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: 5/11/2016

 

THIS IS A FINAL ACTION.

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on 3/25/2016.

 

In a previous Office action dated 9/25/2015, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  In addition, applicant was required to satisfy the following requirements:  amend the identification of goods, address the multi-class application requirements and clarify the mark description.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: 

·       Multi-class Application Requirement

·       Clarification of the Mark Description

 

See TMEP §§713.02, 714.04. 

 

The following refusals have been withdrawn:  The Section 2(d) Likelihood of Confusion Refusal against U.S. Registration Nos. 4454404, 4289577, 4289575, 3227350, 3227349, 2928986, and 2821139.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Identification of Goods

 

Identification of Goods-FINAL

 

The identification of goods is still indefinite and must be clarified because the wording “acid and chemical additive transport and storage equipment; sand storage/conveyance equipment; iron manifold equipment” is overly broad and the applicant must specify the goods by common commercial name.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

An application must specify, in an explicit manner, the particular goods 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.  See TMEP §1402.03(a).  

 

For example, “modems and/or monitors” could refer to “modems or monitors” and is unclear which goods applicant intends to identify.  Therefore, applicant should replace “and/or” with “and” in the identification of goods, if appropriate, or rewrite the identification with the “and/or” deleted and the goods specified using definite and unambiguous language.

 

Next, the identification of goods contains parentheses.  Generally, applicants should not use parentheses in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses in registrations to indicate goods that have been deleted from registrations.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods.

 

Lastly, the following wording is misclassified “sand hauling trucks; iron (pipe); trucks to transport the iron; cement pump trucks; trailer mounted and body communications, command, and control units in the nature of data vans or other mobile units; cement storage bins” and this wording must be properly classified in the appropriate class.

 

Applicant may adopt the following identifications, if accurate:

 

International Class 06: Metal hoses for use in the oil and gas well hydraulic fracturing industry; iron pipes; metal storage bins for cement

 

International Class 07: Equipment used in oil and gas well improvement and completion services and oil and gas well hydraulic fracturing operations, namely, trailer mounted and body load high-pressure frac pumps, trailer mounted and body load blenders, acid and chemical additive transport and storage equipment, namely, {applicant must specify the type of equipment by common commercial name}, sand storage/conveyance equipment, namely, {applicant must specify the type of equipment by common commercial name}, iron manifold equipment, namely, {applicant must specify the type of equipment by common commercial name}; high-pressure pumps used in oil and gas well services

 

International Class 12: Land vehicles used to take down, transport, and set up pressure pumping equipment and well services equipment; sand hauling trucks; trucks used to transport iron; cement pump trucks; Vans used for mobile offices featuring trailer mounted and body communications, command, and control units

 

International Class 17: Non-metal hoses for use in the oil and gas well hydraulic fracturing industry

 

International Class 37: Hydraulic fracturing of oil and gas wells; oil and gas well pressure pumping services; oilfield services, namely, cementing well casing strings as part of the well construction process, hydraulic fracturing and acidizing of target geologic formations to enhance production of the well, and pump-down services used to perforate the production areas of horizontal wells; 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, re-hydraulic fracturing and re-cementing services; oil and gas well fracturing

 

International Class 40: Oil and gas well treatment services

 

Applicant’s goods 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.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods or add goods not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.  See TMEP §1402.04.

 

Proper Response to Final Office Action-Partial Requirements

 

Applicant must respond within six months of the date of issuance of this final Office action or the following goods to which the final requirements apply will be deleted from the application by Examiner’s Amendment:  “Equipment used in oil and gas well improvement and completion services and oil and gas well hydraulic fracturing operations, namely, trailer mounted and body load high-pressure frac pumps, trailer mounted and body load blenders, acid and chemical additive transport and storage equipment; sand storage/conveyance equipment; iron manifold equipment.”  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following goods and services:

 

International Class 06: Metal hoses for use in the oil and gas well hydraulic fracturing industry; iron pipes; metal storage bins for cement

 

International Class 07: High-pressure pumps used in oil and gas well services

 

International Class 12: Land vehicles used to take down, transport, and set up pressure pumping equipment and well services equipment; sand hauling trucks; trucks used to transport iron; cement pump trucks; Vans used for mobile offices featuring trailer mounted and body communications, command, and control units

 

International Class 17: Non-metal hoses for use in the oil and gas well hydraulic fracturing industry

 

International Class 37: Hydraulic fracturing of oil and gas wells; oil and gas well pressure pumping services; oilfield services, namely, cementing well casing strings as part of the well construction process, hydraulic fracturing and acidizing of target geologic formations to enhance production of the well, and pump-down services used to perforate the production areas of horizontal wells; 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, re-hydraulic fracturing and re-cementing services; oil and gas well fracturing

 

International Class 40: Oil and gas well treatment services

 

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

 

(1)       A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.

 

(2)       An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 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).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

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. 

 

 

 

/Jay K Flowers/

United States Patent and Trademark Office

Trademark Examining Attorney

Law Office 112

571.272.8202

jay.flowers@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 5/11/2016 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 5/11/2016 (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.