United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 79280273
Mark: AVA ADVANCED VISION ACCURACY
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Correspondence Address:
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Applicant: ESSILOR INTERNATIONAL
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1518307
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
Section 2(d) Refusal – Likelihood of Confusion
THIS PARTIAL REFUSAL APPLIES TO CLASS 9 ONLY
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Here, the applicant applied to register the mark AVA ADVANCED VISION ACCURACY for, at issue, spectacles; sunglasses; goggles for sports; spectacle frames; ophthalmic lenses; spectacle lenses, including organic plastic lenses, mineral lenses, corrective lenses, progressive lenses, sunglass lenses, polarized lenses, filter lenses, tinted lenses, colored lenses, light-sensitive lenses, photochromic lenses, treated lenses, coated lenses, anti-reflective lenses, semi-finished lenses; blanks for spectacle lenses; semi-finished blanks for spectacle lenses; contact lenses; cases for spectacle lenses; cases for ophthalmic lenses; spectacle cases; cords and chains for spectacles; downloadable electronic publications in the field of optics and ophthalmic optics; downloadable electronic information guides and documents in the field of optics and ophthalmic optics in International Class 9.
The registered marks are AVA RENEE for, inter alia, eyeglasses and sunglasses, reading glasses in International Class 9; BURNT & AVA for eyeglass cases in International Class 9; and DAVE & AVA for, inter alia, spectacles, sunglasses, eyeglasses, and cases therefor in International Class 9.
Similarity of the Marks
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
In the instant case, the dominant portion of the applicant’s mark is “AVA” in large stylized font. The substitution of the descriptive and smaller wording “ADVANCED VISION ACCURACY” for the wording “RENEE” and “BURNT &” and “DAVE &” in the registered marks does not distinguish it from the registered marks.
Accordingly, since the marks are so similar in sound, appearance and overall commercial impression, confusion as to source is likely.
Relationship Between the Goods
Here, the applicant’s goods at issue and the registrants’ goods are highly related and identical in part. The goods would be found in the same channels of trade and would be available to the same potential consumers. The applicant and registrants all provide a variety of vision products.
Here, the registrant in U.S. Registration No. 5618082 provides spectacles, sunglasses, eyeglasses, and cases therefor and the applicant goods include spectacles, sunglasses and spectacle cases. The registrant in U.S. Registration No. 5586536 provides eyeglass cases and the applicant goods include spectacle cases. The registrant in U.S. Registration No. 3848654 provides eyeglasses and sunglasses and reading glasses, and the applicant’s goods also include spectacles and sunglasses. As the attached dictionary excerpt from macmillandictionary.com demonstrates, spectacles and eyeglasses are synonyms. Thus, the applicant’s and registrants’ goods are identical in part.
In this case, the goods and/or services in the application and registrations are identical in part. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods and/or services are related.
Accordingly, since there is no overriding factor to distinguish applicant’s mark from the marks already registered, registration must be refused in part because the average purchaser would be likely to conclude that the applicant’s goods in International Class 9 and those cited in U.S. Registration Nos. 3848654, 5586536 and 5618082 emanate from a common source of origin.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
Applicant must disclaim the wording “ADVANCED VISION ACCURACY” because it is merely laudatory and descriptive of the alleged merit of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1256, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012); TMEP §1209.03(k).
“Self-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods [or services].” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d at 1256, 103 USPQ2d at 1759 (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)). Thus, wording such as “ultimate,” “best,” “greatest,” and the like are generally considered laudatory and descriptive of an alleged superior quality of the goods and/or services. See In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re The Boston Beer Co., 198 F.3d at 1373-74, 53 USPQ2d at 1058-59; TMEP §1209.03(k).
The term ADVANCED VISION ACCURACY describes, in a laudatory manner, that the applicant’s vision products provide a high standard of vision accuracy. The attached evidence from macmillondictionary.com demonstrates the laudatory nature of the wording. Therefore, this wording is merely laudatory of the supposed superior quality of the goods and/or services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “ADVANCED VISION ACCURACY” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Identification of Goods - International Class 9
The identification for “downloadable electronic publications” in International Class 9 is indefinite must be clarified because the wording does not make clear the nature of the publications. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(a)(x). Applicant must amend this identification to specify the common name of the type of publications, such as brochures, newsletters, or magazines. The identification must be specific, definite and concise.
Applicant may adopt the following wording in International Class 9, if accurate: Spectacles; sunglasses; goggles for sports; spectacle frames; ophthalmic lenses; spectacle lenses, including organic plastic lenses, mineral lenses, corrective lenses, progressive lenses, sunglass lenses, polarized lenses, filter lenses, tinted lenses, colored lenses, light-sensitive lenses, photochromic lenses, treated lenses, coated lenses, anti-reflective lenses, semi-finished lenses; blanks for spectacle lenses; semi-finished blanks for spectacle lenses; contact lenses; cases for spectacle lenses; cases for ophthalmic lenses; spectacle cases; cords and chains for spectacles; downloadable electronic publications, namely, [specify nature of publications, e.g., books, magazines and pamphlets] in the field of optics and ophthalmic optics; downloadable electronic information guides and documents in the field of optics and ophthalmic optics provided via a website.
Identification of Goods - International Class 10
Applicant may adopt the following wording in International Class 10, if accurate: Ophthalmologic instruments, namely, [specify type of instrument, e.g., eye droppers]; apparatus for ophthalmologic tests, namely, [specify, e.g., eye testing machines and apparatus, eye charts for medical examination use]; instruments for diagnosis in ophthalmology, namely, [specify, e.g., medical imaging devices for eyes]; medical imaging apparatus for ophthalmologic use; tomographs and angiographs for medical ophthalmologic use; ophthalmoscopes; ophthalmologic diagnostic equipment in the nature of keratometers; ophthalmometers; pupillometers for measuring pupillary distance; corneal reflection pupillometers for measuring pupillary ractivity to stimulus; phoropters; frontofocometers; projection lensometers; vertex refractionometers for medical use; eye testing apparatus; apparatus for screening vision defects and disorders; apparatus for measuring and testing visual acuity and vision; apparatus and instruments for carrying out reading and visual acuity tests, namely, reading scales; vision testing apparatus and instruments, in particular for the examination of visual behavior in the nature of [specify, e.g., cards printed with lines of varying widths used for testing and analyzing vision]; eye testing machines and apparatus, namely, apparatus and instruments for detecting and measuring eye and head movements in response to visual stimuli; parts and fittings for all the aforesaid goods, namely, head rests, chin rests and nose rests; eye testing machine component parts, namely, removable covers and separators for eyesight testing.
Advisory – Identification of Goods and/or Services
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.
Applicant must be represented by a U.S.-licensed attorney
An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint or designate a U.S.-licensed attorney
To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
How to respond. Click to file a response to this nonfinal Office action.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/Andrea Koyner Nadelman/
Trademark Examining Attorney
U.S. Patent and Trademark Office, Law Office 110
(571) 272-9370
andrea.nadelman@uspto.gov
RESPONSE GUIDANCE