Offc Action Outgoing

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: 12/15/2009

 

 

 

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

 

Section 2(d) Refusal – Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3397999 and 3401217.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

The applicant has applied to register a mark composed of the term SERVA between two stylized bars for:

 

Oil and gas industry equipment, namely, automatic density control systems, bulk cement blending skids, batch cement mixing skids, liquid additive systems, and pumping units for use in cementing applications; pumps including plunger pumps and centrifugal pumps for use in downhole applications; and coiled tubing units, nitrogen pumping units, hydration units, acid pumping units and chemical additive units for downhole applications, in Class 7. 

 

The registered marks, owned by a single source, are the following:

 

Registration No. 3397999 is SERVAPUMP in standard character form for “OILFIELD EQUIPMENT, NAMELY, PLUNGER PUMPS AND CENTRIFUGAL PUMPS FOR USE IN THE OIL AND GAS INDUSTRY,” in Class 7.

 

Registration No. 3401217 is SERVACEMENTING in standard character form for “Oilfield equipment for mixing and pumping cement consisting of cement mixing equipment and cement pumps for use in the oil and gas industry,” in Class 7.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  The marks are compared for similarities in their appearance, sound, connotation and commercial impression.  TMEP §§1207.01, 1207.01(b).  The goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).

 

Comparison of the Marks

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

 

The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services they identify come from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).

 

The marks are compared in their entireties under a Trademark Act Section 2(d) analysis.  See TMEP §1207.01(b).  Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); see TMEP §1207.01(b)(viii), (c)(ii).

 

Because applicant’s mark consists of the term SERVA combined with minor design elements, the dominant term in applicant’s mark is the term SERVA.  This wording differs from the registered marks, SERVAPUMP and SERVACEMENTING by the addition of the descriptive wording PUMP and CEMENTING, respectively.  Because of the common wording SERVA, consumers are likely to assume these marks belong to a family of SERVA marks for goods from a single source.  Overall, the marks have the same commercial impression.

 

Comparison of the Goods

 

If the goods and/or services of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Applicant’s “Oil and gas industry equipment, namely, automatic density control systems, bulk cement blending skids, batch cement mixing skids, liquid additive systems, and pumping units for use in cementing applications; pumps including plunger pumps and centrifugal pumps for use in downhole applications; and coiled tubing units, nitrogen pumping units, hydration units, acid pumping units and chemical additive units for downhole applications,” in Class 7, are closely related to the registrant’s “OILFIELD EQUIPMENT, NAMELY, PLUNGER PUMPS AND CENTRIFUGAL PUMPS FOR USE IN THE OIL AND GAS INDUSTRY,” in Class 7, and “Oilfield equipment for mixing and pumping cement consisting of cement mixing equipment and cement pumps for use in the oil and gas industry,” in Class 7, because both parties’ goods include cement mixing machines and the same types of pumps for use in the same industry.  Accordingly, the parties’ goods would be offered to the same class of consumers and encountered under circumstances leading one to mistakenly believe the goods originate from the same source.

 

Since the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods.  Therefore, applicant’s mark is not entitled to registration.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

Applicant must also respond to the requirements set forth below.

 

Identification and Classification of Goods

 

Applicant’s goods are identified as:

 

Oil and gas industry equipment, namely, automatic density control systems, bulk cement blending skids, batch cement mixing skids, liquid additive systems, and pumping units for use in cementing applications; pumps including plunger pumps and centrifugal pumps for use in downhole applications; and coiled tubing units, nitrogen pumping units, hydration units, acid pumping units and chemical additive units for downhole applications, in Class 7.

 

The word “systems” in the identification of goods is indefinite and must be amended to list the major parts or components of the system, as well as to describe the nature, purpose and use of the system.  Applicant should use common generic terms when specifying the parts or components of the system.  See TMEP §§1401.02(a), 1402.01.

 

The applicant may amend the wording “automatic density control systems,” to the following wording, if accurate:  “automatic density control systems, namely, a system for controlling the ratio of water and dry bulk cement during mixing, composed of an electric operator control panel, programmable logic controller, computer hardware, control valves for regulating the flow of water, cement concentration meter, water flow meters, pump pressure sensor, and computer software for monitoring, controlling, and testing all of the aforementioned system components.”  Because this system is composed of components and software that are classified in Class 9, the system is also classified in Class 9.

 

The applicant may amend the wording "liquid additive systems," to the following wording, if accurate:  "liquid additive systems, namely, system for controlling the proportion of liquid additives to dry bulk cement during mixing, composed of an electric operator control panel, programmable logic controller, computer hardware, control valves for regulating the flow of liquid, water flow meters, and computer software for monitoring and controlling all of the aforementioned system components."  Because this system is composed of components and software that are classified in Class 9, the system is also classified in Class 9.

 

The wording “bulk cement blending skids, batch cement mixing skids” in the identification of goods is indefinite and must be clarified because the term “skids” appears to identify platforms or pallets, which are classified according to material composition; however, the primary function of applicant’s goods appears to be as a mixing machine.  See TMEP §1402.01.  Therefore, the applicant may amend this wording to the following, if accurate:  Bulk cement mixing machines mounted on a portable platform, batch cement mixing machines mounted on a portable platform.

 

The wording “pumping units for use in cementing applications” in the identification of goods is indefinite and must be clarified because the wording “pumping units” may include goods other than the pumps themselves in other international classes.  See TMEP §1402.01.  The applicant must amend this wording to either limit the goods to “pumps,” or to specify the additional parts of the “units.”  The applicant must also specify the types of pumps, such as “hydraulic pumps.”

 

The wording “pumps including plunger pumps and centrifugal pumps for use in downhole applications” in the identification of goods is indefinite and must be clarified because it includes the open-ended wording “including.”  Identifications must be all-inclusive so the applicant must replace “including” with “namely” and list any other types of pumps used for this purpose.  See TMEP §1402.01.

 

The wording “coiled tubing units” in the identification of goods is indefinite and must be clarified because tubes are classified according to their purpose and/or material composition; however, a “coiled tubing unit” appears to be a type of machine.  See TMEP §1402.01.  Therefore, the applicant must specify the nature of this machine, such as “power-operated drilling rigs.”

 

The wording “nitrogen pumping units” in the identification of goods is indefinite and must be clarified because the wording “pumping units” may include goods other than the pumps themselves in other international classes.  See TMEP §1402.01.  The applicant must amend this wording to either limit the goods to “pumps,” or to specify the additional parts of the “units.”  The applicant must also specify the types of pumps, such as “hydraulic pumps.”

 

The wording “hydration units” in the identification of goods is indefinite and must be clarified because the term “units” is broad enough to include a wide-variety of goods.  See TMEP §1402.01.  The applicant must specify these goods by common commercial name.  The applicant may specify these goods are “water pumps for use in the oil and gas industry,” if accurate.

 

The wording “acid pumping units” in the identification of goods is indefinite and must be clarified to either specify the additional components that make up the “units” or to amend the wording “pumping units” to “pumps.”  See TMEP §1402.01.  Additionally, the applicant must specify the nature of the pumps, such as “hydraulic pumps.”

 

The wording “chemical additive units for downhole applications” in the identification of goods is indefinite and must be clarified to specify the common commercial name for these goods.  See TMEP §1402.01.  The applicant may specify these are “hydraulic pumps,” if accurate.

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, proper punctuation in identifications of goods and services is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Generally, commas should be used (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely.”  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class.  Therefore, the applicant must ensure it uses semicolons to separate discrete items and commas to separate related items in a list, such as applicant’s “oil and gas industry equipment.”

 

To summarize, applicant may adopt any or all of the following identifications of goods, if accurate:

 

Automatic density control systems for use in the oil and gas industry, namely, a system for controlling the ratio of water and dry bulk cement during mixing, composed of an electric operator control panel, programmable logic controller, computer hardware, control valves for regulating the flow of water, cement concentration meter, water flow meters, pump pressure sensor, and computer software for monitoring, controlling, and testing all of the aforementioned system components; liquid additive systems for use in the oil and gas industry, namely, system for controlling the proportion of liquid additives to dry bulk cement during mixing, composed of an electric operator control panel, programmable logic controller, computer hardware, control valves for regulating the flow of liquid,  water flow meters, and computer software for monitoring and controlling all of the aforementioned system components, in Class 9.

 

Oil and gas industry equipment, namely, bulk cement mixing machines mounted on a portable platform, batch cement mixing machines mounted on a portable platform, and hydraulic pumps for use in cementing applications; pumps, namely, plunger pumps and centrifugal pumps for use in downhole applications; coiled tubing units, namely, power-operated drilling rigs for downhole applications; hydraulic pumps for pumping nitrogen for downhole applications; hydration units, namely, water pumps for use in the oil and gas industries for downhole applications; hydraulic pumps for pumping acid for downhole applications; chemical additive units for downhole applications, namely, hydraulic pumps, in Class 7.

 

See TMEP §1402.01.

 

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.  See TMEP §1402.04.

 

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.

 

Descriptions of goods and services should use the common, ordinary name for the goods and/or services.  TMEP §1402.01.  If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person.  See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.

 

An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services.  TMEP §1402.01.  “[T]echnical, high-sounding verbiage” should be avoided.  Cal. Spray-Chem., 102 USPQ at 322.

 

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).

 

Multiple-Class Application Requirements

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

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

 

(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); and

 

(3)        For each additional international class of goods and/or services, applicant must submit:

 

(a)        Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class.  The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.;

 

(b)        One specimen showing the mark in use in commerce for each class of goods and/or services.  The specimen must have been in use in commerce at least as early as the filing date of the application.  If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen.  Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.;

 

(c)        The following statement:  “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”; and

 

(d)       Verification of the statements in 3(a) and 3(c) (above) in an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

With respect to the requirement in 3(b) above for a specimen for each class of goods, please note that the specimen of record is acceptable for International Class 7 only.  Applicant must submit additional specimens if other classes are added to the application.

 

The filing fee for adding classes to an application is as follows:

 

(1)        $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; or

 

(2)        $375 per class, when the fees are submitted with a paper response.

 

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §§810, 1403.02(c).  Applicant’s current filing fee is sufficient for one class.

 

Requirement for Additional Information

 

The nature of the goods on which applicant uses its mark is not clear from the present record and additional information is required.  An applicant can be required to provide more information if it is necessary for proper examination of the application.  37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e); see In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003).

 

Therefore, applicant must submit samples of advertisements or promotional materials and a photograph of the identified goods.  In addition, applicant must describe in detail the nature, purpose and channels of trade of the goods.

 

Specifically, the applicant must provide this additional information for the following goods:

 

coiled tubing units, nitrogen pumping units, hydration units, acid pumping units and chemical additive units for downhole applications

 

Failure to respond to a request for information can be grounds for refusing registration.  TMEP §814; see In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003).  Merely stating that information about the goods or services is available on applicant’s website is an inappropriate response to a request for additional information, and is insufficient to make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

Response Guidelines

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.

 

If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

 

 

 

 

/Kim Teresa Moninghoff/

Trademark Examining Attorney

Law Office 113

Phone:  571-272-4738

Fax: 571-273-9113

 

 

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 REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77825734) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 12/15/2009 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77825734&doc_type=OOA&mail_date=20091215 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

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

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 12/15/2009 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

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

 

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.