To: | Philip Morris Products S.A. (trademarks@ipxlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86372642 - SOLARIS - PMP-2014-TMR |
Sent: | 12/9/2014 8:19:18 PM |
Sent As: | ECOM104@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 Attachment - 48 Attachment - 49 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86372642
MARK: SOLARIS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Philip Morris Products S.A.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 12/9/2014
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 and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
COMPARISON OF THE MARKS
In the present case, applicant’s mark is SOLARIS and registrant’s mark is SOLARIS. Thus, the marks are identical in terms of appearance and sound. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods and/or services.
Therefore, the marks are confusingly similar.
COMPARISON OF THE GOODS
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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, applicant intends to use the proposed mark in conjunction with:
Batteries for electronic cigarettes; batteries for electronic devices that are used for heating tobacco, battery chargers for electronic devices that are used for heating tobacco; USB chargers for electronic devices that are used for heating tobacco; car chargers for electronic cigarettes; car chargers for devices that are used for heating tobacco, in International Class 9;
Electronic vaporizers; apparatus for heating liquids; apparatus for generating vapor, wired vaporizer, in International Class 11; and
Tobacco, raw or manufactured; tobacco products; including cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek; snus; tobacco substitutes (not for medical purposes); smokers' articles, including cigarette paper and tubes, cigarette filters, tobacco tins, cigarette cases and ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters; matches; tobacco sticks, heated tobacco products, electronic devices that heat cigarettes; electronic smoking devices; electronic cigarettes; electronic cigarettes for use as an alternative to traditional cigarettes; electronic nicotine inhalation devices; vaporising devices for tobacco, tobacco products and tobacco substitutes; smoker's articles for electronic cigarettes; chargers, extinguishers and accessories, parts and fittings for use in connection with electronic cigarettes or apparatus for heating tobacco; electronic rechargeable cigarette cases, in International Class 34.
The registrant is using its mark in conjunction with cigars. The applicant’s goods are related to those of the registrant in that both applicant and registrant use, or intend to use, the marks in conjunction with cigars. The other goods to be provided by the applicant are related in that electronic cigarette accessories and vaporizers such as hookahs are provided by the same source as offers cigars.
The attached Internet evidence consists of excerpts from http://rjrvapor.com, www.rjr.com and www.businessweek.com show that the same companies provide both traditional tobacco products such as cigars and e-cigarettes and their accessories, such as power units. Evidence obtained from the Internet may be used to support a determination under Trademark Act Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).
Therefore, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following requirement(s).
FOREIGN REGISTRATION CERTIFICATE REQUIRED
A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin. TMEP §1016.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin. If the foreign registration is not written in English, applicant must also provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
AMENDED IDENTIFICATION REQUIRED – CLASSES 11 AND 34
As set forth more fully below, the identification of goods in International Classes 11 and 34 is unacceptable as indefinite. 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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
International Class 11
International Class 34
The wording “tobacco products; including cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek; snus” in the identification of goods is indefinite and must be clarified because the use of the semi-colon after the wording “tobacco products” separates these words from the words that follow which appear to be clarifying the nature of the tobacco products. In addition, the word “including” is unacceptable as it does not specify the nature of the goods. See TMEP §1402.01. Applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name, applicant must describe the product and its intended uses. See id.
Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate any parenthetical or bracketed information into the description.
Applicant may amend the identification to list only those services that are within the scope of the services set forth in the application or a previously accepted amendment to the identification. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.
The wording “tobacco sticks, heated tobacco products, electronic devices that heat cigarettes; electronic smoking devices” and “electronic nicotine inhalation devices; vaporising devices for tobacco, tobacco products and tobacco substitutes; smoker's articles for electronic cigarettes; chargers, extinguishers and accessories, parts and fittings for use in connection with electronic cigarettes or apparatus for heating tobacco” in the identification of goods is indefinite and must be clarified to specify the nature of the goods. See TMEP §1402.01. Applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name, applicant must describe the product and its intended uses. See id.
Applicant may adopt the following identification of goods, if accurate:
INTERNATIONAL CLASS 9: Batteries for electronic cigarettes; batteries for electronic devices that are used for heating tobacco, battery chargers for electronic devices that are used for heating tobacco; USB chargers for electronic devices that are used for heating tobacco; car chargers for electronic cigarettes; car chargers for devices that are used for heating tobacco.
INTERNATIONAL CLASS 11: Electronic vaporizers; electric liquid beverage heaters; wired electric vaporizers for household use.
INTERNATIONAL CLASS 34: Tobacco, raw or manufactured; tobacco products, namely, cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, cigarettes containing clove as well as tobacco, moist powder tobacco known as snus; tobacco substitutes not for medical purposes; smokers' articles, namely, cigarette paper and tubes, cigarette filters, tobacco tins, cigarette cases and ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters; matches; tobacco rolled in stick tubes; heated tobacco products, namely electronic cigarette lighters that heat cigarettes; electronic smoking pipes; electronic cigarettes; electronic cigarettes for use as an alternative to traditional cigarettes; electronic nicotine inhalation hookahs; vaporizing hookahs for tobacco, tobacco products and tobacco substitutes; smoker's articles for electronic cigarettes, namely, electronic cigarette cases and boxes; electronic rechargeable cigarette cases.
MULTI-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
/Verna B. Ririe/
Trademark Attorney
Law Office 104
(571) 272-9310
(571) 273-9104 (office fax)
verna.ririe@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.