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: 9/25/2015

 

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES that applicant must address:

 

• Section 2(d) Refusal – Likelihood of Confusion
• Mark Description Required
• Identification of Goods
• Multi-Class Application Requirements

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4454404, 4289577, 4289575, 3227350, 3227349, 2928986, and 2821139.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Applicant’s mark is UNIVERSAL & Design for:

·       Equipment used in oil and gas well improvement and/or completion services; equipment for use in oil or gas well hydraulic fracturing operations, namely, pumps and hoses; high-pressure pumps used in oil and gas well services;

·       Land vehicles; equipment trailers; land vehicles and trailers used to rig down, transport, and rig up pressure pumping equipment and well services equipment;

·       Oil and gas pumping and extraction, in the nature of well production, completion, improvement, enhancement, and stimulation services; hydraulic fracturing of oil and gas wells; oil and gas well pressure pumping services; oilfield services; oil and gas reservoir enhancement services; cementing services for oil and gas wells; nitrogen and acidizing oil and gas wells; remedial work on oil and gas wells;

·       Oil and gas well treatment services; oil and gas well treatment in the nature of oil and gas well fracturing.

 

The cited registrations are:

 

·       UNI UNIVERSAL HORIZONTAL DIRECTIONAL DRILLING & Design, Reg. No. 4454404, for Earth boring machines, guided boring machines, directional drilling machines and machines for handling mud used with boring and drilling equipment, owned by Universal Horizontal Drilling Company (“Registrant UHDC”);

·       UNIVERSAL GROUP (Standard Character), Reg. No. 4289577, for suspension components for land vehicles, namely, leaf springs, air springs, coil springs, grease seals, bearings, bushings, equalizers, spindles, torsion arms, full beam axles, half axles, stub axles, brake drums, idlers, magnetic brakes, brake magnets, rim clamps, spring pins, threaded rods, u bolts, tie rod ends, drag links, suspension component castings, stampings, wedges, coil springs, and repair plates, all for land vehicles; axle components for land vehicles, namely, hubs, flanges, drums, and cotter pins, all for land vehicles, owned by The Universal Group Corporation (“Registrant TUGC”);

·       THE UNIVERSAL GROUP CORP (Standard Character), Reg. No. 4289575, for suspension components for land vehicles, namely, leaf springs, air springs, coil springs, grease seals, bearings, bushings, equalizers, spindles, torsion arms, full beam axles, half axles, stub axles, brake drums, idlers, magnetic brakes, brake magnets, rim clamps, spring pins, threaded rods, u bolts, tie rod ends, drag links, suspension component castings, stampings, wedges, coil springs, and repair plates, all for land vehicles; axle components for land vehicles, namely, hubs, flanges, drums, and cotter pins, all for land vehicles, owned by Registrant TUGC.

·       U UNIVERSAL ENGINEERING SCIENCES & Design, Reg. No. 3227350, for Well drilling and pile driving services, among other services, owned by Universal Engineering Services, Inc. (“Registrant UES”);

·       U UNIVERSAL ENGINEERING SCIENCES & Design, Reg. No. 3227349, for Well drilling and pile driving services, among other services, owned by Registrant UES.

·       UNIVERSAL TRAILER & Design, Reg. No. 2928986, for trailers, namely, bulk hauling trailers, camping trailers, cargo trailers, semi-trailers, equine trailers, livestock trailers, motorsports trailers, and automobile trailers, owned by Universal Trailer Corporation (“Registrant UTC”);

·       UNIVERSAL TRAILER (Standard Character), Reg. No. 2821139, for trailers, namely, bulk hauling trailers, camping trailers, cargo trailers, semi-trailers, equine trailers, livestock trailers, motorsports trailers, and automobile trailers, owned by Universal Trailer Corporation (“Registrant UTC”).

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Comparison of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

 

Applicant’s mark and each of the cited registrations contains the wording “UNIVERSAL.” As such, the marks are identical in part. Applicant’s mark deletes the additional wording in the registered marks, and adds a design element, which is insufficient to distinguish the mark for the reasons discussed below.

 

The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registered mark, and there is no other wording to distinguish it from the registered mark.

 

This is particularly true when the additional term is descriptive or generic for the goods because although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii).

 

Further, the fact that several of the cited registrations contain designs does not distinguish the marks from applicant’s mark because the wording of the mark is the dominant portion of the mark because for a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods and/or services.  Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)).  Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). 

 

These principles, as applied to the cited registrations, establish that the marks have similar appearances, meanings, and commercial impressions, such that the marks are confusingly similar.

 

1. UNI UNIVERSAL HORIZONTAL DIRECTIONAL DRILLING & Design, Reg. No. 4454404

 

Applicant’s UNIVERSAL & Design mark shares dominant terms in common with this cited registration. In the registered mark, “HORIZONTAL DIRECTIONAL DRILLING” is disclaimed, and because “UNI” is part of the design element, “UNIVERSAL” is the dominant element of the registered mark. Therefore, the marks have similar appearances, meanings and commercial impressions, such that they are confusingly similar.

 

2. UNIVERSAL GROUP (Standard Character), Reg. No. 4289577 and THE UNIVERSAL GROUP CORP (Standard Character), Reg. No. 4289575

 

Again, the dominant term in applicant’s mark, “UNIVERSAL,” is identical to the dominant terms in the registered marks, as “GROUP” and “GROUP CORP” are disclaimed. Moreover, the addition of the design element in applicant’s mark does not distinguish it from the registered mark because registrant’s mark is in standard characters.

 

 A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

Therefore, the marks have closely similar meanings, and overall commercial impressions, such that this factor weighs in favor of a likelihood of confusion.

 

3. U UNIVERSAL ENGINEERING SCIENCES & Design, Reg. No. 3227350 and Reg. No. 3227349

 

Once more, applicant’s mark shares its dominant term with the dominant term of the cited registrations. In these registrations, the wording “ENGINEERING SCIENCES” is disclaimed, and with the design element, the wording “UNIVERSAL” is the dominant portion of the mark. Further, when used in connection with nearly identical services, the meanings and commercial impressions of the mark are closely similar. Therefore, this factor weighs in favor of a likelihood of confusion.

 

4. UNIVERSAL TRAILER & Design, Reg. No. 2928986

 

Applicant’s UNIVERSAL & Design mark shares dominant terms in common with this cited registration. In the registered mark, “HORIZONTAL DIRECTIONAL DRILLING” is disclaimed, and the design element is given lesser weight in the analysis. Thus, “UNIVERSAL” is the dominant element of the registered mark. Therefore, the marks have similar appearances, meanings and commercial impressions, such that they are confusingly similar.

 

5. UNIVERSAL TRAILER (Standard Character), Reg. No. 2821139

 

Again, the dominant term in applicant’s mark, “UNIVERSAL,” is identical to the dominant term in the registered mark, as “TRAILER” is disclaimed. Moreover, the addition of the design element in applicant’s mark does not distinguish it from the registered mark because registrant’s mark is in standard characters. As explained above, a mark in standard characters may be displayed in any format, including the format used by applicant. Therefore, as used on nearly identical goods, the marks have similar meanings, such that this factor weighs in favor of a likelihood of confusion.

 

Comparison of the Goods and Services

 

With respect to applicant’s and registrant’s goods and services, the question of likelihood of confusion is determined based on the description of the goods and/ services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Absent restrictions in an application and/or registration, the identified goods and services are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described.  See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). 

 

1. UNI UNIVERSAL HORIZONTAL DIRECTIONAL DRILLING & Design, Reg. No. 4454404

 

In this case, the identification set forth in the registration has no restrictions as to nature, type, channels of trade, or classes of purchasers.  Therefore, it is presumed that these goods travel in all normal channels of trade, and are available to the same class of purchasers as those identified in applicant’s identification.  Further, the application uses broad wording to describe its “equipment used in oil and gas well improvement and/or completion services” and this wording is presumed to encompass all goods of the type described, including those “Earth boring machines, guided boring machines, directional drilling machines and machines for handling mud used with boring and drilling equipment” identified in registrant’s more narrow identification

 

As set out in the attached evidence, “well improvement” includes hydraulic fracturing, which employs drilling machines. http://www.what-is-fracking.com/what-is-hydraulic-fracturing/; http://well-improvement.com/hydrofracturing.html. As such, equipment for well improvement is so broad as to include registrant’s “drilling machines.”

 

2. UNIVERSAL TRAILER & Design, Reg. No. 2928986 and UNIVERSAL TRAILER (Standard Character), Reg. No. 2821139

 

Similarly, Registrant UTC’s goods are identified broadly as “bulk hauling trailers” and “cargo trailers,” without restrictions as to the channels of trade or purchasers such that they are presumed to be sold to all classes of purchasers, including those in the oil and gas well industry. Moreover, these broadly identified goods are presumed to encompass the more narrowly identified “trailers used to rig down, transport, and rig up pressure pumping equipment and well services equipment” in applicant’s identification. Moreover, the attached third party marks registered for use in connection with the equipment trailers and cargo trailers show that the goods are of a kind that may emanate from a single source under a single mark.  See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii). See Registration Nos. 4264518, 4426475, 4587499, 4613487, 4669970, 4686921, 4738550, 4749298, 4751133, and 4767270. Therefore, the goods are related for purposes of a likelihood of confusion.

 

3. U UNIVERSAL ENGINEERING SCIENCES & Design, Reg. No. 3227350 and Reg. No. 3227349

 

In the same vein, Registrant UES’s identification of services is not limited to well drilling and pile driving in any specific industry, such that it is read to include well drilling and pile driving services in the oil and gas well industry. In addition, applicant’s services are identified so broadly, that Oil and gas pumping and extraction, in the nature of well production, completion, improvement, enhancement, and stimulation services; oilfield services; and remedial work on oil and gas wells is read to include well drilling services. Therefore, the services of the parties are related and support a finding of a likelihood of confusion.

 

4. UNIVERSAL GROUP (Standard Character), Reg. No. 4289577 and THE UNIVERSAL GROUP CORP (Standard Character), Reg. No. 4289575

 

Finally, as for the UNIVERSAL GROUP Registration, applicant’s land vehicles are related to Registrant TUGC’s “suspension components for land vehicles, namely, leaf springs, air springs, coil springs, grease seals, bearings, bushings, equalizers, spindles, torsion arms, full beam axles, half axles, stub axles, brake drums, idlers, magnetic brakes, brake magnets, rim clamps, spring pins, threaded rods, u bolts, tie rod ends, drag links, suspension component castings, stampings, wedges, coil springs, and repair plates, all for land vehicles; axle components for land vehicles, namely, hubs, flanges, drums, and cotter pins, all for land vehicles,” because they are goods that are commonly offered to by the same companies under the same mark through the same trade channels.

 

The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely land and motor vehicles, and suspension components and axle components, are of a kind that may emanate from a single source under a single mark.  See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii). See Registration Nos. 4778845, 4283161, 2057276, 1721365, 0843138, 1400808, 3658024, 4210230, 4634200, 4618679, 3899607, 4450026, and 4268334.

 

The attached Internet evidence consists of printouts from car company websites advertising their vehicles and their suspension parts. 

 

• http://www.nissanusa.com/;
• http://parts.nissanusa.com/nissanparts/?selyear=2012&selmodel=Altima+Sedan&searchText=suspension&action=replacement&makeid=25&siteid=14&catalogID=0;
• http://www.ford.com/;
• http://www.fordparts.com/Commerce/CatalogResults.aspx?y=2013&m=Ford&mo=Escape#Search;
• http://www.toyota.com/;
• http://www.toyota.com/owners/parts-service/parts.

 

This evidence establishes that the same entity commonly manufactures the relevant goods markets the goods under the same mark and that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  Therefore, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). Therefore, the goods are related and this factor weighs in favor of a likelihood of confusion.

 

In sum, the similarities between the marks’ appearances and overall commercial impressions combined with the close relationship between the goods results in a likelihood of confusion and registration is refused under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

MARK DESCRIPTION

 

Applicant must provide a complete mark description because the mark description in the application does not include all elements and/or colors shown in the mark.  A complete mark description for a mark depicted in color must identify all the literal and design elements in the mark and specify where the colors appear in those elements.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(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).

 

The following mark description is suggested, if accurate:

 

The mark consists of the following: the red stylized wording “UNIVERSAL” superimposed over a black stylized design of an oil and gas drilling rig with a black arrow pointing down from the bottom of the oil rig. The color white in the mark represents background and is not claimed as a feature of the mark.

 

IDENTIFICATON OF GOODS AND SERVICES

 

The following wording in the identification of goods and services is indefinite and must be clarified to specify the goods or services by their common commercial names, or to specify purpose and application of the goods and services: (1) equipment used in oil and gas well improvement and/or completion services; (2) oilfield services; (3) oil and gas reservoir enhancement services; (4) nitrogen and acidizing oil and gas wells; (5) remedial work on oil and gas wells. See TMEP §1402.01.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  See id.

 

Specifically, the word “equipment” in the identification of goods is indefinite and must be clarified because it is too broad and could refer to goods in more than one international class.  Applicant must amend the identification by stating the common generic name of each item or by describing the nature, purpose and intended use of each item.  See TMEP §§1402.01, 1402.03.

 

In addition, applicant must clarify the following goods in the identification of goods by specifying their purpose or application: (1) top drives; and (2) automatic catwalks.  See TMEP §1402.01.

 

The following goods and services are classified incorrectly: (1) hoses; and (2) oil and gas well treatment in the nature of oil and gas well fracturing.  Applicant must amend the application to classify the hoses according to their composition and classify the services in International Class 37.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Generally, the terminology “and/or” and “or” is not sufficiently explicit language in identifications because it is not clear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services.  See TMEP §1402.03(a). 

 

Therefore, applicant should replace “and/or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” deleted and the goods or services specified using definite and unambiguous language.

In the following proposed amendments, changes are noted in bold. In addition to the changes required above, there are also minor language changes to use language more widely understood outside the gas and oil industry. Where indicated, applicant needs to specify the nature of the goods and/or services provided in accordance with the guidelines set out below. Applicant may accept any of the suggested amendments, if accurate. However, any other amendments must conform to the same level of specificity and structure set out in the USPTO’s Acceptable Identification of Goods and Services Manual.

Applicant may amend to the following, if accurate:

International Class 6: added class – moved from class 7

 

Metal hoses for use in the oil and gas well hydraulic fracturing industry.

 

International Class 7:

 

Equipment used in oil and gas well improvement and/or completion services, namely,                         {specify goods in International Class 7, e.g., high-pressure pumps, hydraulic pumps, electric pumps, etc.}; equipment for use in oil or gas well hydraulic fracturing operations, namely,                    {specify type of pump, e.g., hydraulic, silt, suction, etc.} pumps and hoses; high-pressure pumps used in oil and gas well services.

 

International Class 12:

 

Land vehicles; equipment trailers; Land vehicles and trailers used to rig down take apart, transport, and set up rig up drilling rigs, oilfield equipment, pressure pumping equipment, and well services equipment

 

International Class 17: added class

 

Non-metal hoses for use in the oil and gas well hydraulic fracturing industry.

 

International Class 37:

 

Oil and gas pumping and extraction, in the nature of well production, completion, improvement, enhancement, and stimulation services; hydraulic fracturing of oil and gas wells; oil and gas well pressure pumping services; oilfield services, namely,               {specify services by common commercial name, e.g., construction and repair of drilling rigs, oil and gas wells, waste cleanup, etc.}; oil and gas reservoir enhancement services, namely, hydraulic fracturing of subsurface geologic formations to enhance well production; cementing services for oil and gas wells; oil and gas well enhancing services, namely, the injection of nitrogen and acid to oil and gas wells to increase the oil and gas recovery; remedial work on oil and gas wells, namely,            {specify types of services, e.g., repair, conditioning, cementing services for oil and gas wells}; oil and gas well fracturing.

 

International Class 40:

 

Oil and gas well treatment services. oil and gas well treatment in the nature of oil and gas well fracturing

 

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.

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS

 

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 Section 1(b):

 

(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 6 classes; however, applicant submitted a fee(s) sufficient for only 4 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 Section 1(b) 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.

 

RESPONSE GUIDELINES

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

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.

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee. 

 

 

 

/Erica Jeung Dickey/

Examining Attorney

Law Office 112

571-270-3517

erica.dickey@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 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 9/25/2015 FOR U.S. APPLICATION SERIAL NO. 86655108

 

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 9/25/2015 (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.