UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/081047
MARK: AIRLIGHT
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Airlight Energy IP SA
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
INTERNATIONAL REGISTRATION NO. 1034634
This is a PROVISIONAL PARTIAL REFUSAL of the trademark and service mark in the above-referenced U.S. application that applies to only the following goods and services in the application:
All goods currently identified in class 9
Class 11
Installations for the use solar energy and components of these; …especially … and components of solar collectors for the provision of heat, such as concentrators, components of concentrators, absorber pipes and chassis designed for such collectors
Class 12
…including components of the above; … pneumatic parts of vehicle bodies, especially … lateral rocker panels
All goods currently identified in class 19
Class 20
…including…; trestles…(furniture), including parts of these
Class 42
…or light (photovoltaic),… research, development, establishing projects and design and construction of transportable and stationary constructions such as roofs, hangars and bridges, especially of constructions, including incorporating pneumatic structures, pneumatic supports, pneumatic utility objects and pneumatic elements
See 15 U.S.C. §1141h(c).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL PARTIAL REFUSAL:
Applicant may respond directly to this provisional refusal Office action if applicant is not represented by an authorized attorney. See 37 C.F.R. §2.193(e)(2)(ii). Otherwise, applicant’s authorized attorney must respond on applicant’s behalf. See 37 C.F.R. §2.193(e)(2)(i). However, the only attorneys who are authorized to sign responses and practice before the USPTO in trademark matters are as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and
(2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.
See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.03.
Foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(b). That is, foreign attorneys may not file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal, among other things. See 37 C.F.R. §11.5(b)(2); TMEP §§602.03(c), 608.01. If applicant is represented by such a foreign attorney, applicant must respond directly to this provisional refusal Office action. See 37 C.F.R. §2.193(e)(2)(ii).
THE APPLICATION HAS BEEN PROVISIONALLY PARTIALLY REFUSED AS FOLLOWS:
This is a partial refusal Office action; the refusals and requirements apply only to specified goods in the U.S. application.
The assigned examining attorney has reviewed the trademark application identified above. Applicant must respond to all of the issues discussed below, before the response deadline. 15 U.S.C. §1062(B); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
AS TO SPECIFIC GOODS IN CLASSES 11 AND 12 ONLY
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3727974 and 3555802. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations. Applicant should note that these refusals apply only to specific goods in classes 11 and 12, identified below.
In this case, applicant’s mark is AIRLIGHT, for use on
Installations for the use solar energy and components of these
and
pneumatic parts of vehicle bodies, especially … lateral rocker panels
The registered marks are
3727974 for the mark AIRLIGHT, used on
Lighting fixtures
And 3555802 for the mark AYRLITE, used on
Light weight composite panels made predominantly of metallic materials for use, without limitation, in the interior and exterior of vehicles, including boats and marine vessels, planes, trains and recreational vehicles
SIMILARITY OF THE MARKS
In this case, applicant’s mark is similar to the registered marks in appearance, sound, meaning, connotation and commercial impression. Applicant’s mark AIRLIGHT is identical to the registered mark AIRLIGHT. This exceeds the requirement for similarity between the marks.
Regarding the mark AYRLITE, Applicant’s mark AIRLIGHT is the phonetic equivalent of this mark. Similarity in sound alone may be sufficient to support a finding of likelihood of confusion. RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975); see TMEP §1207.01(b)(iv). Even if consumers were to recognize the differences between AIRLIGHT and AYRLITE, the difference would be indistinguishable when the marks are spoken.
SIMILARITY OF THE GOODS
In the case of the goods identified above in class 11, applicant has identified them in such a way that the goods could include any objects or instruments that utilize energy, so long as the energy is solar-derived. This would include lighting fixtures, so long as they are solar-powered. The identification of goods for the registered mark AIRLIGHT does not limit its lighting fixtures in any way. Likelihood of confusion is determined on the basis of the goods as they are identified in the application and registration. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); TMEP §1207.01(a)(iii).
When the application and registration describe the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the application encompasses all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive . . . . There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold.”); TMEP §1207.01(a)(iii). Because of this, applicant’s “installations for use of solar energy” could include the “lighting fixtures” sold under the registered mark.
Regarding the AYRLITE goods, these are “panels” for use on vehicles. Applicant’s goods in class 12 include “lateral rocker panels” that are pneumatic parts for vehicles. Again, the goods on which the registered mark are identified in such a way as to include the more-narrowly identified goods in the AIRLIGHT application. Because the AYRLITE vehicle panels would include applicant’s “lateral rocker panels” for vehicles, the goods must be construed as identical and competitive.
Based on the foregoing, applicant’s goods are at least similar to the goods on which the registered mark is used. Because applicant’s mark is similar to the registered mark and applicant’s goods are also similar to the goods on which the registered mark is used, applicant’s mark is likely to be confused with the registered mark and may not register.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If applicant chooses to respond to the refusals to register, then applicant must also respond to the following.
Applicant may adopt the following identification (providing additional information where directed), if accurate:
Class 7
Wind turbines
Class 9
Systems for the use of solar energy, COMPRISED OF (IDENTIFY THE ELEMENTS OF THE SYSTEMS) and THESE COMPONENTS SOLD SEPARATELY; PHOTOVOLTAIC solar collectors for the supply of light for generating electric current and components of solar collectors for the provision of light, NAMELY concentrators, components of concentrators, absorber pipes and chassis designed for such collectors; ELECTRONIC controls for operating solar collectors and their components
Class 11
Installations for the use solar energy COMPRISED OF (IDENTIFY THE ELEMENTS OF THE INSTALLATIONS) and THESE COMPONENTS SOLD SEPARATELY; solar collectors for the provision of heat, intended for use in heating power stations, for heating and for generating electric current and components of solar collectors for the provision of heat, NAMELY concentrators, components of concentrators, absorber pipes and chassis designed for such collectors
Class 12
Aircraft comprising and having pneumatic structures and components, especially aeroplanes, seaplanes, captive balloons, balloons inflated with hot air and with gas, dirigible balloons, space stations, COMPONENT PARTS OF AIRCRAFT; boats made of pneumatic structures and elements; pneumatic parts of vehicle bodies, especially spoilers, lateral rocker panels, convertible tops, roofs
Class 19
Transportable and stationary constructions, NAMELY NON-METAL MODULAR PREFABRICATED roofs, NON-METAL PREFABRICATED hangars and NON-METAL PREFABRICATED bridges comprising pneumatic structures
Class 20
Articles for interior design and utility items comprising and having pneumatic structures and components, namely tables, seats, child seats, benches, armchairs, beds, hospital beds, NON-METAL trestles FOR SUPPORTING TABLES, cushions, mattresses, screens
Applicant may adopt the following identification, if accurate:
Class 42
Engineering services for building and operating installations for the use of solar energy and components of these for research, development, establishing projects and designing of solar collectors for the provision of heat or PHOTOVOLTAIC light, especially intended for use in heating power stations, for heating and for generating electric current and components of such collectors such as concentrators, absorber pipes, chassis intended for such collectors and controls for operating such collectors and their components; engineering services for the use of pneumatic supports, pneumatic utility objects and pneumatic elements; research, development, establishing projects and design and construction of transportable and stationary constructions NAMELY roofs, hangars and bridges
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
The international classification of goods and services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d);TMEP §§1401.03(d), 1904.02(b). For this reason, the goods identified as:
non-metallic constructions, including comprising metal reinforcements and uprights such as roofs, hangars and bridges; pneumatic bases, especially pneumatic bases, including comprising metal reinforcements
must be deleted from the identification of goods in class 19. The identification of these goods is generally indefinite and therefore unacceptable. Any amendments to these goods that would be considered definite would identify goods in a class other than class 19 and would be prohibited by 37 C.F.R. §2.85(d);TMEP §§1401.03(d), 1904.02(b).
FILING BASIS ADVISORY
RESPONSE GUIDELINES – PARTIAL ABANDONMENT
If applicant does not respond to this Office action within the six-month period for response, then the following goods and services will be deleted from the application:
All goods currently identified in class 9
Class 11
Installations for the use solar energy and components of these; …especially … and components of solar collectors for the provision of heat, such as concentrators, components of concentrators, absorber pipes and chassis designed for such collectors
Class 12
…including components of the above; … lateral rocker panels
All goods currently identified in class 19
Class 20
…including…; trestles…(furniture), including parts of these
Class 42
…or light (photovoltaic),… research, development, establishing projects and design and construction of transportable and stationary constructions such as roofs, hangars and bridges, especially of constructions, including incorporating pneumatic structures, pneumatic supports, pneumatic utility objects and pneumatic elements
The application will then proceed with the following goods and services only:
Class 7
Wind turbines
Class 11
Solar collectors for the provision of heat, intended for use in heating power stations, for heating and for generating electric current
Class 12
Aircraft comprising and having pneumatic structures and components, especially aeroplanes, seaplanes, captive balloons, balloons inflated with hot air and with gas, dirigible balloons, space stations; boats made of pneumatic structures and elements; pneumatic parts of vehicle bodies, especially spoilers, convertible tops, roofs
Class 20
Articles for interior design and utility items comprising and having pneumatic structures and components, namely tables, seats, child seats, benches, armchairs, beds, hospital beds, cushions, mattresses, screens
Class 42
Engineering services for building and operating installations for the use of solar energy and components of these for research, development, establishing projects and designing of solar collectors for the provision of heat, especially intended for use in heating power stations, for heating and for generating electric current and components of such collectors such as concentrators, absorber pipes, chassis intended for such collectors and controls for operating such collectors and their components; engineering services for the use of pneumatic supports, pneumatic utility objects and pneumatic elements
37 C.F.R. §2.65(a).
There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
In the response, applicant should explicitly address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements.
The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants). TMEP §§605.02, 712. The signer must personally sign and date the response or manually enter their electronic signature in the signature block. TMEP §605.02
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
If applicant has an amendment that does not require the payment of a fee, submission of a specimen, response to a statutory refusal or a declaration signature, applicant is encouraged to telephone the examining attorney to expedite the processing of the application.
/Fred Carl III/
Law Office 108
571 272 8867 voice
571 273 9108 fax for official communication only
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.