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. 79304025
Mark: ESSILOR
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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. 1575044
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 (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, 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).
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(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES:
· SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL
· OWNERSHIP OF THE CITED REGISTRATIONS
· COLOR CLAIM
· DESCRIPTION OF THE MARK
· IDENTIFICATION OF GOODS AND SERVICES
· EMAIL ADDRESS REQUIREMENT
· U.S. COUNSEL REQUIREMENT
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3755019, 4100459, 5308270, 5456826, 5467305, 5618977, 5619043, 5747510, 5898704 and 6082328. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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.
A. 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)); TMEP §1207.01(b).
Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). Here, the marks share the identical arbitrary wording “ESSILOR”.
Even though the proposed mark and some of the cited marks feature design elements, for a composite mark containing both words and a design, the word portion may be more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although such 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)).
B. Comparison of the Goods and Services
The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
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).
In this case, the parties offer identical and closely related goods and services in the same fields of optometry, ophthalmology, and ophthalmic optics. Furthermore, the application uses broad wording to describe its various goods and services, which presumably encompasses all goods and services of the types described, including the registrants’ more narrow goods and services. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrants’ goods and services are legally identical in part. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Moreover, the goods and services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
As such, the goods and services would be marketed in the same channels of commerce and to the same group of consumers under circumstances that would lead the average consumer to mistakenly believe that the goods and services emanate from a common source.
Accordingly, the presence of similar marks for identical and closely related goods and services would create a likelihood of confusion in the marketplace. Thus, registration must be refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
OWNERSHIP OF THE CITED REGISTRATIONS
(1) Record the assignment with the USPTO’s Assignment Recordation Branch for registrations based on Trademark Act Section 1 or 44 (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov), and record the assignment with the International Bureau of the World Intellectual Property Organization for registrations based on Section 66(a); and promptly notify the trademark examining attorney that the assignment has been duly recorded;
(2) Submit copies of documents evidencing the chain of title; or
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration Nos. 3755019, 4100459, 5308270, 5456826, 5467305, 5618977, 5619043, 5747510, 5898704 and 6082328.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #9; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §§1060, 1141l; 37 C.F.R. §§2.193(e)(1), 3.73(a)-(b), 7.22; TMEP §502.02(a)-(b).
Recording a document with the Assignment Recordation Branch or the International Bureau does not constitute a response to an Office action. See TMEP §503.01(d).
If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
COLOR CLAIM
Applicant must provide an amended color claim that references all the colors in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq. A complete color claim must list all the colors appearing in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq. In addition, generic color names must be used to describe the colors in a color claim and description, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii).
The following color claim is suggested: “The colors blue and white are claimed as a feature of the mark.”
DESCRIPTION OF THE MARK
Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following description is suggested, if accurate: The mark consists of a stylized eye design comprised of a curved band resembling a letter “e” in blue set inside a white oval shape and followed below by the stylized wording “ESSILOR” in white and all of which are set inside a blue square carrier.
IDENTIFICATION OF GOODS AND SERVICES
The identification of goods highlighted below is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the common commercial or generic name for the goods. If there is no common commercial or generic name, applicant must describe the goods and intended consumer as well as its main purpose and intended uses. In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as "apparatus," "components," "devices," "materials," or "parts," such wording must be followed by "namely," and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although software may be classified in international classes other than International Class 9, any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
The recitation of services highlighted below is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the common commercial or generic name for the services. If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). Applicant must be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words and phrases such as "services in connection with," "such as," "including," "and like services," "systems," "products," "concepts," or "not limited to," such wording must be followed by "namely," and a list of the specific services identified by their common commercial or generic names. See TMEP §§1401.05(d), 1402.03(a).
Therefore, applicant must delete “sale(s)” from the identification and indicate with greater specificity the nature of the service in International Class 35; e.g., “retail store services featuring _______,” “wholesale distributorships featuring _______,” and “on-line wholesale and retail store services featuring ______.”
An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language.
The identification of goods and services contains parentheses. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO's practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., "fried tofu pieces (abura-age)." Id.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods and services. Applicant may also delete the parenthetical information where indicated below.
Applicant may adopt the following amended identification of goods and services suggested by the trademark examining attorney, if they accurately reflect the nature, function, purpose, and scope of applicant's goods and services. The suggested identification also serves as examples of acceptable language and may be used as a guide in drafting amended language. Please note proposed changes in bold type, strikethroughs reflecting deletions, and applicant should pay particular attention to language removed or inserted by the trademark examining attorney:
International Class 001: _______ {clarify “Organic or mineral materials in the nature of treatment layers, coatings, top coats, all for spectacle lenses and ophthalmic lenses, of polymer and/or minerals and/or metallic compounds and/or other materials, having one or more of the following properties: scratch-resistant, impact-resistant, anti-reflective, optical, anti-UV, smudge-repellent, dust-repellent, rain-repellent, hydrophobic, oleophobic, light-filtering,” e.g. Polymers and metallic oxides for use in the manufacture of coatings for spectacle lenses and ophthalmic lenses featuring scratch-resistant, impact-resistant, anti-reflective, optical, anti-UV, smudge-repellent, dust-repellent, rain-repellent, hydrophobic, oleophobic, and light-filtering properties}
International Class 005: Sanitary preparations for medical purposes; cleansing solutions for medical use; sanitizing solutions for medical use; medical products for the care of contact lenses and spectacle lenses, namely, _______ {clarify goods, e.g. contact lens solutions, disinfectant wipes}; medical products for cleaning contact lenses and spectacle lenses, namely, _______ {clarify goods, e.g. contact lens cleaning solutions, disinfectant soap}; medical preparations for preserving contact lenses and intraocular lenses
International Class 007: Machines for the production of optical lenses featuring glass working, precision machining, trimming, cutting, drilling, grinding, edging, blanking, grooving, engraving, bevelling, counter-bevelling, chamfering, surface grinding, finishing, smoothing, polishing, fine glass reworking and stripping all for producing spectacle lenses and ophthalmic lenses; machines for blocking spectacle lenses and ophthalmic lenses; machines for the production of optical lenses, namely, spectacle lens and ophthalmic lens edgers; structural replacement parts and components of all the aforesaid machines
International Class 009 Spectacles (optics); sunglasses; goggles for sports; spectacle frames; ophthalmic lenses;
spectacle lenses, including organic lenses, mineral lenses, corrective lenses, progressive lenses, sunglass lenses, polarized lenses, filtering lenses, tinted lenses, colored lenses, light-sensitive
lenses, photochromic lenses, electrochromic lenses, treated lenses, coated lenses, anti-reflective lenses, and semi-finished lenses, all being types of
spectacle 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; apparatus and instruments for optical, ophthalmic and/or facial measurement, namely, ______ {clarify goods, e.g. optical scanners}; ______ {clarify format of “software,” e.g. downloadable computer software} for measuring and displaying ophthalmic, optical and facial parameters; recorded computer software _______ {specify the function of the programs, e.g. for use in database management, for use as a spreadsheet, for word processing, and, if
software is content- or field-specific, the content or field of use}; downloadable electronic publications, namely, downloadable electronic information guides and documents in
the field of ______ {indicate subject matter or field, e.g. ophthalmology}; downloadable electronic publications, namely, downloadable electronic
quality certificates for spectacle frames, spectacles and ophthalmic lenses; downloadable electronic publications, namely, downloadable electronic control
certificates for spectacle frames, spectacles and ophthalmic lenses; downloadable electronic publications, namely, downloadable electronic analysis reports
and certification documents in relation to the manufacture and the treatment of spectacle frames, spectacles and ophthalmic lenses; downloadable electronic publications, namely,
downloadable electronic information leaflets with respect to certification, standardization and normalization regarding the manufacture and the treatment of spectacle frames,
spectacles and ophthalmic lenses; all of the aforementioned products being in downloadable electronic form {delete redundant wording}
International Class 010: Medical apparatus and instruments, namely, _______ {clarify types, e.g. eye testing machines and apparatus,
a device for measuring arterial blood flow in the eye}; instruments for ophthalmological examinations, namely, _______ {clarify types, e.g. ophthalmoscopes, ophthalmometers};
medical imaging apparatus for opthalmologic use; tomographs and angiographs for opthalmologic use; ophthalmoscopes; pupillometers for measuring pupillary distance; corneal
reflection pupillometers for measuring pupillary reactivity to stimulus; phoropters for ophthalmological examinations; meters for medical
use, namely, frontofocometers; vertex refractionometers for medical use; ophthalmoscopes; {delete duplicative entry}
keratometers for medical use; ophthalmometers; medical apparatus for screening vision defects and disorders; medical apparatus for
measuring and testing visual acuity and vision; vision testing apparatus and instruments for medical purposes, in particular for the examination of visual behavior; medical apparatus and instruments for detecting and measuring eye and head movements in response to visual stimuli; structural parts and components of all the
aforesaid goods, namely, head rests, chin rests and nose rests; ______ {clarify “reading ladders” to identify goods in Class 10, e.g. reading ladders, namely, cards printed with
lines of varying widths used for testing and analyzing vision}; separators being ______ {clarify goods} and removable covers for eyesight testing for
medical purposes; medical apparatus for detecting hearing defects and impairments; audiometers being medical testing devices for measuring hearing loss in
patients
International Class 016: Printed publications, namely, catalogs in the field of _______ {indicate specific
field of use, e.g. ophthalmology}, leaflets in the field of _______ {indicate specific field of use, e.g. ophthalmology}, brochures in the field of _______
{indicate specific field of use, e.g. ophthalmology}, books in the field of _______ {indicate specific field of use, e.g. ophthalmology}, magazines in the
field of _______ {indicate specific field of use, e.g. ophthalmology}, manuals in the field of _______ {indicate specific field of use, e.g. ophthalmology}, newspapers,
business cards, calendars, ______ {clarify type of “albums,” e.g. stamp albums, sticker albums}, journals in the field of _______ {indicate specific field of
use, e.g. ophthalmology}, manuals, {delete duplicative entry} booklets in the field of _______ {indicate specific field of
use, e.g. ophthalmology}, prospectuses in the field of _______ {indicate specific field of use, e.g. ophthalmology}, printed guides in the field of _______
{indicate specific field of use, e.g. ophthalmology}, posters, and signboards of paper or cardboard and all of the foregoing being printed; bags,
envelopes and pouches for packaging purposes, made of paper or plastic materials; printed quality certificates for spectacle frames, spectacles and ophthalmic lenses; printed control certificates for spectacle frames, spectacles and ophthalmic lenses; printed analysis reports and certification documents in relation to the
manufacture and the treatment of spectacle frames, spectacles and ophthalmic lenses; printed information leaflets with respect to certification, standardization and
normalization regarding the manufacture and the treatment of spectacle frames, spectacles and ophthalmic lenses; all of the aforesaid goods being in printed form {delete
redundant wording}
International Class 035: _______ {clarify “Compilation and updating of commercial and advertising literature and catalogs of goods
and services, including in electronic form online” to indicate service in Class 35}; distribution of catalogs of others for promotional and advertising purposes; publication
of advertising texts; dissemination of advertisements; dissemination of advertising materials, namely, leaflets, prospectuses, printed matter, and samples; compilation of
statistics; collection and systematization of data into computer databases; computer file management; public opinion polling; sponsorship search; _______ {clarify “organization of competitions in connection with advertising”}; public relations; inventory management assistance; marketing services; _______ {clarify “presentation of goods on all communication media, for retail purposes,” e.g. providing television home shopping services in the field of general consumer merchandise};
promoting the goods and services of others; demonstration of goods; organization of sales and service promotion activities for others
to build customer loyalty; customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes; advertising and sales promotion for others, including via
telecommunications and/or computer networks; organization of exhibitions and events for commercial and/or promotional and/or advertising purposes; _______ {clarify “retail,
wholesale and online sales services, for the following goods:,” e.g. wholesale and retail store services and on-line wholesale and retail store services} all featuring sanitary products for
medical use, cleansing solutions for medical use, sanitizing solutions, products for the care of contact lenses and spectacle lenses, products for cleaning contact lenses and spectacle lenses,
preparations for storing and preserving contact lenses and lenses, working, machining, trimming, cutting, drilling, grinding, edging, blanking, grooving, engraving, bevelling, counter-bevelling,
chamfering, surface grinding, finishing, smoothing, polishing, fine reworking and stripping machines for spectacle lenses and ophthalmic lenses, blocking machines for spectacle
lenses and ophthalmic lenses, grinders for spectacle lenses and ophthalmic lenses, spectacles (optics), sunglasses, sports glasses, spectacle frames, ophthalmic lenses,
spectacle lenses, including organic lenses, mineral lenses, corrective lenses, progressive lenses, sunglass lenses, polarized lenses, filtering lenses, tinted lenses, colored lenses, light-sensitive
lenses, photochromic lenses, electrochromic lenses, treated lenses, coated lenses, anti-reflective lenses, and semi-finished lenses, spectacle lens pucks and blanks,
semi-finished pucks for spectacle lenses, contact lenses, cases for spectacle lenses, cases for ophthalmic lenses, spectacle cases, cords and chains for spectacles, optical, ophthalmic and facial measurement apparatus and instruments, software for measuring and displaying optical, ophthalmic and facial parameters, recorded
software programs, medical apparatus and instruments, instruments for ophthalmological examinations, medical imaging apparatus for ophthalmological use, tomographs and
angiographs for ophthalmological use, ophthalmoscopes, pupillometers, corneal reflection pupillometers, phoropters, lensmeters, vertical angle refractionometers, ophthalmoscopes, keratometers,
ophthalmometers, apparatus for detecting eyesight defects and disorders, apparatus for measuring and testing visual acuity and vision, eyesight testing apparatus and instruments, in particular for
the examination of visual behavior, apparatus and instruments for detecting and measuring eye and head movements in response to visual stimuli, head rests, chin rests and nose rests, ______ {clarify “reading scales,” e.g. reading scales being printed eye charts}, _______ {clarify “separators”} and removable covers for eyesight testing, apparatus
for screening hearing defects and disorders, and audiometers
International Class 040: Custom shaping and molding of spectacle lenses and ophthalmic lenses for others; custom manufacture of ophthalmic lenses for others involving the _____ {delete or clarify “working,” e.g. tinting}, machining, sizing, cutting, drilling, grinding, edging, blanking, grooving, engraving, bevelling, counter bevelling, chamfering, surfacing, finishing, smoothing, polishing, _____ {clarify “fine reworking,” e.g. soldering} and stripping of spectacle lenses and ophthalmic lenses; heat treatment and coating of spectacle lenses and ophthalmic lenses; custom shaping of spectacles for others; ______ {clarify “fitting of spectacle lenses and ophthalmic lenses” to indicate service in Class 40}
International Class 042: Scientific and technical design research in the field of ophthalmic optics; scientific and technological services, namely, development of testing, measuring and analysis methods in the field of ophthalmic optics; scientific and technological services, namely, development and testing of computing methods, algorithms and software all in the field of ophthalmic optics; scientific and technological services, namely, preparation of scientific and technical scientific research reports in the field of ophthalmic optics
International Class 044: ______ {clarify “Services of opticians, optometrists and other ophthalmic optics professionals,” e.g. Opticians services; optometry services; ophthalmology services}; medical information and advice in the field of ophthalmic optics; medical information and advice relating to protecting the eyes and sight and to visual correction and comfort; optometry services, namely, eyesight testing and visual diagnosis services; optometric services for detecting eyesight defects and disorders
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.
EMAIL ADDRESS REQUIREMENT
Email address required. Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at III.A. (Rev. Feb. 2020). Applicant’s email address cannot be identical to the listed primary correspondence email address of any attorney retained to represent applicant in this application. See Examination Guide 1-20, at III.A.
U.S. COUNSEL REQUIREMENT
Applicant must be represented by a U.S.-licensed attorney to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented 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 at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-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.
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 at http://teas.gov.uspto.report/wna/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ 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.
/Hai-Ly Lam/
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 119
Tel. 571-272-3354
hai.lam@uspto.gov
RESPONSE GUIDANCE