NOTE TO THE FILE
Sent to TICRS as Serial Number: 88022675SERIAL NUMBER: 88001842
DATE: 10/05/2018
NAME: kpreet
NOTE:
Searched:
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Other:Checked:
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Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:From: Preet, Kamal
Sent: Friday, October 05, 2018 12:11 PM
To: 'Kurka, James L' <JAMES.KURKA@Weatherford.com>
Subject: RE: [EXTERNAL] RE: SERIAL NUMBER 88001842 Docket Number: VERO and 88022675 Docket Number: xQuartz
Dear Mr. Kurka:
I understand the reasoning, however for purposes of definiteness and classification rules in the Identification manual the wording “engineering” will be necessary.
Thank you for your cooperation and willingness to resolve this matter efficiently through Examiner’s Amendment. I feel proceed as follows:
Class 37
Oil and gas services for well drilling construction; rental of equipment and tools for automated tubular running operations in the oil and gas industry;
Class 42
Engineering evaluation of pipe make up and connections
Thank You,
Kamal
From: Kurka, James L [mailto:JAMES.KURKA@Weatherford.com]
Sent: Thursday, October 04, 2018 5:33 PM
To: Preet, Kamal <Kamal.Preet@USPTO.GOV>
Subject: RE: [EXTERNAL] RE: SERIAL NUMBER 88001842 Docket Number: VERO and 88022675 Docket Number: xQuartz
Dear Examiner Preet,
“Engineering” would be better, if we needed that. The service at issue is one that connects two sections of pipe using threaded connections that each pipe has on its ends. Once the pipes have been “made up,” the service evaluates the make up and the pipe, and that is why we believe “Engineering” is unnecessary to make it definite.
If you disagree, please use “Engineering” rather than “Materials.”
Best regards,
James Kurka
Senior Counsel, Intellectual Property
Law Department
Weatherford │ 2000 St. James Place │ Houston │ Texas │ 77056
Direct: +1.713.836.6874 │ Mobile: +1.713.254.9714
james.kurka@weatherford.com │ www.weatherford.com
From: Preet, Kamal [mailto:Kamal.Preet@USPTO.GOV]
Sent: Thursday, October 04, 2018 3:34 PM
To: Kurka, James L
Subject: RE: [EXTERNAL] RE: SERIAL NUMBER 88001842 Docket Number: VERO and 88022675 Docket Number: xQuartz
Thank you.
If “engineering” is deleted then it is too broad and the wording is indefinite and unacceptable. The wording “Materials” will need to be added to modify and also qualify the “evaluation of pipe make up and connections” services in Class 42.
I will update the application as follows, if acceptable to you:
Class 37
Oil and gas services for well drilling construction; rental of equipment and tools for automated tubular running operations in the oil and gas industry;
Class 42
Materials evaluation of pipe make up and connections.
Thank You,
Kamal
From: Kurka, James L [mailto:JAMES.KURKA@Weatherford.com]
Sent: Thursday, October 04, 2018 3:51 PM
To: Preet, Kamal <Kamal.Preet@USPTO.GOV>
Cc: Weatherford Trademarks <WFT.Trademarks@weatherford.com>
Subject: RE: [EXTERNAL] RE: SERIAL NUMBER 88001842 Docket Number: VERO and 88022675 Docket Number: xQuartz
I understand. Your proposal is fine, but we would still like to omit the word “engineering.”
Best regards,
James Kurka
Senior Counsel, Intellectual Property
Law Department
Weatherford │ 2000 St. James Place │ Houston │ Texas │ 77056
Direct: +1.713.836.6874 │ Mobile: +1.713.254.9714
james.kurka@weatherford.com │ www.weatherford.com
From: Preet, Kamal [mailto:Kamal.Preet@USPTO.GOV]
Sent: Thursday, October 04, 2018 2:38 PM
To: Kurka, James L
Subject: [EXTERNAL] RE: SERIAL NUMBER 88001842 Docket Number: VERO and 88022675 Docket Number: xQuartz
Dear Mr. Kurka:
Thank you for your email back so quickly.
These services will still remain as a part of the applicant’s services even if they are moved to Class 42. Specifically, the wording “including pipe makeup and connection evaluation” in Class 37 is not a type of service that can be classified in Class 37 because it is an engineering evaluation service and these type of services are classified in Class 42. This is why it must be moved to a different class. Please let me know if this is confusing or if you need further explanation.
If this explanation makes the amendments acceptable, please let me know and I will make the appropriate changes in VERO application as well.
Thank you for your approval to the amendments in xQuatz.
Thank You,
Kamal
From: Kurka, James L [mailto:JAMES.KURKA@Weatherford.com]
Sent: Thursday, October 04, 2018 3:23 PM
To: Preet, Kamal <Kamal.Preet@USPTO.GOV>
Cc: Weatherford Trademarks <WFT.Trademarks@weatherford.com>
Subject: FW: SERIAL NUMBER 88001842 Docket Number: VERO and 88022675 Docket Number: xQuartz
Dear Examiner Preet,
As to VERO, the amendments are acceptable, except that we want to keep “including pipe makeup and connection evaluation” in Class 37 because that is an important feature of the service. Also, can we remove the proposed word “Engineering” from the Class 42 description?
Our client selected that name at the trade name, and I am not aware of any particular significance.
As to xQuartz, all of your proposed amendments are acceptable.
Please let me know if you have any other questions, and if our exceptions for VERO are ok.
Best regards,
James Kurka
Senior Counsel, Intellectual Property
Law Department
Weatherford │ 2000 St. James Place │ Houston │ Texas │ 77056
Direct: +1.713.836.6874 │ Mobile: +1.713.254.9714
james.kurka@weatherford.com │ www.weatherford.com
From: Preet, Kamal <Kamal.Preet@USPTO.GOV>
Sent: Thursday, October 4, 2018 1:58 PM
To: Weatherford Trademarks <WFT.Trademarks@weatherford.com>
Subject: [EXTERNAL] SERIAL NUMBER 88001842 Docket Number: VERO and 88022675 Docket Number: xQuartz
Dear Mr. Kurka:
I am writing with respect to the above referenced applications because there are a few procedural issues that can be resolved through an Examiner’s Amendment. I have outlined them below for you to review.
SERIAL NUMBER 88001842 Docket Number: VERO
The identification of services is indefinite and must be clarified as follows:
Class 37
Oil and gas services for well drilling construction;
includingrental of equipment and tools for automated tubular running operations in the oil and gas industry;including pipe make up and connection evaluation
Class 42
Engineering evaluation of pipe make up and connections.
Oil and gas services for well construction including equipment and tools for automated tubular running operations in the oil and gas industry, including pipe make up and connection evaluation
Additionally, what is the significance of “VERO”?
SERIAL NUMBER 88022675 Docket Number: xQuartz
The identification of services is indefinite and must be clarified as follows:
Class 9
Pressure and temperature measuring gauge
that providesfeaturing a comprehensive multiparameter downhole sensing for well production, injection, and monitoring in real time; pressure gauge featuringIncorporateshybrid electronic technologyinto the gauge designto provide a rigorous operating envelope that covers extreme environmental, handling, and wellbore conditions
If you accept these changes please reply back as soon as possible and I will enter an examiner’s amendment accordingly. Thank you!
Ms. Kamal Preet
Trademark Attorney Advisor
United States Patent and Trademark Office
(571) 272-5645 | kamal.preet@uspto.gov
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