UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88210131
MARK: ARSENAL
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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: Arsenal Energy 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: 3/12/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
THIS PARTIAL REFUSAL APPLIES TO CLASS 1 ONLY
(1) Deleting the class to which the refusal pertains;
(2) Filing a request to divide out the goods and services that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
SECTION 2(d) REFUSAL FOR LIKELIHOOD OF CONFUSION
Applicant’s applied-for mark is ARSENAL in standard characters for, in relevant part, “Chemicals used in the oil and gas industry, namely, drilling muds, drilling chemicals, cement blends, fracturing fluids and chemicals, production chemicals, and additives for same” in International Class 1.
Registrant’s mark is ARSENAL in standard characters for “Chemical additives for fuel treatment” in International Class 1.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of the Marks
Applicant’s and registrant’s mark is ARSENAL in standard characters.
In the present case, applicant’s mark is ARSENAL and registrant’s mark is ARSENAL. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id.
Therefore, the marks are confusingly similar.
Relatedness of the Goods
Applicant’s goods are for, in relevant part, “Chemicals used in the oil and gas industry, namely, drilling muds, drilling chemicals, cement blends, fracturing fluids and chemicals, production chemicals, and additives for same” in International Class 1.
Registrant’s goods are for “Chemical additives for fuel treatment” in International Class 1.
Here, applicant and registrant provide related chemical goods.
In summary, the applicant’s and registrants’ marks create the same commercial impression and the respective goods are highly related. Therefore, consumers are likely to be confused and mistakenly believe that these goods originate from a common source. Accordingly, registration must be refused under Section 2(d) of the Trademark Act.
IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES REQUIREMENT
International Class 1
International Class 6
Therefore, applicant must amend this wording to specify either (1) the common generic name of each piece of equipment or (2) the nature and purpose or function of the equipment. See TMEP §§1402.01, 1402.03.
International Class 7
Further, the wording “thread protectors” appears to be misclassified in International Class 7; however, the proper classification appears to be in International Class 6, but still needs further clarification. See TMEP §1400. Please see the suggested wording below.
International Class 9
International Class 13
International Class 37
International Class 40
Also, the wording “project engineering” appears to be misclassified in International Class 40; however, the proper classification appears to be in International Class 42. See TMEP §1400.
Further, the wording “transport” appears to be misclassified in International Class 40; however, the proper classification appears to be in International Class 39. See TMEP §1400. Therefore, applicant may respond by (1) adding International Class 39 to the application and reclassifying these services in the proper international class, (2) deleting “transport” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
International Class 42
Applicant may substitute the following wording, if accurate:
International Class 1: Chemicals used in the oil and gas industry, namely, drilling muds, drilling chemicals, cement blends, fracturing fluids and chemicals, production chemicals, and chemical additives for oils and gasoline
International Class 6: Metallic equipment in the nature of metal hardware for use in oil and gas exploration, completion, and production, namely, slickline wire, drill pipe, casing, tubing, valves not being parts of machines; metal pipe collars specially adapted to protect threads of oil pipe
International Class 7: Machines and tools for use in oil and gas exploration, completion, and production, namely, metallic and non-metallic casing centralizers, metallic and non-metallic tubing centralizers, metallic and non-metallic packers, metallic and non-metallic frac balls and frac plugs, metallic and non-metallic power drill bits and drill bit cutters, fluid pumps and separators, drilling rigs and workover rigs in the nature of drilling rigs, torque converters, other than for land vehicles and drag-line excavator tools, friction reduction tools in the nature of pumps for tools, artificial lift systems in the nature of springs being parts of machines, solid control equipment in the nature of centrifuges, wireline cable heads and related equipment in the nature of winches, drill guides for protecting oilfield pipes, metallic liner hangers, metallic float shoes and float collars, metallic stop collars, metallic casing collars, metallic scrapers, metallic toe sleeves, metallic sliding sleeves, metallic vibration tools, metallic wellhead machines in the nature of gate valves, metallic frac stacks in the nature of valves as machine components, metallic fishing tools for locating stray drilling equipment, metallic power drill bits and drill bit cutters
International Class 9: Apparatus for use in oil and gas exploration, completion, and production, namely, downhole sensors and tool measuring instruments, logging tools in the nature of electronic data loggers, wireline tools in the nature of extension cables; Downloadable computer software for use in petroleum exploration and production, namely, well modeling and projection, torque modeling, drag modeling, friction modeling, drilling measurement, centralizer placement modeling, and hydraulic modeling
International Class 13: Explosives for use in oil and gas exploration, completion, and production, namely, shaped charges and perforating tools in the nature of {specify type of tools in Class 13}
International Class 37: Installation, maintenance, and repair services relating to oil and gas exploration, completion, and production apparatus and equipment, namely, apparatus and equipment for slickline services, directional drilling services, safety consulting services, project engineering, wireline services, pipe recovery, logging services, well drilling, torque and test services, fracturing services, pressure control services, and cementing services; Technical consulting related to the installation of oil and gas apparatus and equipment
International Class 39: Petroleum midstream services, namely, petroleum transport services, and technical consulting, namely, transportation consulting
International Class 40: Oil and gas production services, namely, performation services of {specify}, well treatment, fluid management, casing and tubing distribution, and technical consulting for same; Petroleum midstream services, namely, processing, treatment, fractionation, compression, and technical consulting for same
International Class 42: Oil and gas exploration services, namely, measurement and downhole telemetry services while drilling, geophysical exploration, computer modeling, and technical consulting for same; engineering services in connection with the custom design, manufacture, and application of specialized downhole tools
Scope Advisory
ID Manual Online
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least nine classes; however, applicant submitted fees sufficient for only eight classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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.
/LaShawnda Elliott/
LaShawnda Elliott
Trademark Examining Attorney
Law Office 125
(571) 272-5409
lashawnda.elliott@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.