To: | Boomerang Tube, LLC (trademarks@webblaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88342048 - BOOMERANG - 9075-1901701 |
Sent: | 5/10/2019 3:56:00 PM |
Sent As: | ECOM124@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88342048
MARK: BOOMERANG
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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: Boomerang Tube, 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: 5/10/2019
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
DEFINITE IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES REQUIRED
The wording “pipeline consulting and advisory services” and “separating” in the identification of services must be clarified because it is indefinite and too broad and could include services in multiple international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
With respect to the wording “pipeline consulting and advisory services,” this wording must be clarified to specify the nature or type of consulting and advisory services. Consulting services are classified according to the subject matter of the consulting service; for example, “Pipeline construction consulting” is classified in International Class 37 and “Pipeline engineering consulting” is classified in International Class 42. TMEP §1402.11(e). Applicant must clarify the nature of the services and classify accordingly, complying with the multiple class application requirements set forth in the next section.
In addition, the wording “separating” is indefinite as to the type or nature of the services being provided. This could encompass materials sorting services, chemical or heat treatment services, or indicate metal reclamation services. Applicant must clarify the meaning of “separating” in the identification.
The wording “pipeline inspection” is misclassified in International Class 040. However, the proper classification is International Class 042. Therefore, applicant may respond by (1) adding International Class 042 to the application and reclassifying these services in the proper international class, (2) deleting “pipeline inspection” from the application, or (3) deleting the remainder of the items in the identification in International Class 040 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.
Applicant may substitute the following wording, if accurate:
International Class 037: pipeline consulting and advisory services with respect to pipeline construction and maintenance
International Class 040: treatment of materials, namely, steel used in the oil and gas industry; processing and separating {specify treatment nature of separating, e.g., being reclamation} of metals used in manufacturing, cleaning, and calibrating steel; separating of metals used in oil and gas equipment, namely, {specify nature of treatment services, e.g., specify nature of metal separation, e.g., metal reclamation}
International Class 042: pipeline inspection services; pipeline consulting and advisory services in the field of engineering
See TMEP §1402.01, 1402.03.
Applicant should note that the bolded language above is to indicate the examining attorney's suggestions, and the braces indicate where applicant must insert specific types of services. The braces should not appear in the amended identification; only the specific services indicated, as inserted by applicant. Applicant need not amend its identification other than where specified.
The goods identified in International Class 006 are definite as filed.
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
The application identifies goods and/or services that may be classified in numerous classes; however, applicant submitted fees sufficient for only two classes. In a multiple-class application, a fee for each class is required. Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.
Applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b):
(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 fee(s) already paid (view the USPTO’s current fee schedule).
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.
TEAS 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.
/Christina M. Riepel/
Trademark Examining Attorney
Law Office 124
(571) 272-6358
christina.riepel@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.