Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86330672 WRANGLER(Standard Characters, see http://uspto.report/TM/86330672/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

RESPONSE TO OFFICE ACTION SENT OCTOBER 24, 2014 FOR S/N 86/330,672 - 1 - IN THE UNITED STATES PATENT AND TRADEMARK OFFICE MARK: WRANGLER LAWOFFICE 119 SERIAL NO.: 86/330,672 INT'L CLASS NO.: 006  APPLICANT: Stallion Oilfield Services Ltd. BUSINESS ADDRESS: 950 Corbindale Road, Suite 300 Houston, TX 77024  RESPONSE TO OFFICE ACTION SENT OCTOBER 24, 2014 Commissioner for Trademarks P.O. Box 1451 Alexandra, VA 22313-1451 Sir: Thank you for the Office Action sent October 24, 2014 regarding U.S. Trademark Application No. 86330672. Applicant herein addresses each issue raised in the Office Action in the order presented and respectfully requests that the application be allowed to proceed to publication. RESPONSE TO OFFICE ACTION SENT OCTOBER 24, 2014 FOR S/N 86/330,672 - 2 - Section 2(d) Refusal The Examining Attorney refuses registration of Applicant's mark under Trademark Act Section 2(d) on the basis that when used on or in connection with the identified goods, Applicant's mark so resembles the marks in U.S. Registration Nos. 3748298 for the mark WRANGLER and 4595915 for the mark PIPE WRANGLERS ("Cited Marks"), as to be likely to cause confusion, mistake, or deceive. Applicant respectfully traverses this refusal as set forth below. Applicant respectfully requests that the Examining Attorney withdraw the refusal to register based on the registration of the Cited Marks on the grounds that the designated goods, namely blowout preventers and catwalks, are not related in any meaningful manner to Applicant's goods. The only similarity between Applicant's goods and the goods designated in the Cited Marks is that both are used at oil and gas drilling sites. To further emphasize this point, and to respond to the Examining Attorney's finding that Applicant's description of goods is indefinite such that the exact nature of the goods is unknown, Applicant herein amends the description of goods to clarify that the pre-fabricated skid-mounted metal enclosures are used solely for protecting personnel and not blowout preventers or catwalks. Applicant's goods have a completely different purpose, namely protecting personnel, than the blowout preventers and catwalks designated in the registrations RESPONSE TO OFFICE ACTION SENT OCTOBER 24, 2014 FOR S/N 86/330,672 - 3 - of the Cited Marks. Applicant respectfully submits that the differences between Applicant's goods and the goods designated in the registrations of the Cited Marks are so vast that there cannot be any likelihood of confusion between the two marks. Indeed, as evidenced by the attached photos of a blowout preventer and catwalk, this type of massive equipment could not be protected by Applicant's personnel enclosures. A blowout preventer is bolted directly to a wellhead and a catwalk is used for conveying drill pipe and is an integral part of a drilling rig. Identification of Goods As noted above, the Examining Attorney has indicated that the identification of goods is indefinite and must be clarified because the exact nature of the goods is unknown. Applicant hereby amends the identification to the following suggested in part by the Examining Attorney: Pre-fabricated skid-mounted metal enclosures solely for protecting personnel at oil and gas drilling sites. With this Applicant's Response to the Office Action Sent October 24, 2014, Applicant respectfully submits that the issues raised by the Examining Attorney have been fully addressed. Therefore, Applicant respectfully requests that its trademark application be allowed to proceed to publication. RESPONSE TO OFFICE ACTION SENT OCTOBER 24, 2014 FOR S/N 86/330,672 - 4 - If the Examining Attorney wishes to speak to the undersigned counsel, please do not hesitate to call at 713.758.1105. Respectfully submitted, /wsb/ W. Scott Brown Registry No. 32,968 VINSON & ELKINS L.L.P. 2500 First City Tower 1001 Fannin Houston, Texas 77002-6760 Telephone: (713) 758-1105 Fax: (713) 615-5803 sbrown@velaw.com US 3305305v.1

EVIDENCE
Evidence in the nature of a pdf of the argument and photos of a blowout preventer and a catwalk has been attached.
JPG file(s):
Evidence-1
Evidence-2
Original PDF file:
evi_641291692-20150219181551898017_._3305305_1.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 006 for skid-mounted enclosures for use at oil and gas drilling sites
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: skid-mounted enclosures for use at oil and gas drilling sites; pre-fabricated skid-mounted metal enclosures solely for protecting personnel at oil and gas drilling sitesClass 006 for pre-fabricated skid-mounted metal enclosures solely for protecting personnel at oil and gas drilling sites
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

ADDITIONAL STATEMENTS
Miscellaneous Statement
Please disregard the Response to Office Action previously filed today, as it did not have the attachments.


SIGNATURE(S)
Response Signature
Signature: /wsb/     Date: 02/19/2015
Signatory's Name: W. Scott Brown
Signatory's Position: Attorney of record, Texas bar member

Signatory's Phone Number: 7137581105

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 86330672
Internet Transmission Date: Thu Feb 19 18:22:55 EST 2015
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.X-20150219182255358
800-86330672-530d28d76aecd9cea1bbc8a39d6
e72746de4d6550edffe9f3b448e43621a554b-N/
A-N/A-20150219181551898017