To: | TENARIS CONNECTIONS B.V. (docketingtm@hdp.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87519522 - RIG DIRECT - 6140-200049 |
Sent: | 5/3/2018 4:53:02 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87519522
MARK: RIG DIRECT
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: TENARIS CONNECTIONS B.V.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 5/3/2018
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 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 RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of 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 RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
INTRODUCTION
This new, non-final Office action is in response to the applicant’s Response to Office Action filed on April 11, 2018.
In the initial Office action of October 11, 2017, the Office issued a Section 2(e)(1) merely descriptive refusal and required the applicant to proffer additional information about its services and amend the recitation of services. The applicant also was advised of a potential Section 2(d) likelihood of confusion refusal and amending its application to the Supplemental Register.
The applicant responded by SATISFYING the additional information requirement and OBVIATING the Section 2(e)(1) refusal by filing an acceptable Amendment to Allege Use and amending its application to the Supplemental Register. As a result, the applicant must disclaim the generic term “RIG” in its mark on the Supplemental Register for the reasons stated below. This constitutes a NEW ISSUE, and the recitation of services amendment requirement and potential Section 2(d) refusal are MAINTAINED AND CONTINUED.
The applicant must address:
The potential Section 2(d) likelihood of confusion refusal is MAINTAINED AND CONTINUED.
DISCLAIMER REQUIRED – NEW ISSUE
“A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.” TMEP §1209.01(c)(i) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1600 (TTAB 2014)). Determining whether a mark is generic requires a two-step inquiry:
(1) What is the genus of services at issue?
(2) Does the relevant public understand the designation primarily to refer to that genus of services?
H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d at 989-90, 228 USPQ at 530 ; In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1463 (TTAB 2015) (citing In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1363, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009)); TMEP §1209.01(c)(i).
Regarding the first part of the inquiry, the genus of services is often defined by an applicant’s recitation of services. See In re Meridian Rack & Pinion, 114 USPQ2d at 1463 (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)).
In this case, the application identifies the services as “Advice and consultancy regarding the use and demand for materials used at oil and gas and geothermal drilling operations; management and replenishment of inventories of materials used in oil and gas and geothermal drilling operations and resetting inventory and shelf arrangements; cost analysis and inventory control and management; advice, information and consultation services in connection with the aforesaid activities”, which adequately defines the genus at issue.
Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified services. Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553). In this case, the relevant public comprises ordinary consumers who use applicant’s services because there are no restrictions or limitations to the channels of trade or classes of consumers. Additionally, in response to the Office’s requirement for additional information, the applicant confirmed that its services will touch-and-concern oil rigs. Though the applicant does not explicitly use the wording rig or rigs in the recitation of services, it may be presumed from wording such as “materials used at oil and gas and geothermal drilling operations” that the applicant is referring, in part, to rigs. Thus, the wording “RIG” in the applied-for mark refers primarily to the genus of the preceding services and must be disclaimed as a result on the Supplemental Register.
All generic names of a service are not registrable and belong in the public domain for competitors to use. See In re Women’s Publ’g Co., 23 USPQ2d 1876, 1877 (TTAB 1992) (citing In re Sun Oil Co., 426 F.2d 401, 404, 165 USPQ 718, 719 (C.C.P.A. 1970) (Rich, J., concurring)). 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 “RIG” 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.
RECITATION OF SERVICES AMENDMENT REQUIRED –
MAINTAINED AND CONTINUED
In this case, the application originally identified the services as follows: “Business research and evaluation; business management and advice; business advice and consultancy regarding the demand for materials; inventory management and preparation for others; cost analysis and inventory control and management; advice, information and/or consultation services in connection with the aforesaid activities.”
However, the proposed amendment identifies the following services: “Advice and consultancy regarding the use and demand for materials used at oil and gas and geothermal drilling operations; management and replenishment of inventories of materials used in oil and gas and geothermal drilling operations and resetting inventory and shelf arrangements; cost analysis and inventory control and management; advice, information and consultation services in connection with the aforesaid activities.”
The portion of the proposed amendment that is beyond the scope of the original identification is “Advice and consultancy regarding the use and demand for materials used at oil and gas and geothermal drilling operations” because the applicant omitted the fact that these services are rendered to businesses or are in the nature of business advice and consulting. Additionally, reference to providing advice and consulting on “us[ing]” materials appears nowhere in the original identification. If anything, this wording is equivalent to consumer product information in Class 35 or technical information in Class 42.
Therefore, the applicant may adopt the following recitation of services, if accurate:
Class 35: Business advice and consultancy regarding the use and demand for
materials used at oil and gas and geothermal drilling operations; management and replenishment of inventories of materials used in oil and gas and geothermal drilling operations and resetting
inventory and shelf arrangements; cost analysis and inventory control and management; advice, information and consultation services in connection with the aforesaid activities.
Applicant’s 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. 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 services or add services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the services 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 services will further limit scope, and once services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
POTENTIAL SECTION 2(d) REFUSAL – PRIOR PENDING APPLICATIONS – MAINTAINED AND CONTINUED
The potential Section 2(d) likelihood of confusion refusal arising from U.S. Application Serial Nos. 87108394 and 87297478 is MAINTAINED AND CONTINUED.
RESPONSE GUIDELINES
/Kevin G. Crennan/
Trademark Examining Attorney
Law Office 113
(571) 272-7949
kevin.crennan@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.