To: | FTS International Services, LLC (perrone@braxtonperrone.com) |
Subject: | U.S. Trademark Application Serial No. 88171824 - FRACBREAK LT - PFTSI.0524 |
Sent: | July 15, 2019 07:31:03 PM |
Sent As: | ecom127@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88171824
MARK: FRACBREAK LT
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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: FTS International Services, LLC
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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: July 15, 2019
This Office action is supplemental to and supersedes the previous Office action issued on February 13, 2019, in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement: DISCLAIMER REQUIRED. See TMEP §§706, 711.02.
In a previous Office action(s) dated February 13, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Incomplete declaration. In addition, applicant was required to satisfy the following requirement(s): Explanation of the mark’s significance.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: Explanation of the mark’s significance. See TMEP §713.02.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: DISCLAIMER REQUIRED
• INCOMPLETE DECLARATION
Applicant must respond to all issues raised in this Office action and the previous February 13, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
DI DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “LT” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
Per the applicant’s response to the February 13, 2019 office action, “LT appearing in the mark means or signifies or is a term of art for Low Temperature in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application”. Additionally, the attached evidence from Schlumberger and Chase shows that the term AP is often used in connection with similar goods in the chemical industry. Thus, the wording merely describes applicant’s goods because applicant is providing low temperature chemical additives for use in the recovery of fluids from underground formations.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “LT” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Please note the following requirement.
INCOMPLETE DECLARATION
The declaration in the application is not acceptable because it omits some of the assurances required under 37 C.F.R. §§2.33 and/or 2.34. Specifically, the statement submitted on May 10, 2019, failed to affirm that the applicant had a bona fide intent to use the mark in commerce as of the application filing date, as follows:
“The applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.”
Applicant must therefore submit these assurances, properly verified in an affidavit or signed declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.33(a)-(b), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02. For more information about this, see the Verified statement webpage.
To provide this verified statement. After opening the correct TEAS form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
RESPONSE GUIDELINES
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.
Riley, Vanessa
/Vanessa Riley/
Examining Attorney
Law Office 127
(571) 272-7259
vanessa.riley@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.