To: | Newpark Resources, Inc. (TM-CT@cantorcolburn.com) |
Subject: | U.S. Trademark Application Serial No. 88662015 - NEWPARK FLUIDS SYSTEMS - NPK0035TUS |
Sent: | November 25, 2019 10:20:06 AM |
Sent As: | ecom125@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88662015
Mark: NEWPARK FLUIDS SYSTEMS
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Correspondence Address: |
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Applicant: Newpark Resources, Inc.
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Reference/Docket No. NPK0035TUS
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: November 25, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
IDENTIFICATION OF GOODS AND SERVICES
Class 42
Applicant may substitute the following wording, if accurate (examining attorney’s suggestions in bold font):
Class 1: Chemical drilling fluids for use in subterranean wells, namely, drilling muds, completion fluids, workover fluids and wellbore fluids; chemical additives for oil drilling fluids; drilling muds and chemical drilling fluids for use in oil well drilling
Class 42: Engineering services in the field of oil and gas production, namely, developing subterranean wellbore fluids, environmental planning, analysis of data from well sites in the nature of well fluid design, well drill cuttings, well formation stability, well borehole stability and well fluid circulation, and technical engineering advice on the use of products for drilling and extracting hydrocarbons from subterranean wells
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.
In this case, applicant must disclaim the wording “FLUIDS SYSTEMS” because it is not inherently distinctive. These unregistrable terms at best are merely descriptive of a characteristic or feature of applicant’s goods and services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The the wording “FLUIDS” in the applied-for mark appears throughout applicant’s identification of goods and services for “Chemical drilling fluids for use in subterranean wells, namely, drilling muds, completion fluids, workover fluids and wellbore fluids; chemical additives for oil drilling fluids; drilling muds and chemical drilling fluids for use in oil well drilling” and “Engineering services in connection with subterranean wellbore fluids, environmental planning, analysis of data from well sites, namely, data about well fluid design, well drill cuttings, well formation stability, well borehole stability and well fluid circulation, and technical engineering advice on the use of products for drilling and extracting hydrocarbons from subterranean wells.” In addition, the wording “SYSTEMS” in the applied-for mark means “a group of devices or artificial objects or an organization forming a network especially for distributing something or serving a common purpose.” Thus, the wording “FLUIDS SYSTEMS” in the applied-for mark is merely descriptive of applicant’s goods and services as a group of devices or objects which serve a common purpose for oil well and wellbore drilling and engineering services related thereto.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “FLUIDS SYSTEM” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
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 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.
Justin Miller
/Justin Miller/
Trademark Examining Attorney Law Office 125
(571) 272-6040
justin.miller@uspto.gov
RESPONSE GUIDANCE