UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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APPLICATION SERIAL NO. 79113886
MARK: LUXOR
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CORRESPONDENT ADDRESS: Rödl Rechtsanwaltsgesellschaft, |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Kurt Krannich
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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INTERNATIONAL REGISTRATION NO. 1118773
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION ABOVE, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS REFUSAL WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
The “Mailing Date” appearing on the WIPO cover letter may also be found through the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please enter the U.S. Application Serial Number for this application and select “Documents.” The “Mailing Date” is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL 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.
(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).
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the U.S. to designate a domestic representative upon whom notices or process may be served. 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2); see TMEP §610. Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/index.jsp.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
SUMMARY OF ISSUES that applicant must address:
LIKELIHOOD OF CONFUSION
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity of the Marks
The applicant has registered the mark LUXOR and design. The registered marks are LUXOR, LUXOR ELECTRIQUE, LUXOR, and LUXOR. Here, the dominant portion of all of the marks is the wording LUXOR.
Similarity of the Goods and Services
U.S. Registration Numbers 3331938 and 3353811 – International Class 11
Here, all of the marks are for lighting products.
U.S. Registration Number 3020521 -- International Class 9
Here, both marks are for computers.
U.S. Registration Number 2771088
Here, both marks are for building materials.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
PRIOR PENDING APPLICATION
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
ENTITY DESIGNATION AND CITIZENSHIP
If applicant’s entity type is an individual, applicant must indicate his or her national citizenship for the record. 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04.
If applicant’s entity type is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must set forth the U.S. state or foreign country under whose laws applicant is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(b)-(c), 803.04. In addition, if applicant is a U.S. partnership or joint venture, applicant must list the names, legal entities and national citizenship or the U.S. state or foreign country of organization or incorporation of all the general partners or joint venturers. 37 C.F.R. §2.32(a)(3)(ii)-(iv); TMEP §§803.03(b), 803.04. For an association, applicant must also specify whether the association is incorporated or unincorporated. TMEP §803.03(c).
DESCRIPTION OF THE MARK
The mark consists of three gold quadrilaterals and the word LUXOR written in gold.
IDENTIFICATION OF GOODS AND SERVICES
Potions of the identification of goods and services are indefinite. The following is suggested, if accurate:
Industrial oils and greases; industrial lubricants; dust absorbing, wetting and binding compositions for use in (indicate purpose, e.g., road building, sweep,
dust laying); fuels (including motor spirit) and lighting fuels; electrical energy; candles and wicks for candle lighting; all the aforesaid goods for the field of renewable energy
in International Class 4.
Aluminum profiles, rotary metal structures for solar panels, solar modules (wrong class – must be deleted) and roof constructions and fixing material
of metal, namely, (specify class 6 goods); materials of metal for scaffolds; metal racks (most storage racks are in IC 20 regardless of composition – must be deleted), metal
poles, boundary markers, namely, metal stakes and masts of metal, metal building profiles and frames for solar panels and for construction purposes; all the aforesaid goods for the field of
renewable energy in International Class 6.
Scientific instruments, namely, (specify) , nautical instruments, namely, (specify class 9 goods), surveying instruments; photographic instruments,
namely, (specify class 9 goods), cinematographic machines and apparatus, optical apparatus, namely, (specify class 9 goods), weighing apparatus, measuring apparatus,
namely, (specify class 9 goods), signaling apparatus, namely, (specify class 9 goods), checking (supervision) apparatus, namely, (specify class 9 goods), life-saving and
teaching apparatus and instruments, namely, (specify); apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely,
(specify); photovoltaic systems, namely consisting of solar modules for power generation, inverters, electronic apparatus and instruments for controlling, regulating, accumulating and monitoring,
namely, (specify class 9 goods); solar panel systems, namely consisting of solar modules, solar collectors (wrong class – IC 11 – must be deleted) and inverters for power
generation; electronic apparatus and instruments for controlling, regulating, accumulating and monitoring of power generation, namely, (specify class 9 goods); blank magnetic data
carriers, data processing apparatus and computers; all the aforesaid goods for the field of renewable energy in International Class 9.
Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating and water conduit purposes, namely, (specify); solar collectors and solar modules for the heat generation and systems consisting thereof, solar roof installations and open-air installations, namely, (specify class 11 goods) in International Class 11.
Non-metallic building materials, namely, (specify class 19 goods) (non-metallic); non-metallic pipes for building; non-metal architectural mouldings,
namely, building profile ledges (non-metallic); asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal, namely, (specify, stone, marble or concrete to
be properly classified in International Class 19); non-metallic roofs incorporating solar cells in International Class 19.
Advertising services; business management; business administration; providing office functions; professional business and business organizational planning of systems and plants for regenerative energy generation; professional business and organization consultancy for systems and plants for regenerative energy generation; business project management, in particular for systems and plants in the field of renewable energy; arranging of contracts for others for the buying and selling of power supplies in International Class 35.
Building construction; repair, namely, repair services of individual components in the field of photovoltaic and solar thermal energy; installation services, namely, (specify); construction, cleaning, repair and maintenance of systems and plants in the field of renewable energy; scaffolding; roofing services in International Class 37.
Transport, namely, (specify, e.g., goods by boat); packaging of goods for transportation and storage of goods; arranging of travel tours
(travel); transmission and distribution of electricity, thermal heat, gas or water; delivery of electricity, thermal heat, gas or water for supply to customers; delivery and
distribution of energy in International Class 39.
Treatment of materials for (specify); generation of energy in International Class 40.
Scientific and technological services, namely, (specify) and research and design in the field of (specify); industrial analysis and research services,
namely, (specify); design and development of computer hardware and software; technical analysis and preparation of technical certificates for assessment of projects and project partners;
technical planning, namely, (specify), technical projects (unclear what service is being provided) and technical coordination of systems and plants in the field of renewable
energy; quality testing of products for certification purposes; design planning and engineering of as well as development services for third parties in the field of renewable energy; engineering in
International Class 42.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
/Shaunia Carlyle/
Shaunia Carlyle
Law Office 110
(571)272-9374
shaunia.carlyle@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.