Notation to File

Response Requested: Trademark Application Serial No. 88380141 -- FLEXJOINT (standard characters)   RE: Trademark Application Serial No. 88380141  -- FLEXJOINT   (standard characters)   Dear Carla B. Oakley, Esq.:   I am the Trademark examining attorney assigned to the above-captioned application.  I can approve it for publication immediately if you authorize me to enter an Examiner Amendment that resolves the issues described below.  To provide authorization, you simply need to give it in a reply to this email.    Alternatively, if you require more time to resolve the issues presented, please let me know, and I will issue a Priority Action or combination Priority Action / Examiner’s Amendment instead. In any event, I hope you will let me know which course of action you prefer.   Requirement: Explanation of the Mark’s Significance   To permit proper examination of the application, applicant must explain whether the wording in the mark “FLEXJOINT” has any significance in the pipe connector trade or industry or as applied to applicant’s goods, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.       Requirement: Identification of Goods   The goods are:  “Pipe connectors comprised of metal components and elastomeric components used for isolation of coupled structures from bending moments and for isolation of riser pipe from floating vessel movement in offshore oil and gas well drilling, production, workover and injection riser systems” in Class 006.    The identification of goods needs clarification because it does not identify the goods with enough specificity and it is too broad because it may identify goods in multiple International Classes.  See TMEP §§1402.01, 1402.03.  Metal fittings for pipes are classified in Class 6, and non-metal fittings for pipes, both flexible and rigid pipes, are classified in Class 17 because they function as insulating materials.   If accurate, applicant may adopt the following formulation for drafting an acceptable identification. The suggested language has been bolded for applicant’s convenience.   Class 006:             Metal pipe connectors comprised of metal components used for isolation of coupled structures from bending moments and for isolation of riser pipe from floating vessel movement in offshore oil and gas well drilling, production, workover and injection riser systems   Class 017:            Pipe connectors comprised of metal components and elastomeric components, in the nature of non-metal pipe couplings and joints, used for isolation of coupled structures from bending moments and for isolation of riser pipe from floating vessel movement in offshore oil and gas well drilling, production, workover and injection riser systems     TMEP §1402.01.   Advisories   Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).     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.   Multiclass Advisories   The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:   (1)          List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).   (2)          Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods based on use in commerce that are classified in at least two (2) classes; however, applicant submitted a fee sufficient for only one (1) class.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.   (3)          Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.   (4)          Submit a specimen for each international class.  The current specimen is acceptable for classes 006 and 017.  See more information about specimens.                   Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual