Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86487406 SOLARIS (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/86487406/large) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: SOLARIS (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/86487406/large)
Proposed: SOLARIS (Stylized and/or with Design, see mark)
The applicant is not claiming color as a feature of the mark.
The mark consists of the word "SOLARIS" with the "O" being stylized, the bottom left half of which appears as a semi-circle, and the top right half of which appears as a crescent.

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant contends that due to the differences between the cited mark and the goods covered thereunder, and applicant's mark and the goods covered thereunder, there is no likelihood of consumer confusion. Applicant respectfully requests that the Trademark Act Section 2(d) refusal be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 034 for Tobacco, raw or manufactured; tobacco products, namely, 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, cigarette paper, cigarette tubes, cigarette filters, tobacco tins, cigarette cases, ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters, matches; tobacco rolled in stick tubes, heated tobacco products, namely, electronic devices that heat cigarettes; electronic smoking devices; electronic cigarettes; electronic cigarettes for use as an alternative to traditional cigarettes; electronic nicotine inhalation devices; electronic smoking devices that vaporize tobacco, tobacco products and tobacco substitutes; smoker's articles for electronic cigarettes, namely, electronic rechargeable cigarette cases, electronic cigarette chargers, cigarette extinguishers for cigarettes or tobacco rolled in stick tubes; parts and fittings for use in connection with the foregoing goods
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Spain application number 03528917/1 filed 10/01/2014]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Tobacco, raw or manufactured; tobacco products, namely, 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, cigarette paper, cigarette tubes, cigarette filters, tobacco tins, cigarette cases, ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters, matches; tobacco rolled in stick tubes, heated tobacco products, namely, electronic devices that heat cigarettes; electronic smoking devices; electronic cigarettes; electronic cigarettes for use as an alternative to traditional cigarettes; electronic nicotine inhalation devices; electronic smoking devices that vaporize tobacco, tobacco products and tobacco substitutes; smoker's articles for electronic cigarettes, namely, electronic rechargeable cigarette cases, electronic cigarette chargers for electronic cigarettes that utilize electronic cigarette chargers and not lighters, cigarette extinguishers for cigarettes or tobacco rolled in stick tubes; smoker's articles for electronic cigarettes, namely, electronic rechargeable cigarette cases, electronic cigarette chargers, cigarette extinguishers for cigarettes or tobacco rolled in stick tubes; parts and fittings for use in connection with the foregoing goodsClass 034 for Tobacco, raw or manufactured; tobacco products, namely, 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, cigarette paper, cigarette tubes, cigarette filters, tobacco tins, cigarette cases, ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters, matches; tobacco rolled in stick tubes, heated tobacco products, namely, electronic devices that heat cigarettes; electronic cigarettes; electronic cigarettes for use as an alternative to traditional cigarettes; electronic nicotine inhalation devices; electronic smoking devices that vaporize tobacco, tobacco products and tobacco substitutes; smoker's articles for electronic cigarettes, namely, electronic rechargeable cigarette cases, electronic cigarette chargers for electronic cigarettes that utilize electronic cigarette chargers and not lighters, cigarette extinguishers for cigarettes or tobacco rolled in stick tubes; parts and fittings for use in connection with the foregoing goods
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Spain application number 03528917/1 filed 10/01/2014]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant intends to rely on Section 44(d) solely for the receipt of a priority filing date. In addition, Applicant intends to submit an additional filing basis under Section 44(e) based upon a Swiss registration, once it issues. Applicant filed Swiss Application No. 64999 for Class 34 goods on December 18, 2014 and is awaiting registration of same. Therefore, Applicant respectfully requests that further examination of its application be suspended pending issuance of the certificate of registration for its Swiss application.


SIGNATURE(S)
Response Signature
Signature: /maria a scungio/     Date: 06/08/2016
Signatory's Name: Maria A. Scungio
Signatory's Position: Attorney of Record, NYS Bar Member

Signatory's Phone Number: 2129122909

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 86487406
Internet Transmission Date: Wed Jun 08 13:22:34 EDT 2016
TEAS Stamp: USPTO/ROA-X.XX.XX.XX-2016060813223475781
9-86487406-550fbcaca927c81df5a3ae588db79
82cc4f3ebf2fffcfa4d19ad245712dad8186-N/A
-N/A-20160607221904859627