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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

ISSUE/MAILING DATE: 5/12/2017

THIS IS A FINAL ACTION.

On October 12, 2016, the present application as suspended pending the disposition of prior pending Application Serial No. 86399265 for the mark INFERNO. On January 9, 2017, the Trademark Office abandoned prior pending Application Serial No. 86399265.

Therefore, the following unresolved requirement is made FINAL.

Final Requirement – Amendment to Identification to Add International Class 3 Unacceptable

For the reasons stated below, the requirement to amend the applicant’s identification of services in made FINAL.

The present application was originally filed with services in International Class 40. On October 25, 2015, the applicant amended the application to add International Class 3 and the following goods: Inferno is a customized line of thermal fluid, which enhances the removal of organic and inorganic deposits from pipelines, process facilities, downhole tubulars, and reservoirs where conventional cold soak applications are ineffective.

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application. See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07. Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment. See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

In this case, the application originally identified the services as follows: “Gas Production Services; Oil and Gas well treatment; Oil production services.” These original services were definitive, acceptable and are properly classified in International Class 40.

However, the proposed amendment identifies the following additional goods in International Class 3: “Inferno is a customized line of thermal fluid, which enhances the removal of organic and inorganic deposits from pipelines, process facilities, downhole tubulars, and reservoirs where conventional cold soak applications are ineffective.” These goods are indefinite and unacceptable and outside the scope of the original recitation of services.

This portion of the proposed amendment is beyond the scope of the original identification because it identifies goods not services as recited in the original application.

Thus, the identification, incorporating this amendment, is not acceptable. See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.01.

As indicated in the suspension letter issued on October 12, 2016, the applicant should respond by submitting arguments as to why the amendment should be permissible or by deleting International Class 3 from the application.

Proper Response to Final Refusal – Potential for Partial Abandonment

Applicant must respond within six months of the date of issuance of this final Office action or the following class to which the final requirement apples will be deleted from the application by Examiner’s Amendment: International Class 3. 37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

The application will then proceed for the following class: International Class 40 under Section 1(b)/intent to use basis.

Applicant may respond by providing one or both of the following:

(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

37 C.F.R. §2.63(b)(1)-(2); 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. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).

If applicant has questions regarding this Office action, please telephone or e-mail 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. §§2.62(c), 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.

/Julie Watson/

Trademark Examining Attorney

Law Office 109

571-272-9236

julie.watson@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/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.uspto.gov/. 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.uspto.gov/trademarks/process/status/.

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

To:	Blue Fin Services, LLC (mroebuck@roebuckiplaw.com)
Subject:	U.S. TRADEMARK APPLICATION NO. 86470593 - INFERNO - GR057.0011
Sent:	5/12/2017 12:57:55 PM
Sent As:	ECOM109@USPTO.GOV
Attachments: