UNITED STATES PATENT AND TRADEMARK OFFICE
| SERIAL NO: 76/519313 APPLICANT: Edwards Systems Technology, Inc. | |
| CORRESPONDENT ADDRESS: JOHN H. WEBER BAKER & HOSTETLER LLP WASHINGTON SQUARE, SUITE 1100 1050 CONNECTICUT AVENUE, N.W. WASHINGTON, D.C. 20036-5304 | RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom106@uspto.gov |
| MARK: ONELIGHT | |
| CORRESPONDENT’S REFERENCE/DOCKET NO: 87321-139 CORRESPONDENT EMAIL ADDRESS: | Please provide in all correspondence: 1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address. |
Serial Number 76/519313
The assigned examining attorney has reviewed the referenced application and determined the following.
Section 2(d) - Likelihood of Confusion Refusal
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 2,173,910 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
The marks are phonetic equivalents and are used for related lighting goods. As such, a likelihood of confusion is present that precludes registration of applicant’s mark.
Identification of Goods
The identification of goods is unacceptable as indefinite because the wording “indicator lights and visual signal devices” may contain items in more than one class. For instance, vehicle turn signal lights are in Class 11, and vehicle turn signals are in Class 12. The applicant should specify the goods as well as their specific area of use. TMEP §1402.01.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.
Applicant also may wish to consult the on-line identification manual on the PTO homepage for acceptable common names of goods and their classification at the site listed below.
http://www.uspto.gov/web/offices/tac/doc/gsmanual/
The examining attorney may also be contacted at the telephone numbers below for further consultation regarding the identification.
Combined Applications
If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.
(1) The applicant must list the goods/services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
/Paul F. Gast/
Examining Attorney, L. O. 106
(703) 435-3391 ext. 297 main
(703) 308-9106 ext. 297 alternate
(703) 746-8106 LO 106 FAX
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.uspto.gov/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.uspto.gov/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.