Response to Office Action

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 1957 (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 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88289697 ULTRAFLEX-D(Standard Characters, see http://uspto.report/TM/88289697/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Diverter for downhole use in the oil and gas industry
Original Filing Basis:
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: Diverter for downhole use in the oil and gas industry; Diverter for downhole use in the oil and gas industry, namely, chemical fracturing fluids for use in the oil and gas industry, chemical additives for fracturing fluid for use in oil and gas wells and chemicals for use in oil drillingClass 001 for Diverter for downhole use in the oil and gas industry, namely, chemical fracturing fluids for use in the oil and gas industry, chemical additives for fracturing fluid for use in oil and gas wells and chemicals for use in oil drilling
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.

The applicant's current attorney information: Paul J. Kennedy. Paul J. Kennedy of PEPPER HAMILTON LLP, is located at

      3000 TWO LOGAN SQUARE
      EIGHTEENTH AND ARCH STREETS
      PHILADELPHIA, Pennsylvania 19103-2799
      US
The docket/reference number is 143520.2.

The email address is kennedyp@pepperlaw.com

The applicants proposed attorney information: Paul J. Kennedy. Other appointed attorneys are Vincent V. Carissimi, M. Kelly Tillery, Peter T. Wakiyama, Joseph C. Guagliardo, Lori E. Harrison, Sean P. McConnell, Christine E. Weller. Paul J. Kennedy of PEPPER HAMILTON LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      3000 TWO LOGAN SQUARE
      EIGHTEENTH AND ARCH STREETS
      PHILADELPHIA, Pennsylvania 19103-2799
      United States
The docket/reference number is 143520.2.

The email address is kennedyp@pepperlaw.com

Paul J. Kennedy submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: PAUL J. KENNEDY. PAUL J. KENNEDY of PEPPER HAMILTON LLP, is located at

      3000 TWO LOGAN SQUARE
      EIGHTEENTH AND ARCH STREETS
      PHILADELPHIA, Pennsylvania 19103-2799
      US
The docket/reference number is 143520.2.

The email address is kennedyp@pepperlaw.com; tierm@pepperlaw.com; catalant@pepperlaw.com

The applicants proposed correspondence information: Paul J. Kennedy. Paul J. Kennedy of PEPPER HAMILTON LLP, is located at

      3000 TWO LOGAN SQUARE
      EIGHTEENTH AND ARCH STREETS
      PHILADELPHIA, Pennsylvania 19103-2799
      United States
The docket/reference number is 143520.2.

The email address is kennedyp@pepperlaw.com; tierm@pepperlaw.com; catalant@pepperlaw.com

SIGNATURE(S)
Response Signature
Signature: /Paul J. Kennedy/     Date: 08/18/2019
Signatory's Name: Paul J. Kennedy
Signatory's Position: Attorney of record, Pennsylvania bar member

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.

Mailing Address:    PAUL J. KENNEDY
   PEPPER HAMILTON LLP
   3000 TWO LOGAN SQUARE
   EIGHTEENTH AND ARCH STREETS
   PHILADELPHIA, Pennsylvania 19103-2799
Mailing Address:    Paul J. Kennedy
   PEPPER HAMILTON LLP
   3000 TWO LOGAN SQUARE
   EIGHTEENTH AND ARCH STREETS
   PHILADELPHIA, Pennsylvania 19103-2799
        
Serial Number: 88289697
Internet Transmission Date: Sun Aug 18 16:38:46 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.X.XXX.X-201908181638465284
77-88289697-6105b84b187492025782dc1cbe7f
67bcb2fb4e1f2993f18c5b51a195ae67ed119-N/
A-N/A-20190818163541610731