Notation to File

RE: Response Requested: Trademark Application Serial No. 88384043 -- FLEXJOINT (special form) and 88380141 -- FLEXJOINT (standard characters)   Dear Mr. Swift,   Thank you for confirming the language and offering an Examiner’s Amendment to address the issue for both applications.     We also can respond on the applicant’s behalf to your request for information:   The term FLEXJOINT was coined by the applicant more than 45 years ago and is not a term of art in applicant’s industry.  Rather, to the best of its knowledge, applicant is the sole user of FLEXJOINT in its industry and the term is associated solely with applicant.  Applicant states further that, while its pipe connectors may be described as joints, the significance of FLEXJOINT in the industry is solely as a trademark for applicant’s products.   With this – I believe that we have resolved all the issues and would welcome an Examiner’s Amendment to address both applications so that they can move forward to publication.     If there is anything further required, though, please let me know.    Thank you for your assistance.  Best, Carla     Carla B. OakleyMorgan, Lewis & Bockius LLPDirect Dial Phone (SF&PA): +1.415.442.1301 carla.oakley@morganlewis.com Assistant: Linda Buda | +1.415.442.1316 | linda.buda@morganlewis.com   One Market, Spear Street Tower | San Francisco, CA 94105-1126 Main: +1.415.442.1000 | Fax: +1.415.442.1001 -and- 1400 Page Mill Road | Palo Alto, CA 94304-1124 Main: +1.650.843.4000 | Fax: +1.650.843.4001     From: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV> Sent: Friday, June 28, 2019 9:10 AM To: Oakley, Carla B. <carla.oakley@morganlewis.com> Cc: Stokes, Jenna <jenna.stokes@morganlewis.com> Subject: RE: Response Requested: Trademark Application Serial No. 88384043 -- FLEXJOINT (special form) and 88380141 -- FLEXJOINT (standard characters)   [EXTERNAL EMAIL] Your proposed language is fine.  Would you like me to issue Examiner’s Amendments for both 88384043 -- FLEXJOINT (special form) and 88380141  -- FLEXJOINT   (standard characters)?  Just send a reply.  Thanks for the prompt response. Gilbert   Gilbert M. Swift | Trademark Examining Attorney | Law Office 109 | United States Patent and Trademark Office | Gilbert.Swift@USPTO.gov | Tel: 1+ 571.272.9028       From: Oakley, Carla B. [mailto:carla.oakley@morganlewis.com] Sent: Thursday, June 27, 2019 9:18 PM To: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV> Cc: Stokes, Jenna <jenna.stokes@morganlewis.com> Subject: RE: Response Requested: Trademark Application Serial No. 88384043 -- FLEXJOINT (special form)   Re:       Trademark Application Serial No. 88384043  -- FLEXJOINT   (special form)   Dear Mr. Gilbert,   Thank you again for your emails today regarding Oil States, Inc.’s applications to register FLEXJOINT and FLEXJOINT (stylized).  I see that you have issued office actions for both applications already, but anticipate that we can still resolve the issues you have raised pretty quickly.     Before filing responses, I am hoping we can get your feedback on the applicant’s proposed amendment to the goods.  The applicant has confirmed that its products are not either metal connectors, or non-metal connectors, as indicated in the proposal in your emails and in the office actions.  Rather, the pipe connectors are comprised both of metal and elastomeric components, with metal as the primary component.  Given that, it seems that class 6 is the only appropriate class for the goods.  Applicant therefore proposes to amend the goods to read:    Class 006:             Metal pipe connectors comprised primarily of metal components and also 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   Please let us know if the proposed amendment will be acceptable.    Thank you in advance for your assistance in resolving this definition issue.   Best regards, Carla Oakley, CA Bar Member Counsel for Applicant       Carla B. OakleyMorgan, Lewis & Bockius LLPDirect Dial Phone (SF&PA): +1.415.442.1301 carla.oakley@morganlewis.com Assistant: Linda Buda | +1.415.442.1316 | linda.buda@morganlewis.com   One Market, Spear Street Tower | San Francisco, CA 94105-1126 Main: +1.415.442.1000 | Fax: +1.415.442.1001 -and- 1400 Page Mill Road | Palo Alto, CA 94304-1124 Main: +1.650.843.4000 | Fax: +1.650.843.4001     From: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV> Sent: Thursday, June 27, 2019 10:32 AM To: Oakley, Carla B. <carla.oakley@morganlewis.com>; Stokes, Jenna <jenna.stokes@morganlewis.com>; SF Trademark Docket <SFTrademarks@morganlewis.com> Cc: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV> Subject: Response Requested: Trademark Application Serial No. 88384043 -- FLEXJOINT (special form)   [EXTERNAL EMAIL] RE: Trademark Application Serial No. 88384043  --FLEXJOINT   (special form)   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: 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 goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.                    Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.     (5)          Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”