To: | SUNRISE WINDOWS, LLC (dpurdue@purdue-law.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85010650 - OPTIVIEW - 289.0040 |
Sent: | 3/6/2011 2:58:25 PM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85010650
MARK: OPTIVIEW
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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: SUNRISE WINDOWS, LLC
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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.
ISSUE/MAILING DATE: 3/6/2011
TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions. See 37 C.F.R. §2.23(a)(1). For a complete list of these documents, see TMEP §819.02(b). In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address. 37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.
This Office action is in response to applicant’s communication filed on January 20, 2011.
The Trademark Act Section 2(d) refusal citing U.S. Registration No. 3124719 is withdrawn.
The Trademark Act Section 2(d) refusal citing U.S. Registration No. 2568401 and requirement for an acceptable specimen of use are maintained and continued. In addition, upon review of the applicant’s response, a new issue must be raised regarding the identification of goods.
(1) Identification Of Goods – New Issue:
In the application as filed, the goods were identified as “insect screens not of metal.” The original wording was definite and properly classified. In the response filed January 20, 2011, the applicant seeks to amend the identification to “non-metal insect screens sold as a component of non-metal windows and doors.” The amended identification is unacceptable because it exceeds the scope of the original identification. In one instance a consumer is buying a screen, in the other they’re buying a door or window that happens to feature the screen. An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.
Accordingly, for the foregoing reasons, the proposed amendment to the identification of goods must be withdrawn.
(2) Trademark Act Section 2(d) Refusal:
The Trademark Act Section 2(d) Refusal citing U.S. Registration No. 2568401 is maintained and continued.
The applicant argues that the existence of several third party registration for similar marks is evidence that the wording in the marks is “relatively weak” and that the wording “has a descriptive connotation and is, therefore, entitled to a narrower scope of protection.” In response, the examining attorney notes that the goods in the third party registrations referenced by the applicant differ significantly from the goods offered under the marks at issue herein.
The applicant maintains that the goods in the cited registration “are solar tube skylights which are non-venting skylights that would not be used with or sold with insect screens.” However, the registration encompasses, in part, the broad wording “skylights” which is presumed to encompass all types of skylights, including those for which insect screens would be suitable. In a likelihood of confusion analysis, the comparison of the parties’ goods is based on the goods as they are identified in the application and registration, without limitations or restrictions that are not reflected therein. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); see TMEP §1207.01(a)(iii).
The applicant also argues that the purchasers of the products at issue are sophisticated consumers. However, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see In re Cynosure, Inc., 90 USPQ2d 1644 (TTAB 2009); In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).
(3) Specimen Of Use:
The requirement that the applicant submit an acceptable specimen of use is maintained and continued.
In response to the requirement for an acceptable specimen of use, the applicant has proposed an amendment to the identification of goods that exceeds the scope of the original identification of goods and, accordingly, cannot be entered. Therefore, the specimen of record remains unacceptable because it does not depict the proposed mark in use in relation to the identified goods. Specifically, rather than depict the mark on a label for insect screens, the specimen depicts the mark on a label for a window that happens to feature the insect screen.
Therefore, applicant must submit the following:
(1) A substitute specimen showing the mark in use in commerce for each class of goods and/or services specified in the application; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq.
If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).
Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark for the identified goods. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
/Martha L. Fromm/
Martha L. Fromm
Trademark Attorney
Law Office 106
Phone: (571) 272-9320
e-mail: Martha.Fromm@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.