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. 88356997 ORACLE (Stylized and/or with Design, see http://uspto.report/TM/88356997/mark.png) has been amended as follows:

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

In response to the Examiner's partial section 2(d) refusal, the Applicant has amended the phrase "devices for controlling injection and production in oil and gas wells" to "downhole tools for controlling injection and production in oil and gas wells, namely automatic valves." In particular, the Applicant respectfully asserts that the phrase "downhole tools" (as opposed to "devices") further avoids any likelihood of confusion with the cited marks. Further, the Applicant has amended the description of the product (changed from class 7 to class 9) and services descriptions (remains class 37) as suggested by the Examiner, and as detailed further in this response. The Applicant respectfully asserts that the application is now in condition for allowance.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 007 for downhole valves, namely, flow control valves for use in oil and gas wells; devices for controlling injection and production in oil and gas wells; downhole tools for use in the completion and treating of oil and gas wells, namely, electrically activated downhole valves

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for installation, maintenance, and repair services in the oil and gas industry for downhole valves; oil and gas services, namely, well stimulation, injection, treatment, and completion services
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: installation, maintenance, and repair services in the oil and gas industry for downhole valves; oil and gas services, namely, well stimulation, injection, treatment, and completion services; oil and gas well improvement services to enhance well production, namely, well stimulation services, well injection services, well treatment services, and well completion services for oil and gas wells using downhole valves.Class 037 for installation, maintenance, and repair services in the oil and gas industry for downhole valves; oil and gas well improvement services to enhance well production, namely, well stimulation services, well injection services, well treatment services, and well completion services for oil and gas wells using downhole valves.
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 009 (Original Class: 007 ) for automatic valves in the nature of downhole valves, namely, flow control valves for use in oil and gas wells; downhole tools for controlling injection and production in oil and gas wells, namely automatic valves; downhole tools for use in the completion and treating of oil and gas wells, namely, electrically activated downhole valves
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.

SIGNATURE(S)
Response Signature
Signature: /s/ Shane A. Nelson /s/     Date: 06/18/2019
Signatory's Name: Shane Nelson
Signatory's Position: Legal Counsel

Signatory's Phone Number: 713-870-9099

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88356997
Internet Transmission Date: Tue Jun 18 16:53:30 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20190618165330
063657-88356997-620273cd418941ebad59af74
5af35ba8068bb37deacabea295cf2be9e4b7b020
18-N/A-N/A-20190618164814058949