UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 11/14/2012

 

THIS IS A FINAL ACTION.

 

INTERNATIONAL REGISTRATION NO. 1114172

 

This Office action supersedes any previous Office action issued in connection with this application.

 

The following requirement has been satisfied:  the foreign registration certificate is acceptable and of record.  TMEP §§713.02, 714.04.

 

The requirement for an acceptable identification of goods and services is now made FINAL for the reasons set forth below.  15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.64(a), 2.71(a), 2.74(a), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

IDENTIFICATION OF GOODS

 

“Computer software for use in the hydrocarbon, oil and gas exploration and production industries,” “computer software for use in the petroleum engineering field” and “computer programs for use in the fields of energy exploration and production” must specify what the software does.  An identification for computer software must specify the purpose or function of the software.  See TMEP §1402.03(d).  Clarification of the purpose, function, or field of use of the software is necessary for the USPTO to properly examine the application and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).  Since the identification already lists “computer software for creating searchable databases of information and data,” it is not understood what the above three unclear types of software do.

 

Applicant may adopt the following identification, if accurate:   

 

“Computer software for creating searchable databases of information and data for use in the fields of energy exploration, production and petroleum engineering; computer software for modelling and optimising hydrocarbon, oil and gas production; computer software for forecasting production in the hydrocarbon exploration and production industry; computer software for field management in the hydrocarbon exploration and production industry; computer software for monitoring, evaluating, appraising and surveillance of oil and gas fields and wells; computer software for analysing, monitoring and planning workflow in the hydrocarbon, oil and gas exploration and production industries; computer software for monitoring and analysing technical and operational data in the oil and gas production and exploration industry; computer software for mathematical modelling in the oil and gas production and exploration industry; electronic publications, namely, magazines, manuals and newsletters in the fields of engineering, oil and gas field management and energy exploration and production; surveying machines and instruments; blank magnetic data carriers; digital media, namely, CDs, DVDs, CD-ROMS and downloadable audio and video files in the fields of engineering, oil and gas field management and energy exploration and production; electronic data processing apparatus,” in class 9.

 

Applicant must rewrite the identification of goods in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(a).

 

IDENTIFICATION OF SERVICES

 

“Organizing exhibitions for commercial purposes” is in class 35, so “organising of exhibitions…” is unacceptable in class 41 without specifying that they are educational exhibitions.  “Education and training services…” requires specification of the types of educational services, such as classes and seminars, such as is isted in the beginning of the recitation in class 41.  “Industrial analysis” could entil activities in class 35, so that wording is unacceptable in class 42.  Some redundancies are confusing and vaguely worded – they should be deleted, as they are acceptably recited elsewhere in the identification of services.

 

Applicant may adopt the following identification, if accurate:  

 

“Training and education services, namely, providing workshops, courses, conferences, seminars, webinars, classes, lectures and symposia in the fields of engineering, oil and gas field management and hydrocarbon, oil and gas exploration, distribution and production; organising educational exhibitions in the fields of engineering, oil and gas field management and hydrocarbon, oil and gas exploration and production; non-downloadable electronic publications in the nature of e-zines, manuals and newsletters in the fields of engineering, oil and gas field management and hydrocarbon, oil and gas exploration and production; publication of books and magazines,” in class 41;

 

“Scientific and technological services, namely, research, analysis and testing in the fields of engineering, oil and gas field management and hydrocarbon, oil and gas exploration and production; research and development in the field of hydrocarbon exploration and production; design of mathematical models; design and development of computer software; technical research in the field of energy exploration and production; engineering; engineering project management; surveying services; surveying of oil and gas fields; conducting of feasibility studies; engineering evaluation of oil and gas fields and exploration prospects; research and testing services relating to oil and gas exploration and production and preparation of reports in connection therewith; oil and gas field exploration; project management of hydrocarbon exploration and production; technical consulting and support services concerning optimisation of oil and gas production; technological consulting and planning in the fields of energy, oil and gas exploration and production; engineering services, namely, technical project analysis; preparation of engineering and technical reports in the fields of hydrocarbon, oil and gas exploration and production; analysis of the hydrocarbon production industry to forecast production; analysis services for oil field exploration; oil field surveys; oil well testing; computer programming; computer software consultancy; design and development of computer databases; rental of computer software; technical support services, namely, installation, administration and troubleshooting of computer software; geological and geophysical research and exploration in the oil, gas and mining industries; consulting rendered in conjunction with the foregoing,” in class 42.

 

Applicant must rewrite the identification of services in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(a).

 

An applicant may amend an identification only to clarify or limit the goods and services; adding to or broadening the scope of them is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

ONLINE ID MANUAL

 

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.

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b) and a foreign registration under Section 44(e):

 

(1)        LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class.

 

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

RESPONSE GUIDELINES

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)  A response that fully satisfies all outstanding requirements;

 

(2)  An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.

 

37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

/Ira Goodsaid/

Law Office 101

571-272-9166

ira.goodsaid@uspto.gov

 

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 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 11/14/2012 FOR

SERIAL NO. 85572260

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.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 e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 11/14/2012 (or sooner if specified in the office action).

 

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.

 

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

 

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