Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  April 29, 2020

 

This FINAL Office action is in response to applicant’s March 31, 2020, communication in which the applicant amended the owner name.  The amendment has been accepted and added to the record.

 

The applicant did not respond to the requirements regarding the identification of goods or the description of the mark.  Accordingly, those requirements are now made FINAL.

 

Final Requirement Regarding the Identification and Classification of Goods and Services

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6) . Accordingly, applicant’s indefinite “related equipment” in Class 06 must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).

 

The wording “House mark for machines, tools and equipment for use in the oil and gas field” in the identification of goods for International Class 07 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass hand tools belonging in Class 08 and machine tools belonging in Class 07.

 

The wording “

house mark for electronic and telemetry instruments for use in the oil and gas industry” in the identification of goods for International Class 07 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Generally, electronic and telemetry instruments belong in Class 09.

 

The wording “house mark for metallic and non-metallic drill bits and drill bit cutters” in the identification of goods for International Class 07 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01,

1402.03. While bits for power drills belong in Class 07, bits for hand drills belong in Class 08.

 

The wording “house mark for expandable tubular products for use in the oil and gas industry” in the identification of goods for International Class 07 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. While nonmetal tubular liners for the lining of oil and gas systems belong in Class 19, metal tubes for industrial use belong in Class 06.

 

The wording “house mark for measurement and control equipment for oil and gas, aerospace, automotive, power and energy industries” in the identification of goods for International Class 07 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Generally, measurement and control equipment belong in Class 09 unless the goods are specified as a hydraulic control.

 

The wording “House mark for consulting services in the field of oil and gas” in the identification of services for International Class 37 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, consulting services are classified according to the subject matter of the consulting services. For example, technical consulting in the field of oil and gas production and processing belongs in Class 37 while consultation in the field of design for oil and gas machines belongs in Class 42.

 

The wording “house mark for consulting services related to the design, installation and optimization of turbines and compressors and related equipment in the oil, gas and industrial industries” in Class 37 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. While installation consultation generally belongs in Class 37, design consultation belongs in Class 37.

 

Additionally, because house marks are typically used on a wide variety of goods and services, applicant will be required to provide evidence of that use when applicant files an amendment to allege use or a statement of use.  TMEP §1402.03(b); see 37 C.F.R. §2.61(b).  Applicant may provide evidence of such use by submitting product catalogs or similar evidence/advertising and promotional materials and webpages showing use as a house mark.  TMEP §1402.03(b). 

 

If applicant cannot provide such evidence, applicant will be required to amend the identification to (1) delete “house mark for” and (2) specify the common commercial or generic name for each good or services, if not already specified.  See TMEP §§1402.01, 1402.03(b).

 

The following is an amended version of applicant’s identification of goods and/or services that complies with the above-mentioned clarification requirements, with additions and alterations in bold type. The italicized wording includes additional guidance and suggestions and the wording appearing with a strikethrough should be deleted.

 

Applicant may adopt the following identification of goods and/or services, if accurate:

 

CLASS 01 is definite

 

CLASS 06: House mark for subsea wellheads and related equipment, namely, {specify the common commercial name of the goods, e.g., metal casings used to stabilize the wellbore in oil and gas wells}

 

CLASS 07: House mark for machines, tools and equipment for use in the oil and gas field, namely, {specify the nature of the goods, e.g., oil refining machines} ; house mark for artificial lift systems comprising {specify Class 07 goods, e.g., power operated lifts} for use in oil and gas wells and components therefor; house mark for electronic and telemetry instruments for use in the oil and gas industry ; house mark for metallic and non-metallic drill bits for power drills and drill bit cutters being metal working machines ; house mark for expandable tubular products for use in the oil and gas industry; house mark for measurement and control equipment for oil and gas, aerospace, automotive, power and energy industries, namely, {hydraulic controls for machines and engines} ; house mark for turbines not being for land vehicles , machine compressors, valves being parts of machines , centrifugal pumps, and {specify the common commercial name of the “other equipment”} for the oil and gas, pipeline, petrochemical and industrial fields

 

CLASS 09: House mark for measurement and control apparatus for use in the oil and gas field, namely, {specify the common commercial name of the goods, e.g., control valves for regulating the flow of gases and oils} ; house mark for measuring, detecting and monitoring instruments for industrial applications, namely, {specify the common commercial name of the goods, e.g., control valves for regulating the flow of gases and oils} ; house mark for nondestructive testing equipment used in industrial applications, namely, {specify the common commercial name of the goods, e.g., gas testing instruments} ; downloadable computer software for use in data collection, transmission, integration, visualization, analysis and storage in the field of oil and gas; downloadable computer software for use in connection with a network of physical objects, devices, vehicles, and buildings which are embedded with electronics, software, sensors and network connectivity all of which enable these objects, devices, vehicles, and buildings to collect and exchange and report data in the field of oil and gas; downloadable software for use in measuring and analyzing data retrieved from oil and gas wells; house mark for electronic and telemetry instruments for use in the oil and gas industry, namely, {specify the common commercial name of the goods, e.g., gas flow meters}; house mark for measurement and control equipment for oil and gas, aerospace, automotive, power and energy industries, namely, {specify the common commercial name of the goods, e.g., gas sensors for measuring gas concentration, gasometers}

 

CLASS 19: House mark for expandable tubular products for use in the oil and gas industry, namely, expandable nonmetal tubular liners for the lining of oil and gas systems [ADDITIONAL CLASS REQUIRED]

 

CLASS 37: House mark for consulting services in the field of oil and gas, namely, consultation in the field of offshore oil and gas facility construction ; house mark for consulting services in the field of carbon capture and sequestration; house mark for technical consulting services relating to the installation of equipment, control systems, machinery, and facility construction, all in the oil and gas field; house mark for consulting services related to the design, installation and maintenance of turbines and compressors and related equipment in the oil, gas and industrial industries; house mark for measurement and inspection services in the oil and gas, aerospace, automotive, chemical, power and energy industries; house mark for consulting, design and commissioning and integration services for industrial control systems ; House mark for oil and gas drilling and construction completion

 

CLASS 40: House mark for well measurement, monitoring and treatment services in the oil and gas field; house mark for equipment treatment services in the oil and gas field; house mark for measurement, monitoring and treatment services of chemicals and petrochemicals; house mark for compressor, turbine, and centrifugal pump treatment services; House mark for consulting services in the field of oil and gas, namely, technical consulting in the field of oil and gas production and processing ; house mark for the production of oil and gas

 

CLASS 41: House mark for educational services, namely, conducting classes, seminars, conferences, and workshops in the fields of oil and gas exploration; house mark for educational services, namely, training in the use and operation of turbines, compressor sand centrifugal pumps; house mark for educational services, namely, training in the use and operation of monitoring, inspection, testing and control equipment

 

CLASS 42: House mark for oil and gas drilling, completion, production and testing services, namely, testing the functionality of apparatus and instruments in the nature of oil and gas equipment ; house mark for the exploration and searching of oil and gas; house mark for providing industrial measurement and control services; house mark for technical assessment, evaluation and optimization for turbine, compressor, centrifugal pump use in oil and gas and industrial applications; house mark for software as a service (saas) services featuring software that combines autonomic computing and cognitive artificial intelligence engineering technology for use in the oil and gas industry; software as a service (saas) services featuring software for use in collecting, analyzing, and delivering data and information to optimize performance in the industrial process, equipment and production systems across the upstream, midstream and downstream segments of the oil and gas industry; house mark for consulting services in the field of oil and gas, namely, consultation in the field of design for oil and gas machines; house mark for engineering consultation services in the field of carbon capture and sequestration; house mark for consulting services related to the design of turbines and compressors and related equipment in the oil, gas and industrial industries; house mark for measurement and inspection services for quality control purposes in the oil and gas, aerospace, automotive, chemical, power and energy industries; house mark for design and it integration services for industrial control systems; house mark for well measurement and monitoring services for quality control in the oil and gas field; house mark for measurement and monitoring services for quality control of chemicals and petrochemicals

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See 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.

 

ADVISORY: MULTIPLE-CLASS APPLICATION

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 9 classes; however, applicant submitted a fee(s) sufficient for only 8 class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

Final Requirement Regarding Color Claim and Mark Description

 

Applicant’s color claim and mark description are indefinite because it is unclear whether the color white, which appears on the interior of the design, is claimed as a feature of the mark. The color claim and description must be complete and reference all the colors in the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. Therefore, applicant must clarify whether white is used as a color in the mark or to indicate background, outlining, shading, and/or transparent areas. TMEP §807.07(d); see 37 C.F.R. §2.61(b).

 

To clarify how black, white and/or gray are being used in the mark, applicant may satisfy one of the following:

 

(1)   If black, white and/or gray are a feature of the mark, applicant must amend the color claim to include them and amend the description to identify where black, white and/or gray appear in the literal and/or design elements of the mark. The following color claim and description are suggested, if accurate:

 

Color claim: “The colors green and white are claimed as a feature of the mark.”

 

Description: “The mark consists of a stylized design of a Mobius twist in green with a white interior.”

 

(2) If black, white and/or gray are not a feature of the mark , applicant must amend the description to state that black, white, and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark. The following description is suggested, if accurate:

 

“The mark consists of a stylized design of a Mobius twist in green. The color white in the mark appears for background purposes only and is not claimed as a feature of the mark.”

TMEP §807.07(d).

 

CONTACT INFORMATION

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Christine Martin/

Examining Attorney

Law Office 104

571-272-1630

christine.martin@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 April 29, 2020 for

U.S. Trademark Application Serial No. 88643061

 

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. 

 

 

/Christine Martin/

Examining Attorney

Law Office 104

571-272-1630

christine.martin@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 April 29, 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.”