Suspension Inquiry

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

SUSPENSION INQUIRY:  RESPONSE REQUIRED

 

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: 3/11/2016

 

 

  x    FOREIGN REGISTRATION:  The trademark examining attorney previously suspended action on this application pending receipt of a true copy, a photocopy, a certification, or a certified copy of a foreign registration from applicant’s country of origin or proof of renewal of the foreign registration. 

 

      Applicant must specify the status of the relevant foreign application or registration renewal.  TMEP §§716.02(b), 716.05, 1003.04(c); see 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii). 

 

      Applicant must respond to this inquiry to avoid abandonment and may do so by (1) stating that the foreign application or renewal is still pending or (2) submitting a true copy, a photocopy, a certification, or a certified copy of the foreign registration or renewal document.  TMEP §§716.05, 1003.04(c), 1004.01(a).  If the foreign registration or renewal document is not in English, applicant must provide an English translation.  37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §1004.01(b).

 

      CIVIL PROCEEDING(S):  The trademark examining attorney previously suspended action on this application pending termination of a civil proceeding(s) relevant to the registrability of applicant’s mark. 

 

      Applicant must specify the status of the civil proceeding(s).  TMEP §§716.02(d), 716.05. 

 

      Applicant must respond to this inquiry to avoid abandonment and may do so by (1) providing a statement that the civil proceeding(s) is still pending, (2) specifying that the proceeding has been stayed and the reason for such stay to determine if removal from suspension is appropriate, or (3) specifying that the proceeding(s) has been terminated and providing a copy of any final decision or relevant agreement.  See TMEP §716.05. 

 

Description of the Mark

Applicant has submitted a color drawing and provided a color claim, but has not provided the required description specifying where color appears in the literal and design elements in the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).

 

Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d).

 

Therefore, applicant must provide a mark description that specifies where all the colors appear in the literal and design elements in the mark. See TMEP §807.07(a)(ii). The following is suggested, if accurate:

 

The mark consists of the stylized word MCCOY above the stylized word GLOBAL with the letters MC in the color gold and the letters COY and the word GLOBAL in the color gray.

 

Identification and Classification of Goods and Services

Class 7

The identification of goods is indefinite and must be clarified because the applicant must indicate a more specific use for some of the goods, must more clearly identify the exact nature of the goods and must properly classify the goods. Some of the goods belong in classes other than Class 7. See TMEP §1402.01. Applicant may adopt the following identification, if accurate:

 

Class 6: Metal tubing; casing of metal; tubular metal thread protectors for use in pipelines

 

Class 7: oil well drilling rig equipment namely iron roughnecks, automated roughnecks, make-up/break-out tools, make/break tools, make/break machines, combination spinner/wrenches; oil field equipment, namely, hydraulic casing tongs and drill pipe tongs; Oil field equipment, namely, drilling rig devices, namely, casing running tools, spiders, flush mount spiders, top-mount spiders, elevators, combination spider elevators; hydraulic catwalks for oil rigs; oil well drilling rig accessories namely bucking units; shop equipment namely bucking units for (indicate specific use) and make-up/break-out units for (indicate specific use); Machine tools, namely, dies and inserts for power operated tubular handling equipment; bucking unit accessories, namely, (indicate specific accessories and indicate the use for the bucking unit); hydraulic rotary tables for oil rigs; power operated oil rig wrenches; make/break tools for top drives, namely, indicate specific tools or more clearly indicate what the tools do); Oil field equipment, namely, drilling rig mechanical handling machines and devices for positioning iron roughnecks and make/break tools; truck mounted pick-up and lay-down units in the nature of cranes; Oil field equipment, namely, drilling rig devices, namely,tubular handling unit safety clamps; Oil field equipment, namely, drilling rig parts namely drifts, hydraulic hoses and fittings; oil pipe handling equipment spare parts, namely, (list the specific parts, e.g., wear rings, washers, bushings, spherical bearings, bearing pads, sliding blocks and machine transmission gears); trailer mounted bucking units for (indicate the use of the bucking units – note that these goods may belong in Class 12 or another class depending upon their specific use); powered oil well tubular ramps and powered mobile ramps used for lifting pipe joints and moving same to or on oil rigs

 

Class 9: Torque subs used to measure drilling and casing string make up and break out parameters on oil rig drilling platforms; force measurement products, namely, calibration bars for calibrating torque, digital torque gauges, torque calibration machines.

 

Class 11: pneumatic thread compensators for regulating liquid oil flow

 

Class 12: trailers namely heavy equipment trailers; crane dollies.

 

Class 9

The Class 9 identification is acceptable.

 

Class 40

The identification of services is indefinite and must be clarified because some of the wording is so broad that it includes services in more than one class. Additionally, the wording “coating” on its own appears to indicate goods and not services. The applicant must clarify the nature of the “distributing” services and must indicate more specific coating services. See TMEP §1402.01. Applicant may adopt the following identification, if accurate:

 

Class 35: Distributorship services in the field of oil well pipe handling equipment, replacement parts, spare parts and associated oil well pipe handling equipment

 

Class 37: Maintenance and servicing oil well pipe handling equipment, replacement parts, spare parts and associated oil well pipe handling equipment; servicing and rebuilding hydraulic pipe-handling equipment; Applying protective coatings to oil well and mining equipment by means of thermal spraying services

 

Class 40: Custom manufacture of oil well pipe handling equipment, replacement parts, spare parts and associated oil well pipe handling equipment; coating services namely electroplating oil rig, downhole and mining equipment with chrome, phosphate, sulphamate and other materials; Electroplating, namely, nickel coating oil rig, downhole and mining equipment; hard-facing using welding and other processes, namely, electro and metal coating and hardening of metal downhole and surface drilling tools and surface tools used in mining with coatings using a welding process.

 

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

 

 

For assistance with identifying and classifying goods and 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.

 

The application identifies goods and/or services that are classified in at least nine classes; however, applicant submitted a fee(s) sufficient for only three classes. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The fees for adding classes to an application are $325 per class when the fee is paid using the Trademark Electronic Application System (TEAS) and $375 per class when the fee is paid in a paper submission.  See 37 C.F.R. §2.6(a)(1)(i)-(ii); TMEP §§810, 1403.02(c).

 

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  The application identifies goods and/or services that are classified in at least eight classes; however, applicant submitted a fee(s) sufficient for only three class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

Disclaimer

Applicant must disclaim the wording “GLOBAL” because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).

 

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

No claim is made to the exclusive right to use “GLOBAL” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.

 

 

/Kelley L. Wells/

Trademark Attorney

Law Office 118

571-272-9312

kelley.wells@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://teasroa.gov.uspto.report/rsi/rsi.  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.

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/11/2016 FOR U.S. APPLICATION SERIAL NO. 86101773

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 3/11/2016 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.