Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

SUSPENSION NOTICE: NO RESPONSE NEEDED

 

ISSUE/MAILING DATE: 5/22/2019

 

 

The trademark examining attorney is suspending action on the application for the reason(s) stated below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

MAINTENANCE DOCUMENTS DUE FOR CITED REGISTRATION(S):  Registration has been refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), based on the cited registration(s); however, registration maintenance documents are or were due to be filed for the registration(s).  If registration maintenance documents are not or were not timely filed, the registration(s) will be cancelled under Section 8 or 71, and/or expire under Section 9 and will no longer present a bar to registration under Section 2(d). See 15 U.S.C. §§1058, 1059, 1141k; 37 C.F.R. §§2.160(a), 2.182, 7.36(b). Therefore, action on this application is suspended pending disposition of the cited registration(s) for six months, after which time the trademark examining attorney will determine whether to withdraw the Section 2(d) refusal. See 37 C.F.R. §2.67; TMEP §716.02(e).

 

REFUSAL(S)/REQUIREMENT(S) CONTINUED AND MAINTAINED:  The following refusal(s)/requirement(s) is/are continued and maintained: identification of goods in Class 7 amendment required, multiple-class application requirements.

 

Identification of Goods Amendment Required (Partial)

Requirement Maintained and Continued for Goods in Class 7 Only

 

The identification of goods in Class 7 remains indefinite and overbroad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The identification is indefinite because it does not state the nature of the components with sufficient specificity to identify what those components are.  The identification is likewise overly broad and could include goods in other international classes.  In particular, this wording could encompass coil tubing made of metal in Class 6, testing equipment in Class 9, and/or debris removal equipment in the nature of filters in Class 11. 

 

A product may comprise items that are sold together as a unit. See TMEP § 1401.05(a). The identification in such cases must include wording to indicate that the goods are "sold as a unit" and must specify the items that comprise the unit. See id. Goods sold as a unit are classified in a single class even if they are comprised of items that, if sold separately, would be classified in different classes. All of the predominant elements should be listed first in the identification and the collection of items sold as a unit will be classified accordingly.

 

Applicant may adopt the following identification, if accurate:

 

Class 7: Full package of subsea oil and gas well containment system and emergency control tools being comprised of a capping stack, industrial metal coil tubing, debris removal equipment being __________ {identify particular goods by common commercial or generic name, or if none, by function or use, e.g., filters for oil and gas well containment machines, external ballast and bilge water filtering and absorbing device for use in a local containment area for removing aquatic nonindigenous species, oil and other contaminants from the effluent, etc.}, and subsea testing equipment being __________ {identify particular goods by common commercial or generic name, or if none, by function or use, e.g., water testing instrumentation for monitoring and detecting contamination, pressure sensors, leak detectors for pumps, etc.}

 

Applicant must also comply with the requirements pertaining to multiple-class applications as outlined in the initial Office Action.

 

 

The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based.  TMEP §§716.04, 716.05.  Applicant will be notified when suspension is no longer appropriate.  See TMEP §716.04.

 

No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.

 

 

 

Kathleen Schwarz

/Kathleen Schwarz/

Examining Attorney

Law Office 123

(571) 272-2460

kathleen.schwarz@uspto.gov

 

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 Trademark Electronic Application System (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 5/22/2019 FOR U.S. APPLICATION SERIAL NO.88158644

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, 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)  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

 

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.