Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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 03, 2020

 

The referenced application has been reviewed by the assigned trademark examining attorney. 

 

Summary of Issues

 

Applicant must respond timely and completely to the following issues:

 

1.      Trademark Act Section 2(e)(1) - Refusal to Register Merely Descriptive Mark

2.      Additional Information Required

 

15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search Results

 

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).

 

1.         Trademark Act Section 2(e)(1) – Refusal to Register Merely Descriptive Mark

 

Registration is refused because the applied-for mark merely describes features of the services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

Determining the descriptiveness of a mark is done in relation to an applicant’s goods and/or services, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use.  See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).  Descriptiveness of a mark is not considered in the abstract.  In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831.

 

Applicant seeks registration of FLARE GAS LIQUIDS for the services “gas processing services.”

 

The wording FLARE means “to flame up with a bright, wavering light; to cause to flame up” and GAS means “the state of matter distinguished from the solid and liquid states by relatively low density and viscosity, relatively great expansion and contraction with changes in pressure and temperature, the ability to diffuse readily, and the spontaneous tendency to become distributed uniformly throughout any container; a substance in the gaseous state.” See attached definitions from the online American Heritage Dictionary.

 

The wording FLARE GAS describes substances that are released through controlled flames as a means to manage excess and waste gas in oil and gas operations.  See attached evidence:

 

• “Oilfield Glossary” definition of “flare gas” as “a vapor or gas that is burned through a pipe or burners.”

(http://www.glossary.oilfield.slb.com/en/Terms/f/flare_gas.aspx)

 

• “Flaring is the controlled burning of natural gas and a common practice in oil/gas exploration, production and processing operations.”

“Flare gas systems are used to manage waste gas that cannot be efficiently captured and returned to the system for processing.”

(http://www.epa.state.oh.us/portals/27/oil%20and%20gas/basics%20of%20gas%20flaring.pdf)

 

• “Flare gas is a byproduct of numerous industrial processes including oil and gas recovery, petrochemical process, landfill gas production, and wastewater treatment.”

(http://www.generon.com/what-is-gas-flaring-why-is-it-done-alternatives/).

 

This wording merely describes that applicant’s services feature the processing of flare gas. See attached from applicant’s website at http://gtuit.com/ (“We are the industry leader in capturing and processing associated flare gas at well sites”).

 

The wording LIQUID means “the state of matter in which a substance exhibits a characteristic readiness to flow and little or no tendency to disperse, and is amorphous but has a fixed volume and is difficult to compress; matter or a specific body of matter in this state.” See attached definition from the online American Heritage Dictionary.

 

Together the wording FLARE GAS LIQUID merely describes that applicant’s services include the capture of flare gas and processing it into other products in a liquid form. See attached from applicant’s website at http://gtuit.com/mobile-midstream/ showing applicant has recovered 98,082,191 gallons of natural gas liquid from captured flare gas.

 

See also attached, describing the practice of capturing and processing flare gas into liquid products:

 

• “Greyrock’s industry leading Direct Fuel Production™ systems produce premium, clean burning liquid fuels from alternative and waste resources including flare gas, natural gas, carbon dioxide, and other materials.”

(http://www.greyrock.com/about/)

 

• “Ideal Flare Gas Recovery Solution” includes conversion to “[e]asily transported liquid product: Methanol, ethanol, and (optionally) formaldehyde, transported by conventional means.”

(http://gastechno.com/gastechno-flare-gas-solution.html)

 

• “Flaring wet gas also gives up additional revenue from the well site. Extracted methane gas could fuel onsite power generators, or be processed and sold as compressed natural gas (CNG) or liquid natural gas (LNG). Flaring gas also eliminates potential income from extracted propane, butane, and other saleable NGL products.”

(http://www.pioneerenergy.com/article/case-study-pioneer-energy-turns-waste-flare-gas-into-revenue)

 

Accordingly, registration of the applied-for mark is refused under Section 2(e)(1) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

2.         Additional Information Required

 

Applicant must provide the following information and documentation regarding the services: 

 

(1)               Printed or digital fact sheets and advertisements for the identified services;

(2)               Press releases for the identified services;

(3)               Screenshots of applicant’s website for the identified services;

(4)               Marketing presentations and other materials for the identified services;

(5)               Any other materials provided to consumers that describe the identified services. 

 

If these materials are unavailable, applicant must submit similar documentation for services of the same type, explaining how its own services will differ.  If the services feature new technology and information regarding competing services is not available, applicant must provide a detailed factual description of the services.  Factual information about the services must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement.  See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e). 

 

For all screenshots of websites, applicant must provide an image file or printout of  full page, from top to bottom, (2) the date the evidence was downloaded or accessed, and (3) the complete URL address of the webpage.  TMEP §710.01(b) (citing In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018)). 

 

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.  Merely stating that information is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

Response Information

 

Link to response form:  Click to file a response to this nonfinal Office action  

 

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.  

 

Applicant may call or email the assigned trademark examining attorney for additional explanation about the issues in this Office action. The trademark examining attorney cannot provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06. Email may be used for informal communications only and will be included in the application record; The USPTO does not accept emails as responses to Office actions; the USPTO does not accept emails as responses to Office actions.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

/April Roach/

April Roach

Examining Attorney

Law Office 115

571-272-1092

April.Roach@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 03, 2020 for

U.S. Trademark Application Serial No. 88636718

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/April Roach/

April Roach

Examining Attorney

Law Office 115

571-272-1092

April.Roach@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 03, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”