UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/284976

 

The assigned examining attorney has reviewed the referenced application and determined the following.

Search

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 1105.01.

 

Identification of Goods

 

The identification of goods is unacceptable as indefinite because the applicant must clarify the field of use of the goods. They appear to be oil welling equipment. The applicant must simply indicate what the blowout preventors are used for. The applicant may adopt the following identification, if accurate: 

 

“Oil and gas drilling equipment, namely, annular blowout preventors and parts therefore.” International Class 7.

 

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. Section 2.71(a); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

SPECIMENS

 

The specimens do not show use of the mark for any goods identified in the application.  The applicant has submitted brochures that features information about the applicant’s oil and gas drilling equipment. However, advertising brochures are not acceptable for goods. 

 

In the case Lands' End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992) the criteria for the acceptability of advertising like specimens for goods is outlined. Such items as catalogs, etc. are acceptable to show use for the goods.  However, the criteria for accepting such  specimens is as follows: catalogs can be accepted as a display associated with the goods, provided that (1) it includes a picture of the relevant goods, (2) it includes the mark sufficiently near the picture of the goods to associate the mark with the goods, and (3) it includes information necessary to order the goods.  Any form of advertising which satisfies these criteria should be construed as a display associated with the goods.  In this case, the applicant’s brochures do not provide information necessary to order the goods and do not indicate that a consumer could order the products over the phone and no pricing information is provided either.  As a result, the specimens are unacceptable to show proper use for the goods.

 

Appropriate specimens for goods include specimens that show the mark on labels for the goods, packaging for the goods, or on the goods themselves.  If the applicant intends to show the mark on the actual goods, a picture of the goods may be submitted but a hand drawing is unacceptable. Furthermore, any picture of the goods must bear the mark as well as mentioned above.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimens were in use in commerce at least as early as the filing date of the application.  37 C.F.R. Section 2.59(a); TMEP section 905.10.  The applicant should use the following format for their declaration statement.

 

Declaration

 

The following is a properly worded declaration under 37 C.F.R. Section 2.20. 

 

 

The substitute specimens were in use in commerce at least as early as the filing date of the application.

 

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. 1001, 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. 1051(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; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

 

 

                                                                               _____________________________

                                                                                                  (Signature)

                                                                 

                                                                               _____________________________

                                                                               (Print or Type Name and Position)

 

                                                                               _____________________________

                                                                                                  (Date)

 

Claim of Ownership Will Not Be Printed

 

The applicant should note that the prior registration claimed in the application has been cancelled. The claim of ownership will therefore not be printed.

 

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

 

 

 

 

/ras/

Rebecca Smith

Trademark Attorney

Law Office 110

(703) 308-9110 x231

ecom110@uspto.gov (for formal responses only)

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.