To: | Philip Morris Products S.A. (trademark@lockelord.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86487406 - SOLARIS - 316862-4014 |
Sent: | 3/31/2015 9:29:01 PM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86487406
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: 3/31/2015
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.
Refusal – Section 2(d) – Likelihood of Confusion
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. 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.
[A]pplicant’s assertion that it is unaware of any actual confusion occurring as a result of the contemporaneous use of the marks of applicant and registrant is of little probative value in an ex parte proceeding such as this where we have no evidence pertaining to the nature and extent of the use by applicant and registrant (and thus cannot ascertain whether there has been ample opportunity for confusion to arise, if it were going to); and the registrant has no chance to be heard from (at least in the absence of a consent agreement, which applicant has not submitted in this case).
In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
Comparison of the Marks
The applicant’s mark is SOLARIS (with the “O” stylized).
The registrant’s mark is SOLARIS.
The marks are virtually identical.
Comparison of Goods/Services
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).
The applicant’s goods are “Tobacco, raw or manufactured; tobacco products; 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, cigarette paper, cigarette tubes, cigarette filters, tobacco tins, cigarette cases, 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 cigars, electronic pipes, cartridges for electronic cigarettes, electronic cigars and electronic pipes; liquids for 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 for cigarettes or tobacco sticks and accessories, parts and fittings for use in connection with electronic cigarettes or apparatus for heating tobacco.”
The registrant’s goods are “Cigars.”
The applicant and registrant use their marks on the same type of goods and on goods that would be considered related, in that cigars are tobacco products, and the applicant’s goods include cigars.
Because of the similarity between the applicant’s and registrant’s marks and the fact that those marks are used on the same and related goods, consumers are likely to be confused and mistakenly believe that the applicant’s and registrant’s goods and/or services come from the same source. Registration is therefore refused under Section 2(d) of the Trademark Act because of a likelihood of confusion.
Applicant May Respond
Section 44(d) Sole Basis with Intent to Perfect Section 44(e)
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If 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 applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 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).
If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
Mark Description Amendment Required – Description Accurate but Incomplete
Therefore, applicant must provide a more complete description of the applied-for mark. The following is suggested:
The mark consists of the word "SOLARIS" with the "O" being stylized, with the bottom left half of which appears as a semi-circle, and the top right half of which appears as a crescent.
Identification of Goods – Unacceptable as Indefinite
Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate any parenthetical or bracketed information into the description.
The identification of goods is indefinite and must be clarified because it does not sufficiently indicate the specific goods. See TMEP §1402.01. Applicant may substitute the following wording, if accurate:
Tobacco, raw or manufactured; tobacco products, namely, … (the applicant must specify the common commercial names for the goods or “products”) …; 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, namely, (further define the goods, e.g., metal pocket-sized receptacles with lids for cigarette butts) …, cigarette paper, cigarette tubes, cigarette filters, tobacco tins, cigarette cases, ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters, matches; tobacco sticks, namely, … (the applicant must further define the goods because the precise nature of the goods is unclear as written) …, heated tobacco products, electronic devices that heat cigarettes; electronic smoking devices; electronic cigarettes; electronic cigars, electronic pipes, cartridges for electronic cigarettes, electronic cigars and electronic pipes; liquids for 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, namely, … (the applicant must further define the goods because the precise nature of the goods is unclear as written) …; smoker's articles for electronic cigarettes, namely, … (the applicant must further define the goods because the precise nature of the goods is unclear as written) …; chargers … (the applicant must further define the goods, and the identification may include goods that are classified in additional international classes, e.g., electric shaver chargers (Class 009), battery chargers (Class 009), machine gun chargers (Class 013), etc. ) …, extinguishers for cigarettes or tobacco sticks and accessories … (further define, e.g., fire extinguishers (Class 009), candle extinguishers (Class 021)) …, parts and fittings for use in connection with electronic cigarettes or apparatus for heating tobacco … (further define “apparatus for heating tobacco) ….
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.
Multiple-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 three classes; however, applicant submitted a fee(s) sufficient for only one class. 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.
Further action awaits response to the above.
/Mrs. W. Kay H. Price, Esq./
Trademark Attorney
Law Office 103
United States Patent and Trademark Office
(571) 272-9391
w.kay.price@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.