TEAS Request Reconsideration after FOA

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88230657 CSR(Standard Characters, see http://uspto.report/TM/88230657/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The consumers of Applicant's goods and the goods of the cited references are highly sophisticated. The services Applicant's goods are used in conjunction with are extremely complex and potential consumers are unlikely to be confused with respect to the source of the goods.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 001 for Synthetic replacement for chemicals for hydraulic fracturing
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Synthetic replacement for chemicals for hydraulic fracturing; Hydraulic fracturing fluids in the nature of a synthetic replacement for hydrochloric, phosphoric, hydrofluoric, sulfuric, acetic and formic acids used in dissolving calcium carbonate and/or silica formulation or build up in oil and gas; all of the foregoing available only to approved companies specialized in oil and gas exploration and available only through direct purchase from manufacturer and its affiliated companiesClass 001 for Hydraulic fracturing fluids in the nature of a synthetic replacement for hydrochloric, phosphoric, hydrofluoric, sulfuric, acetic and formic acids used in dissolving calcium carbonate and/or silica formulation or build up in oil and gas; all of the foregoing available only to approved companies specialized in oil and gas exploration and available only through direct purchase from manufacturer and its affiliated companies
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: FLUID ENERGY GROUP LTD. a(n) limited company (ltd.), legally organized under the laws of Canada, having an address of
      140-10th Ave SE
      Calgary, AB, T2G0R1
      Canada

Proposed: FLUID ENERGY GROUP LTD., limited company (ltd.) legally organized under the laws of Canada, having an address of
      140-10th Ave SE
      Calgary, AB, T2G0R1
      Canada
      Email Address: XXXX
Correspondence Information (current):
      Ben Natter
      PRIMARY EMAIL FOR CORRESPONDENCE: bnatter@haugpartners.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docket@haugpartners.com; kkoemm@haugpartners.com

The docket/reference number is A133-28.
Correspondence Information (proposed):
      Ben Natter
      PRIMARY EMAIL FOR CORRESPONDENCE: bnatter@haugpartners.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docket@haugpartners.com; kkoemm@haugpartners.com

The docket/reference number is A133-28.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Request for Reconsideration Signature
Signature: //Ben Natter//     Date: 05/06/2020
Signatory's Name: Ben Natter
Signatory's Position: Attorney of record, member NY bar

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    Ben Natter
   HAUG PARTNERS, LLP
   
   745 Fifth Ave
   New York, New York 10151
Mailing Address:    Ben Natter
   HAUG PARTNERS, LLP
   745 Fifth Ave
   New York, New York 10151
        
Serial Number: 88230657
Internet Transmission Date: Wed May 06 14:46:06 ET 2020
TEAS Stamp: USPTO/RFR-XXXX:XXXX:XXXX:XXXX:XXXX:XXXX:
XXXX:XXXX-20200506144606154778-88230657-
71012e276f65767feb1635ede11852978e93b1bf
33647c4e2ef6a9f1a6ce1a8bc88-N/A-N/A-2020
0506143231850359