UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85010105
MARK: OPTOMA
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/teas/eTEASpageD.htm
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APPLICANT: Optoma Technology, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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STRICT DEADLINE TO RESPOND TO THIS LETTER
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
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.
· SECTION 2(d) REFUSAL – 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.
For the reasons discussed below, the examining attorney concludes that confusion as to the source of goods and/or services is likely between the applicant’s mark OPTOMA, and design, for LED lighting module; street light; traffic light; vehicle light; emergency direction light; light fixture with LED lighting module, namely ceiling light, table light, desk light, floor light, decorative light fixtures; LED assembly module for street light; LED assembly module for vehicle light, wall lighting, landscape lighting, flexible lighting, under water lighting, flashlight, photoflash lighting, foggy lighting, mine lighting, flameproof lighting, [and] emergency lighting, and the registrant’s mark OPTIMA for fluorescent lamps.
With respect to their word portions, the marks are the same, except that applicant replaces the letter “I” with an “O.”
The proposed mark also includes a curved line design. However, the design does not materially affect the overall commercial impression of the mark, nor avoid a likelihood of confusion with the mark in the cited registration.
Applicant has identified numerous specific lights and related fixtures. By comparison, the registration covers all fluorescent lamps.
Note that “lamp” is defined as “any of various devices for producing light or sometimes heat.” See attached dictionary definition.
Thus, to the extent applicant’s goods are, or could be, fluorescent, the registration must be read to include such goods.
Additionally, consumers would likely assume applicants LED lights and registrant’s fluorescent lights emanate from the same commercial source, as manufacturers and vendors commonly produce or feature both types of lights.
Note that lights are generally classified in Class 11. However, lights and lighting apparatus that have particular specialized functions (e.g., signaling or emergency lights) are classified separately. Applicant must amend the application to classify its goods in the correct International Classes, as further specified below. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
Applicant may adopt the following identification of goods and/or services, if accurate:
CLASS 9: traffic light; emergency direction lights, namely, {indicate specific function, e.g., emergency warning lights for signaling traffic lane changes}; LED light assembly module for photoflash lighting, flameproof {specify purpose and function of flameproof lights, e.g., emergency warning lights}, and emergency lighting
CLASS 11: LED lighting module; street lights; vehicle lights, namely, {specify type, e.g., headlights}; light fixture with LED lighting module, namely, ceiling lights, table lights, desk lights, floor lights, and decorative light fixtures; LED light assembly module for street lights; LED light assembly module for vehicle {specify type of vehicle lights, e.g., headlights}, wall lighting, landscape lighting, flexible {specify purpose, e.g., reading} lighting, under water lighting {specify purpose, e.g., for pools}, flashlights, {clarify ‘foggy lighting’ using common commercial terms, e.g., foglights for vehicles}, and mine lighting
See TMEP §1402.01.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
CLASSIFICATION OF GOODS/SERVICES
MULTIPLE – CLASS APPLICATION REQUIREMENTS
(1) Applicant must list the goods and/or services by international class; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).
See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
The filing fee for adding classes to an application is as follows:
(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; or
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §810.
/Lief Martin/
Law Office 112
Examining Attorney
Office: 571-272-3434
Email: lief.martin@uspto.gov
TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/. 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.
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.