| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
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| SERIAL NUMBER | 85718223 |
| LAW OFFICE ASSIGNED | LAW OFFICE 102 |
| MARK SECTION | |
| MARK | http://tess2.uspto.gov/ImageAgent/ImageAgentProxy?getImage=85718223 |
| LITERAL ELEMENT | ACCESS |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
RESPONSE TO OFFICE ACTION (37 C.F.R. § 2.62) Applicant submits the following remarks and amendments in response to the Office Action on the above application dated December 27, 2012. Amendment Recitation of Services Please amend the recitation of the services in Class 39 to read as follows: International Class 039: natural gas transmission and distribution; transmission of gas through pipelines. Remarks Specimen Refusal In the Office Action, the Examining Attorney stated that the mark on the specimen disagrees with the mark on the drawing. The Examining Attorney noted that in this case, the specimen displays the mark as ACCESS MIDSTREAM PARTNERS; and the drawing shows the mark as ACCESS. The Examining Attorney then stated that the term ACCESS does not stand out nor does it convey a commercial impression separate and apart from the rest of the matter displayed. For the following reasons, the Examining Attorney’s refusal to accept the specimen is traversed. Contrary to the assertion of the Examining Attorney, as shown in the specimen, the term ACCESS does in fact stand out and convey a commercial impression that is separate and apart from the rest of the matter displayed. As shown by the drawing, the mark consists of three words, ACCESS, MIDSTREAM and PARTNERS. Compared to the words MIDSTREAM and PARTNERS, the word ACCESS appears in a significantly larger font (for example, the word ACCESS appears to be at least four times as large as both the word MIDSTREAM and the word PARTNERS). In fact, as it is juxtaposed above the words MIDSTREAM PARTNERS, the term ACCESS has the same length as the terms MIDSTREAM and PARTNERS combined. Also, the word ACCESS is set forth in design form and includes the colors blue and green whereas the words MIDSTREAM and PARTNERS are set forth in design form and include only the color gray. As a result, the term ACCESS clearly stands out and creates a commercial impression separate and apart from the rest of the mark. It is true that the mark on the drawing must be a complete mark, as evidenced by the specimen. When the representation on a drawing does not constitute a complete mark, it is sometimes referred to as a “mutilation” of the mark. This term indicates that essential and integral subject matter is missing from the drawing. See Trademark Manual of Examining Procedure (April 2013) (“TMEP”) § 807.12(d). However, the mere fact that two or more elements form a composite mark does not necessarily mean that those elements are inseparable for registration purposes. An applicant may apply to register any element of a composite mark if that element presents a separate and distinct commercial impression apart from any other with which the mark is used on the specimen. Id. In the present case, the composite mark ACCESS MIDSTREAM PARTNERS is not a unitary mark. The term ACCESS is not so merged in the overall mark that it does not create a separate commercial impression. The term ACCESS is not visually inseparable and intertwined with the terms MIDSTREAM and PARTNERS. Thus, the term ACCESS creates a separate and distinct commercial impression apart from the words MIDSTREAM PARTNERS. The representation on the present drawing does not amount to a “mutilation” of the mark. This position is supported by the case law including cases discussed in the TMEP. See for example, In re Servel, Inc., 181 F.2d 192, 85 U.S.P.Q. 257 (C.C.P.A. 1950) (refusal to register the term SERVEL as a mutilation of the mark “SERVEL INKLINGS” reversed, where the specimen displays an insignia between the words “SERVEL” and “INKLINGS,” and “INKLINGS” is printed in a large different kind of type); In re Big Pig, Inc., 81 U.S.P.Q.2d 1436 (TTAB 2006) (“PSYCHO” creates a separate commercial impression apart from additional wording and background design that appears on the specimen, where the word “PSYCHO” is displayed in a different color, type style and size, such that it stands out). Finally, in Office Actions on related cases, for example U.S. Serial No. 85/718,180 for ACCESS MIDSTREAM PARTNERS, the Examining Attorney required Applicant to disclaim the words “MIDSTREAM PARTNERS,” stating that the terms describe a characteristic of the mark. This further supports Applicant’s position. Thus, the Examining Attorney is respectfully requested to withdraw the refusal of the specimen. Recitation and Classification of Services In the Office Action, the Examining Attorney also stated that the identification of services is indefinite and must be clarified to identify the nature of the pipeline services. As an example, the Examining Attorney listed transmission of gas through pipelines in Class 39. The identification of services has been amended accordingly. No Conflicting Marks In the Office Action, the Examining Attorney also stated that the Office records have been searched and no similar registered or pending mark has been found which would bar registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d). Accordingly, in view of the foregoing, Applicant believes that this application is now in condition for prompt publication. Favorable action is therefore requested. This is intended to be a complete response to the Office Action mailed December 27, 2012. |
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| GOODS AND/OR SERVICES SECTION (039)(current) | |
| INTERNATIONAL CLASS | 039 |
| DESCRIPTION | natural gas transmission, distribution and pipeline services |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 06/24/2012 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/24/2012 |
| GOODS AND/OR SERVICES SECTION (039)(proposed) | |
| INTERNATIONAL CLASS | 039 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| natural gas transmission and distribution; transmission of gas through pipelines | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 06/24/2012 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/24/2012 |
| GOODS AND/OR SERVICES SECTION (040)(no change) | |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /CCD,III/ |
| SIGNATORY'S NAME | Clifford C. Dougherty, III |
| SIGNATORY'S POSITION | Attorney of record, Oklahoma bar member |
| SIGNATORY'S PHONE NUMBER | 405-552-2302 |
| DATE SIGNED | 06/24/2013 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jun 24 16:24:37 EDT 2013 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20130624162437499056-8571 8223-5008b71b4c8f8979759d 44cce8b499388fc0b53cfbef6 ea4a055ce808e92d2abe6-N/A -N/A-20130624161811849427 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
RESPONSE TO OFFICE ACTION
(37 C.F.R. § 2.62)
Applicant submits the following remarks and amendments in response to the Office Action on the above application dated December 27, 2012.
Amendment
Recitation of Services
Please amend the recitation of the services in Class 39 to read as follows:
International Class 039: natural gas transmission and distribution; transmission of gas through pipelines.
Remarks
Specimen Refusal
In the Office Action, the Examining Attorney stated that the mark on the specimen disagrees with the mark on the drawing. The Examining Attorney noted that in this case, the specimen displays the mark as ACCESS MIDSTREAM PARTNERS; and the drawing shows the mark as ACCESS. The Examining Attorney then stated that the term ACCESS does not stand out nor does it convey a commercial impression separate and apart from the rest of the matter displayed.
For the following reasons, the Examining Attorney’s refusal to accept the specimen is traversed. Contrary to the assertion of the Examining Attorney, as shown in the specimen, the term ACCESS does in fact stand out and convey a commercial impression that is separate and apart from the rest of the matter displayed.
As shown by the drawing, the mark consists of three words, ACCESS, MIDSTREAM and PARTNERS. Compared to the words MIDSTREAM and PARTNERS, the word ACCESS appears in a significantly larger font (for example, the word ACCESS appears to be at least four times as large as both the word MIDSTREAM and the word PARTNERS). In fact, as it is juxtaposed above the words MIDSTREAM PARTNERS, the term ACCESS has the same length as the terms MIDSTREAM and PARTNERS combined. Also, the word ACCESS is set forth in design form and includes the colors blue and green whereas the words MIDSTREAM and PARTNERS are set forth in design form and include only the color gray. As a result, the term ACCESS clearly stands out and creates a commercial impression separate and apart from the rest of the mark.
It is true that the mark on the drawing must be a complete mark, as evidenced by the specimen. When the representation on a drawing does not constitute a complete mark, it is sometimes referred to as a “mutilation” of the mark. This term indicates that essential and integral subject matter is missing from the drawing. See Trademark Manual of Examining Procedure (April 2013) (“TMEP”) § 807.12(d).
However, the mere fact that two or more elements form a composite mark does not necessarily mean that those elements are inseparable for registration purposes. An applicant may apply to register any element of a composite mark if that element presents a separate and distinct commercial impression apart from any other with which the mark is used on the specimen. Id.
In the present case, the composite mark ACCESS MIDSTREAM PARTNERS is not a unitary mark. The term ACCESS is not so merged in the overall mark that it does not create a separate commercial impression. The term ACCESS is not visually inseparable and intertwined with the terms MIDSTREAM and PARTNERS.
Thus, the term ACCESS creates a separate and distinct commercial impression apart from the words MIDSTREAM PARTNERS. The representation on the present drawing does not amount to a “mutilation” of the mark. This position is supported by the case law including cases discussed in the TMEP. See for example, In re Servel, Inc., 181 F.2d 192, 85 U.S.P.Q. 257 (C.C.P.A. 1950) (refusal to register the term SERVEL as a mutilation of the mark “SERVEL INKLINGS” reversed, where the specimen displays an insignia between the words “SERVEL” and “INKLINGS,” and “INKLINGS” is printed in a large different kind of type); In re Big Pig, Inc., 81 U.S.P.Q.2d 1436 (TTAB 2006) (“PSYCHO” creates a separate commercial impression apart from additional wording and background design that appears on the specimen, where the word “PSYCHO” is displayed in a different color, type style and size, such that it stands out).
Finally, in Office Actions on related cases, for example U.S. Serial No. 85/718,180 for ACCESS MIDSTREAM PARTNERS, the Examining Attorney required Applicant to disclaim the words “MIDSTREAM PARTNERS,” stating that the terms describe a characteristic of the mark. This further supports Applicant’s position.
Thus, the Examining Attorney is respectfully requested to withdraw the refusal of the specimen.
Recitation and Classification of Services
In the Office Action, the Examining Attorney also stated that the identification of services is indefinite and must be clarified to identify the nature of the pipeline services. As an example, the Examining Attorney listed transmission of gas through pipelines in Class 39. The identification of services has been amended accordingly.
No Conflicting Marks
In the Office Action, the Examining Attorney also stated that the Office records have been searched and no similar registered or pending mark has been found which would bar registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d).
Accordingly, in view of the foregoing, Applicant believes that this application is now in condition for prompt publication. Favorable action is therefore requested. This is intended to be a complete response to the Office Action mailed December 27, 2012.