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.  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: 11/15/2018

 

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 $125 per 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 or e-mail without incurring this additional fee.  

 

THIS IS A FINAL ACTION.

 

This final Office action is in response to the applicant’s Responses to Office Action filed on October 23, 2018.

 

In the non-final Office action of May 3, 2018, the Office required the applicant to disclaim the wording “RIG” in its mark as generic and amend the recitation of services.  The applicant also was advised of prior-filed applications that may be the subject of a Section 2(d) likelihood of confusion refusal should those applications register.

 

As an initial matter, the referenced pending applications have abandoned and are no longer a potential bar to the registration of applicant’s mark.  Additionally, the applicant responded by SATISFYING the identification-related requirement and voluntarily disclaiming the wording “DIRECT”.  The applicant also argued against the disclaimer requirement as it pertains to the wording “RIG”, which the Office finds unpersuasive for the reasons set forth below and which is MAINTAINED AND MADE FINAL.  See 37 C.F.R. §2.63(b).

 

SUMMARY OF ISSUES

 

The applicant must address:

 

• Disclaimer Required – MAINTAINED AND MADE FINAL.

 

DISCLAIMER REQUIRED – MAINTAINED AND MADE FINAL

 

Applicant must disclaim the wording “RIG” because it is a generic designation for applicant’s services and is thus an unregistrable component of the mark.  See 15 U.S.C. §§1056(a), 1091(c); In re Water Gremlin Co., 635 F.2d 841, 845 n.6, 208 USPQ 89, 91 n.6 (C.C.P.A. 1980) (citing In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977)); TMEP §1213.03(b). 

 

“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 identification 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 “[b]usiness 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.  The attached evidence from The American Heritage Dictionary of the English Language shows that the wording “RIG” in the applied-for mark means “[t]he special apparatus used for drilling oil wells and extracting the oil,” http://www.ahdictionary.com/word/search.html?q=rig, and thus the relevant public would understand this designation to refer primarily to the genus of services because third parties routinely provide the aforementioned services by, e.g., modifying said services with the addition of the wording “RIG”.  See, e.g., http://rig-serv.com/2017/10/02/mobileprinting/ (providing information about “rig inventory management”); http://www.premiumoilfield.com/consignment-box.html (“We accept complete accountability for rig inventory management.”); http://www.bloomberg.com/profiles/companies/0026804D:US-youngco-rig-services (providing “business consulting services” under the category of “Rig Services”); http://www.scmdaleel.com/category/onshore-rigs/15 (providing rig cost analysis); http://www.oilandgasonline.com/doc/rig-cost-accounting-0001 (same); http://www.patenergy.com/services/patterson-uti-drilling/rig-locator/default.aspx (providing “rig inventory” services); http://www.aban.com/info_vims.asp (providing “Visual Rig Inventory Management Systems”); http://www.halliburton.com/en-US/ps/project-management/project-management/ipm-sourcing.html (providing procurement services of rigs); http://www.calstonkingsland.com/jack-up-rigs-supply-vessels/ (providing “rig … procurement”); http://www.agr.com/our-capabilities/drilling-wells/well-projects/rig-procurement (same); http://www.parkerdrilling.com/drilling-rig-procurement-management-services/ (providing “rig procurement management services”).  In fact, the applicant, under the general category of “Rig services”, identifies “inventory management” as a subgenus of the “Rig services” it offers. 

 

Additionally, the name of a key aspect, a central focus or feature, or a main characteristic of services may be generic for those services.  See In re Cordua Rests., Inc., 823 F.3d 594, 604, 118 USPQ2d 1632, 1637-38 (Fed. Cir. 2016) (affirming the Trademark Trial and Appeal Board’s holding of CHURRASCOS (a type of grilled meat) generic for restaurant services); In re Hotels.com LP, 573 F.3d 1300, 1304, 91 USPQ2d 1532, 1535 (Fed. Cir. 2009) (affirming the Trademark Trial and Appeal Board’s holding of HOTELS.COM generic for travel agency services, namely, making reservations and bookings for temporary lodging, and providing information about temporary lodging); In re Reed Elsevier Props., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007) (affirming the Trademark Trial and Appeal Board’s holding of LAWYERS.COM generic for an online database featuring an information exchange in the fields of law, legal news, and legal services); In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1091-93 (TTAB 2017) (holding LOCKDOWN ALARM generic for training services focusing on the use of and response to lockdown alarms); In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1465-66 (TTAB 2015) (holding BUYAUTOPARTS.COM generic for on-line retail store services featuring auto parts); In re Tires, Tires, Tires, Inc., 94 USPQ2d 1153, 1157 (TTAB 2009) (holding TIRES TIRES TIRES generic for retail tire store services); In re Eddie Z’s Blinds & Drapery, Inc., 74 USPQ2d 1037, 1042 (TTAB 2005) (holding BLINDSANDDRAPERY.COM generic for online retail store services featuring blinds, draperies, and other wall coverings); In re Candy Bouquet Int’l, Inc., 73 USPQ2d 1883, 1888 (TTAB 2004) (holding CANDY BOUQUET generic for “retail, mail, and computer order services in the field of gift packages of candy”); In re Cent. Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998) (holding ATTIC generic for automatic sprinklers for fire protection used primarily in attics); In re Ricci-Italian Silversmiths, Inc., 16 USPQ2d 1727, 1729-30 (TTAB 1990) (holding ART DECO generic for flatware); In re Hask Toiletries, Inc., 223 USPQ 1254, 1255 (TTAB 1984) (holding HENNA ‘N’ PLACENTA generic for hair conditioner); see also In re Northland Aluminum Prods. Inc., 777 F.2d 1556, 1559-60, 227 USPQ 961, 963-64 (Fed. Cir. 1985) (holding BUNDT generic for cake mix); In re A La Vieille Russie, Inc., 60 USPQ2d 1895, 1900 (TTAB 2001) (holding RUSSIANART generic for art dealership services); TMEP §1209.03(v); see also A.J. Canfield Co. v. Honickman, 808 F.2d 291, 292, 1 USPQ2d 1364, 1365 (3d Cir. 1986) (holding CHOCOLATE FUDGE generic for diet sodas).  Thus, a term does not need to be the name of a specific service to be found generic.  In this case, because the applicant explicitly stated in its April 11, 2018, Response to Office Action that its services touch-and-concern rigs, the wording “RIG” in the applied-for mark identifies, at the very least, a key aspect, a central focus or feature, or a main characteristic of these services.  Additionally, though the applicant does not explicitly identify rigs in the recitation of services, other wording in the identification such as “materials used at oil and gas and geothermal drilling operations” encompasses rigs.  See http://www.ahdictionary.com/word/search.html?q=rig (defining a rig as “[t]he special apparatus used for drilling oil wells and extracting the oil”). 

 

Though the applicant disclaimed the wording “DIRECT” in order to be consistent with its prior registration RIG DIRECT (U.S. Registration No. 5377080), trademark examining attorneys are not bound by the actions of past examining attorneys in prior registrations, even if the registrations have some characteristics similar to the application at issue; each case is decided on its own merits.  See In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017); In re Manwin/RK Collateral Trust, 111 USPQ2d 1311, 1315 (TTAB 2014) (citing In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)).  Additionally, the services identified in the prior registration in Class 35 only pertain to “preparing documents for the tracking of shipments of articles to ensure on-time delivery for business purposes” and “inventory management and control and accounting” whereas the services identified in the application include a number of other services in Class 35, such as business advice and consulting, inventory replenishment, and cost analysis.  As a result, the examiner in the prior registration would not have been able to make a determination as to whether the wording “RIG” would be generic for other services in Class 35.

 

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.

 

VOLUNTARY DISCLAIMER OF REGISTRABLE MATTER ADVISORY

 

The application includes a disclaimer of the following matter in the applied-for mark: “DIRECT.”  An applicant may voluntarily disclaim matter in a mark regardless of whether the matter is registrable.  TMEP §1213.01(c); see 15 U.S.C. §1056(a).  However, a disclaimer of this matter is not required.

 

Therefore, to the extent the applicant disclaims the wording “RIG”, then applicant must request to withdraw this disclaimer from the application as the entire mark may not be disclaimed.  TMEP §1213.06; see 15 U.S.C. §1056(a); In re Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re JT Tobacconists, 59 USPQ2d 1080, 1081 n.1 (TTAB 2001). 

 

RESPONSE GUIDELINES

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  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 the outstanding requirement; 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).

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the requirement in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.

 

/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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 11/15/2018 FOR U.S. APPLICATION SERIAL NO. 87519522

 

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 11/15/2018 (or sooner if specified in the Office action).  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.  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 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.