TEAS Response to Suspension Inquiry

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 1822 (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 1822 (Rev 10/2011)

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

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 87192121 SOLACE (Stylized and/or with Design, see http://uspto.report/TM/87192121/mark.png) has been amended as follows:
PENDING SERIAL NUMBER(S)
Serial number(s) 87192121 should not be used as a citation(s) under Section 2(d), in the event that said serial number(s) mature(s) into a registration(s). The applicant hereby requests removal of this application from suspension, based on the following arguments. If the examining attorney is not persuaded by these arguments, the applicant hereby requests that this application be returned to suspended status, awaiting ultimate disposition of the referenced serial number(s).

ARGUMENT(S)

RESPONSE TO SUSPENSION NOTICE

 

TO:                  Katrina J. Goodwin

                        Examining Attorney

 

FROM:            Crystal Broughan

                        Attorney for Solace Corporation

 

DATE:            January 19, 2017

 

RE:                  Serial Number 87192121

                        SOLACE Class 9

 

On January 12, 2017, a Suspension Notice was issued for the above-referenced trademark application.  After reviewing the Suspension Notice and the trademark application for SOLACE (Serial No. 87192121), we request that the trademark attorney reconsider her position for the following reasons:

 

1)  Solace Corporation owns U.S. Registration 2,926,975 for SOLACE in Classes 9 and 42 which was registered on February 15, 2005 and has been used in commerce by the owners of the Solace Corporation since 2004.  Originally, the SOLACE mark was registered under the name of Solace Systems, Inc.  On November 30, 2016, an Assignment/Change of Name was filed with the USPTO in which Solace Systems, Inc. changed their name and assigned the trademark registration for SOLACE to Solace Corporation. 

 

2)  The trademark application for SOLACE (Serial Number 87192121) states that Solace Corporation has active prior U.S. Registration Numbers 2926975, 3160020 and 3050926 which all include the word SOLACE.

 

3) In the Suspension Notice, the application for SOLACE (Serial Number 85684067) owned by Solace Technologies, Ltd. of Canada, is referenced as an application that precedes the filing date of the Solace Corporations application for SOLACE (Serial Number 87192121).  The application filed by Solace Technologies, Ltd. (Serial Number 85684067) may have a filing date of July 23, 2012 but Solace Corporation’s previously registered U.S. trademarks (2926975, 3160020 and 3050926) have been first used in commerce long before Solace Technologies, Ltd. started using the mark SOLACE.  Solace Corporation’s U.S. registration number 3,160,020 in Class 42 was first used on July 1, 2003. U.S. Registration number 3,050,926 in Class 9 was first used on July 1, 2004 and U.S. Registration 2926975 in Class 9 and 42 was first used in commerce on August 1, 2004.  All of the US registrations owned by Solace Corporation were used in commerce prior to Solace Technologies, Ltd. using the mark SOLACE. 

 

4)  The USPTO record for the intent-to-use application for SOLACE (Serial Number 86190462) filed by Globus Medical, Inc. in 2014 indicates that Globus Medical, Inc. has never used the trademark SOLACE in commerce.  My client, Solace Corporation, has priority in commerce with the use of the mark SOLACE since 2003 and has well established that priority with three prior U.S. registrations (2926975, 3160020 and 3050926). 

 

We respectfully request the trademark remove the suspension from the trademark application for SOLACE (Serial Number 87192121) so the SOLACE trademark owned by the Solace Corporation may proceed forward to registration.  The Solace Corporation has priority over both pending trademark applications filed by Solace Technologies, Ltd (Serial Number 85684067) and Globus Medical, Inc. (Serial Number 86190462).

 

Response Suspension Inquiry Signature
Signature: /Crystal Broughan/     Date: 01/19/2017
Signatory's Name: Crystal Broughan
Signatory's Position: Attorney of record
Signatory's Phone Number: 904-807-2180

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 applicant'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 applicant in this matter: (1) the applicant 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 applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant'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: 87192121
Internet Transmission Date: Thu Jan 19 17:19:09 EST 2017
TEAS Stamp: USPTO/RSI-XXX.XXX.XXX.XX-201701191719092
72949-87192121-58013efded4467ffa7646d79f
4f11297c15a66eaaff3682e01f3e595a555b32d1
91-N/A-N/A-20170119170801618946