UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 79149176
MARK: SOLARIS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: GRANDVISION
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1208873
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION 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.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal 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). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
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.
In this case, applicant seeks registration of the proposed mark SOLARIS for use in connection with various eyeglasses and related services. Registrant owns the mark SOLARIS HERITAGE for various eyeglasses. Purchasers encountering these marks in commerce would likely mistakenly believe that all of the goods and services emanated from one source. Because source confusion is likely, registration must be refused under Trademark Act Section 2(d).
Claim of Ownership
If applicant is the owner of U.S. Registration Nos. 2644505 and 4123778, then applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:
Applicant is the owner of U.S. Registration Nos. 2644505 and 4123778.
Identification of Goods and Services
The wording shown in bold and underlined print below in the identification of goods and/or services is indefinite and must be clarified to meet the specificity requirements of the Office. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); see TMEP §§1402.07(a), 1904.02(c).
Therefore, any modification to this wording must identify goods and/or services in the classification specified in the application for these goods and/or services.
Suggestions for acceptable amendment follow each unacceptable term in brackets. The brackets themselves must not be included in the applicant’s amendment because they are used by the Office’s post-registration division to indicate goods and services no longer in use.
IC 009. US 021 023 026 036 038. G & S: Spectacles, spectacle frames, sunglasses, wrap-around goggles for sports excluding fencing masks, spectacle cases
IC 035. US 100 101 102. G & S: Retail sale services [specify type, i.e., retail store services, online retail services…]for optical goods, namely spectacles, spectacle frames, sunglasses, wrap-around goggles for sports, spectacle cases; dissemination of advertisements in connection with optical goods; organization of exhibitions for commercial or advertising purposes for optical goods, organization of promotional activities in connection with optical goods
IC 044. US 100 101. G & S: Advice in connection with the adaptation of optical goods to one's facial structure, namely testing and adjustment of spectacle frames; try-on fitting of spectacles
A standard character drawing shows the applied-for mark depicted in Latin characters, Roman or Arabic numerals, with common punctuation or diacritical marks, with no design element or stylization of lettering/numbers, and no claim to any particular font style, size or color. 37 C.F.R. §2.52(a); TMEP §807.03(a). A registration for a mark in standard characters affords protection not only for the mark as it appears in standard characters, but also for any possible renderings of the mark, as long as those renderings do not contain any design elements. In other words, a registered mark in standard characters provides protection of the mark in any lettering style. See 37 C.F.R. §2.52(a); TMEP §807.03(a).
A special form drawing, on the other hand, shows the mark in stylized letters and/or with a design element and provides protection for only that specific rendering. See 37 C.F.R. §2.52(b); TMEP §§807.04 et seq.
The applicant has provided a standard character claim and a special form drawing. The applicant must either submit a new drawing in standard character form, or a description of the mark as follows: The mark consists of a stylized representation of the term SOLARIS.
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those 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. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
/Janice L. McMorrow/
Janice McMorrow
Trademark Examining Attorney
Law Office 115
571.272.9194
janice.mcmorrow@uspto.gov (informal responses)
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 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.gov.uspto.report/. 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.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.