flowlines, liners, and non-electric coils, all formed wholly or predominantly of metal or of composites of metal and all for oil and gas extraction, transportation, production, and pre-processing apparatus and installations; upstream pre-processing apparatus and installations for the production of oil and gas, namely, 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, and all formed wholly or predominantly of metal
Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [United Kingdom application number 2505673 filed 01/02/2009]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ United Kingdom registration number 2505673 registered 07/03/2009 with a renewal date of __________ and an expiration date of 01/02/2019 ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Machines for use in the oil and gas industry, namely, oil-well pumping machines, gas compressors, and the structural parts and structural fittings therefor; hydrocarbon separators for separating the phases of a multiphase hydrocarbon flow; oil-water separators; tubes, pipes, liners, coils, flow conditioners, baffles, all being parts of machines; machines for extraction and transportation of oil and gas, namely, oil-well pumping machines, separation machines and metering devices, and the structural parts and structural fittings therefor
Original Filing Basis:
Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 007 for Machines for use in the oil and gas industry, namely, oil-well pumping machines, gas compressors, and the structural parts and structural fittings therefor; hydrocarbon separators for separating the phases of a multiphase hydrocarbon flow; oil-water separators; tubes, pipes, liners, coils, flow conditioners, baffles, all being parts of machines; machines for extraction and transportation of oil and gas, namely, oil-well pumping machines, separation machines and metering devices, and the structural parts and structural fittings therefore; metal tubes, pipes, liners, and non-electric coils, all being parts of machines
Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for Apparatus and installations for the extraction and production of oil and gas, namely, fluid separation apparatus for separation of multiphase hydrocarbons in an on-shore or offshore installation or a sub-sea station, oil purifying installations, gas purification machines; upstream pre-processing apparatus and installations for the production of oil and gas, namely, 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 for the cleaning and purification of fluids and slurries, not being machines
Original Filing Basis:
Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 011 for Apparatus and installations for the extraction and production of oil and gas, namely, fluid separation apparatus for separation of multiphase hydrocarbons in an on-shore or offshore installation or a sub-sea station, oil purifying installations, or gas purification machines; separators for the cleaning and purification of fluids and slurries, not being machines
Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 017 for Flexible or semi-rigid pipes, tubes, pipelines, risers, flowlines and non-electric coils, none being predominantly of metal; synthetic liners for pipes, tubes, pipelines, risers, flowlines and coils, none being predominantly of metal; parts and fittings made from rubber, plastic or synthetic materials for use in the oil and gas industry, namely, flexible plastic or synthetic pipes and pipe liners for conveying natural gas, oil and hydrocarbons
Original Filing Basis:
Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 017 for Flexible or semi-rigid plastic pipes, tubes, pipelines, risers, flowlines and non-electric coils; flexible or semi-rigid rubber pipes, tubes, pipelines, risers, flowlines and non-electric coils; synthetic plastic liners for pipes, tubes, pipelines, risers, flowlines and coils; synthetic rubber liners for pipes, tubes, pipelines, risers, flowlines and coils; parts and fittings made from rubber, plastic or synthetic rubber materials for use in the oil and gas industry, namely, flexible plastic, rubber or synthetic rubber pipes and pipe liners for conveying natural gas, oil and hydrocarbons; upstream pre-processing apparatus and installations for the production of oil and gas, namely, 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, and all formed wholly or predominantly of rubber or synthetic rubber; upstream pre-processing apparatus and installations for the production of oil and gas, namely, 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, and all formed wholly or predominantly of plastic
Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant hereby adds the following class of goods/services to the application:
New: Class 019 for upstream pre-processing apparatus and installations for the production of oil and gas, namely, 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, and all formed wholly or predominantly of concrete
Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [United Kingdom application number 2505673 filed 01/02/2009]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e),Based on Foreign Registration: Applicant has a bona file intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ United Kingdom registration number 2505673 registered 07/03/2009 with a renewal date of __________ and an expiration date of 01/02/2019 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRN0-1731015681-083647487_._UK_Reg_No_2505673.pdf
Converted PDF file(s) (1 page)
Foreign Registration-1

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

FEE(S)
Fee(s) in the amount of $325 is being submitted.

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 244. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /ThomasJMoore/      Date: 04/21/2010
Signatory's Name: Thomas J. Moore
Signatory's Position: Owner's Attorney, Va. bar member

Request for Reconsideration Signature
Signature: /ThomasJMoore/     Date: 04/21/2010
Signatory's Name: Thomas J. Moore
Signatory's Position: Owner's Attorney, Va. bar member

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
RAM Sale Number: 6689
RAM Accounting Date: 04/21/2010
        
Serial Number: 77649259
Internet Transmission Date: Wed Apr 21 08:58:11 EDT 2010
TEAS Stamp: USPTO/RFR-XX.XXX.XXX.X-20100421085811524
609-77649259-460164f90e2c2fce5eba16795ea
fc45a52a-CC-6689-20100421083647487343