Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  April 13, 2021

 

International Registration No. 1521868

 

Upon further consideration of the application and the amendment of the identification of goods, the applicant must address the following:

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – Partial Refusal – Class 009

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2841794.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

The applicant is applying to register the mark SOLARIS with a design element for use with “analyzer other than for medical use, namely, liquid analyzer, gas analyzer, electronic analyzer for testing the presence of micro-organisms” (in pertinent part).

 

The cited mark in Registration No. 2841794 is SOLARIS in typed form for use in “portable gas analyzers for indicating oxygen, combustible gases or toxic gases in atmosphere.”

 

Comparison of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

The word portion of the applicant’s mark is SOLARIS and the registrant’s mark is SOLARIS.  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services.  Id.

 

When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  In this case, the word marks are identical.

 

Thus, the marks are confusingly similar. 

 

Comparison of the Goods

 

In addition to the word marks being identical, the goods are highly related.  Specifically, the applicant provides “liquid analyzer, gas analyzer, electronic analyzer for testing the presence of micro-organisms.”  The registrant provides “portable gas analyzers for indicating oxygen, combustible gases or toxic gases in atmosphere.”  In this case, the goods, gas analyzers, are highly related goods.  See attached Internet evidence reflecting gas analyzers various uses. 

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Therefore, virtually identical nature of the marks, and the relatedness of the goods, consumers are likely to reach the conclusion that the goods are related and originate from a common source.  As such, registration must be refused under Section 2(d) of the Trademark Act.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Clarification of the Identification of Goods

 

Some of the wording in the identification of goods is indefinite and must be clarified because the wording is indefinite and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, “process tanks” reference goods properly classified in Class 019 and Class 020.  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 of the World Intellectual Property Organization in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Therefore, although the goods and/or services may be classified in several international classes, any modification to this wording must identify goods and/or services in International Class 009 or 011 only, the class(es) specified in the application for these goods and/or services.  See TMEP §1904.02(c), (c)(ii).

 

Class 009

 

The proposed amended identification of goods reads as follows (underlined wording requiring clarification or deletion):

 

Scientific, research, weighing apparatus and instruments, namely, process tanks for tangential-flow filtration; apparatus and instruments for recording, transmitting and reproducing positioning data, namely, process control systems for use in fermenters and bioreactors industry; apparatus for fermentation being fermenter apparatus for laboratory use; temperature sensing apparatus for scientific use; analyzer other than for medical use, namely, liquid analyzer, gas analyzer, electronic analyzer for testing the presence of micro-organisms; bioreactors for laboratory use, for cell culturing, for research use; peripheral devices for computers; downloadable software applications for mobile devices for use in process data management, data monitoring and quality control in the fermenters and bioreactors industry; optical, proximity, conductive, electric, radar and biomass digital sensors; digital sensory devices, namely, pH sensors, dissolved oxygen sensors, level sensors, conductivity sensors and biomass sensors

 

 

The following is suggested:

 

Apparatus and instruments for recording, transmitting and reproducing positioning data, namely, process control systems COMPRISED OF {specify components of system, e.g., downloadable software and computer hardware) for use in fermenters and bioreactors industry; apparatus for fermentation being fermenter apparatus for laboratory use; temperature sensing apparatus for scientific use; analyzer other than for medical use, namely, liquid analyzer, gas analyzer, electronic analyzer for testing the presence of micro-organisms; bioreactors for laboratory use, for cell culturing, for research use; peripheral devices for computers; downloadable software applications for mobile devices for use in process data management, data monitoring and quality control in the fermenters and bioreactors industry; optical, proximity, conductive, electric, radar and biomass digital sensors; digital sensory devices, namely, pH sensors, dissolved oxygen sensors, level sensors, conductivity sensors and biomass se

 

Class 011

 

The amended identification of goods reads as follows (underlined, bolded wording requiring clarification):

 

• Industrial water and sewage treatment installations being water purification installations; sanitary installations in the nature of laboratory tanks and steam sterilizers; biological reactors, namely, bioreactors for use in the treatment of waste; bioreactors for use in the treatment of wastewater; sterilizing installations, being electrical or steam SIP (Sterilization-in-Place) systems for use in the pharmaceutical industry, food industry, biotech industry and wastewater industry; electrical autoclaves for use in sterilization; sterilizers; reactor vessels being biogas fermentation reactors, namely, percolating fermenters and dry fermenters; level controlling valves as part of water purification tanks; filter elements for the air vents of water supply tanks

 

The following suggestions may be considered:

 

• Industrial water and sewage treatment installations being water purification installations; sanitary installations in the nature of steam sterilizers; biological reactors, namely, bioreactors for use in the treatment of waste; bioreactors for use in the treatment of wastewater; sterilizing installations, being electrical or steam SIP (Sterilization-in-Place) systems for use in the pharmaceutical industry, food industry, biotech industry and wastewater industry; electrical autoclaves for use in sterilization; sterilizers; reactor vessels being biogas fermentation reactors, namely, percolating fermenters and dry fermenters; level controlling valves as part of water purification tanks; filter elements BEING AIR FILTERS for the air vents of water supply tanks

 

NOTE:  the wording “laboratory tanks” do not appear to be goods properly classified in Class 011 and are not “sanitary installations.  Applicant must delete this wording from the identification of goods in Class 011.  See attached Internet evidence reflecting “laboratory tanks”

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

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.

 

Requirements Maintained and Continued

 

• More Accurate and Complete Color Claim and Description of the Mark Indicating Where Colors Appear in the Mark

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/CarynGlasser/

Trademark Examining Attorney

LO 105

Phone:  (571) 270-1517

Fax:  (571) 270-2517

caryn.glasser@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on April 13, 2021 for

U.S. Trademark Application Serial No. 79281774

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/CarynGlasser/

Trademark Examining Attorney

LO 105

Phone:  (571) 270-1517

Fax:  (571) 270-2517

caryn.glasser@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from April 13, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”