Offc Action Outgoing

STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.

In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.

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(a), 2.65(a); TMEP §§711, 718.03.

No Conflicting Marks Found

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

Summary of Issues

Identification of goods and services;
Significance of mark.

Identification of Goods: International Class 001

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.

The wording “epoxy coatings (other than paint)” in the identification of goods is indefinite and must be clarified because it does not clearly indicate goods in this class. See TMEP §1402.01.

Similarly, “polypropylene coatings (other than paint),” “polyurethane coatings (other than paint),” “polyolefin coatings (other than paint),” and “coatings (not in the nature of paint) for pipelines” is indefinite and must be clarified because it does not clearly indicate goods in this class.

The applicant may adopt the following wording, if accurate; the changes are in bold type: “waterproofing chemical compositions, namely, epoxy coatings other than paint, polypropylene coatings other than paint, polyurethane coatings other than paint, polyolefin coatings other than paint, and coatings not in the nature of paint for pipelines; polypropylene resins; polyurethane; polyolefin.”

Although identifications of goods may be amended 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 USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

Classification Cannot Be Changed

The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods and/or services in the corresponding international registration. TMEP §§1401.03(d), 1904.02(b).

Therefore, any modification to this wording must identify goods in International Class 001, the classification specified in the application for these goods.

Identification of Goods: International Class 002

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

The applicant may adopt the following wording, if accurate: “coatings in the nature of paint for pipelines.”

Classification Cannot Be Changed

Therefore, any modification to this wording must identify goods in International Class 002, the classification specified in the application for these goods.

Identification of Goods: International Class 006

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

The wording “pipelines (of metal)” in the identification of goods is indefinite and must be clarified because the specific type of pipelines must be identified. See TMEP §1402.01.

The wording “high-pressure pipelines (of metal)” is indefinite and must be clarified because the specific type of pipelines must be identified.

The wording “parts and fittings for pipes or for pipelines” in the identification of goods is indefinite and must be clarified because the type of parts and fittings is not specified.

The applicant may adopt the following identification of goods, if accurate. Changes are in bold type: “Pipelines of metal, namely, {specify goods, e.g., branching tubes of metal for pipelines}; high-pressure pipelines of metal, namely, {specify goods, e.g., metal pipes}; manifolds of metal for pipelines; metal pipes; {specify type of parts and fittings, e.g., structural, replacement} parts and fittings for pipes or for pipelines; metal joints for pipes.”

Classification Cannot Be Changed

Therefore, any modification to this wording must identify goods in International Class 006, the classification specified in the application for these goods.

Identification of Goods: International Class 007

The wording “welding apparatus” in the identification of goods is indefinite and must be clarified because the specific apparatus is not identified. See TMEP §1402.01.

The wording “apparatus and machines for use in welding” requires clarification to specify the apparatus.

The wording “apparatus, instruments and machines for use in radiant heat welding” requires clarification to specify the apparatus and instruments.

The wording “radiant heat welding apparatus” requires clarification to specify the apparatus. Additionally, the wording is repeated in the identification and applicant must specify how the goods differ.

The wording “parts and fittings for all of the aforesaid” in the identification of goods is indefinite and must be clarified because the type of parts and fittings is not specified.

The applicant may adopt the following identification of goods, if accurate. Changes are in bold type: “Welding apparatus, namely, {specify goods, e.g., gas welding guns, welding torches}; welding machines; apparatus and machines for use in welding, namely, {specify apparatus in this class, e.g., welding electrodes}; apparatus, instruments and machines for use in radiant heat welding, namely, {specify apparatus and instruments, e.g., electric arc welders}; radiant heat welding apparatus, namely, {specify apparatus in this class}; machines and machine tools for use in the laying of pipelines; machines and machine tools for use in the manufacture of pipes or of pipelines; {“radiant heat welding apparatus” is repeated; applicant must clarify how the goods differ}; {specify type of parts and fittings, e.g., structural, replacement} parts and fittings for all of the aforesaid.”

Classification Cannot Be Changed

Therefore, any modification to this wording must identify goods in International Class 007, the classification specified in the application for these goods.

Identification of Services: International Class 037

The wording “insulation of pipelines” in the identification of services is indefinite and must be clarified because it does not clearly identify a service in this class. See TMEP §1402.01. Similarly, “pipeline insulation” does not clearly identify a service in this class; as presently worded, it might identify goods and therefore requires clarification. “Coating of pipes” and “coating of pipelines” must be amended to clearly identify services in this class.

Applicant may substitute the following identification of services, if accurate. Changes are in bold type: “Construction of pipelines; installation of pipelines; laying of pipelines; installation of linings in pipelines; installation of insulation of pipelines; maintenance and repair of pipelines; maintenance and repair of pipeline systems; installation of pipeline insulation; application of protective coatings for pipes; application of protective coatings for pipelines.”

Although identifications of services may be amended to clarify or limit the services, adding to or broadening the scope of the services 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 services that are not within the scope of the services set forth in the present identification.

Classification Cannot Be Changed

Therefore, any modification to this wording must identify services in International Class 037, the classification specified in the application for these services.

Identification of Services: International Class 042

The wording “research in the field of pipelines; research in the field of welding” in the identification of services is indefinite and must be clarified because the type of research is not identified. See TMEP §1402.01. Applicant may substitute the following identification of services, if accurate. Changes are in bold type: “Design of pipelines; pipeline inspection services; {specify type of research in this class, e.g., scientific} research in the field of pipelines; {specify type of research in this class, e.g., scientific} research in the field of welding.”

Classification Cannot Be Changed

Therefore, any modification to this wording must identify services in International Class 042, the classification specified in the application for these services.

Significance of Wording

Applicant must specify whether the wording “SOLARIS” has any significance in the applicant’s trade or industry or as applied to the goods and/or services described in the application, or if such wording is a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814. Applicant must also specify if the mark has an English translation and if so, what the mark means in English.

Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

Response Guidelines

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).

Applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

If applicant has questions regarding this Office action, please email or telephone the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).

In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.

DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

/Shannon Twohig/

Attorney, USPTO

Law Office 105

shannon.twohig@uspto.gov

Phone: (571) 272-8855

Fax: (571) 273-9105

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.