To: | BJ Services, LLC (TMDocketing@wbd-us.com) |
Subject: | U.S. Trademark Application Serial No. 88517158 - INTEGRASTAR - 107245.001.8 |
Sent: | January 09, 2020 09:43:57 AM |
Sent As: | ecom114@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88517158
Mark: INTEGRASTAR
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Correspondence Address: Womble Bond Dickinson (US) LLP
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Applicant: BJ Services, LLC
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Reference/Docket No. 107245.001.8
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: January 09, 2020
This Office Action is in response to the applicant’s communication filed on December 18, 2019, namely, a Response to Office Action and an Amendment to Allege Use.
The prior Office Action(s) is/are herein incorporated by reference.
The following issue(s) remain(s) outstanding and the applicant must respond to the following.
SPECIMEN
Advertising materials are generally not acceptable as specimens to show use in commerce for goods. See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010)); TMEP §904.04(b), (c). Advertising materials may consist of the following: online advertising banners appearing on search engine result pages and in social media; advertising circulars and brochures; price lists; listings in trade directories; and business cards. See TMEP §904.04(b).
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. 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. TMEP §904.03(i).
In addition, the specimen for class 42 is not acceptable because the mark is not used for the specified services but rather for an application. The fact that the applications are used for construction does not obviate the refusal. To show a direct association, specimens consisting of advertising or promotional materials must (1) explicitly reference the services and (2) show the mark used to identify the services and their source. In re WAY Media, Inc., 118 USPQ2d at 1698 (quoting In re Osmotica Holdings, Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)); TMEP §1301.04(f)(ii). Although the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Withdraw the Amendment to Allege Use and amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to the Specimen webpage.
IDENTIFICATION OF GOODS/SERVICES
Some of the identification of services are indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the goods/services. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
In this case, the application originally identified the services in class 37 as follows: “construction; repair; installation services; cementing services, including cementing in oil, gas, and other wellbores penetrating subterranean formations.”
However, the proposed amendment identifies the following goods and/or services: “Construction of oil and gas wells, namely, oil and gas well design services; design services for repair of oil and gas wells; design services for installation of oil and gas wells; cementing services, namely, cementing oil, gas, and other wellbores penetrating subterranean formations.”
This portion of the proposed amendment is beyond the scope of the original identification because it adds design services.
Applicant may adopt the following wording, if accurate:
Computer software and applications relating to cementing operations in construction of oil, gas, and other wellbores penetrating subterranean formations and to other cementing operations, namely, recorded and downloadable software and applications for analyzing, processing, estimating, simulating, visualizing, and/or determining fluid and wellbore temperatures, cement placement rheological profiles, down-hole pressure, mud displacement efficiency, fluid mixing, cement plug placement, and cement sheath stress and integrity assessment, and for analyzing, processing, estimating, simulating, visualization and/or determining other aspects, parameters, and data pertaining to such operations, in international class 9;
Construction of oil and gas wells; repair of oil and gas wells; installation services of oil and gas wells; cementing services, namely, cementing oil, gas, and other wellbores penetrating subterranean formations, in international class 37.
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.
The requirement is maintained and continued.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Alex Seong Keam/
Attorney-Advisor
United States Patent and Trademark Office
Law Office 114
Phone: 571-272-9176
Email: alex.keam@uspto.gov
RESPONSE GUIDANCE