STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

ISSUE/MAILING DATE: 3/3/2017

This Office action is in response to applicant’s communication filed on January 18, 2017.

The Examining Attorney acknowledges and accepts the copy of the Canadian certificate of registration.

Summary of Issues

Identification of services for Class 35
Identification of services for Class 37
Identification of services for Class 42
Requirements for multi-class applications

The amended identifications of services for Classes 35, 37 and 42 are indefinite for purposes of registration. In addition, the amended identification of services for Class 42 includes wording that is beyond the scope of the previous identification. Therefore, the following Office Action is issued.

Identification of Services for Class 35

The amended identification of services for Class 35 must be clarified because it is indefinite for purposes of registration and because it includes services that are beyond the scope of the services in the Canadian certificate of registration. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following format in amending the indefinite wording in the identification, if accurate:

“Turn-key business solutions, namely, business management consulting in the field of asset tracking, namely, business consulting in the field of software and equipment for data collection and tracking of the status and location of tools and equipment, job management, quality control, and health, safety and environmental standards for the oil and gas industry;” should be amended to “Turn-key business solutions, namely, business management consulting in the field of asset tracking, namely, business consulting relating to business issues concerning software and equipment for data collection and tracking of the status and location of tools and equipment, job management, quality control, and health, safety and environmental standards for the oil and gas industry;” in Class 35
“Retail store services featuring measurement-while-drilling tools, parts, equipment, and software, directional drilling software, and health and safety software; mail order services featuring measurement-while-drilling tools, parts, and equipment; on-line retail store services featuring measurement-while-drilling tools, parts, and equipment;” in the U.S. application’s identification of goods and/or services is not acceptable because it exceeds the scope of the goods and/or services in the foreign registration upon which the U.S. application relies for a basis under Trademark Act Section 44. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07. For a U.S. application based on Section 44, an applicant is required to list only goods and/or services that are within the scope of the goods and/or services in the foreign registration. 37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b). Therefore, this wording is not considered part of the identification of goods and/or services in the U.S. application, and the remaining wording in the identification is operative for purposes of future amendment. See TMEP §1402.01(b); cf. TMEP §1402.07(d).

These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because the Canadian certificate of registration does not include retail store services, mail order services or online retail store services.

Therefore, applicant may respond by satisfying one of the following:

(1) Amending the identification of goods and/or services in the U.S. application to correspond to the goods and/or services identified in the foreign registration, ensuring that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or

(2) Deleting the Trademark Act Section 44 basis for the goods and/or services beyond the scope of the foreign registration and relying solely on the Section 1 basis for those goods and/or services.

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).

Additionally, applicant may respond by arguing that these goods and/or services are within the scope of the foreign registration and should remain in the U.S. application.

If the use of the word “sale” in the identification of services for Class 37 includes retail store services, mail order services and online retail store services, then Applicant must explain how the services in Class 35, including the goods that are included in the retail store, mail order, and online retail store services, are encompassed by this wording.

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). Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration. 37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

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.

Identification of Services for Class 37

The amended identification of services for Class 37 must be clarified because it is indefinite for purposes of registration. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following format in amending the indefinite wording in the identification, if accurate:

“Rental and lease of tools, hardware and equipment, namely, measurement-while-drilling tools, parts, equipment, hardware, including collars, electronics probes, pulsers, batteries, centralizers, cables, connectors, computers, etc. for the oil and gas industry;” must be amended to specify the particular items encompassed by the term “etc.” as follows, “Rental and lease of tools, hardware and equipment, namely, measurement-while-drilling tools, parts, equipment including collars, electronics probes, pulsers, batteries, centralizers, cables, connectors, computers, and ___________ [specify the particular items included by the term “etc.”] for the oil and gas industry;” in Class 37; and “Rental of computer hardware for the oil and gas industry;” in Class 42

“Repair and maintenance of measurement-while-drilling tools, parts, equipment, hardware and software, including collars, electronics probes, pulsers, batteries, centralizers, cables, connectors, computers for the oil and gas industry” should be amended to “Repair and maintenance of measurement-while drilling tools, parts, equipment, and hardware, including scollars, electronics probes, pulsers, batteries, centralizers, cables, connectors and computers for the oil and gas industry;” in Class 37 and “repair and maintenance of measurement-while-drilling computer software for the oil and gas industry;” in Class 42

Identification of Services for Class 42

The identification of services for Class 42 must be clarified because it is unacceptable as indefinite and includes services beyond the scope of the original and previously-amended identification. In addition, the amended identification of services for Class 42 is not within the scope of the services in the Canadian registration. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

“Custom design and development of technological solutions for the oil and gas industry in the nature of research and design in the field of computer hardware and software for the oil and gas industry, remote operations center set up and management, namely, remote monitoring and collection of field data for the oil and gas industry;” should be amended to “Custom design and development of technological solutions for the oil and gas industry in the nature of research and design in the fields of computer hardware and software for the oil and gas industry and of remote operations center set up and management, namely, remote monitoring and collection of field data for the oil and gas industry;” in Class 42

“Providing on-line non-downloadable software for job management, directional drilling guidance, and health and safety programs for business management for the oil and gas industry, repair and maintenance of computer software for the oil and gas industry” is beyond the scope of the original identification.

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the U.S. application. See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§1012, 1402.06 et seq., 1402.07. Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the original identification in the U.S. application, and any previously accepted amendments, remain operative for purposes of future amendment. See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

In this case, the U.S. application originally identified the goods and/or services as follows: “provision of software for business management for the oil and gas industry.”

However, the proposed amendment to the U.S. application identifies the following goods and/or services: “providing on-line non-downloadable software for job management, directional drilling guidance, and health and safety programs for business management for the oil and gas industry.”

This portion of the proposed amendment is beyond the scope of the original identification because the subject matter of the software was originally restricted to software for business management for the oil and gas industry. As drafted, the proposed wording extends the subject matter to job management and directional drilling guidance.

Applicant may adopt the following identification, if accurate: Providing on-line non-downloadable software for business management in connection with job management, directional drilling guidance, and health and safety programs for the oils and gas industry.

“Sourcing, custom design and development of technological solutions, namely, new product design and development services, for the oil and gas industry; rental of computer hardware and computer software for the oil and gas industry; repair and maintenance of computer software for the oil and gas industry; custom design and development of technological solutions, namely, field software and hardware to facilitate the collection and storage of oil and gas drilling data for the purpose of real-time central data center business intelligence analytics; custom design and development of technological solutions for the oil and gas industry in the nature of research and design in the field of computer hardware and software for the oil and gas industry, remote operations center set up and management, namely, remote monitoring and collection of field data for the oil and gas industry; providing on-line non-downloadable software for job management, directional drilling guidance, and health and safety programs for business management for the oil and gas industry, repair and maintenance of computer software for the oil and gas industry;” in the U.S. application’s identification of goods and/or services is not acceptable because it exceeds the scope of the goods and/or services in the foreign registration upon which the U.S. application relies for a basis under Trademark Act Section 44. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07. For a U.S. application based on Section 44, an applicant is required to list only goods and/or services that are within the scope of the goods and/or services in the foreign registration. 37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b). Therefore, this wording is not considered part of the identification of goods and/or services in the U.S. application, and the remaining wording in the identification is operative for purposes of future amendment. See TMEP §1402.01(b); cf. TMEP §1402.07(d).

These goods and/or services in the U.S. application exceed the scope of goods and/or services in the foreign registration because the services in Class 42 are limited to “provision of software for business management for the oil and gas industry,” [emphasis added]

Therefore, applicant may respond by satisfying one of the following:

(2) Deleting the Trademark Act Section 44 basis for the goods and/or services beyond the scope of the foreign registration and relying solely on the Section 1 basis for those goods and/or services.

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).

Additionally, applicant may respond by arguing that these goods and/or services are within the scope of the foreign registration and should remain in the U.S. application.

Requirements for Multi-Class Applications

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 Sections 1(b) and 44:

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

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

For an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.uspto.gov/trademarks/law/multiclass.jsp.

Assistance

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

TRADEMARK FEES: Effective January 14, 2017, the USPTO increased fees for all trademark applications and related documents filed on paper. See 81 Fed. Reg. 72694 (Oct. 21, 2016) (codified at 37 C.F.R. parts 2 and 7). Additionally, the USPTO increased the filing fee for each class of goods or services in a regular Trademark Electronic Application System (TEAS) application and the per class processing fee for a TEAS Plus or TEAS RF application that does not meet the relevant filing requirements. Id. Trademark applications and related documents filed on or after January 14, 2017 must comply with the new fees. See more information for an overview of the changes. See the fee chart that lists all trademark fee changes.

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.

/Susan A. Richards/

Susan A. Richards

Law Office 103

(571) 272-8266

Susan.Richards@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.

To:	Inpetro Energy Inc. (KevinC.Docketing@SeedIP.com)
Subject:	U.S. TRADEMARK APPLICATION NO. 86732855 - 480353.201
Sent:	3/3/2017 5:07:56 PM
Sent As:	ECOM103@USPTO.GOV
Attachments: